10906199 (B.P.A.I. Sep. 10, 2012)

Ex Parte Ma

Board of Patent Appeals and InterferencesSep 10, 2012

10906199 (B.P.A.I. Sep. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte FENG MA __________ Appeal 2011-010382 Application 10/906,199 Technology Center 3700 __________ Before ERIC GRIMES, JEFFREY N. FREDMAN, and JACQUELINE WRIGHT BONILLA, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a vacuum apparatus. The Examiner rejected the claims as anticipated and as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter New Grounds of rejection. Appeal 2011-010382 Application 10/906,199 2 Statement of the Case Background “The present invention relates to methods of using a canned vacuum source to provide suction force, particularly in a disposable urine collection kit comprising a built-in vacuum pressure for assisting in the efficient collection and effective retention of the urine” (Spec. 1 ¶ 1). The Claims Claims 1-4, 6, 14, 15, and 28-31 are on appeal. Claim 1, the sole independent claim on appeal, is representative and reads as follows: 1. An apparatus, comprising: a vacuum container configured to provide and substantially maintain a built-in vacuum pressure; a contact member configured to contact and substantially enclose a surface area; and a vacuum device configured to couple the built-in vacuum pressure to the surface area thereby applying a suction force on the surface area; wherein the vacuum container is also configured to retain a substance collected from adjacent the surface area. The issues1,2 A. The Examiner rejected claims 1-4, 14, and 29-31 under 35 U.S.C. § 102(e) as anticipated by Boehringer3 (Ans. 4-5). 1 The Examiner has objected to claim 2. (Final Rej. 3.) A claim objection is a petitionable matter and not an appealable matter and is not within the jurisdiction of the Board. See MPEP § 1201. 2 As to Appellant’s request for rejoinder of at least dependent claims 5, 12, 13, and 32 (see App. Br. 18) we note that a rejoinder request and the propriety of restriction requirements also relate to petitionable subject matter not within the Board’s jurisdiction. Appeal 2011-010382 Application 10/906,199 3 B. The Examiner rejected claims 1-4, 14, and 29-31 under 35 U.S.C. § 102(a) as anticipated by Boehringer (Ans. 6-7). C. The Examiner rejected claims 15 and 28 under 35 U.S.C. § 103(a) as obvious over Boehringer (Ans. 7-8). D. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as obvious over Boehringer and Birbara4 (Ans. 8). A and B. 35 U.S.C. § 102(e) and (a) over Boehringer The Examiner finds that Boehringer discloses a vacuum apparatus, comprising the following: a vacuum container in the form of suction bulb 37 configured to provide and substantially maintain a built-in vacuum pressure (¶¶0035, 0036); a contact member in the form of enclosure component 11 configured to contact and substantially enclose a surface area, namely a wound bed (Fig. 1, ¶0033); and a vacuum device in the form of plastic tubing 34 to couple the built-in vacuum pressure from suction bulb 37 to the surface area thereby applying a suction force to the surface area (wound bed). (Ans. 4.) Appellant contends that paragraph [0036] of Boehringer reads “ ... the spring element 47 being significantly preloaded to provide a suction force when compressed ...” (emphasis added). Thus, contrary to the Examiner’s assertions, the bulb 37 of Boehringer does not provide a “built-in” vacuum pressure as claimed. Rather, the bulb 37 is provided having no built-in vacuum pressure whatsoever. Only when the user 3 Boehringer et al., US 2004/0064132 A1, published Apr. 1, 2004. 4 Birbara, P., US 5,894,608, issued Apr. 20, 1999. Appeal 2011-010382 Application 10/906,199 4 compresses the bulb 37, does the bulb 37 provide[ ] a suction force. (App. Br. 11.) Appellant contends that “even this suction force is not ‘substantially maintained.’ . . . the bulb 37 must be compressed many times for the enclosure 11 to reach a desirable suction force” (id. at 12). Appellant “submits that the temporarily accumulated fluid in the bulb 37 cannot be equated to ‘retaining’ the fluid as claimed” (id. at 13). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Boehringer anticipates the apparatus required by claim 1? Findings of Fact 1. Figure 1 of Boehringer is reproduced below: “FIG. 1 is a cross-sectional view of a medical device for application to a wound” (Boehringer 1 ¶ 0014). Appeal 2011-010382 Application 10/906,199 5 2. Boehringer teaches that the “tubing 34 thus connects the enclosure 11 to the suction device 12” (Boehringer 2 ¶ 0034). 3. Boehringer teaches that the “tubing 34 is then connected to a flexible manually actuable [sic] bulb 37 through a caged ball type check valve 38 at the inlet thereof, with the ball 41 thereof adapted to seat against the seat 40” (Boehringer 2 ¶ 0035). 