Ex Parte Garcia

Patent Trial and Appeal Board

Jun 30, 2015

12454179 (P.T.A.B. Jun. 30, 2015)

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.
12/454,179 05/12/2009 Maurice M. Garcia 145-000120US 3237
22798 7590 06/30/2015
QUINE INTELLECTUAL PROPERTY LAW GROUP, P.C.
P O BOX 458
ALAMEDA, CA 94501
EXAMINER
HANRAHAN, BENEDICT L
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
06/30/2015 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 MAURICE M. GARCIA
____________________

Appeal 2012-011402
Application 12/454,179
Technology Center 3700
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and WILLIAM A. CAPP,
Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Maurice M. Garcia (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 18–21, 31, and 32 under 35 U.S.C.
§ 103(a) as unpatentable over Profy (US 3,561,427, iss. Feb. 9, 1971). We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2012-011402
Application 12/454,179

2
THE CLAIMED SUBJECT MATTER
Claim 18, reproduced below, is illustrative of the claimed subject
matter.1
18. A urometer comprising:
a first chamber having a first volume and surrounded by a
second chamber in fluid contact with the second chamber
through a conduit or port;
wherein the volume of the second chamber is at least 10-fold
less than the volume of the first chamber.

OPINION
The Examiner finds that Profy discloses a urometer comprising a first
chamber (overflow chamber 30) surrounded by a second chamber
(compartments 22a, 22b, 22c, etc.), but acknowledges that “Profy does not
explicitly disclose that the volume of the second chamber is at least 10-fold
less than [the] volume of the first chamber.” Ans. 5. However, the
Examiner finds that Profy discloses that the shared wall (frustoconical
tubular wall 28) between the first and second chambers “affects the
measurement precision of the device.” Id. Thus, the Examiner determines
that
it would have been obvious to one of ordinary skill in the art at
the time of [sic] the invention was made that the exterior wall
28 of the overflow chamber may have been moved radially
outward in order to decrease the volume in the outer
compartments, which would allow the device to have greater
precision.

1 Appellant filed an Amendment on May 4, 2012, amending claim 18 to
include the limitation of claim 32. The Examiner entered this Amendment.
See Advisory Action mailed May 11, 2012; Amendment initialed by
Examiner on May 8, 2012 (entered May 11, 2012). It appears that claim 32,
which depends from claim 18, should have been canceled.
Appeal 2012-011402
Application 12/454,179

3
Id. (citing Profy, Figs. 1, 3; col. 2, l. 59–col. 3, l. 13; col. 5, ll. 44–47).
Appellant alleges that the Examiner mischaracterizes the teachings of
Profy. Appeal Br. 4. Appellant asserts that Profy’s teachings with respect to
permitting small amounts of urine to be measured more readily are directed
to the benefits of a sloped wall 28 as compared to a wall of uniform
circumference, and argues that reducing the volume of the outside chamber
by moving wall 28 outward would conflict with Profy’s teachings and
exacerbate the stated problem of collecting total urine flow volumes. Id.
(citing Profy, col. 2, ll. 62, 64). According to Appellant,
Profy likes the higher precision provided by smaller cross-
section at the bottom of chambers, particularly for
measurements of very low urine flow rates in very ill patients,
but he makes it clear that the overflow volume must not be
compromised to the point where significant amounts, less than
1.5 to 2 cc/min, are lost and unmeasurable. Profy could have
pushed the wall 28 out for more precision, as suggested
in the rejection, but he insisted on retaining the volume required
to less accurately measure total urine flow volumes of
significance. If the drum of Profy were modified, as suggested
by the Office in the rejection, urine would overflow earlier and
volumes of urine considered significant by Profy would be lost.
Therefore, Profy expressly motivates against (teaches away)
redesign [of] the Profy drum in a way required for the rejection.
Of course, no teaching of Profy suggests a problem to be solved
or motivates that would inspire one of skill to change
his 4:1 outer to inner chamber volume ratio to the at least 1:10
of the present claims.
Id. at 4–5.
Appellant also urges that the proposed modification “would change
the principle of operation of [Profy’s device by focusing] only on precision,
thus rendering the device inoperable for the intended purpose of measuring
all significant total urine flows.” Id. at 5. Appellant contends that “Profy
Appeal 2012-011402
Application 12/454,179

4
teaches that by tapering in the wall, normal flows in the range of 60 cc/hr
can be accurately measured, while also retaining additional amounts for
measurement of total 24 hour volumes.” Reply Br. 3; see also id. at 4
(quoting Profy, col. 1, ll. 6–23).
Profy mentions that “[i]n addition to regulating the feed rate of
administered fluid in accordance with the rate of urinary output, it is
required under certain circumstances to measure the total urinary output of a
given patient during a given period of time, such as a twenty-four hour
period.” Profy, col. 1, ll. 19–23. Profy discloses “tapered, frustoconical
tubular member 28 which is fluid-tightly fixed at its bottom end to the
bottom wall 14 and which tapers in an upward direction” such that “small
amounts of urine may be measured more readily inasmuch as the liquid level
reached will be higher than if the compartment were of uniform
circumference.” Profy, col. 2, ll. 64–69. Tapered tubular member 28
together with central tubular wall 16 defines overflow chamber 30 into
which urine from outer compartments 22a, 22b, 22c, etc. can overflow via
openings 32. Profy, col. 3, ll. 3–12. Profy also discloses that “[a]ny volume
of urinary output over 1.5 to 2 cc. per minute would have little significance
as to its exact volume, and for this reason the overflow means 30, 32 is
provided to enable the excess volume to spill over into the overflow
chamber 30.” Profy, col. 5, ll. 44–46.
Having considered the teachings of Profy in light of the contentions of
both the Examiner and Appellant, we find that Appellant has the better
position. We understand Profy to be interested in having a smaller radial
spacing between outer cylindrical wall 12 and tapered tubular member 28
near the bottom of the device to permit small amounts of urine to be
Appeal 2012-011402
Application 12/454,179

5
measured more readily when regulating the feed rate of administered fluid in
accordance with the rate of urinary output, especially in the case of relatively
slow urinary output, while, at the same time, providing a sufficiently large
total volume in the outer compartments to permit measurement of the total
urinary output of a given patient during a given time period, such as, for
example, a twenty-four hour day. Profy’s tapered frustoconical tubular
member 28 facilitates both objects because it provides small radial spacing
between wall 12 and member 28 near the bottom of the device while also
providing sufficient total volume in the outer compartments to measure total
output over a longer time period. Thus, it is not clear that a person having
ordinary skill in the art would have been prompted to modify Profy’s device
by moving member 28 outward to decrease the volume in the outer
compartments, as proposed by the Examiner, because doing so might
interfere with its ability to perform the second function—measuring total
urine output over a longer time period.
For the above reasons, Appellant persuades us that the Examiner does
not establish a prima facie case of obviousness of the subject matter of claim
18. Accordingly, we do not sustain the rejection of claim 18 or its
dependent claims 19–21, 31, and 32 as unpatentable over Profy.

DECISION
The Examiner’s decision rejecting claims 18–21, 31, and 32 is
reversed.
REVERSED
mls