Ex Parte Renz et al

Board of Patent Appeals and Interferences

Jan 22, 2009

10453261 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHARLES J. RENZ, DAVID ROBSON, MARCO WO,
CHRISTOPHER KAMPF, AIDAN J. PETRIE, and MICHAEL PEREIRA
__________

Appeal 2008-5536
Application 10/453,261
Technology Center 3700
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Decided: January 22, 2009
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Before DONALD E. ADAMS, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 62-66. We have jurisdiction under 35
U.S.C. § 6(b).

Appeal 2008-5536
Application 10/453,261

STATEMENT OF THE CASE
The claims are directed to a breast pump. Claim 62 is representative
of the claims on appeal, and reads as follows:
62. A breast pump for expressing breast milk from a breast, the pump
comprising:
a pressure source for generating a positive pressure and a negative
pressure; and
a controller operably connected to the pressure source,
wherein said positive and negative pressures are applied to the breast
in a reciprocating manner through a single conduit,
wherein said controller generates a plurality of wave signals received
by said pressure source,
wherein said pressure source adjusts said positive and negative
pressures and adjusts cycle time between application of said positive and
negative pressures to said breast in response to said plurality of wave
signals,
wherein at least one of said plurality of wave signals has a different
shape than another of said plurality of wave signals, and
wherein said different shape is distinguishable by more than a
different peak pressure or cycle time as compared to said another of said
plurality of wave signals.

The Examiner relies on the following reference:
Greter US 6,547,756 B1 Apr. 15, 2003
We affirm.
ISSUE

The Examiner finds that claims 62-66 are anticipated by Greter.
Appellants contend that Greter does not disclose or suggest a pressure
source applying positive pressure to a breast, let alone in a reciprocating
manner through a single conduit, as recited in claim 62.
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Thus, the issue on Appeal is: Does Greter teach an apparatus that has
a pressure source that is capable of generating a positive and negative
pressure that is applied to the breast through a single conduit?

FINDINGS OF FACT
FF1 “[T]he present invention relates to a breast pump system that applies
both a positive pressure and a negative pressure to a breast to express breast
milk.” (Spec. 1.)
FF2 The objects of the invention “are provided by a breast pump system
having a pressure source for generating a positive pressure and a negative
pressure, and a breast cup in fluid communication with the pressure source,
wherein the breast cup applies positive pressure and negative pressure to the
breast.” (Id. at 2.)
FF3 The Specification specifically teaches that the “pressure source can be
a piston movably disposed in a cylinder,” wherein a motor having a rack
having first teeth and a gear having second teeth is used “to reciprocally
move the piston in the cylinder.” (Id. at 4.) The piston and cylinder may
then be used to create both a positive and negative pressure (id. at 12).
FF4 A controller can then be operably connected to the motor, “wherein
the motor is reversible and the controller reverses the motor based upon a
positive or negative pressure limit.” (Id. at 5.)
FF5 The Examiner rejects claims 62-66 under 35 U.S.C. § 102(e) as being
anticipated by Greter (Ans. 3). As Appellants do not argue the claims
separately, claims 63-66 stand or fall with claim 62. 37 C.F.R.
§ 41.37(c)(1)(vii).
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Application 10/453,261

FF6 The Examiner finds that Greter
teaches a breast pump for expressing breast milk from a breast,
the pump comprising a pressure source for generating positive
and negative pressure (30, claims 6, 14, and 30) which is
applied to the breast through a single conduit (31, only conduit
disclosed); a controller (claims 6,14, and 30), wherein said
controller adjusts the positive and negative pressure in a
plurality of wave signals (Figs 11-14, claims 7,15, and 31).

(Ans. 3.)
FF7 Greter is drawn to a “breastpump which can be programmed to
generate, among other things, a plurality of differing milk expression
(extraction) sequences, or curves.” (Greter col. 2, ll. 9-14.)
FF8 The breastpump comprises a breastshield, wherein a source of vacuum
is in communication with the breastshield (id. at ll. 12-15). Greter
specifically teaches that “the milk expression sequences may also include a
positive pressure aspect.” (Id. at ll. 32-35.) Greter also specifically claims a
breastpump comprising a source of positive pressure in communication with
the breastshield (see, e.g., claims 6, 7, 19, 20, 30, and 31).
FF9 In one embodiment, the device has an expansible chamber device
wherein the vacuum is generated, wherein the expansible chamber device
may be a pair of diaphragm pumps (id. at ll. 62-67).
FF10 Figure 5 of Greter is reproduced below.
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Figure 5 of Greter shows a top view of a breastpump wherein the cover is
removed revealing the diaphragm pumps (id. at col. 4, ll. 32-33).
FF11 Reference numeral 32 shows a tube that is connected to communicate
the vacuum produced by a pair of diaphragm pumps 30 to a breastshield, 17
(not shown in Figure 5) (id. at col. 7, ll. 10-15).
FF12 Greter teaches that there are “any number of drives that may be used
for diaphragm pumps such as those used in the instant embodiment,” and
that “the type of pump (diaphragm, piston, etc.) is not necessarily significant
to certain aspects of the present invention.” (Id. at col. 5, l. 67 to col. 6, ll. 1-
5 (emphasis added).)

