Ex Parte Bloch

Patent Trial and Appeal Board

Aug 31, 2017

13200813 (P.T.A.B. Aug. 31, 2017)

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.
13/200,813 10/03/2011 Stuart A. Bloch 6698 2919
7590 08/31/2017
Charles Brodsky
2 Bucks Lane
Marlboro, NJ 07746
EXAMINER
WINTER, GREGORY J
ART UNIT PAPER NUMBER
3764
MAIL DATE DELIVERY MODE
08/31/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STUART A. BLOCH
____________

Appeal 2016-000690
Application 13/200,8131
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 7–10 and 13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 According to the Appeal Brief (page 1), the Appellant is the real party in
interest.
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ILLUSTRATIVE CLAIM
7. A female exerciser device for vaginal insertion
consisting of:
a series of spaced spheres of decreasing diameters sized
for insertion into the vaginal cavity to strengthen the
pubococcygeus muscles according to a plan of vaginal
rejuvenation;
with the exerciser device being fabricated of a hardened,
non-porous, non-toxic, and non-corrosive steel or alloy
material;
with the spaced spheres each having a heat retention
characteristic to constrict the pubococcygeus muscles for seven
to eight minutes after insertion of the device at room
temperature of substantially 70º Fahrenheit into the vaginal
cavity;
and with the exercise device being adapted for use in said
plan of vaginal rejuvenation defined by a user’s insertion of a
progressively smaller individual diameter sphere at said room
temperature into the vaginal cavity, internally clamping down
thereupon, and then relaxing prior to the withdrawal of the
sphere from the vaginal cavity, performed over a period of
timed weekly intervals for each individual diameter sphere,
progressing from the largest diameter sphere to the smallest
diameter sphere.
CITED REFERENCES
The Examiner relies upon the following references:
Bloch US D465,852 S Nov. 19, 2002
Wild US 6,723,031 B1 Apr. 20, 2004
Marcotte US 7,001,317 B2 Feb. 21, 2006
Inman et al. US 2006/0199994 A1 Sept. 7, 2006
(hereinafter “Inman”)
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REJECTIONS
I. Claims 7 and 13 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Bloch, Marcotte, and Inman.
II. Claims 8–10 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Bloch, Marcotte, Inman, and Wild.
FINDINGS OF FACT
We rely upon and adopt the Examiner’s findings stated in the Final
Office Action at pages 2–7 and the Answer at pages 2–10, except as stated
otherwise in the Analysis below. Additional findings of fact may appear in
the Analysis below.
ANALYSIS
The Appellant disputes the Examiner’s reliance on Marcotte, in regard
to the materials employed in the claimed subject matter. The Appellant
contends that, although Marcotte teaches the use of “surgical steel,”
independent claim 7 does not call for “surgical steel” and, furthermore,
Marcotte does not provide the recited “hardened, non-porous material.”
Appeal Br. 14.
Yet, as the Answer explains, the Appellant attacks Marcotte
individually, but the rejection relies upon a combination of Bloch with
Marcotte and Inman to teach the claimed material. Answer 6–7; see also
Final Action 3–5. In particular, Inman discloses “Type 303 surgical
stainless steel” — the precise material recited, in dependent claim 9, as
having claim 7’s “hardened, non-porous, non-toxic, and non-corrosive steel
or alloy” characteristics (as well as the “non-magnetizable, non-rusting,
durable and washable” characteristics recited in claim 8, from which claim 9
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depends directly). See Answer 6–7; see also Final Action 4–5 (citing Inman
¶¶ 6, 40, 50, Fig. 1 (element 14)).
There is also no merit to the Appellant’s argument that Inman fails to
teach claim 7’s “heat retention characteristic.” See Appeal Br. 14–15.
Because claim 9 requires “Type 303 surgical stainless steel,” the device
made with this material inherently possesses the “heat retention
characteristic” of claim 7 (from which claim 9 ultimately depends) — even
if Inman does not identify this property. See Answer 7. Indeed, “mere
recitation of a newly discovered function or property, inherently possessed
by things in the prior art, does not distinguish a claim drawn to those things
from the prior art.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).
Although the Appellant contends that Inman’s disclosed surface
treatment of the material might render it unfeasible for insertion into the
vaginal cavity (see id. at 14 (citing Inman ¶ 56)), the Examiner (see Answer
7 (citing Inman ¶¶ 40, 58)) points out that Inman expressly teaches such uses
of its device, for various surgical procedures — notwithstanding Inman’s
surface treatment. In any event, Inman’s surface treatment is merely an
optional feature. See Inman ¶ 56; see also Answer 7 (“[T]he fact that
[Inman’s] rod may be surface treated does not preclude the insertion of the
rod into a body cavity.”)
The Appellant also contends that Marcotte’s device is employed to
contract the sphincter muscle, not “to constrict the pubococcygeus muscles,”
as claimed. Reply Br. 2 (citing Marcotte, col. 2, ll. 22–25, 38–41); see also
Appeal Br. 14. This contention appears to relate to claim 7’s recitation of
“spaced spheres each having a heat retention characteristic to constrict the
pubococcygeus muscles for seven to eight minutes after insertion of the
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device at room temperature of substantially 70º Fahrenheit into the vaginal
cavity.” Yet, as discussed above, the rejection relies upon a combination of
Bloch, Marcotte, and Inman to meet these features — not Marcotte alone.
Further, the Appellant’s contention that Marcotte concerns contracting the
