Ex Parte Murison

Patent Trial and Appeal Board

May 29, 2018

13014321 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/014,321 01/26/2011
146167 7590 05/31/2018
V orys, Sater, Seymour and Pease LLP
1909 K St., NW
9th Floor
WASHINGTON, DC 20006-1152
FIRST NAMED INVENTOR
Bruce Murison
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.
074537.000002 1382
EXAMINER
MILLER, CHRISTOPHER E
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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):
patlaw@vorys.com
VDocketHou@vorys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE MURISON
Appeal2016-005569
Application 13/014,321
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bruce Murison (Appellant) 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's February 27, 2015, final decision rejecting claims 19--23,
25--47, 49---67, 69, 72-77, 81-92, and 94. Appellant's representative
1 The Appeal Brief identifies Standard Innovation Corporation as the real
party in interest. Appeal Br. 3.
Appeal 2016-005569
Application 13/014,321
presented oral argument on May 15, 2018. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
SUMMARY OF THE INVENTION
Appellant's disclosure is directed to "an electro-mechanical device for
sexual stimulation." Spec. 1. Claims 19, 65, 66, 67, 69, 85, and 92 are
independent. Claim 19, reproduced below from page 46 (Claims Appendix)
of the Appeal Brief, is illustrative of the claimed subject matter:
19. A sexual stimulation device to be worn by a woman
compnsmg:
an inner arm having a vaginal wall contacting portion
dimensioned to contact a vaginal wall when said inner arm is
inserted into a vagina of said woman;
an outer arm having a clitoris contacting portion
dimensioned to contact a clitoral area of said woman when said
inner arm is inserted into said vagina;
a middle portion connecting the inner arm to the outer
arm, and being sized and shaped to permit sexual intercourse
when said sexual stimulation device is emplaced on said
woman; and
an internal skeleton configured to resiliently urge said
vaginal wall contacting portion into contact with an anterior
surface of said vaginal wall, and to resiliently urge said clitoris
contacting portion into contact with said clitoral area when said
sexual stimulation device is emplaced on said woman, such that
said device is held in place during intercourse.
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Application 13/014,321
REJECTIONS
Claims 19--23, 31, 32, 51-54, 66, and 67 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Sekulich2 and Nan. 3
Claims 33-36, 44, 47, 49, 50, 65, 69, 72-77, 81-86, 88-92, and 94
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sekulich,
Nan, and Kain. 4
Claims 25-27 and 55-57 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sekulich, Nan, and Robbins. 5
Claim 58 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sekulich, Nan, Robbins, and Ben-Noon. 6
Claims 28-30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sekulich, Nan, and Hartz. 7
Claims 37-39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sekulich, Nan, Kain, and Chenvainu. 8
Claims 45, 46, and 59 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sekulich, Nan, Kain, and Fujisawa. 9
2 US 3,996,930, issued Dec. 14, 1976.
3 US 2005/0273024 Al, published Dec. 8, 2005.
4 US 5,690,603, issued Nov. 25, 1997.
5 US 2003/0018285 Al, published Jan. 23, 2003.
6 US 6,010,471, issued Jan. 4, 2000.
7 US 2003/0023139 Al, published Jan. 30, 2003.
8 US 2005/0272002 Al, published Dec. 8, 2005.
9 US 2004/0068213 Al, published Apr. 8, 2004.
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Application 13/014,321
Claims 40-42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sekulich, Nan, Robbins, and Mangano. 10
Claim 43 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sekulich, Nan, Robbins, Mangano, and Duboff. 11
Claims 60-64 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sekulich, Nan, Kain, Fujisawa, and Leventhal. 12
Claim 87 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sekulich, Nan, Kain, and Jacobs. 13
ANALYSIS
Rejection Based on Sekulich and Nan
The Examiner finds that Sekulich discloses a sexual stimulation
device substantially as claimed in claim 19, including an inner arm, and
outer arm, and a middle portion that is "sized and shaped to permit sexual
intercourse because the device is 'approximately 5/16 inch in diameter."'
Final Act. 4 (citing Sekulich, 1:59---64, 2:3, Figs. 1-2). The Examiner
interprets this dimensional disclosure as setting forth that Sekulich's device
has "a low profile ... and this small diameter would allow the device to be
used during intercourse. The male member would still be able to fit
alongside the Sekulich device." Id. The Examiner further finds that
although Sekulich discloses that its device is resilient such that the
10 US 2004/0267173 Al, published Dec. 30, 2004.
11 US 6,203,509 Bl, issued Mar. 20, 2001.
12 US 6,440,092 B 1, issued Aug. 27, 2002.
13 US 5,853,362, issued Dec. 29, 1998.
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Application 13/014,321
stimulator is held in position by its own resiliency, it does not disclose an
internal skeleton as recited in claim 19. Id. (citing Sekulich, 1 :23-25), 46
(citing Sekulich, 1 :59-64); see also id. at 48 ("the only deficiency that
Sekulich has is a lack of an internal skeleton"); see also Ans. 48--49
(regarding resiliency of Sekulich's device).
The Examiner finds that Nan discloses a sexual stimulation device
having an internal skeleton that "acts as a support skeleton for the outer
device ... and allows it to bend to a desired shape." Final Act. 5 (citing
Nan, Figs. 3, 4, 7). The Examiner determines that it would have been
obvious to one of ordinary skill in the art "to modify the device of Sekulich
to include the malleable internal skeleton as taught by Nan so that the device
may be bent to a desired shape so the device can be custom fit to match each
specific user's desire." Id. (emphasis added). Thus, the Examiner
continues,
the modified Sekulich/Nan device has an internal skeleton (60
of Nan) configured to resiliently urge the vaginal wall