4. Boehringer teaches that “spring element 47 is shown inside the flexible bulb 37, with the spring element 47 being significantly preloaded to provide a suction force when compressed, equivalent to approximately 100- 125 mmHg” (Boehringer 2 ¶ 0036). 5. Boehringer teaches that “the enclosure 11, after removal of the release layer 20, leaves an opening that has a peripheral zone adapted to be applied to the skin surface around the wound” (Boehringer 2 ¶ 0032). 6. The Specification teaches that “[j]ust as carbonated plastic drink bottles or aluminum cans that hold a ‘positive’ pressure, the container designed in this invention maintains a ‘negative’, or vacuum pressure. The material or structure of the containers is designed to maintain such a negative pressure” (Spec. 4 ¶ 12). 7. The Specification teaches “to manufacture small plastic tubes with built-in vacuum” (Spec. 6 ¶ 19). Principles of Law “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently. Anticipation is an issue of fact, and the question [of] whether a claim Appeal 2011-010382 Application 10/906,199 6 limitation is inherent in a prior art reference is a factual issue.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). Analysis Claim interpretation is at the heart of patent examination because before a claim is properly interpreted, its scope cannot be compared to the prior art. In this case, the Examiner finds that the “phrase ‘built-in’ in the appellant’s specification appears to be disclosed as synonymous with any vacuum pressure generated in or through the container” (Ans. 9). The Examiner also finds regarding the phrase ‘substantially maintained’ this phrase appears nowhere in the appellant’s specification and is thus not defined. From this, no time frame has been established for the maintenance of such built-in vacuum pressure that would exclude the suction force generated by squeezing the bulb 37 in the Boehringer device only once (id.). Appellant challenges the Examiner’s interpretation of the phrase “maintain a built-in vacuum pressure” in claim 1. Appellant contends that the Examiner “incorrectly equat[ed] the ‘built-in’ vacuum pressure as claimed to ‘any vacuum pressure generated in or through the container’” (Reply Br. 9). Appellant also contends that “the suction force of Boehringer is not ‘substantially maintained.’” (Id.) Appellant contends that “the words of a claim must be given their ‘plain meaning.’ The phrase ‘substantially maintained’ is well understood” (id. at 10). We find that Appellant has the better position here. The Specification is reasonably clear in showing that “built-in” vacuum refers to reduced Appeal 2011-010382 Application 10/906,199 7 pressure or “vacuum” in a closed container (FF 6-7) and does not reasonably encompass containers whose vacuum only exists due to the addition of a suction force. We also find that Appellant’s interpretation of “substantially maintained” is more consistent with the Specification, which teaches that “the container designed in this invention maintains a ‘negative’, or vacuum pressure. The material or structure of the containers is designed to maintain such a negative pressure” (Spec. 4 ¶ 12; FF 6). We agree with Appellant that “substantially maintain a built-in vacuum” is reasonably interpreted in light of the Specification to require that the container itself to maintain the vacuum, and does not encompass the use of a vacuum pump or other suction device which may momentarily create a vacuum but does not maintain that vacuum once the motive force for the pump or device is removed. Having interpreted the claims, we agree with Appellant that Boehringer does not teach a vacuum container which maintains a built-in vacuum pressure as required by claim 1. Instead, Boehringer teaches a bulb and spring which can generate a vacuum when compressed, but which do not have or maintain a “built-in vacuum” as required by claim 1. Conclusion of Law The evidence of record does not support the Examiner’s conclusion that Boehringer anticipates the apparatus required by claim 1. C-D. 35 U.S.C. § 103(a) Each of these rejections relies upon the underlying anticipation rejection over Boehringer. Having reversed the rejection of claim 1 over Boehringer, we necessarily reverse the obviousness rejections, which do not Appeal 2011-010382 Application 10/906,199 8 cure the failure to teach or suggest a vacuum container which maintains “a build-in vacuum pressure” as required by claim 1. New Grounds of Rejection Under the provisions of 37 C.F.R. § 41.50(b), we enter the following new grounds of rejection. Claims 1, 2, 4, 6, 14, and 29-31 are rejected under 35 U.S.C. § 102(b) as anticipated by Wolff.5 Claims 15 and 28 are rejected under 35 U.S.C. § 103(a) as obvious over Wolff and Birbara. We leave it to the Examiner to determine whether there is prior art combinable with Wolff to address claim 3. Findings of Fact 8. Figure 1a of Wolff is reproduced below: “FIG. 1a shows an embodiment of large capacity device system with flat disc filter” (Wolff 1 ¶ 0010). 