Ex Parte Bonni

Board of Patent Appeals and Interferences

Aug 20, 2008

10703287 (B.P.A.I. Aug. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ARAM BONNI
__________

Appeal 2008-33171
Application 10/703,287
Technology Center 3700
__________

Decided: August 20, 2008
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to a
patient-adjustable urinary incontinence device. The Examiner has rejected
the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.

1 Heard August 12, 2008.
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STATEMENT OF THE CASE
Claims 1-11, 13-28, and 30-43 are pending (App. Br. 2). Claims 1-11,
13-28, 30, and 32-43 are on appeal (id.).2 Claims 1 and 13 are
representative and read as follows:
1. A patient-adjustable urinary incontinence device,
comprising:
a pillow, configured for implantation adjacent a
patient’s urethra;
a reservoir, configured for implantation within said
patient, wherein the reservoir is in fluid communication
with the pillow; and
a control mechanism which allows the patient to
add and remove fluid from said pillow and said reservoir,
to selectively enlarge said pillow to apply pressure
against said urethra to inhibit urination.

13. A method of controlling urinary incontinence,
comprising:
providing a device comprising a pillow and a
control element just under the skin, wherein said pillow
is located adjacent the urethra;
adjusting the pressure applied by said pillow to
said urethra by activating said control element through
the skin to selectively inhibit urination.

The Examiner applies the following documents in rejecting the
claims:
Porter US 6,102,848 Aug. 15, 2000
Simon et al. US 5,090,424 Feb. 25, 1992

2 At Oral Argument Appellant stated that claim 31 was withdrawn from
appeal. When prosecution resumes in this case claim 31 should therefore be
canceled. See Ex Parte Ghuman,
http://www.uspto.gov/web/offices/dcom/bpai/prec/rm081175.pdf, slip op. at
5-6 (Bd. Pat. App. & Int. May 1, 2008) (precedential).
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The following rejections are before us for review:
Claims 1-3, 6-11, 13-17, 19-24, 26-28, 30, and 32-43 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Porter (Ans. 3-5).
Claims 1 and 5 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Simon (Ans. 5-6).
Claims 4, 18, and 25 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of Porter (Ans. 6).
ANTICIPATION -- PORTER
ISSUE
The Examiner contends that Porter anticipates claim 1 because it
discloses a device having “a pillow (12) capable of being implanted in a
urethra (102), [a] reservoir (14) in fluid communication with the pillow (12)
capable of being implanted in a patient[,] and [a] control mechanism (16)
that allows a patient to add and remove fluid from the pillow and reservoir to
inhibit urination” (Ans. 3-4). The Examiner further contends that Porter
discloses all of the features in claims 2-3, 6-11, 13-17, 19-24, 26-28 and 30
and 32-43.
Appellant contends that the Examiner erred in finding that Porter
anticipates claim 1 because Porter’s device is not implantable (App. Br. 4-6).
Appellant submits additional separate arguments with respect to the
remaining claims (see App. Br. 6-14).
The issue with respect to this rejection, then, is whether the Examiner
erred in finding that Porter meets all of the limitations recited in the rejected
claims.
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FINDINGS OF FACT
1. Claim 1 recites a patient-adjustable urinary incontinence device. The
device has a pillow and a reservoir which are in fluid communication with
each other. Claim 1 requires the pillow to be “configured for implantation
adjacent a patient’s urethra,” and the reservoir to be “configured for
implantation within said patient.”
The device also has a control mechanism that allows the patient to add
and remove fluid from the pillow and reservoir, to selectively enlarge the
pillow and thereby apply pressure against the urethra to inhibit urination.
Independent claim 20 recites a similar device:
20. A patient-adjustable urinary incontinence device
comprising:
a pillow, configured for implantation adjacent a
patient's urethra;
a patient-adjustable valve for draining the pillow;
and
a patient-adjustable pump for filling the pillow to
inhibit urination.

