Ex Parte Charlez et al

Patent Trial and Appeal Board

Aug 28, 2018

13377641 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/377,641 12/12/2011
112467 7590
RMCK Law Group, PLC
Michael A Schaldenbrand
PO Box 210280
Auburn Hills, MI 48321
08/30/2018
FIRST NAMED INVENTOR
Mikael Chadez
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
14003-000102/US 1828
EXAMINER
ABOUELELA, MAY A
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
08/30/2018 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):
mailbox@rmcklaw.com
gail@rmcklaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKAEL CHARLEZ and MIKAEL LOFGREN
Appeal2017-006600
Application 13/377,641 1
Technology Center 3700
Before DONALD E. ADAMS, DEMETRA J. MILLS, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 2, 4, 6-13,
and 16-31 (Office Act. 2 1). Examiner entered rejections under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify "OBSERVE MEDICAL APS" as the real party in
interest (App. Br. 2).
2 Office Action mailed March 2, 2016.
Appeal2017-006600
Application 13/377,641
STATEMENT OF THE CASE
Appellants' disclosure "relates to a device and a method for
measuring the urine production of a patient" (Spec. 1: 6-7). Appellants'
claim 1 is representative and reproduced below:
1. A urine measuring device for measuring urine production of
a patient carrying a urine catheter, comprising:
a self-emptying siphon, which comprises an inlet
connectable to the catheter and an outlet for the urine whose
volume is to be measured; and
a base unit comprising:
an attachment organ configured to
removably attach the self-emptying siphon to the
base unit, and
a urine level measurement organ, configured
to sense changes in the level of urine in the self-
emptying siphon, and
wherein the urine level measurement organ comprises
two planar capacitance electrodes placed apart relative to each
other on the base unit, a capacitance signal occurring between
the two planar capacitance electrodes; and
wherein the planar capacitance electrodes are positioned
on the base unit in respective locations of the base unit relative
to the attachment organ and over vertical distances where, when
the self-emptying siphon is held to the base unit with the
attachment organ, each of the planar capacitance electrodes
extends at least from a position outside of the siphon in the base
unit directly radially outwards of a bottom end of the siphon to
a position outside of the siphon in the base unit directly radially
outwards of an upper end of the siphon, the capacitance signal
occurring between the two planar capacitance electrodes
continuously changes as the level of urine in the self-emptying
siphon changes, the capacitance signal therefore constitutes a
continuous measure of the produced amount of urine,
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Application 13/377,641
wherein the base unit further comprises a processor that
is configured to keep record of how many times the self-
emptying siphon has been emptied, and thus calculates the
urine production as a function of time.
(App. Br. 17 (emphasis added).)
The claims stand rejected as follows:
Claims 1, 2, 4, 6, 7, 16-21, and 24--31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Sigdell3 and Faisandier. 4
Claims 8-11, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sigdell, Faisandier, and Han. 5
Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sigdell, Faisandier, and Carter. 6
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
The rejection over the combination of Sigdell and Faisandier:
Examiner finds that Sigdell discloses Appellants' claimed invention
but for:
a base unit comprising an attachment organ configured to
removably attach the self-emptying siphon chamber to the base
unit, wherein the organs for removably attaching the self-
emptying siphon chamber to the base unit is an open cavern,
3 Sigdell et al., US 3,919,455, issued Nov. 11, 1975.
4 Faisandier, US 4,137,940, issued Feb. 6, 1979.
5 Han et al., US 5,891,051, issued Apr. 6, 1999.
6 Carter et al., US 4,554,687, issued Nov. 26, 1985.
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Application 13/377,641
wherein the cavern is defined by a first limiting wall, a second
limiting wall, and a third limiting wall, wherein the base unit is
provided with an input organ for marking events; and wherein
the capacitance electrodes are positioned on the base unit in
respective locations of the base unit relative to the attachment
organ and over vertical distances where, when the self-
emptying siphon chamber is held to the base unit with the
attachment organ, wherein each of the capacitance electrodes is
disposed on an outer surface of the base unit.
(Office Act. 2--4.) Examiner relies on Faisandier to make up for the
foregoing deficiencies in Sigdell (id. at 5).
Based on the combination of Sigdell and Faisandier, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious to
attach the syphon container taught by Sigdell's invention to [a]
case [] between two external capacitance electrodes positioned
in the case as taught by Faisandier's invention, without
changing their respective function, in order to hold the
fluid/urine syphon chamber in a vertical position and to place
the capacitance electrodes outside the fluid/urine syphon
container to prevent contamination of the capacitance
electrodes, in order to reuse the capacitance electrodes, where
the processor in the base unit calculates the fluid level/volume.
(Id.) We are not persuaded.
As Appellants explain, their claimed invention requires, inter alia,
"two planar capacitance electrodes placed apart relative to each
other on the base unit" and that "each of the planar
capacitance electrodes extends at least from a position outside
of the siphon in the base unit directly radially outwards of a
bottom end of the siphon to a position outside of the siphon in
the base unit directly radially outwards of an upper end of the
siphon."
(App. Br. 8; see also Reply Br. 2.) In contrast, Appellants contend, Sigdell,
at best, discloses only one such electrode, specifically Sigdell' s plate 31 (see