sphincter muscle — rather than “constrict[ing] the pubococcygeus muscles”
— has two deficiencies. First, “constrict[ing] the pubococcygeus muscles”
is but an intended use of the claimed device (claim 7 being an apparatus
claim, not a method claim), which does not bear patentable weight.
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Second, Marcotte’s disclosure of contracting the sphincter
muscle does not diminish the reference’s other teaching of insertion into the
vaginal cavity for exercising the pubococcygeus or Kegel muscle. See
Marcotte, col. 2, ll. 22–24.
The Appellant additionally contends that Inman does not teach
insertion of the disclosed device into a vaginal cavity, or doing so at
substantially 70º room temperature (so as to constrict the pubococcygeus
muscles), or that — if so inserted — Inman’s rod would exhibit the claimed
“heat retention characteristic.” Reply Br. 1–2. The Appellant argues that
“the entire credibility” of any contrary position “fails once it is recognized
that the rod 14 is 6–12 inches long and 4.5–5.5 inches wide.” Id. at 2 (citing
Inman ¶ 45). The Appellant continues, asking rhetorically:
How is such a rod to be inserted into a vaginal cavity? Will it
fit? Will it be able to be surgically manipulable if of such size?
Can the vaginal cavity be as deep as 6 inches, let alone 12
inches? It is respectfully submitted that this all makes no sense.
Id. Yet, as an initial matter, the Appellant misreads Inman, which states that
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its rod has a radius of curvature (not a width, as the Appellant contends) of
4.5–5.5 inches. See Inman ¶ 45. Further, the rejection does not rest upon
any finding that the full length of Inman’s rod must fit within a vaginal
cavity. Moreover, the Appellant’s assertion that Inman does not teach
vaginal insertion lacks evidentiary support. To the contrary, Inman discloses
a surgical device for the treatment of various pelvic floor, urological, and
gynecological issues — including uterine enteroceles and vaginal prolapse.
Id. ¶ 40; see also Final Action 4–5 (citing Inman, ¶¶ 6, 40, 50). As to the
recitations of employing the claimed “exerciser device” at a “room
temperature of substantially 70º Fahrenheit,” so as to “constrict the
pubococcygeus muscles” — these, as discussed above, are matters of
intended use that lack patentable weight. The recited “heat retention
characteristic,” as discussed previously herein, is met by the inherent
properties of the material disclosed in Inman, employed in combination with
Bloch and Marcotte — not Inman alone.
The Appellant’s various arguments relating to alleged deficiencies of
the Wild reference (see Appeal Br. 15) are inapposite. The rejection applies
Wild to dependent claims 8–10 only and, even so, only as to specific
dimensions of the disclosed exercise device (see Answer 8; see also Final
Office Action 5–6), rather than any of claim 7’s material properties or uses,
as the Appellant suggests (see Appeal Br. 15).
The Appellant asks whether any of the developers of the cited prior art
references (including Wild, which is relied upon for dependent claims 8–10
only) would constitute such a hypothetical person and whether those
developers would be “concerned” with various features of claim 7. Appeal
Br. 15–19. As the Examiner explains, these arguments are not
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commensurate with the rejection. Answer 8–10. Moreover, the particular
backgrounds, skills, and views of the individuals who developed the cited
references are also inapplicable to the obviousness analysis. Also
inapplicable is the Appellant’s inquiry as to what in Bloch, Marcotte, Inman,
and/or Wild might “have shortened the time between the issue date of
[Bloch] and the 2011 filing date of the instant Application to develop the
improvement benefits of the invention claimed here.” Appeal Br. 19.
The Appellant also suggests that the cited prior art references might
not draw from analogous arts, arguing that a “person of ordinary skill in the
art having common sense at the time of Appellant’s invention would not
have reasonably looked to” Inman or Marcotte “for a construction of the
appealed claims” See Appeal Br. 19. Yet, the Appellant does not attempt to
establish that either reference is not from the same field of endeavor or is not
reasonably pertinent to the problems that the Specification confronts. See In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). To the contrary, the
Examiner points out that both Inman and Marcotte teach devices for
insertion into the vaginal cavity, notwithstanding that Inman relates to a
surgical device and Marcotte’s Kegel muscle exercise device also relates to
contracting a sphincter muscle. Answer 9–10; Final Action 4–5.
To the extent that the Appellant alleges that the rejection lacks a
reason for combining the teachings of the cited prior art, allegedly relying
instead upon impermissible hindsight (see Appeal Br. 16, 19), such an
argument is unpersuasive, because a person of ordinary skill in the art
seeking to fabricate the Bloch device would rely upon the teachings of
Marcotte and Inman (with respect to materials that would be suitable for
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vaginal insertion) and Wild (with respect to suitable dimensions thereof).
See Answer 9–10; Final Action 4–5.
For the foregoing reasons, the Appellant’s arguments are not
persuasive of any alleged error in the rejection of independent claim 7.
Because the Appellant argues none of the other appealed claims separately,
we sustain the rejection of claims 7–10 and 13 under pre-AIA 35 U.S.C.
§ 103(a).

DECISION
We AFFIRM the Examiner’s decision rejecting claims 7–10 and 13
under pre-AIA 35 U.S.C. § 103(a).
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