2. Porter discloses a “urethral valve system [which] includes a valve
balloon that inflates to provide continence and in certain embodiments
deflates to allow urine to flow around the balloon” (Porter, col. 1, ll. 44-47).
Porter states that “[a] small-diameter catheter is attached to the balloon and
extends through the urethra to provide access to the balloon from outside the
body. When the urine flows around the balloon, the urine also flows around
the catheter and through the urethra” (id. at col. 1, ll. 47-51).
3. Figures 1A and 1B of Porter, reproduced below, are, respectively, “an
illustration of a first embodiment of a urethral valve system constructed in
accordance with the invention providing continence,” and “an illustration of
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the first embodiment of the urethral valve system allowing urination”
(Porter, col. 2, ll. 29-34):

The figures show:

[A] urethral valve system 10 [which] includes a valve balloon
12 that is positioned in a bladder 100 to obstruct the flow of
urine from the bladder. The diameter of the balloon 12 must be
large enough essentially to seal the neck 101 of the bladder 100
and prevent urine flow from the bladder. A small-diameter
catheter 14 attaches to the balloon 12 and extends through the
urethra 102 and past the meatus 104. A check valve 16, which
is closed to retain within the system the substance, such as air
or water, that is used to inflate the balloon 12, extends slightly
below the meatus 104. A pump 18, which is removably
attached to the check valve 16, provides, for example, the water
to the system. When the balloon is inflated, as depicted in FIG.
1A, the balloon provides continence.

(Porter, col. 3, ll. 10-24.)
Porter discloses that, “[f]or urination, a user deflates the balloon 12
through the check valve 16. As depicted by the arrows in FIG. 1B, when the
balloon 12 is deflated urine flows around the balloon, through the neck 101
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of the bladder 100, through the urethra 102 and around catheter 14, and out
of the meatus 104” (id. at col. 3, ll. 25-29).
4. Porter discloses that “[a]s depicted FIG. 1B, the pump 18 captures the
water and retains it for use in re-inflating the balloon 12. The user may
instead release the water from the system 10, and use fresh water to re-
inflate the balloon” (Porter, col. 3, ll. 36-39).
5. Porter discloses that the “balloon 12 and the catheter 14 may be made
of any inflatable, non-reactive material, such as silicon. The catheter 14 has
a small diameter since urine flows around the catheter rather than through
the catheter” (Porter, col. 3, ll. 49-52).
6. In another embodiment, Porter discloses that a valve 954 controlling
urine flow can be placed in the bladder in conjunction with a pillow blocking
the neck of the bladder (Porter, col. 5, ll. 44-64, Figures 10A and 10B).
PRINCIPLES OF LAW
“It is well settled that “[t]o anticipate a claim, a prior art reference
must disclose every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). It is
also well settled that “[a] patent applicant is free to recite features of an
apparatus either structurally or functionally.” Id. at 1478.
However, “‘[f]unctional’ terminology may render a claim quite broad
. . .[;] a claim employing such language covers any and all embodiments
which perform the recited function.” In re Swinehart, 439 F.2d 210, 213
(CCPA 1971)(emphasis added); see also Schreiber, 128 F.3d at 1478-79
(holding that a prior art apparatus meeting all claimed structural limitations
was anticipatory because it was inherently capable of performing the
claimed function).
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Moreover, as stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(quoting In re Swinehart, 439 F.2d at 212-13):
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

