Ex Parte LevineDownload PDFPatent Trial and Appeal BoardMay 9, 201712490414 (P.T.A.B. May. 9, 2017) 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. 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. 2 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), 3 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. 4 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. 5 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. 6 Appeal 2016-002510 Application 12/490,414 DECISION Each rejection is reversed. ORDER REVERSED 7 Copy with citationCopy as parenthetical citation