Ex Parte LarssonDownload PDFPatent Trial and Appeal BoardSep 17, 201210918280 (P.T.A.B. Sep. 17, 2012) Copy Citation 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. 10/918,280 08/13/2004 Michael Larsson 07-2064-A 3906 20306 7590 09/17/2012 MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP 300 S. WACKER DRIVE 32ND FLOOR CHICAGO, IL 60606 EXAMINER FLICK, JASON E ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 09/17/2012 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 MICHAEL LARSSON __________ Appeal 2011-010902 Application 10/918,280 Technology Center 3700 __________ Before LORA M. GREEN, FRANCISCO C. PRATS, and STEPHEN WALSH, 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 rejection of claims 39-45. 1 We have jurisdiction under 35 U.S.C. § 6(b). 1 Claims 1-38 and 46-51 are also pending, but stand withdrawn from consideration (App. Br. 1). Appeal 2011-010902 Application 10/918,280 2 STATEMENT OF THE CASE Claim 39 is the only independent claim on appeal, and reads as follows: 39. A device for detecting one or more parameters associated with breast tissue, including skin, during breastmilk expression in a human female, comprising: a breast shield having an interior part within which a portion of the breast is received including the nipple; and a sensor associated with said breast shield, said sensor adapted to detect a parameter associated with breast tissue, including skin, during breastmilk expression. The following grounds of rejection are before us for review: I. Claims 39-42 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Rosenfeld. 2 II. Claims 43-45 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Rosenfeld and Hung. 3 We affirm-in-part. ANALYSIS Rejection I The Examiner rejects claims 39-42 as being anticipated by Rosenfeld (Ans. 4). The Examiner finds that Rosenfeld teaches all of the elements of claims 39-42 (id.). As we agree with the Examiner‟s findings, we adopt them as our own. 2 Rosenfeld, US 5,827,191, issued Oct. 27, 1998. 3 Hung et al., US 6,314,315 B1, issued Nov. 6, 2001. Appeal 2011-010902 Application 10/918,280 3 Appellant argues that Rosenfeld “fails to teach both a „breast shield‟ and a „sensor adapted to detect a parameter associated with breast tissue, including skin, during breastmilk expression‟” (App. Br. 3). Appellant asserts that breast shield is defined at paragraph 24 of the Specification, as well as shown in Figures 1-2, and “as is known in the art, is structurally configured for use in conjunction with a breast pump and collecting container, not for use with an infant” (id.). Appellant argues, in contrast, Rosenfeld is drawn to a “flexible elastic nipple cover designed like a nipple with holes above the real nipple, which is placed on the woman‟s breast above and around the nipple” (id.). Appellant asserts that “Rosenfeld‟s elastic nipple cover with holes, for use with an infant, is structurally very different than Appellant‟s breast shield for use with a breast pump” (id.). Appellant also argues that the “claimed sensor may detect, for example, changes in conductance, acoustic properties, optical properties, and/or thermal properties in the human breast” (id. at 4). According to Appellant, Rosenfeld‟s sensor that measures the volume of milk externally is thus not “a „sensor adapted to detect a parameter associated with breast tissue, including skin, during breastmilk expression,‟ as recited in amended Claim 39” (id.). Appellant asserts that the “volume flow of breast milk that has already been expressed from, and not residing within, a breast is not a parameter associated with the breast tissue itself; expressed milk is indisputably (to use the Examiner‟s words) separate and apart from a breast” (id.). Appeal 2011-010902 Application 10/918,280 4 We have carefully considered Appellant‟s arguments, but do not find them convincing. Our mandate is to give claims their broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. In re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). “[W]hile it is true that claims are to be interpreted in light of the specification and with a view to ascertaining the invention, it does not follow that limitations from the specification may be read into the claims.” Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988). “[L]imitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). See also Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1342 (Fed. Cir. 2010) (“„it is improper to read limitations from a preferred embodiment described in the specification – even if it is the only embodiment – into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.