During examination, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). This
broad claim interpretation is proper at the examination stage because “during
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
ANALYSIS
Appellant’s arguments do not persuade us that the Examiner erred in
concluding that Porter’s device meets all of the limitations in claims 1 and
20.
Porter’s device has a valve balloon 12 that is positioned in the bladder
such that it seals the neck of the bladder, preventing urine flow from the
bladder (FF 3). Appellant does not dispute that Porter’s balloon meets the
requirement in claims 1 and 20 for a pillow, but instead argues that Porter’s
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device does not meet the limitation requiring the pillow to be “configured
for implantation” (App. Br. 4).
Specifically, Appellant argues that, rather than using the term
“implant,” Porter describes its device as being inserted through the urethra
and bladder (id. at 5). Appellant urges that “[a]n implantable device and an
insertable device are distinct to a person with ordinary skill in the art,” and
that an “insertable device is not inherently implantable. An implantable
device is subject to much greater FDA regulation and must meet heightened
standards with respect to issues related to biocompatibility. Therefore,
Porter does not describe an implantable pillow and is not inherently
implantable” (id.).
The Examiner responds that “three general definitions of ‘implant’ are
to ‘to fix or set securely or deeply’, ‘to set in living tissue’, or ‘something
implanted in tissue.’ See Merriam Websters [sic] Collegiate Dictionary, 10th
Edition, 1996” (Ans. 7). Moreover, the Examiner argues, Appellant has “not
clearly set forth in the[] specification, a definition of ‘implant’ that
contradicts the plain meaning of that term” (id.). The Examiner concludes
Porter’s pillow is encompassed by the claims when given their broadest
reasonable interpretation consistent with the Specification because “[t]he
insertable channel-blocking device of Porter is inherently implantable
according to any of the three definitions of ‘implant’ described above” (id.).
Given the definitions advanced by the Examiner, and the absence of
direct evidentiary support for Appellant’s assertion that inserted devices
would necessarily be recognized to be distinct from implanted devices, we
find that Appellant has not shown that the language of claims 1 and 20
excludes Porter’s devices.
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Rather, we agree with the Examiner that it was reasonable to conclude
that Porter’s balloon 12 is encompassed by claims 1 and 20. Specifically,
because Porter’s balloon is placed in the patient’s bladder adjacent to the
urethra, and is therefore set in living tissue, Porter’s device meets the general
definition of “implant” advanced by the Examiner. We therefore agree that
Porter’s balloon 12 meets the recitation in claims 1 and 20 of “a pillow,
configured for implantation adjacent a patient’s urethra.”
Appellant argues that, given the Specification’s disclosure of
deploying the device “through a surgical cut or incision,” one of ordinary
skill in the art viewing claims 1 and 20 in light of the Specification would
interpret the device as one “that is configured to be implanted into a patient
during a surgical procedure” (Reply Br. 2).
We are not persuaded by this argument. “[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). Thus, “[a]bsent claim language carrying a
narrow meaning, the PTO should only limit the claim based on the
specification or prosecution history when those sources expressly disclaim
the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004).
In the instant case, Appellant points to no specific definition of
“implant” in the Specification that supplants or modifies the general
definitions advanced by the Examiner. Moreover, Appellant points to no
structural feature of Porter’s device that would render it incapable of being
implanted by a surgical procedure. We therefore find that Appellant has not
met the burden of rebutting the Examiner’s reasonable conclusion that
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Porter’s device meets the limitation requiring the pillow to be “configured
for implantation.”
Appellant argues that the Examiner erred in concluding that the term
“reservoir” in claim 1 encompasses Porter’s catheter 14 (see FF 3) because
the catheter “is so thin that urine is able to flow around the catheter while the
catheter is inserted in the urethra. . . . Such a thin catheter would not be
understood to be a reservoir by a person with ordinary skill in the art” (App.
Br. 5 (citing Porter, col. 3, ll. 50-52)).
The Examiner contends that Porter’s catheter 14 is encompassed by
claim 1 because “it is a fluid reservoir (receptacle or chamber for storing a
fluid) that is capable of holding pneumatic fluid between valve (16) and
balloon/pillow (12)” (Ans. 8).
We agree with the Examiner that the term “reservoir’ in claim 1
encompasses Porter’s catheter 14. As required by claim 1, Porter’s catheter
is in fluid communication with the balloon (FF 3). Moreover, because
Porter’s catheter holds fluid, and because that fluid is held for use within the
balloon, we agree that the catheter can be considered to be a reservoir in
relation to the balloon.
Appellant argues that one of ordinary skill in the art reading claim 1 in
light of the Specification would read “reservoir” to mean “a receptacle or
chamber for storing a fluid that holds a sufficient amount of fluid to allow
for inflation and deflation of the pillow” (Reply Br. 2). We are not
persuaded by this argument.
We note that, given its relative size, Porter’s catheter likely does not
hold a large amount of fluid. However, claim 1 does not require the
reservoir to hold any particular amount of fluid, much less an amount
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sufficient to allow the pillow to be inflated or deflated. As discussed above,
it is improper to import limitations from the Specification into the claims.
See Sjolund, 847 F.2d at 1581; Bigio, 381 F.3d at 1325.
Thus, we agree with the Examiner that Porter’s device has both the
pillow and reservoir recited in claim 1. Because check valve 16 is used as a
control mechanism to selectively enlarge balloon 12 and apply pressure to
the urethra to prevent urination (FF 3, 4), we also agree with the Examiner
that Porter’s device has the claimed control mechanism.
Therefore, because Porter’s device meets all of the limitations of
claim 1, we affirm the Examiner’s anticipation rejection of that claim.
Because they were not argued separately, claims 2, 3, 7-10, 32, and 33 fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant reiterates their arguments regarding implantability with
respect to claims 34 and 35, which depend from claim 1 (App. Br. 7). As
discussed above, we do not find those arguments persuasive, and therefore
affirm the Examiner’s rejection of those claims.
With respect to claim 20, Porter’s device has the implantable pillow
(balloon 12), patient-adjustable valve for draining the pillow (check valve
16), and patient-adjustable pump (pump 18) recited in that claim (see FF 3,
4). We therefore agree with the Examiner that Porter meets all of claim 20’s
limitations, and affirm the Examiner’s anticipation rejection of claim 20.
Because they were not argued separately, claims 21-23, 27, 40, and 41 fall
with claim 20. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant reiterates their arguments regarding implantability with
respect to claims 42 and 43, which depend from claim 20 (App. Br. 13-14).
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As discussed above, we do not find those arguments persuasive, and
therefore affirm the Examiner’s rejection of those claims.
Claim 6 recites “[t]he device of Claim 1, wherein said control
mechanism comprises a bulb.”
Appellant argues that the Examiner erred in finding that Porter’s
pump 18 can be considered a bulb because Porter does not use the term
“bulb” when describing that device, but instead only uses the term “pump”
(App. Br. 6). Appellant argues that because a “pump” encompasses
numerous different types of pump, a bulb being only one type of manually
actuated pump, Porter does not anticipate claim 6 (id.). Appellant reiterates
this argument with respect to claim 24 (id. at 11-12).
We are not persuaded by these arguments. Because Porter discloses
its pump 18 as having an oval shape that increases in size when it receives
fluid from the balloon 12 (FF 3), we agree with the Examiner that it was
reasonable to conclude that Porter’s pump is encompassed by the term
“bulb.” We therefore affirm the Examiner’s anticipation rejection of claims
6 and 24.
Claim 11 recites “[t]he device of Claim 1, wherein said control
mechanism is configured for implantation just under the skin.”
Appellant argues that Porter does not anticipate claim 11 because its
valve is not inherently implantable just under the skin (App. Br. 7). Rather,
Appellant argues, “Porter’s valve is designed to remain outside the body and
is not designed to be the correct size and shape for implantation or to be
biocompatible. Therefore, Porter's valve is not inherently implantable and
does not anticipate claim 11” (id.). Appellant reiterates this argument with
respect to claim 28 (id. at 12-13).
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The Examiner responds that “there is no language in the claims that
indicate what structure configured for implantation just under the skin
entails. It is the interpretation of the examiner that Porter’s control
mechanism is capable of being implanted even if it is not optimized for that
purpose and could cause complications if used in that manner” (Ans. 9).
We agree with the Examiner that Porter’s device meets the limitations
of claims 11 and 28. Those claims are apparatus claims, not method claims.
Those claims therefore do not require the device to be actually implanted as
claimed; they only require the device to be capable of such implantation.
While Porter’s valve 16 is used outside the body (FF 3), Appellant
points to no specific disclosure in Porter to support their assertion that the
valve is incapable being implanted in accordance with the claim, particularly
given the relatively broad definition of “implant” discussed above. Given
the definition of “implant” and Porter’s description of its valve, a
preponderance of the evidence supports the Examiner’s finding of
anticipation. We therefore affirm the Examiner’s rejection of claims 11 and
28.
Claim 13 reads as follows:
13. A method of controlling urinary incontinence,
comprising:
providing a device comprising a pillow and a
control element just under the skin, wherein said pillow is
located adjacent the urethra;
adjusting the pressure applied by said pillow to
said urethra by activating said control element through the skin
to selectively inhibit urination.

