Ex Parte Larsson

Patent Trial and Appeal Board

Sep 17, 2012

10918280 (P.T.A.B. Sep. 17, 2012)

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.
10/918,280 08/13/2004 Michael Larsson 07-2064-A 3906
20306 7590 09/17/2012
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
FLICK, JASON E
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
09/17/2012 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 MICHAEL LARSSON
__________

Appeal 2011-010902
Application 10/918,280
Technology Center 3700
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 39-45.
1
We have jurisdiction under 35
U.S.C. § 6(b).

1
Claims 1-38 and 46-51 are also pending, but stand withdrawn from
consideration (App. Br. 1).
Appeal 2011-010902
Application 10/918,280

2
STATEMENT OF THE CASE
Claim 39 is the only independent claim on appeal, and reads as
follows:
39. A device for detecting one or more parameters associated with breast
tissue, including skin, during breastmilk expression in a human female,
comprising: a breast shield having an interior part within which a portion of
the breast is received including the nipple; and a sensor associated with said
breast shield, said sensor adapted to detect a parameter associated with
breast tissue, including skin, during breastmilk expression.

The following grounds of rejection are before us for review:
I. Claims 39-42 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Rosenfeld.
2

II. Claims 43-45 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Rosenfeld and Hung.
3

We affirm-in-part.

ANALYSIS
Rejection I
The Examiner rejects claims 39-42 as being anticipated by Rosenfeld
(Ans. 4).
The Examiner finds that Rosenfeld teaches all of the elements of
claims 39-42 (id.). As we agree with the Examiner‟s findings, we adopt
them as our own.

2
Rosenfeld, US 5,827,191, issued Oct. 27, 1998.
3
Hung et al., US 6,314,315 B1, issued Nov. 6, 2001.
Appeal 2011-010902
Application 10/918,280

3
Appellant argues that Rosenfeld “fails to teach both a „breast shield‟
and a „sensor adapted to detect a parameter associated with breast tissue,
including skin, during breastmilk expression‟” (App. Br. 3). Appellant
asserts that breast shield is defined at paragraph 24 of the Specification, as
well as shown in Figures 1-2, and “as is known in the art, is structurally
configured for use in conjunction with a breast pump and collecting
container, not for use with an infant” (id.).
Appellant argues, in contrast, Rosenfeld is drawn to a “flexible elastic
nipple cover designed like a nipple with holes above the real nipple, which is
placed on the woman‟s breast above and around the nipple” (id.). Appellant
asserts that “Rosenfeld‟s elastic nipple cover with holes, for use with an
infant, is structurally very different than Appellant‟s breast shield for use
with a breast pump” (id.).
Appellant also argues that the “claimed sensor may detect, for
example, changes in conductance, acoustic properties, optical properties,
and/or thermal properties in the human breast” (id. at 4). According to
Appellant, Rosenfeld‟s sensor that measures the volume of milk externally is
thus not “a „sensor adapted to detect a parameter associated with breast
tissue, including skin, during breastmilk expression,‟ as recited in amended
Claim 39” (id.). Appellant asserts that the “volume flow of breast milk that
has already been expressed from, and not residing within, a breast is not a
parameter associated with the breast tissue itself; expressed milk is
indisputably (to use the Examiner‟s words) separate and apart from a breast”
(id.).
Appeal 2011-010902
Application 10/918,280

4
We have carefully considered Appellant‟s arguments, but do not find
them convincing.
Our mandate is to give claims their broadest reasonable interpretation
consistent with the Specification as it would be interpreted by one of
ordinary skill in the art. In re American Academy Of Science Tech Center,
367 F.3d 1359, 1364 (Fed. Cir. 2004). “[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). “[L]imitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). See
also Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1342 (Fed. Cir.
2010) (“„it is improper to read limitations from a preferred embodiment
described in the specification – even if it is the only embodiment – into the
claims absent a clear indication in the intrinsic record that the patentee
intended the claims to be so limited.‟”).
We have reviewed Appellant‟s Specification, but it does not define a
breast shield as requiring use with a breast pump. Paragraph 24 of the
Specification (Spec. 6) only describes what is shown in Figures 1 and 2, but
does not provide a definition of breast shield. In addition, the only structure
required by the breast shield of claim 39 is that it have “an interior part
within which a portion of the breast is received including the nipple,” which
structure, as found by the Examiner, is taught by the elastic cover of
Rosenfeld.
Appeal 2011-010902
Application 10/918,280

