Ex Parte Tomes Dietz et al

Patent Trial and Appeal Board

Aug 29, 2017

13270062 (P.T.A.B. Aug. 29, 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.
24126.10 8900
EXAMINER
MENSH, ANDREW J
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
13/270,062 10/10/2011 Kimberly L. Tomes Dietz
716 7590 08/29/2017
DYKEMA GOSSETT P.L.L.C.
112 EAST PECAN STREET, SUITE 1800
SAN ANTONIO, TX 78205-1521
08/29/2017 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 KIMBERLY L. TOMES DIETZ and THERESA ERNEST1
Appeal 2016-004890
Application 13/270,062
Technology Center 3700
Before TONI R. SCHEINER, ERIC B. GRIMES, and
ERICA A. FRANKLIN, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
disposable urine collection device, which have been rejected as obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Claims 1, 2, 7—13, and 17—20 are on appeal. Claim 1 is illustrative
and reads as follows:
1 Appellants identify the Real Parties in Interest as the inventors. (Appeal
Br. 1.)
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1. A disposable urine collection device to be used by a person, said device
comprising:
a substantially rigid shell having a rim configured for snugly engaging
a urinary area of the person; and
an absorbent pad disposed in an interior space of said shell, said
absorbent pad having a capacity for absorbing a quantity of urine associated
with a complete urinary discharge by the person.
DISCUSSION
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as obvious based on Ernest2 and Rollins.3 (Final Action4 3.) The
Examiner finds that Ernest discloses a disposable urine collection device
meeting all of the limitations of claim 1 except that it “does not specifically
disclose a substantially, rigid shell.” (Id.) The Examiner finds that “Rollins
discloses an urine collection device with a substantially, rigid shell 12 in
order to have sufficient structural rigidity to form a stand-alone three
dimensional shell.” (Id.) The Examiner concludes that it would have been
obvious “to include that the shell of Ernest was substantially rigid, as
disclosed and taught by Rollins, for the purpose of ensuring strong shell.”
(Id.)
We agree with the Examiner that the device of claim 1 would have
been obvious to a person of ordinary skill in the art based on Ernest and
Rollins. Ernest discloses a “disposable urine collection device for use by a
person which includes an absorbent pad for the collection of urine and a
2 Ernest et al. US 2004/0216220 Al; Nov. 4, 2004
3 Rollins et al. 5, 423, 788; June 13, 1995
4 Office Action mailed Nov. 5, 2014.
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glove attached to the absorbent pad.” (Ernest, Abstract.) “The rim 60 of the
absorbent pad 30 is configured to easily align with the contours of the body,
both for comfort and to form a seal when in use.” (Id.^ 43.) “[T]he
absorbent pad 30 is composed of several layers. The bottom layer forms a
shell of waterproof lining 80 composed of materials well known in the art
such as impervious polyethylene or polypropylene film or thermoplastic
polymer to hold the urine within the urinary device.” (Id. 144.)
“Actual use of the urinary device 10 requires inserting the user’s hand
40 into the sleeve 22 and mitt 21 of the waterproof glove 20. . . . [T]he
absorbent pad 30 of the urinary device 10 is positioned against the urinary
area. . . . After voiding, the user can slide the urinary device 10 forward.”
(Id. 1 50.) Because Ernest describes its device as being removed “[ajfter
voiding,” it is reasonable to conclude that Ernest’s device “ha[s] a capacity
for absorbing a quantity of urine associated with a complete urinary
discharge,” as recited in claim 1. Ernest does not describe its device as
including a substantially rigid shell.
Rollins discloses “a feminine guard capable of absorbing urine
delivered in relatively small quantities at a relatively low velocity, urine
delivered in relatively large quantities at a relatively high velocity, and
menses.” (Rollins 2:46—50.) The device includes, among other elements,
“an outer shell 12, which outer shell defines a basin 14 and a rim 16.” (Id. at
2:60-62.)
Rollins states that “[t]he outer shell 12 is formed from a fluid-
impervious, flexible material. Exemplary of materials suitable for use in
forming the outer shell 12 are various thermoplastic or thermosetting
polymeric resins such as polyethylene, polypropylene, polyurethane,
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polyesters, and the like.” (Id. at 3:10-14.) “In one preferred embodiment,
the outer shell 12 possesses sufficient structural rigidity to form a stand­
alone, three-dimensional shell.” (Id. at 3:21—23.) “In any event, the outer
shell is generally sufficiently flexible to readily conform to pressures exerted
on it during use by a wearer.” (Id. at 3:33—36.)