Appellant argues that the Examiner erred in finding that Porter
anticipates claim 13 because Porter does not provide a pillow and control
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element just under the skin (App. Br. 8), and because sitting on the valve and
pump would not “place the valve and pump just under the skin such that the
valve and pump can be activated through the skin as required by claim 13.
Porter’s valve and pump, even if sat upon, would still be activated outside
the body, and not through the skin as required by claim 13” (id. at 9).
The Examiner responds that “Porter teaches a control element
(valve)(954) that is located within a bladder (100) which is under the skin
(fig. 10A)(col. 5, line 8-col. 6, line 29). Applicants have not clearly set forth
in their specification, a definition of ‘just under the skin’ that contradicts the
plain meaning of that term” (Ans. 9).
We agree with Appellant that Porter does not meet all of the
limitations of claim 13. Even if one were to consider Porter’s bladder-
implanted valve 954 to be implanted just under the skin, that valve controls
urine flow, and does not adjust the pressure within the bladder-blocking
balloon as required by claim 13 (FF 6). Also, in contrast to claim 13’s
requirement of “activating said control element through the skin,” Porter’s
control elements, valve 16 and pump 18, act through the urethra (FF 3, 4).
Because we agree with Appellant that Porter does not meet all of
claim 13’s limitations, we reverse the Examiner’s anticipation rejection of
claim 13 and its dependent claims 14-19.
Claims 30 and 36-39 also depend, directly or ultimately, from claim
13. However, each of those claims recites a “device” rather than a method
as recited in claim 13.
Nonetheless, because of their dependency on claim 13, we interpret
claims 30 and 36-39 as reciting methods. Moreover, because they depend
from claim 13, claims 30 and 36-39 also require all of the steps of claim 13’s
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method. We therefore reverse the Examiner’s anticipation rejection of those
claims, for the reasons discussed above with respect to claim 13.
Claim 26 recites “[t]he device of Claim 20, wherein said valve
comprises a one-way valve directed contrary to the flow direction.”
Appellant argues:
The examiner asserted that Porter anticipated claim 26
because “Porter teaches a check valve.” (Final Office Action,
page 5). However, Porter does not teach a check valve directed
contrary to the flow direction (Porter, Specification, column 3,
lines 17-19, 21-23, 25-27 and 44-46). Ordinarily, check valves
are installed in the same direction as the flow. Because Porter
does not specify the orientation of the check valve in the
apparatus, it must be assumed that the check valve is installed
in the flow direction. Therefore, Porter does not teach a one-
way valve directed contrary to the flow direction and does not
anticipate claim 26.

