Florin Baetica et al.

Patent Trials and Appeals Board

Jul 26, 2021

2020004433 (P.T.A.B. Jul. 26, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/129,761 04/23/2014 Florin Baetica 074537.000005 8071
146167 7590 07/26/2021
Houston General
Vorys, Sater, Seymour and Pease LLP
909 Fannin St.
27th Floor
HOUSTON, TX 77010
EXAMINER
GILBERT, SAMUEL G
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
07/26/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
VDocketHou@vorys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FLORIN BAETICA, GRANT MARK BECHTHOLD, and
BRUCE DONALD MURISON
____________

Appeal 2020-004433
Application 14/129,761
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
NATHAN A. ENGELS, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 4, 5, 7–29, and 62–65, which constitute all the
claims pending in this application.2 We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies 10546933 Canada Inc. as the real
party in interest. Appeal Br. 3.
2 Claims 2, 3, 6, and 30 are withdrawn, and claims 31–61 are cancelled.
Appeal Br. 18–21 (Claims App.).
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THE CLAIMED SUBJECT MATTER
Claims 1, 62, and 65 are independent. Claim 1 is reproduced below.
1. A sexual stimulation device comprising:
(a) an inside arm configured to be placed within a vagina
of a female;
(b) an outside arm configured to be placed against a
clitoral area of said female; and
(c) a middle portion connecting said inside arm and said
outside arm;
wherein the device is dimensioned to be worn with the
inside arm inserted into the vagina of said female during
intercourse, and wherein said inside arm has a pair of opposed
wing portions spaced apart from each side of a center portion of
the inside arm.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Name Reference Date
Sekulich US 3,996,930 Dec. 14, 1976
Murison US 7,931,605 B2 Apr. 26, 2011

THE REJECTIONS
I. Claims 1, 4, 5, 7–9, 11, 12, 14–16, 19, 20, 28, 62, 63, and 65
stand rejected under 35 U.S.C. § 102(b) as anticipated by
Sekulich. Final Act. 2–6.
II. Claims 10, 13, 17, 18, 21–27, 29, and 64 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Sekulich and Murison.
Id. at 6–8.

