Ex parte KAUS

Board of Patent Appeals and Interferences

Jul 19, 2001

09171613 (B.P.A.I. Jul. 19, 2001)

Claim 1 was amended subsequent to the final rejection.1
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte REINHOLD KAUS
____________
Appeal No. 2001-0685
Application No. 09/171,613
____________
HEARD: July 11, 2001
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Before ABRAMS, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 11, which are all of the claims
pending in this application.1
We REVERSE.
Appeal No. 2001-0685 Page 2
Application No. 09/171,613
BACKGROUND
The appellant's invention relates to a urinal cone. A
copy of the claims under appeal is set forth in the appendix
to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Bartlett et al. 2,878,486 Mar. 24,
1959
(Bartlett)
Cicio WO 93/11691 June 24, 1993
Claims 1, 5, 6 and 8 to 10 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bartlett.
Claims 3, 4, 7 and 11 stand rejected under 35 U.S.C. §
103 as being unpatentable over Bartlett.
Claim 2 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Bartlett in view of Cicio.
Appeal No. 2001-0685 Page 3
Application No. 09/171,613
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 19,
mailed August 7, 2000) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 18,
filed June 27, 2000) and reply brief (Paper No. 20, filed
October 10, 2000) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The anticipation rejection
We will not sustain the rejection of claims 1, 5, 6 and 8
to 10 under 35 U.S.C. § 102(b).
Appeal No. 2001-0685 Page 4
Application No. 09/171,613
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Claim 1, the sole independent claim on appeal, reads as
follows:
A urinal cone, particularly for a person of the
female gender, to apply to the genital region of the
person for the purpose of urinating, which urinal cone
can be set up from an essentially triangular shape to
form a funnel-shaped body, comprising an envelope with an
upper opening of a large diameter and an opposite-
positioned lower opening of a small diameter wherein the
outside contour of the upper opening has a continuously
tapered radius of curvature and the upper opening of the
envelope can be applied to the genital area of the person
in such a way that this area is enclosed tightly in order
for the person to urinate in a variety of positions
including sitting, standing and squatting.
Bartlett discloses a sanitary device intended to be used
by females in a standing position to conduct urine away from
the body in a substantially narrow stream. As shown in
Figures 1 to 5, the sanitary device 10 includes a tapered
Appeal No. 2001-0685 Page 5
Application No. 09/171,613
passageway 12 extending from an upper opening to a lower
opening. The upper opening is defined by an end limit
periphery 20 which includes both curved and straight portions
as shown in Figures 1-4.
The examiner asserts (answer, p. 4) that the claimed
limitation that the upper opening "has a continuously tapered
radius of curvature and the upper opening of the envelope can
be applied to the genital area of the person in such a way
that this area is enclosed tightly in order for the person to
urinate in a variety of positions including sitting, standing
and squatting" is met by the curved portion of Bartlett's end
limit periphery 20 as shown in Figure 4. The appellant argues
(reply brief, pp. 1-2) that the curved portion of Bartlett's
end limit periphery 20 shown in Figure 4 is not a curve having
a continuously tapered radius of curvature as set forth in
claim 1 on appeal.
After reviewing the disclosure of Bartlett, we conclude
that Bartlett does not disclose that the curved portion of his
end limit periphery 20 shown in Figure 4 is a curve having a
Appeal No. 2001-0685 Page 6
Application No. 09/171,613
continuously tapered radius of curvature as set forth in claim
1 on appeal. In that regard, it is well-settled that under
principles of inherency, when a reference is silent about an
asserted inherent characteristic, it must be clear that the
missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized
by persons of ordinary skill. Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir.
1991).
Since all the limitations of claim 1 are not found in
Bartlett for the reasons set forth above, the decision of the
examiner to reject claim 1, and claims 5, 6 and 8 to 10
dependent thereon, under 35 U.S.C. § 102(b) is reversed.
The obviousness rejections
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Application No. 09/171,613
Claim 7 includes the phrase "reeding or the like." The2
examiner should determine if this phrase complies with
definiteness requirement of the second paragraph of 35 U.S.C.
§ 112 (i.e., that the claim language define the metes and
bounds thereof with a reasonable degree of precision and
particularity. See In re Venezia, 530 F.2d 956, 958, 189 USPQ
149, 151 (CCPA 1976)).
The test for obviousness is what the combined teachings3
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981).
We will not sustain the rejection of claims 2 to 4, 7 and2
11 under 35 U.S.C. § 103. We have reviewed Bartlett and the
Cicio reference additionally applied in the rejection of claim
2 but find nothing therein which makes up for the deficiencies
of Bartlett discussed above. That is, nothing in the combined
teachings of the applied prior art would have made it obvious3
at the time the invention was made to a person of ordinary
skill in the art to have modified the curved portion of
Bartlett's end limit periphery 20 to be a curve having a
continuously tapered radius of curvature as set forth in claim
1 on appeal. Accordingly, we cannot sustain the examiner's
rejection of appealed claims 2 to 4, 7 and 11 under 35 U.S.C.
§ 103.
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Application No. 09/171,613
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 5, 6 and 8 to 10 under 35 U.S.C. § 102(b) is
reversed and the decision of the examiner to reject claims 2
to 4, 7 and 11 under 35 U.S.C. § 103 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 09/171,613
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Application No. 09/171,613
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