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Application 13/377,641
App. Br. 8-9; see also Reply Br. 2-3). For clarity Sigdell's Figure 4 is
reproduced below:
-32 34 .........
35
Sigdell's "FIG. 4 shows a schematic representation of a sensor for the
electrical determination of a liquid level in the case where the liquid may be
either conductive or non-conductive" (Sigdell 2: 4--7 (emphasis removed)).
According to Sigdell,
[ c ]ondenser plates [31, 33] are disposed in the walls of the
apparatus facing each other. Plate 31 is disposed in the
direction of the axis of the apparatus and extends over the
entire length of the maximum difference in height of the liquid
in the housing. In the opposite wall are disposed small plates
33 at predetermined distances from each other. The plate 31
and the plates 33 are each respectively connected through leads
32 and 34 to a conventional capacitance meter 35. Each plate
33 forms, together with the plate 31, a condenser whose
capacity changes as the space between the plates is filled by the
rising liquid thereby providing a signal which corresponds to
the level of the liquid.
(id. at 4: 39-51 (emphasis added); see App. Br. 9.) Thus, as Appellants
explain, although Sigdell's plate 31 may "'extend[] at least from a position
outside of the siphon in the base unit directly radially outwards of a bottom
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Application 13/377,641
end of the siphon to a position outside of the siphon in the base unit directly
radially outwards of an upper end of the siphon,"' as required by Appellants'
claimed invention, each of Sigdell's plates 33 do not (App. Br. 9). Thus,
Examiner failed to establish that Sigdell discloses two planar capacitance
electrodes that are arranged as required by Appellants' claimed invention
(id.). In this regard, we agree with Appellants' contention that to the extent
Examiner asserts "that the combination of [Sigdell's] small plates 33
correspond[] to one plate ... the prior art does not disclose that. Sigdell
most definitely does not. And the ... [Examiner] does not cite any evidence
to that point or even explain[] how [Examiner] reaches this conclusion" (id.
at 10; cf Office Act. 3--4 (discussing Sigdell's "small plates 33")).
We also agree with Appellants' contention that Faisandier fails to
make up for this deficiency in Sigdell (see App. Br. 11; cf Office Act. 5 and
9). For clarity Faisandier's Figure 1 is reproduced below:
device" (Faisandier 2: 13-14) (emphasis omitted). Faisandier discloses that
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Application 13/377,641
"[ t ]he detector ... comprises ... an electrostatic detector for detecting the
presence of liquid comprising two plate-shaped electrodes 6a, 6b which are
arranged at either side of [flow] chamber 2 (id. at 11. 62----67 (emphasis
omitted); cf Office Act. 5 (Examiner finds that Faisandier's "capacitance
electrodes extend in a substantially vertical direction and ... are disposed on
an outer surface of base unit 1 and not disposed in the inner walls, as best
seen in [Faisandier' s] Fig. 1 "). According to Examiner, Faisandier "is
combined [with] Sigdell[] ... to teach attaching [a] ... liquid container to a
base unit and that the capacitors can be disposed in the base unit and outside
the liquid container" and not to disclose "the shape of the capacitor plates"
(Office Act. 9). Thus, as relied upon by Examiner, Faisandier fails to
disclose a device comprising two planar capacitance electrodes arranged
according to the requirements of Appellants' claimed invention (see App.
Br. 12).
We are not persuaded by Examiner's assertion that:
Under the broadest reasonable interpretation the bottom
end and upper end of the siphon may be interpreted as the
bottom end and upper end of any portion of the siphon's walls,
so any of plates 33 taught by Sigdell's invention (Fig.4) can be
fairly interpreted as a planar plate that is extending from a
bottom end to an upper end of a portion of the siphon's wall
opposite to the siphon's wall where plate 31 is extending [there
through], especially that the claims doesn't recite the two planar
plates having the same exact length and that they are extending
from the same bottom end and upper end of the siphon's walls.
(Ans. 2.) To the contrary, we agree with Appellants' contention that
Examiner's interpretation of Appellants' claims renders "the terms 'bottom
end' and 'upper end"' meaningless (Reply Br. 3-5). Therefore, we agree
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with Appellants' contention that Examiner's "claim term construction is
unsustainable" (id. at 5).
The rejections over the combination of Sigdell and Faisandier with Han or
Carter:
Examiner finds that the combination of Sigdell and Faisandier fails to
"disclose that the urine level measurement comprises an ultrasound meter
system" and relies on Han to make up for this deficiency in the combination
of Sigdell and Faisandier (Office Act. 6-7). In addition, Examiner finds that
the combination of Sigdell and Faisandier fails to "disclose that the urine
level measurement comprises a pressure metering system to determine the
level of urine in [a] self-emptying siphon chamber" and relies on Carter to
make up for this deficiency in the combination of Sigdell and Faisandier
(Office Act. 7-8).
Examiner, however, failed to establish that either of Han or Carter
makes up for the deficiency in the combination of Sigdell and Faisandier
discussed above.
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1, 2, 4, 6, 7, 16-21, and 24--31 under
35 U.S.C. § 103(a) as unpatentable over the combination of Sigdell and
Faisandier is reversed.
The rejection of claims 8-11, 22, and 23 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sigdell, Faisandier, and Han is
reversed.
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Application 13/377,641
The rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sigdell, Faisandier, and Carter is
reversed.
REVERSED
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