‟”). We have reviewed Appellant‟s Specification, but it does not define a breast shield as requiring use with a breast pump. Paragraph 24 of the Specification (Spec. 6) only describes what is shown in Figures 1 and 2, but does not provide a definition of breast shield. In addition, the only structure required by the breast shield of claim 39 is that it have “an interior part within which a portion of the breast is received including the nipple,” which structure, as found by the Examiner, is taught by the elastic cover of Rosenfeld. Appeal 2011-010902 Application 10/918,280 5 The Specification also does not define a “sensor adapted to detect a parameter associated with breast tissue, including skin, during breastmilk expression,” but only provides examples of what is encompassed by such a sensor. For example, the Specification teaches that the “sensors used can be any type of sensor suitable for detecting changes in the mother‟s breast, in particular, for example, electrodes, optical sensors, acoustic sensors and thermal sensors” (Spec. 2, ¶7). Thus, the Specification does not exclude measuring the volume of milk expressed, as the volume of milk expressed by the breast is a parameter associated with breast tissue. We thus affirm the anticipation rejection as to claim 39. As Appellant does not argue claim 40 separately, it stands or falls with claim 39. 37 C.F.R. § 41.37(c)(1)(vii). As to claims 41 and 42, Appellant‟s argument is merely a recitation of the claim limitations (App. Br. 5), and thus claims 41 and 42 stand or fall with claim 39. 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). Rejection II The Examiner rejects claims 43-45 as being rendered obvious by the combination of Rosenfeld and Hung (Ans. 5). The Examiner relies on Rosenfeld as set forth for the anticipation rejection (id.). The Examiner notes that “Rosenfeld does not specifically disclose the sensors include an electrode extending from said contact through the breast shield” (id.). Appeal 2011-010902 Application 10/918,280 6 The Examiner relies on Hung for teaching “a breast shield (figure 2, item 50) comprising a plurality of sensors being an electrode (figure 2, item 52) extending from said contact through the breast shield and terminating in a connection for attachment to a wire (column 6, lines 29-56)” (id.). The Examiner concludes that it would have been obvious “to modify the structure taught by Rosenfeld with use of electrodes, as taught by Hung, in order to allow for increased functionality of the device, thereby enhancing diagnostic and therapeutic capabilities” (id.). Appellant argues that there is no reason to combine Hung with Rosenfeld (App. Br. 5). Specifically, Appellant asserts that “Hung is drawn to the identification of ductal orifices on a mammalian breast nipple via measurement of characteristic electrical signals on a nipple surface” in order “to deliver a therapeutic agent to the duct and/or retrieve cellular or other materials” (id. at 6). As such the electrode patch of Hung is employed on the surface of the nipple, which would block the flow of milk in the shield of Rosenfeld (id. at 7). We agree with Appellant that the ordinary artisan would not have combined Hung with Rosenfeld to arrive at the device of claims 43-45. In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), while the Supreme Court emphasized “an expansive and flexible approach” to the obviousness question, it also reaffirmed that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (emphasis added). Appeal 2011-010902 Application 10/918,280 7 The device of Rosenfeld is an elastic cover that is designed like a nipple with holes above the woman‟s nipple for the passage of milk from the woman‟s nipple to a baby‟s mouth (Rosenfeld, col. 2, ll. 39-45). The device of Hung is used to identify individual ductal orifices on a nipple of a mammalian breast, wherein at least one test electrode is engaged with a test location on the surface of the nipple (Hung, col. 2, ll. 15-21). In this case, the Examiner relies on the conclusory statement that the ordinary artisan would have combined the references “to allow for increased functionality of the device, thereby enhancing diagnostic and therapeutic capabilities” (Ans. 5). That statement, however, does not explain or provide scientific reasoning as to why the ordinary artisan would have placed an electrode on the nipple during breastfeeding, or how the electrode of Hung could be modified to measure the volume of milk expressed in the device of Rosenfeld. We therefore reverse the obviousness rejection. SUMMARY We affirm Rejection I, but reverse Rejection II. TIME PERIOD FOR RESPONSE 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-IN-PART cdc Copy with citationCopy as parenthetical citation