(App. Br. 12.) The Examiner responds:
[T]he plain meaning of “check valve” is “a valve that permits
flow in one direction only[.]” See Merriam Websters [sic]
Collegiate Dictionary, 10th Edition, 1996. As interpreted
herein, “flow direction” is considered to be from balloon/pillow
(12) towards valve (16). The valve prevents fluid from escaping
the system and is thus directed against the flow direction (see
col. 3, lines 11-24). Applicants have not clearly set forth in
their specification, a definition of “check valve” or “flow
direction” that contradicts the plain meaning of these terms.

(Ans. 9-10.)
We agree with Appellant that Porter does not meet the limitations of
claim 26. We note that Porter describes its valve 16 as a check valve (FF 3).
However, Porter discloses that the water captured by the pump 18 upon
deflation of balloon 12 can be reused to inflate the balloon (FF 4).
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For that action to occur, the water would have to flow back through
valve 16 in the opposite direction of the flow that occurred when the balloon
deflated. Because valve 16 must therefore accommodate two directions of
fluid flow, we do not agree with the Examiner that Porter’s valve is “a one-
way valve directed contrary to the flow direction” as required by claim 26.
We therefore reverse the Examiner’s rejection of claim 26 as
anticipated by Porter.
In summary, we affirm the Examiner’s rejection of claims 1-3, 6-11,
20-24, 27, 28, 32-35, and 40-43 under 35 U.S.C. § 102(b) as being
anticipated by Porter.
However, we reverse the Examiner’s anticipation rejection of claims
13-17, 19, 26, 30, and 36-39.
ANTICIPATION -- SIMON
ISSUE
Claims 1 and 5 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Simon (Ans. 5-6).
The Examiner cites Simon as disclosing “a pillow (23') for implanting
in a urethra, [a] reservoir (10) in fluid communication with the pillow (23')
for implantation in a patient; and [a] control mechanism (24, 25) that allows
a patient to add and remove fluid from the pillow and reservoir to inhibit
urination” (Ans. 5). The Examiner finds that Simon meets the limitations of
claim 5 because “the control mechanism (24, 25) is structurally and
functionally a duckbill valve” (id. at 6).
Appellant argues that Simon does not anticipate claims 1 and 5
because its device is a urethral plug that is inserted into the user’s urethra
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rather than being implanted (App. Br. 14). Appellant further argues that
Simon’s device lacks the reservoir recited in claim 1 (id. at 15).
FINDINGS OF FACT
7. Claim 5 recites “[t]he device of Claim 3, wherein said valves
comprise duckbill valves.”
Claim 3 in turn recites “[t]he device of Claim 1, wherein said control
mechanism comprises check valves.”
8. Simon discloses “urethral plug which can be inserted into the urethra
to restrict the flow of urine through the urethra and is used by a person
suffering from urinary incontinence” (Simon, col. 1, ll. 6-10).
9. Figure 1 of Simon, reproduced below, “is a cross-sectional view
showing the urethral plug in a deflated insertable configuration” (Simon, col.
3, ll. 54-55):