Thus, Ernest discloses a device meeting all of the limitations of claim
1, except that it does not disclose that the shell of its device is substantially
rigid. However, Rollins describes a urinary collection device having a shell
that has sufficient rigidity to form a stand-alone, three-dimensional shell.
Both references state that the shell of the device can be made of a
thermoplastic polymer (or resin). We agree with the Examiner that it would
have been obvious to modify Ernest’s device to have a shell with sufficient
structural rigidity to form a stand-alone shell, because Rollins expressly
suggests this feature in a device that is used for the same purpose as Ernest’s
device. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”) id. at 417 (“If
a person of ordinary skill can implement a predictable variation [of a known
work], § 103 likely bars its patentability.”).
Appellants argue that Rollins’ device does not have a substantially
rigid shell because Rollins describes its device as being “generally
sufficiently flexible to readily conform to pressures exerted on it during use
by a wearer.” (Appeal Br. 3, citing Rollins at 3:33—36.) Appellants argue
that the rigidity required by claim 1 is different from the flexibility described
by Rollins, and
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[t]his difference would be readily appreciated by a person of
ordinary skill in the art in view of the different uses of the
respective devices: the Rollins device is to be worn by a user over
extended periods of time to guard against incontinence, . . .
requiring flexibility for comfort, whereas Applicant’s device is
not worn by a user but is instead used manually for a brief period
of time to facilitate urgent urinary voiding as distinguished from
incontinence.
(Id. at 4—5.)
This argument is not persuasive. At the USPTO, claims are given
their broadest reasonable interpretation consistent with the Specification. In
re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Appellants have not pointed
to any definition of “substantially rigid” in the Specification, nor have they
pointed to any specific degree of rigidity that is accepted in the art as the
standard for “substantially” rigid.
Appellants’ Specification describes the invention as follows: “A
disposable urine collection device for use by a person may include an
absorbent pad disposed proximate to the inner surface of a relatively stiff
shell.” (Spec. 1 6.) The Specification also states that the shell can be made
from a variety of materials, or “any other desirable material. . . that is
relatively stiff and retains its shape either indefinitely or at least for a
substantial period of time.” (Id. 134.) Thus, it is reasonable to conclude
that a relatively stiff shell is one that retains its shape.
The Specification also states that, “in some embodiments, a urine
collection device 200 may have a substantially rigid shell 130.” (Id. 141.)
The “substantially rigid” shell can be made from the same materials as the
“relatively stiff’ shell. (Id.) The Specification does not describe any
functional attributes that are possessed by a “substantially rigid” shell and
are not possessed by a “relatively stiff’ shell.
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Based on the Specification’s description, therefore, the broadest
reasonable interpretation of a “substantially rigid” shell is that it requires
only that it retains its shape either indefinitely or at least for a substantial
period of time. Rollins teaches an embodiment of its device that has
sufficient rigidity to form a stand-alone shell. (Rollins 3:21—23.) Rollins
thus teaches a shell that is encompassed by the broadest reasonable
interpretation of a “substantially rigid” shell, read in light of Appellants’
Specification.
As Appellants have argued, Rollins teaches that its device also is
“sufficiently flexible to readily conform to pressures exerted on it during use
by a wearer.” {Id. at 3:33—36.) This teaching, however, is not an adequate
basis for concluding that its shell is not substantially rigid. Indeed, the claim
language itself suggests that Appellants’ claimed device is somewhat
flexible; if it were not, the device would be “rigid,” rather than “substantially
rigid.” The qualifier “substantially” broadens the scope of the claim to
include devices having a certain degree of flexibility.
Appellants argue that “a person of ordinary skill in the art would
readily understand the meaning of ‘substantially rigid,’ recognizing that no
structure is absolutely rigid yet clearly distinguishing such term from
structures like Rollins that are designed to be flexible.” (Appeal Br. 7.)
Appellants do not, however, provide any evidence to demonstrate the
understanding of those skilled in the art regarding the maximum amount of
flexibility that would be considered to be encompassed by the term
“substantially” rigid. The argument is therefore unpersuasive.
Appellants argue that their position is supported by DePuy Spine Inc.
v. Medtronic Sofamor DanekInc., 567 F.3d 1314, 1326 (Fed. Cir. 2009).