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OPINION
Claims 1, 4, 5, 7–9, 11, 12, 14–16, 19, 20, 28, 62, and 63
Appellant argues claims 1, 4, 5, 7–9, 11, 12, 14–16, 19, 20, 28, 62,
and 63 as a group. Appeal Br. 13–15. We select claim 1 as the
representative claim, and claims 4, 5, 7–9, 11, 12, 14–16, 19, 20, 28, 62, and
63 stand or fall therewith. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Sekulich discloses all of the limitations of
independent claim 1, including “an inside arm [11]” and that “the device is
dimensioned to be worn with the inside arm inserted into the vagina of [a]
female during intercourse,” as claimed. Final Act. 3. Appellant argues that
the Examiner does not “refer to any section of Sekulich description or
figures” with respect to the foregoing limitation, with the Examiner instead
simply stating that the arm is capable of the foregoing limitation. Appeal
Br. 13–14. Appellant also argues that the Examiner “does not find any
literal support in the Sekulich reference” that “the device is suitable for use
during intercourse.” Id. at 15.
Although features of an apparatus may be recited either structurally or
functionally, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function. In re Schreiber, 128 F.3d
1473, 1477-78 (Fed. Cir. 1997); see also Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover
what a device is, not what a device does”). Therefore, an apparatus of the
prior art meets the recited functionally-defined limitation (here, able “to be
worn with the inside arm inserted into the vagina of [a] female during
intercourse”) if it is capable of the recited function. The prior art reference
need not envision the device actually being used to perform the claimed
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function. See Schreiber, 128 F.3d at 1477 (“Although Schreiber is correct
that [the prior art] Harz does not address the use of the disclosed structure to
dispense popcorn, the absence of a disclosure relating to function does not
defeat the Board's finding of anticipation.”). “[C]hoosing to define an
element functionally, i.e., by what it does, carries with it a risk.” Id. at 1478.
This risk is that Appellant may bear the burden to prove that the prior art
does not possess the functional characteristic. In other words, where the
Patent Office has reason to believe that a functional limitation is an inherent
characteristic of the prior art, it can require an applicant to show that the
prior art does not possess the claimed functional feature. Id. (quoting In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
The Examiner has pointed out that the dimensions necessary to
achieve the claimed function “are not further limited by the [S]pecification
because no specific dimensions have been set forth in the [S]pecification.”
Final Act. 9. Considering the absence of specific dimensional parameters,
the Examiner is on solid ground in finding that Sekulich’s arm 11 is capable
of being able to be worn inserted into the vagina of a female during
intercourse, and thus, that the recited functional limitation would be present
in Sekulich. The burden shifted to Appellant to show that Sekulich’s arm 11
is incapable of being worn inserted into the vagina of a female during
intercourse as called for in claim 1. However, as noted above, the lack of
explicit description of the claimed function in the reference as argued by
Appellant (Appeal Br. 13–15) does not constitute evidence or persuasive
argument to support that Sekulich’s prior art structure is incapable of
performing the functionally defined limitation of the claimed apparatus.
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We have also considered Appellant’s argument that Appellant “has
submitted ample evidence that the Sekulich device is not ‘dimensioned to be
worn with the inside arm inserted into the vagina of [a] female during
intercourse’ because, regardless of the size of the device, it is shown a[nd]
described clearly as a device meant to bisect the opening to the vagina.”
Appeal Br. 14 (citing Declaration of Dr. Debra Herbenick ¶¶ 34–37); see
also id. at 15 (stating that “Dr. Herbenick’s expert opinion” is “in conflict
with” the Examiner’s determination “that the device is suitable for use
during intercourse”). The Examiner responds on pages 10–11 of the Answer
with reasoning to support a determination that, “[e]ven if the device of
Sekulich must be maintained in the bisecting position,” the Sekulich device
is capable of performing the functionally defined limitation as set forth in
the claims. Ans. 10. Appellant does not respond with sufficient particularity
to the reasoning articulated by the Examiner in the Answer to persuade us
that Sekulich’s arm 11 is incapable of the claimed function.
Appellant also argues that “Sekulich clearly teaches away from use of
its device during intercourse as it is specifically described as providing pre-
intercourse stimulation.” Appeal Br. 15. Teaching away is irrelevant to an
anticipation analysis. Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150
F.3d 1354, 1361 (Fed. Cir. 1998); see also Seachange Int’l, Inc. v. C-Cor,
Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner’s determination that Sekulich discloses all of the limitations of
independent claim 1. Accordingly, we sustain the rejection of claim 1, and
claims 4, 5, 7–9, 11, 12, 14–16, 19, 20, 28, 62, and 63 falling therewith,
under 35 U.S.C. § 102(b) as anticipated by Sekulich.
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Claim 65
Independent claim 65 is similar to independent claim 1, but includes
the additional limitation that the “wing portions [of the inside arm] have a
greater upper camber than lower camber.” Appeal Br. 22 (Claims App.).
The Examiner finds that Sekulich’s wing portions 17 and 19 on arm 11
“extend in an upper direction[,] but not in a lower direction[,] making the
upper camber greater than the lower camber.” Final Act. 6.
The Specification states that “inside arm 340 comprises wing portions
310A and B that generally form a rounded or elliptical wing structure having
a greater upper camber (i.e., toward outside arm 320) than lower camber.”
Spec. ¶ 25; Figs. 13–15. Appellant argues that “[t]he reference to the greater
upper camber ‘toward outside arm 320’ refers to the fact that the surface of
the inside arm 340 that faces outside arm 320 has a greater tilt or inclination
(camber) than the surface of the inside arm 340 that faces away from outside
arm 320 which is flatter – has less camber.” Appeal Br. 16.
The Examiner responds that Appellant’s “arguments are directed to
the surface of inside arm -340- and not the wings which is recited in the
claims as having greater upper than lower camber.” Ans. 12–13. The
Examiner further responds that “tilt or inclination is generally measured with
respect to a plane and neither the specification nor the claims set forth any
plane with respect to which the camber of the wings may be measured.” Id.
at 13. The Examiner continues that “[t]he Office considers the explanation
of the wings of Sekulich teaches the broadly recited amounts of ‘greater
upper camber than lower camber’ because the tilt with respect to the vertical
plane of the wings of Sekulich are considered positive and negative resulting
in a higher and lower camber.” Id.
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Appellant does not respond with sufficient particularity to the
Examiner’s position that, (i) the claim more generally refers to the camber of
the “wing portions,” rather than the camber of any particular “surface” of the
wing portions in any particular orientation and (ii) given a plane extending
approximately along the length of arm 11, wing portions 17, 19 may be
considered to comprise side walls that extend in a first direction from such a
plane toward the Examiner-identified outer arm 13 and also arm 11 may be
considered to curve/tilt toward the Examiner-identified outer arm 13 relative
to such a plane, such that wing portions 17, 19 may be considered to have a
greater upper camber than lower camber.
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner’s determination that Sekulich discloses all of the limitations of
independent claim 65. Accordingly, we sustain the rejection of claim 65
under 35 U.S.C. § 102(b) as anticipated by Sekulich.

Rejection II
Appellant relies on the same arguments and reasoning we found
unpersuasive in connection with the independent claims as the basis for
seeking reversal of the rejection of dependent claims 10, 13, 17, 18, 21–27,
29, and 64. Appeal Br. 17. Accordingly, for the same reasons discussed
above in connection with the independent claims, we also sustain the
rejection of claims 10, 13, 17, 18, 21–27, 29, and 64 under 35 U.S.C.
§ 103(a) as unpatentable over Sekulich and Murison.

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 5, 7–9,
11, 12, 14–16,
19, 20, 28, 62,
63, 65
102(b) Sekulich 1, 4, 5, 7–9, 11,
12, 14–16, 19,
20, 28, 62, 63,
65

10, 13, 17, 18,
21–27, 29, 64
103(a) Sekulich, Murison 10, 13, 17, 18,
21–27, 29, 64

Overall
Outcome
1, 4, 5, 7–29,
62–65

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED