Ex parte Levinson

Board of Patent Appeals and Interferences

Sep 21, 2000

08832013 (B.P.A.I. Sep. 21, 2000)

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publication and is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MITCHELL LEVINSON
____________
Appeal No. 2000-0298
Application No. 08/832,013
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ON BRIEF
____________
Before PATE, McQUADE and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 14, which are all of the claims
pending in this application.
The appellant's invention relates to a sensor which
includes a biasing means having an initial relaxed position
which is compressed. The biasing means is expandable upon the
absorption of fluid. An understanding of the invention can be
derived from a reading of exemplary claim 1, which appears in
the appendix to the appellant’s brief.
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Application No. 08/832,013
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THE PRIOR ART
The prior art references of record relied upon by the
examiner rejecting appealed claims are:
Matejcek et al. 3,306,966 Feb. 28, 1967
Wood et al. (Wood) 3,903,232 Sep. 2, 1975
Chung et al. (Chung) 5,247,932 Sep. 28, 1993
THE REJECTION
Claims 1 through 14 stand rejected under
35 U.S.C. § 103 as being unpatentable over Chung in view of
Wood and Matejcek.
Rather than reiterate the conflicting view points
advanced by the examiner and the appellant regarding the above
noted rejection, we make reference to the examiner's answer
for the examiner's complete reasoning and supported rejection
and to the appellant's briefs 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
Appeal No. 2000-0298
Application No. 08/832,013
3
examiner. As a consequence of our review, we make the
determinations which follow.
We initially note that the rejection is made under 35
U.S.C. § 103, and that in rejecting claims under 35 U.S.C. §
103, the examiner bears the initial burden of presenting a
prima facie case of obviousness. See In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima
facie case of obviousness is established by presenting
evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the art having the
references before him to make the proposed combination or
other modification. See In re Lintner, 458 F.2d 1013, 1016,
173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion
that the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have lead that individual
to combine the relevant teachings of the references to arrive
at the claimed invention see In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). With this
background we analyze the prior art applied by the examiner in
Appeal No. 2000-0298
Application No. 08/832,013
4
the rejection of the claims on appeal. The examiner finds
that Chung discloses the invention substantially as claimed
except that Chung includes a biasing bladder comprised of foam
which must be flattened during insertion and then re-expanded
when the sensor is in the preferred region, as opposed to a
pre-compressed foam. The examiner has relied on the teachings
of Wood that foam can be used for a variety of medical
applications and that the use of compressed foam allows the
structures to be readily inserted into the body cavity with
subsequent expansion upon contact with body fluids. The
examiner relies on Matejcek for teaching an alternate process
for preparing contact expandable foams that includes
impregnating a foam with defatiguing agent, compressing the
foam, and allowing the foam to dry (examiner's answer at pages
3 to 4). From these teachings the examiner concludes:
It would have been obvious to modify the device and
manufacture of Chung et al. to incorporate
compressed foam formed by the method of Matejcek et
al. for the biasing bladder since this would provide
a more convenient form for insertion into the body
as taught by Wood et al. [examiner's answer at page
4].
The appellant argues that there is no suggestion to
combine the teachings of Chung with those of Wood and Matejcek
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Application No. 08/832,013
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because there is no suggestion in Wood and Matejcek to use the
foam therein disclosed as a biasing means. We agree with the
reasoning of the appellant, and thus we will not sustain the
examiner's rejection.
Chung discloses that the bladder 40 is comprised of
resilient open-celled polyurethane foam. Chung also discloses
that this foam may be replaced with a spring or diaphragm or
other biasing mechanism. Wood while disclosing that
compressed foam which is expandable may be utilized for
insertion into the body, also discloses that this foam is soft
and hydrophilic. Wood does not teach or suggest that the foam
is resilient or can be utilized as a biasing means. Likewise,
while Matejcek does disclose a compressed foam, Matejcek
discloses nothing about the resiliency of this foam or the use
of the foam as a biasing means. None of these mechanisms
meets the limitations in independent claims 1, 10 and 13
requiring a biasing means which has an initial, relaxed,
compressed position and is expandable upon the absorption of
fluid.
As it is our opinion that there is no suggestion in
either Matejcek or Wood for utilizing the foam therein
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Application No. 08/832,013
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disclosed as a biasing means, we find no suggestion for
combining the teachings as proposed by the examiner.
The decision of the examiner is reversed.
REVERSED
WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 2000-0298
Application No. 08/832,013
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Paul C. Haughey
Townsend and Townsend and Crew
Two Embarcadero Center
8th Floor
San Francisco, CA 94111-3834