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(Appeal Br. 5—6.) Appellants also argue that making the shell of Rollins’
device substantially rigid would make it unsatisfactory for its intended
purpose. (Id. at 7.) Both of these arguments are unpersuasive because they
are premised on Appellants’ interpretation of the claim language as
excluding the shell of Rollins’ device because it has some flexibility. As
discussed above, however, the broadest reasonable interpretation of
“substantially rigid” includes a shell that possesses some flexibility.
Appellants provide separate arguments with regard to claim 2. (Id. at
8.) Claim 2 depends from claim 1 and adds that the “shell has sufficient
strength and stiffness to support the person while the person sits on said
device during said discharge.” (Appeal Br. 8, Claims App’x.)
The Examiner cites Rollins at column 3, lines 21—23, as disclosing
this limitation. (Final Action 4.) Appellants argue that Rollins’ teaching of
a shell that can stand alone while still having some flexibility would not
have made obvious a shell with the strength and stiffness to support a person
sitting on it. (Appeal Br. 8.) We agree with Appellants’ position. The
rejection of claim 2 is reversed.
Appellants provide separate arguments with regard to claims 12 and
13. (Appeal Br. 8—10.) Claims 12 and 13 both depend from claim 1 and add
that the urine-absorbing capacity is 100-1000 mL (claim 12) or about 500
mL (claim 13). (Appeal Br., Claims App’x.)
The Examiner cites Ernest at paragraphs 44 and 56 as suggesting
these limitations. (Final Action 4.) We agree with the Examiner’s position.
Ernest discloses that the absorbent pad of its device is composed of several
layers, including a layer of hydrophilic gel and absorbent materials; “[t]he
hydrophilic gel is made of super-absorbent polymer particles which contain
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water-absorbing resins that are well known in the art.” (Ernest 144.) Ernest
also discloses that its device “may be designed to accommodate persons of
varying size and age. For example, a small device may be most useful for
children, providing a better fit and adequate urinary capacity.” (Id. 156.)
We agree with the Examiner that, based on these disclosures, it would
have been obvious to a skilled artisan, and a matter of routine optimization,
to modify the absorption capacity of Ernest’s device to accommodate the
urinary output of different intended users. See In re Aller, 220 F.2d 454, 456
(CCPA 1955) (“[Wjhere the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.”).
Appellants argue that Ernest does not suggest any specific volume of
urine absorption, and therefore amounts recited in claims 12 and 13 would
not be reached by routine optimization. (Appeal Br. 9—10.)
Appellants have not, however, pointed to any evidence showing that
those skilled in the art were unaware, as of their filing date, of the amount of
urinary discharge that would be expected from the users of Ernest’s device.
On the contrary, Ernest provides evidence that the amount of urinary
discharge is routinely tracked in medical settings: “In a medical setting,
when fluid intake and output measurement is important, the device may be
weighed to determine the quantity of urine excreted, similar to the weighing
of diapers in a hospital nursery.” (Ernest 156.) This disclosure supports the
Examiner’s position that a skilled artisan would have been aware of the
amount of urinary discharge that would be expected from various users, and
would have been led to optimize the absorption capacity of Ernest’s device
accordingly. We affirm the rejection of claims 12 and 13.
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Appellants provide separate arguments with regard to claim 18.
(Appeal Br. 10.) Claim 18 depends from claim 1 and adds that the “shell
comprises at least one stiffener.” (Appeal Br., Claims App’x.)
The Examiner cites Ernest at paragraph 44, as disclosing this
limitation. (Final Action 5.) Appellants argue that “[njothing in Ernest or
Rollins provides any teaching or suggestion of that limitation.” (Reply
Br. 5.5) We agree with Appellants’ position. Paragraph 44 of Ernest
describes materials for the shell, but includes no mention of a stiffener. The
rejection of claim 18 is reversed.
Claims 7—13, 17, 19, and 20 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1, 7—13, 17, 19, and 20 under 35
U.S.C. § 103(a) based on Ernest and Rollins.
We reverse the rejection of claims 2 and 18 under 35 U.S.C. § 103(a)
based on Ernest and Rollins.
5 In the Appeal Brief, Appellants’ argument was based on “paragraph [0044]
of Rollins” (Appeal Br. 10) but, as the Examiner pointed out (Ans. 7), the
rejection was actually based on paragraph 44 of Ernest. In response,
Appellants presented the above argument directed to Ernest in the Reply
Brief.
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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
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