The figure shows
[U]rethral plug 10 . . . [with] bellows 11 [which] defines cavity
21, and is used to transport fluid 32 contained in cavity 21
through a check valve 22 which is located within meatal plate
13. The bellows is made from a material which makes it
conformable to the body and comfortable for the patient when
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the urethral plug is in place. The fluid 32 is transported to
cavity 23 located within plug 10 becoming fluid 33.

(Simon, col. 5, ll. 9-16.)
10. Figure 2 of Simon, reproduced below, “is a cross-sectional view
showing the urethral plug in an inflated configuration” (Simon, col. 3, ll. 56-
57):

The figure shows cavity 23' in an inflated state that prevents passage of urine
through the urethra.
ANALYSIS
We agree with the Examiner that Simon’s device meets all of the
limitations of claims 1 and 5. As required by claim 5, the inflated cavity 23'
can be considered to be the pillow recited in claim 1. Given the definition of
“implant” discussed above, and the device’s disclosed capacity to be
implanted within the urethra (FF 8, 9), we also agree with the Examiner that
the cavity/pillow 23' meets the limitation requiring it to be configured for
implantation.
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Moreover, while we note that reference number 10 refers to the entire
device (FF 9), we also note that the channel between cavity 23' and cavity 21
is shown as containing fluid (FF 9, 10). We therefore agree with the
Examiner that the channel can be considered to be a reservoir of fluid for the
device.
We also agree with the Examiner that bellows 11 meets claim 1’s
limitation of a control mechanism that allows the patient to add and remove
fluid from the pillow, and that the valve adjacent the bellows meets the
requirement in claim 5 for a duckbill valve.
For the reasons discussed above with respect to Porter, we do not find
Appellant’s arguments regarding the implantation and reservoir limitations
persuasive. We therefore affirm the Examiner’s rejection of claims 1 and 5
as anticipated by Simon.
OBVIOUSNESS -- PORTER
Claims 4, 18 and 25 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of Porter (Ans. 6). Claims 4, 18, and 25 depend,
respectively, from claims 1, 13, and 20, and recite that the control
mechanism (claim 4), control element (claim 18), and pump (claim 25), of
the parent claim “comprises a series of valves.”
The Examiner found that “Porter does not teach a series of valves” but
concluded that the claims would have been obvious under § 103 because
“[o]ne of ordinary skill in the art would have recognized that redundant
valves provide additional protection from backflow” (Ans. 6).
Appellant presented no argument regarding this ground of rejection.
Therefore, because we detect no deficiency in the Examiner’s prima facie
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case, we affirm the Examiner’s rejection of claims 4 and 25 as obvious over
Porter.
However, as discussed above, we agree with Appellant that Porter
does not teach the limitation in claim 13 requiring the pressure in the pillow
to be adjusted by activating the control element through the skin. Claim 18
depends from claim 13, and therefore also has that limitation. Because the
Examiner has not explained why that limitation would have been obvious to
a person of ordinary skill in the art, the Examiner has not established a prima
facie case of obviousness with respect to claim 18. We therefore reverse the
Examiner’s obviousness rejection of claim 18 over Porter.
SUMMARY
We affirm the Examiner’s rejection of claims 1-3, 6-11, 20-24, 27, 28,
32-35, and 40-43 under 35 U.S.C. § 102(b) as being anticipated by Porter.
We reverse the Examiner’s anticipation rejection of claims 13-17, 19,
26, 30, and 36-39 over Porter.
We affirm the Examiner’s rejection of claims 1 and 5 under 35 U.S.C.
§ 102(b) as being anticipated by Simon.
We affirm the Examiner’s rejection of claims 4 and 25 under 35
U.S.C. § 103(a) as being obvious in view of Porter.
We reverse the Examiner’s obviousness rejection of claim 18 over
Porter.

AFFIRMED-IN-PART

Appeal 2008-3317
Application 10/703,287

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