5 Wolff et al., US 2002/0087131 A1, published Jul. 4, 2002. Appeal 2011-010382 Application 10/906,199 9 9. Wolff teaches “a urine collection device for users with urinary incontinence” (Wolff 1 ¶ 0002). 10. Wolff teaches that the “device uses a vacuum reservoir, maintained in a rigid storage container, to produce a strong suction at the moment the device is activated” (Wolff 1 ¶ 0008). 11. Wolff teaches that to “prepare the device for use the pump evacuates the container to about 0.5 to 0.7 bar absolute. When the desired vacuum is reached the pressure switch deactivates the pump and the vacuum is maintained within the container” (Wolff 2 ¶ 0026). 12. Figure 5a of Wolff is reproduced below: “FIG. 5a shows an example of a layered female interface” (Wolff 1 ¶ 0019). 13. Wolff teaches that: An embodiment of layered female interface 27 is shown in FIG. 5a . . . . The lower edge 28 is positioned towards the back of the person when worn and hence the upper edge 29 is towards the front. The rectangle is preferably only 5-9 cm wide, so that no bunching occurs in use, and 15-25 cm in length. The layered interface is curved Appeal 2011-010382 Application 10/906,199 10 in longitudinal cross-section to ensure a close fit to the body. There is a rounded rectangular hole 32 between 2-5 cm wide and 5-12 cm long, in the outer layer 33 of the interface. The hole is positioned towards the upper edge of the layered interface to correspond approximately with the urethral opening. (Wolff 3 ¶ 0045.) 14. Wolff teaches an interface tube from the interface to the container and valve. The interface is connected to the container by a long flexible tube. The valve acts on the tube close to the container. The valve is normally closed, and holds the stored vacuum in the container. The interface with the patient can either be in the form of a pad positioned in the patient's underwear or a portable urinal. (Wolff 2 ¶ 0023.) 15. Wolff teaches that an “electronic sensor detects the presence of urine and triggers the device to operate without any other intervention. This trigger sends a signal to the control electronics to open the valve” which will result in vacuum sucking urine from the tube into the container (Wolff 2 ¶¶ 0025, 0026). 16. Wolff teaches that the “large capacity devices . . . preferably have a 1.5-2.5 liter capacity rigid storage container 1. The lid to the container has a bag 2 attached to it which lines the inside of the container. The liner and lid are disposable to avoid contaminating the storage container with urine” (Wolff 2 ¶ 0027). Appeal 2011-010382 Application 10/906,199 11 17. Wolff teaches that the “pump remains active until the vacuum is restored so that the device is ready for the next occurrence” (Wolff 2 ¶ 0026). 18. Birbara teaches “a compact, portable processing system for collecting urine by forced air entrainment” (Birbara, col. 2, ll. 66-67). 19. Birbara teaches “contacting the body with the receptacle which provides the necessary suction to seal against the body” (Birbara, col. 3, ll. 11-12). 20. Birbara teaches that in “the case of the female user, the receptacle is configured to seal about the periphery of the vaginal opening . . . for seated or prone male users, it is generally desirable that the receptacle seat against the user’s skin” (Birbara, col. 3, ll. 42-50). 21. Birbara teaches that “the seal is accomplished by the slight vacuum produced by the fan and the entrainment air flow which is admitted through one or several openings or orifices in close proximity to the body” (Birbara, col. 3, ll. 50-54). 22. Birbara teaches that a “cylindrical or elliptical conical receptacle structure will also function to contain the urine effluent from male users” (Birbara, col. 3, ll. 54-56). 23. Birbara teaches that a “male or unisex receptacle 12 is shown in its isometric form . . . For unisex use, the circular rim defining the inlet region is easily deformed” (Birbara, col. 6, ll. 40-49). Appeal 2011-010382 Application 10/906,199 12 Principles of Law “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d at 1477. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Analysis Anticipation over Wolff Wolff teaches a vacuum container which provides and maintains a built-in vacuum pressure, consistent with our interpretation of the phrase “built-in vacuum pressure” as discussed above (FF 8-11). Wolff teaches a contact member to contact and enclose a surface area, such as the urethral opening (FF 12-13). Wolff teaches coupling the vacuum container to the surface area to apply a suction force to the surface area (FF 13-15). Wolff teaches that the vacuum container is also configured to retain the substance collected from a surface area (FF 16). Thus, Wolff discloses every limitation recited in claim 1. With regard to claim 2, Wolff teaches retention of urine, a liquid susbstance, when collected from the surface area (FF 15). With regard to claim 4, Wolff teaches that the “pump remains active until the vacuum is restored so that the device is ready for the next occurrence” (Wolff 2 ¶ 0026; FF 17). With regard to claim 6, Wolff teaches an interface in a funnel type shape (FF 8, element 27). Appeal 2011-010382 Application 10/906,199 13 With regard to claim 14, Wolff teaches the use of disposable liner and lids (FF 16). We further find that the term “disposable” represents an intended use, since any device is “disposable” if desired. With regard to claims 29-31, Wolff teaches that the vacuum is maintained within the container, thereby being isolated from ambient atmospheric pressure (FF 11) and that the apparatus comprises a valve to release the vacuum to the surface area which will inherently release the vacuum and equalize the pressures (FF 11). Obviousness over Wolff and Birbara Wolff teaches the limitations of an apparatus of claim 1 as discussed above. Wolff does not expressly teach a vacuum seal, and in particular, Wolff does not teach a ring shaped vacuum seal. Birbara teaches a urine collection device using a vacuum (FF 18). With regard to claim 15, Birbara teaches that this suction will seal the contact member of the device against the body, resulting in a vacuum seal (FF 19-21). With regard to claim 28, Birbara teaches that the contact member may be cylindrical or circular (FF 22-23) where a circular rim is reasonably interpreted as “ring-shaped” (FF 23). It would have been prima facie obvious to one of ordinary skill at the time the invention was made to seal the contact member with a vacuum seal since this will “function to contain the urine effluent from male users” (Birbara, col. 3, ll. 54-56; FF 22). Both Birbara and Wolff recognize the use of the vacuum will direct the urine flow and direct the flow into the desired container (FF 13, 15, 22). In addition, Birbara teaches that the use of a ring Appeal 2011-010382 Application 10/906,199 14 or circular shaped rim will permit unisex use of the device, which would substantially increase the population for whom the particular device is suitable (FF 23). Conclusion of Law The evidence of record supports the conclusion that Wolff anticipates claims 1, 2, 4, 6, 14, and 29-31. The evidence of record supports the conclusion that Wolff and Birbara render claims 15 and 28 obvious. SUMMARY In summary, we reverse the rejection of claims 1-4, 14, and 29-31 under 35 U.S.C. § 102(a) and (e) as anticipated by Boehringer. We reverse the rejection of claims 15 and 28 under 35 U.S.C. § 103(a) as obvious over Boehringer. We reverse the rejection of claim 6 under 35 U.S.C. § 103(a) as obvious over Boehringer and Birbara. We reject claims 1, 2, 4, 6, 14, and 29-31 under 35 U.S.C. § 102(b) as anticipated by Wolff. We reject claims 15 and 28 under 35 U.S.C. § 103(a) as obvious over Wolff and Birbara. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2011-010382 Application 10/906,199 15 Claims 1, 2, 4, 6, 14, 15, and 28-31 are subject to the new grounds of rejection as discussed above. Claim 3 is not subject to any grounds of rejection. 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . REVERSED, 37 C.F.R. § 41.50(b) cdc Notice of References Cited Application/Control No. 10/906,199 Applicant(s)/Patent Under Reexamination Feng Ma Examiner Melanie Hand Art Unit 3700 Page 1 of 1 U.S. PATENT DOCUMENTS * DOCUMENT NO. DATE NAME CLASS SUBCLASS DOCUMENT SOURCE ** APS OTHER A 2002/0087131 A1 Jul. 4, 2002 Wolff et al. B C D E F G H I J K L M FOREIGN PATENT DOCUMENTS * DOCUMENT NO. DATE COUNTRY NAME CLASS SUBCLASS DOCUMENT SOURCE ** APS OTHER N O P Q R S T NON-PATENT DOCUMENTS * DOCUMENT (Including Author, Title Date, Source, and Pertinent Pages) DOCUMENT SOURCE ** APS OTHER U V W X *A copy of this reference is not being furnished with this Office action. (See Manual of Patent Examining Procedure, Section 707.05(a).) **APS encompasses any electronic search i.e. text, image, and Commercial Databases. U.S. Patent and Trademark Office PTO-892 (Rev. 03-98) Notice of References Cited Part of Paper No. 16