Ex Parte Pelster

Board of Patent Appeals and Interferences

Jun 18, 2010

11126384 (B.P.A.I. Jun. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL PELSTER
____________________

Appeal 2009-009183
Application 11/126,384
Technology Center 3700
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Decided: June 18, 2010
____________________

Before: LINDA E. HORNER, WILLIAM F. PATE III, and FRED A.
SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009183
Application 11/126,384
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a rejection of
claims 8-13. App. Br 2. We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
The claims are directed to a urine collection and monitoring system.
Claim 8, reproduced below, is illustrative of the claimed subject matter:
8. A system for collecting and measuring liquid, the system
comprising:
a support;
a laterally and downwardly closed liquid-collection cup
mounted on the support and having a lower region;
means including an input line for feeding liquid into the
cup;
a liquid-collection chamber mounted on the support
horizontally generally level with the collection cup;
an upright rigid dip tube fixed in the collection cup and having
an open lower end in the lower region of the cup and an upper
end above the cup and above the chamber;
elastically deformable tubing extending above the cup and
above the chamber between the dip-tube upper end and the
collection chamber; and
a peristaltic pump along the tubing operable to advance the
liquid up the dip tube, generally horizontally along the tubing,
and down into the collection chamber.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kowal
Coanda
Gordon
LeVeen
Cianci
Walker
US 2,848,996
US Re. 26,964
US 4,494,581
US 4,532,936
US 4,579,126
US 5,741,237
Aug. 26, 1958
Oct. 13, 1970
Jan. 22, 1985
Aug. 6, 1985
Apr. 1, 1986
Apr. 21, 1998
Appeal 2009-009183
Application 11/126,384
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REJECTIONS
Claims 8-13 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement. Ans. 3.
Claims 8, 9, 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over LeVeen and Walker. Ans. 3.
Claims 10 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over LeVeen, Walker and Coanda. Ans. 6.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over LeVeen, Walker and Cianci. Ans. 7.
Claims 8, 9, 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over LeVeen and Kowal. Ans. 8.
Claims 10 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over LeVeen, Kowal, and Coanda.1 Ans. 11.

OPINION
The rejection of claims 8-13 under 35 U.S.C. § 112 first paragraph as
failing to comply with the enablement requirement is reversed.
The standard for determining whether the specification meets the
enablement requirement was cast in the Supreme Court decision of Minerals
Separation v. Hyde, 242 U.S. 261, 270 (1916), which postured the question:
is the experimentation needed to practice the invention undue or
unreasonable? That standard is still the one to be applied. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988).

1 “Gordon” should apparently read “Coanda” based upon the discussion
following the statement of rejection. This error does not present a material
issue in the case.
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The Examiner has not provided sufficient evidence or rationale to
explain why undue or unreasonable experimentation would be required in
order to practice the invention. Ans. 3, 13. One of ordinary skill in the art
would know how to make the liquid-collection chamber horizontally
generally level with the collection cup without any undue or unreasonable
experimentation. Thus the Examiner’s rejection of claims 8-13 for failing to
comply with the enablement requirement must be reversed.