5
The Specification also does not define a “sensor adapted to detect a
parameter associated with breast tissue, including skin, during breastmilk
expression,” but only provides examples of what is encompassed by such a
sensor. For example, the Specification teaches that the “sensors used can be
any type of sensor suitable for detecting changes in the mother‟s breast, in
particular, for example, electrodes, optical sensors, acoustic sensors and
thermal sensors” (Spec. 2, ¶7). Thus, the Specification does not exclude
measuring the volume of milk expressed, as the volume of milk expressed
by the breast is a parameter associated with breast tissue. We thus affirm the
anticipation rejection as to claim 39.
As Appellant does not argue claim 40 separately, it stands or falls
with claim 39. 37 C.F.R. § 41.37(c)(1)(vii). As to claims 41 and 42,
Appellant‟s argument is merely a recitation of the claim limitations (App.
Br. 5), and thus claims 41 and 42 stand or fall with claim 39. 37 C.F.R.
§ 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”).

Rejection II
The Examiner rejects claims 43-45 as being rendered obvious by the
combination of Rosenfeld and Hung (Ans. 5).
The Examiner relies on Rosenfeld as set forth for the anticipation
rejection (id.). The Examiner notes that “Rosenfeld does not specifically
disclose the sensors include an electrode extending from said contact
through the breast shield” (id.).
Appeal 2011-010902
Application 10/918,280

6
The Examiner relies on Hung for teaching “a breast
shield (figure 2, item 50) comprising a plurality of sensors being an
electrode (figure 2, item 52) extending from said contact through the breast
shield and terminating in a connection for attachment to a wire (column 6,
lines 29-56)” (id.). The Examiner concludes that it would have been
obvious “to modify the structure taught by Rosenfeld with use of electrodes,
as taught by Hung, in order to allow for increased functionality of the
device, thereby enhancing diagnostic and therapeutic capabilities” (id.).
Appellant argues that there is no reason to combine Hung with
Rosenfeld (App. Br. 5). Specifically, Appellant asserts that “Hung is drawn
to the identification of ductal orifices on a mammalian breast nipple via
measurement of characteristic electrical signals on a nipple surface” in order
“to deliver a therapeutic agent to the duct and/or retrieve cellular or other
materials” (id. at 6). As such the electrode patch of Hung is employed on
the surface of the nipple, which would block the flow of milk in the shield of
Rosenfeld (id. at 7).
We agree with Appellant that the ordinary artisan would not have
combined Hung with Rosenfeld to arrive at the device of claims 43-45.
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), while the
Supreme Court emphasized “an expansive and flexible approach” to the
obviousness question, it also reaffirmed that “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” Id. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (emphasis added).
Appeal 2011-010902
Application 10/918,280

7
The device of Rosenfeld is an elastic cover that is designed like a
nipple with holes above the woman‟s nipple for the passage of milk from the
woman‟s nipple to a baby‟s mouth (Rosenfeld, col. 2, ll. 39-45). The device
of Hung is used to identify individual ductal orifices on a nipple of a
mammalian breast, wherein at least one test electrode is engaged with a test
location on the surface of the nipple (Hung, col. 2, ll. 15-21). In this case,
the Examiner relies on the conclusory statement that the ordinary artisan
would have combined the references “to allow for increased functionality of
the device, thereby enhancing diagnostic and therapeutic capabilities” (Ans.
5). That statement, however, does not explain or provide scientific
reasoning as to why the ordinary artisan would have placed an electrode on
the nipple during breastfeeding, or how the electrode of Hung could be
modified to measure the volume of milk expressed in the device of
Rosenfeld. We therefore reverse the obviousness rejection.

SUMMARY
We affirm Rejection I, but reverse Rejection II.

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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