Ex parte Crawford

Board of Patent Appeals and Interferences

Mar 31, 1998

08154344 (B.P.A.I. Mar. 31, 1998)

Application for patent filed November 18, 1993.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte LOU H. CRAWFORD
________________
Appeal No. 96-2267
Application 08/154,3441
________________
ON BRIEF
________________
Before CALVERT, STAAB and MCQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1, 2, 6, 8 and 12. Claims 3-5, 7, 9-11, 13 and 14, the
only other claims remaining in the application, stand withdrawn
Appeal No. 96-2267
Application 08/154,344
In the final rejection (Paper No. 7), the examiner2
inadvertently failed to mention the status of claims 13 and 14.
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from further consideration under 37 CFR § 1.142(b) as not
readable on the elected species.2
Appellant’s invention pertains to a menstrual cup, that is,
a small self-supporting receptacle for positioning in the vaginal
channel for collecting menstrual discharge. A prior art
menstrual cup is illustrated in Figure 1 and includes, inter
alia, a tube-like withdrawal extension 6 that can be used to
remove the cup from the vagina (specification, page 4). As
explained by appellant on page 2 of the specification,
removal of the menstrual cup from the vagina should be
accomplished on a regular basis for emptying, cleaning
and hygienic purposes. It has been determined,
however, that between such removal operations, it would
be a matter of great convenience if the menstrual cup
could be drained while in place. The present invention
is based on the discovery that the withdrawal
extension, if properly modified, may be used for this
purpose. The withdrawal extension is provided in
tubular form, having a longitudinal passage which
communicates with the interior of the menstrual cup
body. Means are provided to close the passage in the
withdrawal extension and the withdrawal extension
passage is normally kept closed. The closure means are
of such nature, however, that with appropriate
manipulation by the user, the passage may be opened for
drainage purposes and thereafter reclosed.
Appeal No. 96-2267
Application 08/154,344
Two other references listed on page 2 of the answer (Paper3
No. 13) under the heading “Prior Art of record” have not been
included here in that they are no longer relied upon by the
examiner in the rejection of the appealed claims.
This ground of rejection was applied against claims 6 and4
12 for the first time in the examiner’s answer. In that the
rejection of claims 6 and 12 which had been set forth in the
final rejection (Paper No. 7) has not been repeated in the
answer, we presume that it has been withdrawn by the examiner.
See Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
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Independent claim 1, a copy of which is found in the
appendix to appellant’s brief, is illustrative of the appealed
subject matter.
The sole reference of record relied upon by the examiner in
support of a rejection under 35 U.S.C. § 103 is:3
Gabbay 4,381,771 May 3, 1983
Claims 1, 2, 6, 8 and 12 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Gabbay.4
Reference is made to appellant’s main and reply briefs
(Paper Nos. 12 and 14) and to the examiner’s answer (Paper No.
13) for the respective positions of appellant and the examiner
with regard to the merits of this rejection.
Gabbay pertains to a female contraceptive device in the form
of a cervical cover. The Gabbay device comprises a dome-like
member 3 having an inflatable or spring biased collar 2 to hold
the cover securely to the walls of the vagina adjacent and
Appeal No. 96-2267
Application 08/154,344
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surrounding the cervix. See, for example, Figure 4. The
cervical cover is provided with lips or cusps 4 and 5, defined as
long, planar elements interconnected along their edges so as to
define a flat outlet distal from the cervical cover. The lips
function like a check valve to permit waste material to flow out
of the cervix, while precluding the flow of fluid in the opposite
direction.
Independent claim 1 calls for a menstrual cup comprising a
body having a hollow interior, a tubular extension having a
longitudinal passage therein in communication with the hollow
interior of the body, and “means for normally closing said
extension passage, said closing means being manually manipulable
to an open state for opening said extension passage, whereby said
menstrual cup can be drained of fluid without removal from the
vagina.”
In rejecting the appealed claims as being unpatentable over
Gabbay, the examiner has taken the position that the lips or
cusps 4 and 5 of Gabbay form a one-way valve structure
which . . . is at least closed to fluids in one
direction. It is also normally closed as the slit is
collapsed which would at least prevent some fluid from
passing in the other direction. While the reference
does not disclose manual manipulation of the passage,
the edges of the passage may be squeezed to open the
passage. [answer, page 5]
Appeal No. 96-2267
Application 08/154,344
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It is thus apparent that the examiner has taken the position that
the lips or cusps 4 and 5 of Gabbay correspond to the above
quoted “means for normally closing . . .” limitation of claim 1.
We do not agree with this position.
While it is well settled that terms in a claim are to be
given their broadest reasonable interpretation in proceedings
before the PTO, this interpretation must be consistent with the
specification and the claim language should be read in light of
the specification as it would be interpreted by one of ordinary
skill in the art. In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566,
1567 (Fed. Cir. 1990); In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983). As disclosed in the paragraph
bridging pages 5 and 6 of appellant’s specification, means must
be provided which, in normal use, close the passage in the
extension tube so that the menstrual cup can perform its purpose
of retaining menstrual flow. That is, the closing means “must be
reliable and leak proof” (specification, page 6, line 1; emphasis
added). In the embodiment of Figure 9, for example, the normally
closed slit will enable fluid to drain when squeezed, and when
released “will return to its normal closed condition”
(specification, page 8). When read in light of this disclosure,
the “means for normally closing . . .” set forth in the last 4
Appeal No. 96-2267
Application 08/154,344
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lines of claim 1 must be interpreted as requiring that means to
be normally closed unless manually manipulated to an open
condition. In contrast to this, Gabbay describes the lips or
cusps 4 and 5 as being arranged
so that the discharges from the cervix, such as
menstrual fluid, will have the greatest possible area
to flow out of the valve. These discharges must be
able to flow out easily; if they cannot they will be
kept in contact with the cervix and will lead to
infections of the cervix. . . . As menstrual fluid
fills the space 13 [where the lips join the dome] it
will put pressure on the base 14 of the dome to cause
lip 4 to be biased away from lip 5 to let the menstrual
fluid pass out of the valve. The flexibility of the
lips is such that if only a small amount of fluid is to
be discharged, the section of the lips upstream of the
fluid will close while that downstream will open.
[column 5, line 57 through column 6, line 5; emphasis
added]
In light of this disclosure, we can think of no circumstances
under which the artisan would construe Gabbay’s lips 4 and 5 to
correspond to the claimed “means for normally closing . . .” when
the claim language is interpreted in a manner consistent with the
appellant’s specification.
In addition, we agree with appellant that the examiner’s
position that the “the edges of the passage [formed by the lips 4
and 5] may be squeezed to open the passage” (answer, page 5) is
pure conjecture. First, Gabbay does not disclose, or desire,
such operation. Second, in that Gabbay states that lips 4 and 5
Appeal No. 96-2267
Application 08/154,344
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(1) must be sufficiently flexible to assure that if only a small
amount of fluid is to be discharged, the section upstream of the
fluid will close while that downstream will open (column 6, lines
2-5), and (2) the lips, if “very short, or somewhat inflexible,”
will not function properly (column 6, lines 9-13), it is improper
to speculate whether squeezing the edges of the lips would in
fact cause them to separate.
In light of the above, we will not sustain the examiner’s
rejection of the appealed claims as being unpatentable over
Gabbay.
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
Appeal No. 96-2267
Application 08/154,344
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