contacting portion into contact with an anterior surface of the
vaginal wall (the device is resilient, and the malleable member
60 is configured to have the device bent into this configuration),
and to resiliently urge the clitoris contacting portion into
contact with the clitoral area when the sexual stimulation device
is emplaced upon the woman (the device is resilient, and the
malleable member 60 is configured to have the device bent into
this configuration), such that the device is held in place during
intercourse.
Id. (emphases added); see also id. at 48 ("the modified Sekulich/Nan device
[is] configured to permit sexual intercourse because the Sekulich/Nan device
could be bent into a hook-like configuration similar to the shape of the
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instant application"). The Examiner rejects independent claims 66 and 67 in
the same manner as independent claim 19. See id. at 8-10.
Appellant traverses, arguing, inter alia, that "each of the pending
claims clearly requires that the device hold itself in place by resiliently
urging the two facing portions (arms) toward one another." Appeal Br. 27.
Continuing, Appellant argues:
[T]he subject matter of all of the pending claims of the present
application requires the internal skeleton/core to urge the inner
arm into contact with an anterior surface of the vagina such that
the device is held in place during intercourse. There is no
teaching or suggestion in Sekulich for the device described
therein to be modified in the manner suggested by the
Examiner.
Id. at 28-29.
We are persuaded of error in the rejection. The Examiner relies on
Sekulich to teach resiliency. Final Act. 4, 46. The rejection modifies
Sekulich's device to include Nan's malleable member 60, which, as
correctly noted by the Examiner, "may be bent relative to the proximal
portion 24 and maintain that bent orientation." Nan i-f 26 (boldface omitted);
see also Final Act. 5. What the Examiner has not explained, however, is
how Sekulich's resiliency is maintained with the addition of Nan's malleable
member. To the contrary, it appears that Sekulich's resiliency would be
vitiated by the addition of Nan's malleable member. If the modified
Sekulich/Nan device is bent to a desired shape as shown in Nan Figure 4
(relied upon by the Examiner) and retained in such desired shape, as set
forth by the rejection, such static shape retention must necessarily overcome
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any resiliency imparted by Sekulich' s structure. 14 We note that malleability
entails permanent or plastic deformation, whereas resiliency entails elastic
deformation and a return to the original shape. See, e.g., George S. Brady et
al., Materials Handbook 1026-27 (14th ed. 1997). The modified
Sekulich/Nan structure as set forth by the Examiner, therefore, would not
include an internal skeleton configured to resiliently urge the two facing
portions of the inner and outer arms toward one another as required by
independent claims 19, 66, and 67.
We further disagree with the Examiner's interpretation that the recited
resilience of the internal skeleton is an indication of intended use. See, e.g.,
Ans. 49. To the contrary, the recited resilience defines a material property
of the claimed device and, thus, is a structural recitation.
For the foregoing reasons, we do not sustain the rejection of
independent claims 19, 66, and 67 and of claims 20-23, 31, 32, and 51-54,
which depend from claim 19, as being unpatentable over Sekulich and Nan.
Rejections Based on Sekulich, Nan, and One or More of Kain, Robbins, Ben-
Noon, Hartz, Chenvainu, Fujisawa, Mangano, Duboff, Leventhal, and
Jacobs
Like independent claims 19, 66, and 67 discussed above, each of
independent claims 65, 69, 85, and 92 requires a resilient internal
skeleton/core. See Appeal Br. 51-53, 55, and 57 (Claims App.). The
Examiner relies on Sekulich and Nan to disclose such a resilient
skeleton/core in the same manner as discussed above. Final Act. 14--18, 22-
14 Nan discloses a "middle portion to be bent and maintain that bent
orientation." Nan Abstract (emphasis added); see also Nan i-fi-15, 7, 12, 26.
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24, and 25-27. The Examiner does not rely on Kain or the other cited
references in any manner that would remedy the deficiencies noted above
with respect to the combination of Sekulich and Nan. See id. 11--40.
Regarding the Examiner's reliance on design choice or Hartz to teach an
internal skeleton "made from one or more of a thermoplastic elastomer, a
molded nylon or polyurethane" as required by claim 28 (see id. at 31-32),
we understand the Examiner's reliance thereon to be congruent with the
Examiner's earlier reliance on the malleability of Nan's internal skeleton,
and not as a cure of the above noted defect. We note that the Examiner does
not explain whether these allegedly obvious materials would result in a
malleable, or, on the other hand, a resilient, skeleton.
Accordingly, for the foregoing reasons, we do not sustain the
rejections of: claims 33-36, 44, 47, 49, 50, 65, 69, 72-77, 81-86, 88-92,
and 94 as being unpatentable over Sekulich, Nan, and Kain; claims 25-27
and 55-57 as being unpatentable over Sekulich, Nan, and Robbins; claim 58
as being unpatentable over Sekulich, Nan, Robbins, and Ben-Noon; claims
28-30 as being unpatentable over Sekulich, Nan, and Hartz; claims 37-39 as
being unpatentable over Sekulich, Nan, Kain, and Chenvainu; claims 45, 46,
and 59 as being unpatentable over Sekulich, Nan, Kain, and Fujisawa;
claims 40--42 as being unpatentable over Sekulich, Nan, Robbins, and
Mangano; claim 43 as being unpatentable over Sekulich, Nan, Robbins,
Mangano, and Duboff; claims 60-64 as being unpatentable over Sekulich,
Nan, Kain, Fujisawa, and Leventhal; and claim 87 as being unpatentable
over Sekulich, Nan, Kain, and Jacobs.
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DECISION
The Examiner's decision to reject claims 19-23, 25--47, 49---67, 69,
72-77, 81-92, and 94 is reversed.
REVERSED
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