Ex Parte Levine

Patent Trial and Appeal Board

May 9, 2017

12490414 (P.T.A.B. May. 9, 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.
12/490,414 06/24/2009 Noam Levine NML-PU-001-US1 3431
60956 7590 05/11/2017
Professional Patent Solutions;
EXAMINER
P.O. BOX 654 RAEVIS, ROBERT R
HERZELIYA PITUACH, 46105
ISRAEL ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
05/11/2017 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):
office @propats .com
vsherman @ propats, com
utalmi@propats.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte NOAM LEVINE
Appeal 2016-002510
Application 12/490,414
Technology Center 2800
Before BEVERLY A. FRANKLIN, JULIA HEANEY and JENNIFER R.
GUPTA Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—7 and 9—21. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
Appeal 2016-002510
Application 12/490,414
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant’s subject matter on appeal and is
set forth below (emphasis added):
1. A system for estimating a rate of urine produced by kidneys and
flowing into a bladder based on measurement of an excretion stream within
an excretion collection assembly including a catheter, said system
comprising:
a urinary catheter, of the excretion collection assembly, configured to
be inserted into a bladder such that urine entering the bladder exits through
said catheter and flows through at least part of the excretion collection
assembly;
a measuring device at least a portion of which is integral with a
constituent element of the excretion collection assembly, wherein said
measuring device comprises:
a sensing element for sensing a rate of urine flow out of the bladder;
first circuitry connected to the sensing element to produce a signal
indicative of the rate of urine flow out of the bladder, wherein said electronic
circuitry includes at least one analog or at least one digital component
functionally associated with said sensing element; and
second circuitry to estimate a present urine flow into the bladder
based on the flow indicative signal produced by said first circuitry.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Gille et al.
Westphal et al.
Richardson et al.
17,2005
US 4,712,567
US 5,769,087
US 2005/0256447 Al
Dec. 15, 1997
Jun. 23, 1998
Nov.
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Appeal 2016-002510
Application 12/490,414
THE REJECTIONS
1. Claims 19 and 20 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
2. Claim 17 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
3. Claims 1 -7, 9, and 12—20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Richardson in view of Westphal.
4. Claims 10 and 21 are rejected under 35 U.S.C. § 103 as being
unpatentable over Richardson in view of Westphal, as applied to claim 1,
and further in view of Gille.
ANALYSIS
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we reverse the Examiner’s
rejections based upon Appellant’s stated position in the record, and add the
following for emphasis.
Rejection 1
Beginning on page 2 of the Non-final Office Action mailed on
March 18, 2015, the Examiner states there is no written descriptive support
for claims 19 and 20. The Examiner states that with regard to claim 19,
there is no support for a “calibration parameter for the ‘second circuitry’
(claim 1) (which may correspond to circuit 48 (or maybe 49) in Figure 7),
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Appeal 2016-002510
Application 12/490,414
in combination with the remaining limitations'1'’ of claim 19. Non-Final
Act. 2 (emphasis in original). The Examiner states that support was found
for the “remaining limitations,” but not for where there is a “second
circuitry” so combined. Id.
With regard to claim 20, the Examiner states that
[a]s to claim 20, where is there support for a calibration during
production or sorting of the “second circuitry” (claim 1) (which may
correspond to circuit 48 (or maybe 49) in Figure 7), in combination
with remaining limitations of this claiml
Id.
Appellant argues that paragraphs [0006] and [0123] of the
Specification disclose that a calibration procedure is performed during
production or sorting of the device, and therefore supports the subject matter
of claim 191 and 202. Appeal Br. 24. Appellant explains that it is the sensing
or measuring elements that are thus calibrated when calibration is performed
during production of the measuring device or sorting of the measuring
device. Appeal Br. 24—25. We agree. First circuitry (item 75 in Figure 7),
second circuitry (item 49 in Figure 7), and sensing element 74 make up part
of the measuring device, as depicted in Figure 7. This is explained in
paragraph [0068] of the Specification. Therein, it is also disclosed that
microprocessor 48 calculates and adjust measurements according to
“calibration parameters,” further indicating that calibration parameters exist
1 Claim 19 recites that the calibration parameter [of claim 18] reflects at
least one characteristic of said first or second circuitry or said sensing
element.
2 Claim 20 recites that the calibration parameter [of claim 18] is adjusted
during production or sorting of said first or second circuitry or said sensing
element.
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Appeal 2016-002510
Application 12/490,414
for the sensing or measuring elements. We are thus persuaded by
Appellant’s stated position in the record.
In view of the above, we reverse Rejection 1.
Rejection 2
Claim 17 is rejected under 35 U.S.C. §112, second paragraph, as
being indefinite. Non-Final Act. 2. The Examiner determines that the word
“discrete” in claim 17 is indefinite. Non-Final Act. 2—3. The Examiner
refers to [0144] of the patent application publication, which states in part
“discrete may mean that the system may not need to be mechanically
attached to any other device.” Non-Final Act. 3. It appears the Examiner
believes that use of the term “may mean” suggests ambiguity. However, we
are in agreement with Appellant’s stated response made on page 24 of the
Appeal Brief. Therein, Appellant states that the Examiner is taking
advantage of non-obligatory style of writing regularly used in patent
drafting, to create a semblance of ambiguity where no ambiguity exists, for
the reasons stated therein. We agree, and add the following.
Paragraph [0144] of the patent application publication discloses:
[0144] According to some embodiments of the present invention,
there may be a system for determining a flow rate of an excretion
stream which may be discrete. According to these embodiments,
discrete may mean that the system may not need to be mechanically
attached to any other device, the system may be connected to other
devices by an electrical wire and/or by an optical fiber and/or
wirelessly.
When paragraph [0144] is considered in its entirety, clarity is provided for
the term “discrete,” contrary to the Examiner’s interpretation.
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Appeal 2016-002510
Application 12/490,414
In view of the above, we reverse Rejection 2.
Rejection 3
Claim 1 is directed to a system for estimating a rate of urine produced
by kidneys and flowing into a bladder that includes, inter alia, second
circuitry to estimate a present urine flow into the bladder based on the flow
indicative signal produced by the claimed first circuitry. It is disputed as to
whether the applied art meets this particular claim limitation. The Examiner
analogizes the measuring and averaging of a rate of urine flow within a
catheter (as taught by Westphal) to the estimation of the “present rate of
urine flow into the bladder” as recited in the claims. Non-Final Act. 3^4.
Appellant disagrees with this position for the reasons presented on pages 7—
23 of the Appeal Brief. In reply, the Examiner argues that the rate of urine
flow into the bladder is equal to the rate of urine flow out of the bladder.
See, for example, page 2, line 17 through page 3, line 1 of the Answer. We
agree with Appellant’s stated reply made on pages 2—12 of the Reply Brief.
Therein, Appellant persuasively shows why it is not accurate to state that the
rate of flow out of the bladder is equal to the rate of flow into the bladder,
and because the Examiner’s position is flawed in this regard, the Examiner’s
application of the prior art is flawed in a similar fashion such that a prima
facie case has not been sufficiently made for the reasons stated by the
Appellant in the record.
In view of the above, we reverse Rejection 3. Because the Examiner
does not rely upon the additional references applied in Rejection 4 to cure
the stated deficiencies of the combination of Richardson in view of
Westphal, we also reverse Rejection 4.
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Appeal 2016-002510
Application 12/490,414
DECISION
Each rejection is reversed.
ORDER
REVERSED
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