The rejections of claims 8-13 under 35 U.S.C. § 103(a) are affirmed.
The rejections of claims 8, 9, 11 and 12 as being unpatentable over
LeVeen are argued as a group. App. Br. 6-8. Separate subheadings are
provided to address the remaining rejections. However, in each instance the
underlying issue remains the same. App. Br. 8-10. Appellant contends that
the combination of LeVeen and Walker, or, in the alternative, LeVeen and
Kowal, fails to teach or suggest the combination of a chamber and collecting
cup level with each other and a connecting tube above the two of them for
transferring liquid as recited in claim 8. App. Br. 8, 10, 11; Reply Br. 2-3.
Initially, we note that the Examiner takes a somewhat ambiguous
position with regard to the construction of the term “generally level.” At first
the Examiner contends that LeVeen’s collection bag 90, read as the claimed
“liquid-collection chamber”, is “generally level” with LeVeen’s
measurement column 40, read as substitutable with a “liquid-collection cup”
of the type described by Walker or Kowal. Ans. 4-5; See LeVeen, fig. 1, col.
3, ll. 35-54. The Examiner then contends that it would have been obvious to
make the two liquid collection structures “generally level.” Ans. 6. The first
position advanced by the Examiner would require a determination of
whether LeVeen’s collection bag 90 and measurement column are
Appeal 2009-009183
Application 11/126,384
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“generally level” within the broadest reasonable interpretation of that term.
However, since, as discussed further below, we agree with the Examiner’s
conclusion that making those structures level would have been obvious, the
issue of whether LeVeen’s collection bag 90 and measurement column are
“generally level” need not be reached. Reply Br. 1-3. This ambiguity does
not constitute reversible error. Since both points were contended by the
Examiner, Appellant was provided a fair opportunity to respond to the
merits of the rejection.
LeVeen discloses a measurement column 40 for collecting and
measuring urine. LeVeen, col. 3, ll. 43-50. From the bottom of the
measurement column 40, a tube 36(a), which passes through peristaltic
pump 50, in at least one configuration, ultimately delivers urinary output to
collection bag 90. LeVeen, col. 3, ll. 50-54; fig. 1.
Walker teaches a system for the disposal of bodily fluids, wherein the
fluids are temporarily stored in a canister 1. Walker, col. 1, ll. 5-7, col. 4, ll.
9-10; fig. 1. To remove the fluids from the canister 1, Walker uses a suction
tube 44, read as the claimed “dip tube,” extending into the canister and
connected with an output port 30. Col. 3, ll. 48-50. The output port may be
connected to a vacuum or peristaltic pump which provides suction to
withdraw the fluids from the container. Walker, col. 6, ll. 20-29, col. 7, ll.
58-62.
Kowal teaches a structure very similar to Walker’s, wherein, in at
least one configuration, fluids are forced out of a receptacle 12 via a tube 56
extending to the bottom of the receptacle. Kowal, col. 2, ll. 20-23; fig 1.
Walker and Kowal demonstrate that it was known in the art to use a
tube inserted from the top of a container in order to remove fluids though the
top of that container. Applying the known technique demonstrated by
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Walker and Kowal, to remove fluid from the top, as opposed to the bottom
of a container would have the predictable result of facilitating removal of the
container and fluids therein. Ans. 17. Due to the closed bottom, fluid within
the container will be less likely to flow out under the influence of gravity.
For these reasons, such a modification would have been obvious to one
having ordinary skill in the art.
Appellant correctly asserts that LeVeen does not disclose the claimed
dip tube. App. Br. 7. However, the Examiner never made such a contention.
Ans. 14. Nor did the Examiner contend that LeVeen’s housing 30 is
equivalent to the “collection cup.” App. Br. 7; Ans. 14; Final. Rej. 3. These
arguments fail to address the Examiner’s position. Appellant’s discussion of
the deficiencies of LeVeen alone, also does not address the Examiner’s
position because the rejection is based upon the combination of LeVeen and
Walker or Kowal. See, e.g., In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures).
Appellant argues that Walker is not meaningful because the present
application is not directed to a dip tube in and of itself. This argument is not
persuasive. Walker is not related to a dip tube in and of itself. Walker is
clearly concerned with the movement and disposal of bodily fluids. Walker,
col. 1, ll. 5-7. Regarding Walker, Appellant contends that “[t]he dip tube 44
has no other function and in fact is not actually [sic] to a pump; instead the
vessel 14 is pressurized and the liquid is forced out of it.” App. Br. 8. This
argument contradicts the express teaching of Walker that “fluid conduit 202
comprises a vacuum pump 218 connectable to suction tube 44.” Walker, col.
6, ll. 20-21. (Emphasis added).
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Appellant argues Kowal suffers from the same deficiency of Walker,
namely the lack of a suction pump. App. Br. 10. Kowal may not expressly
describe how to supply “a source of water under pressure” but Kowal, like
Walker, is cited to demonstrate that it is known in the art to use a dip tube to
empty a container. The pump is already present in LeVeen and one of
ordinary skill in the art would know how to implement the tubes of Walker
and Kowal into the LeVeen device in order to arrive at a working product.
Furthermore, one of ordinary skill in the art would understand that a
pump is a possible option to supply pressure in Kowal. It is helpful, but not
essential, that Walker expressly describes connecting a peristaltic pump to a
suction tube in order to empty the container. Even absent an express
description of each and every conceivable location of the pump, the tubes
and the collection locations, one of ordinary skill in the art would not read
LeVeen in combination with Walker or Kowal as teaching that these
elements must be confined to a particular location. The skilled artisan would
recognize that a pump can provide a positive or negative pressure, that is,
propulsion or suction, respectively. See, e.g., Pump. (1988). In Illustrated
Dictionary of Science, Andromeda. Retrieved from
http://www.credoreference.com/entry/andidsci/pump. The skilled artisan
would also recognize that a pump’s location in the flow path can be varied
and so can the relative heights of the input and output, so long as they fall
within the capabilities of the pump. See id. (The ability to raise liquid to a
particular height being a distinguishing characteristic of pumps.) What a
reference teaches or suggests must be examined in the context of the
knowledge, skill, and reasoning ability of a skilled artisan. What a reference
teaches a person of ordinary skill is not limited to what a reference
specifically “talks about” or what is specifically “mentioned” or “written” in
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Application 11/126,384
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the reference. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380
(Fed. Cir. 2005). “[A] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007).

DECISION
The rejection of claims 8-13 under 35 U.S.C. § 112 first paragraph as
failing to comply with the enablement requirement is reversed.
The rejections of claims 8-13 under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

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