PRINCIPLES OF LAW
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).
“[A]nticipation does not require actual performance of suggestions in
a disclosure. Rather, anticipation only requires that those suggestions be
enabling to one of skill in the art.” Bristol-Myers Squibb Co. v. Ben Venue
Labs., Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001) (citing In re Donohue, 766
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F.2d 531, 533 (Fed. Cir. 1985) (“’It is not, however, necessary that an
invention disclosed in a publication shall have actually been made in order
to satisfy the enablement requirement.’”)). In addition, a prior art reference
is presumed to be enabling, and the burden is on the party challenging
enablement to prove it – in this context, by a preponderance of the evidence.
See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed.
Cir. 2003); see also In re Sasse, 629 F.2d 675, 681 (CCPA 1980) (noting
that the burden is on the applicant to rebut the presumption of operability of
a prior art patent by a preponderance of the evidence). Note that arguments
of counsel cannot take the place of evidence in the record. In re
Scarbrough, 500 F.2d 560, 566 (CCPA 1974).

ANALYSIS
Appellants asserts that “Greter does not disclose or suggest a pressure
source applying positive and negative pressure to a breast, let alone in a
reciprocating manner through a single conduit, as recited in claim 62.”
(App. Br. 4.) Appellants argue further that even if Greter teaches the
application of positive pressure, “there is simply no teaching or suggestion
that such a positive pressure was applied to the breast in a reciprocating
manner through a single conduit as recited by independent claim 62.”
(Supp. Reply Br.1 4.)
Appellants argue that “Greter gives no hint or suggestion at how . . . a
positive pressure aspect is applied to the breast.” (Id.) Appellants argue that

1 All references to the Supplemental Reply Brief (Supp. Reply Br.) are
Reply Brief dated February 27, 2008.
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claim 1 of Greter recites “‘a source of pressure in communication with said
breast shield,’” while claim 6 further claims “‘a source of positive pressure
in communication with said breast shield.’” (Id. at 5.) Thus, Appellants
assert, “Greter claims two different pressure sources both of which are ‘in
communication with said breast shield.’” (Id.)
Appellants’ arguments are not found to be convincing. Claim 62 is
drawn to an apparatus, comprising a pressure source for generating a
positive and negative pressure; a controller; and wherein the pressure source
applies the negative and positive pressure to the breast in a reciprocating
manner through a single conduit.2 Greter teaches an apparatus comprising a
pressure source (FF8), a controller (FF6, 7), and a conduit for applying
pressure to the breast (FF11). Thus, the issue is, whether Greter teaches an
apparatus that has a pressure source that is capable of generating a positive
and negative pressure that is applied to the breast through a single conduit.
The Specification teaches that pressure source is a piston disposed in a
cylinder (FF3), i.e., a piston pump. Greter also teaches that the pressure
source may be a piston pump (FF12). Thus Greter teaches a breast pump

2 Appellants do not dispute that the controller of Greter is capable of meeting
the additional claim limitations of claim 62 “wherein said controller
generates a plurality of wave signals received by said pressure source,
wherein said pressure source adjusts said positive and negative pressures and
adjusts cycle time between application of said positive and negative
pressures to said breast in response to said plurality of wave signals, wherein
at least one of said plurality of wave signals has a different shape than
another of said plurality of wave signals, and wherein said different shape is
distinguishable by more than a different peak pressure or cycle time as
compared to said another of said plurality of wave signals.” We thus do not
address those limitations further.
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that may serve as a source of both negative and positive pressure (FF8),
wherein a piston pump may be used as the pressure source (FF12). If the
piston pump were used as the negative pressure source, the conduit 32 of
Greter would connect the piston pump to the breast (see, e.g., FF11).
Therefore, Greter teaches a breastpump that has a pressure source, which
may be a piston pump, that is connected to the breast through a conduit,
wherein, as taught by the instant Specification, the piston pump is capable of
generating both a negative and positive pressure (FF3). Thus, although not
specifically exemplifying it, Greter teaches an apparatus that meets all of the
limitations of the breastpump of claim 62.

CONCLUSIONS OF LAW
We find that Greter teach an apparatus that has a pressure source that
is capable of generating a positive and negative pressure that is applied to
the breast through a single conduit, and we thus affirm the rejection of
claims 62-66 under 35 U.S.C. § 102(e) as being anticipated by Greter.

TIME LIMITS
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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cdc

CHARLES N.J. RUGGIERO, ESQ.
OHLANDT, GREELEY, RUGGIERO & PERLE, L.L.P.
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