Ex Parte Shubin

Patent Trial and Appeal Board

Dec 12, 2017

13836498 (P.T.A.B. Dec. 12, 2017)

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.
13/836,498 03/15/2013 Steven A. SHUBIN SR. 7106-10501 9426
23505 7590
CONLEY ROSE, P.C.
575 N. Dairy Ashford Road
Suite 1102
HOUSTON, TX 77079
EXAMINER
TOWNSEND, GUY K
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
12/14/2017 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):
pathou @conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN A. SHUBIN SR.
Appeal 2016-006244
Application 13/836,498
Technology Center 3700
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steven A. Shubin Sr. (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejections1 under 35 U.S.C. § 102(b) of claims 1—7,
12—16, and 19-28 as anticipated by Rousere (US 2010/0069706 Al, pub.
Mar. 18, 2010); and under 35 U.S.C. § 103(a) of claim 17 as unpatentable
over Rousere and Levy (US 2010/0041944 Al, pub. Feb. 18, 2010); of
claims 8 and 18 as unpatentable over Rousere and Herr (US 7,947,026 B2,
iss. May 24, 2011); and of claims 9, 10, and 22 as unpatentable over Rousere
1 Appeal is taken from the adverse decision of the Examiner, initially set
forth in the Final Office Action, dated July 30, 2015 (“Final Act.”), and as
modified in the Answer dated April 14, 2016 (“Ans.”).
Appeal 2016-006244
Application 13/836,498
and Vayer (US 7,041,064 B2, iss. May 9, 2006).2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM—IN—PART.
CLAIMED SUBJECT MATTER
Claims 1,15, and 24 are independent claims. Claim 1 is reproduced
below and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. A device comprising:
a sleeve of elastomeric material, the sleeve defines:
first and second ends, each end comprising respectively a
first and a second orifice; and
a passage extending between the first and second orifices;
a receptacle comprising:
a side wall and a bottom that define an interior volume;
the receptacle mechanically coupled to the sleeve such that
the interior volume is fluidly coupled to the passage of the sleeve;
and
a shell configured to enclose the sleeve, the shell, sleeve
and receptacle configured to sustain a partial vacuum generated
upon retraction of a mammalian penis inserted in the sleeve.
App. Br. 27 (Claims Appendix).
2Claim 11 has been cancelled by an Amendment filed June 24, 2015. Final
Act. 2. In the Examiner’s Answer, the Examiner withdrew the rejection
under 35 U.S.C. § 102(b) of claims 24—28 as anticipated by Rousere, and
pursuant to 37 C.F.R. § 41.39(a)(2), entered a New Ground of Rejection
under 35 U.S.C. § 103(a) of claims 24 and 26—28 as unpatentable over
Rousere and Matsuura (US 8,353,887 B2, iss. Jan. 15, 2013); and of claim
25 as unpatentable over Rousere, Matsuura, and Vayer. Ans. 10-13, 19.
Appellant elected to file a Reply Brief under 37 C.F.R. §§ 41.39(b)(2) and
41.41, in rebuttal to the new grounds designated in the Answer. See Reply
Br. 10-17.
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Application 13/836,498
ANALYSIS
Anticipation of claims 1—7, 12—16, 19—21, and 23 by Rous ere3
Claims 1—7 and 12—14
Appellant argues claims 1—7 and 12—14 as a group. See Appeal Br. 8—
15 and Reply Br. 1—6. We select claim 1 as the representative claim for this
group, and the remaining claims stand or fall with claim 1. See 37 C.F.R.
§41.37(c)(l)(iv).
The Examiner finds that Rousere teaches a device having a sleeve and
a receptacle, with a shell enclosing the sleeve, where the device is
“configured to sustain a partial vacuum generated upon retraction of a
mammalian penis inserted in the sleeve,” reasoning that the “sleeve is soft
and elastically deformable to seal around the penis,” so that “tightening
device (4) that clamps over the shell and sleeve to provide pressure and seal
to stimulate ejaculation [] would provide at least a partial vacuum from [the]
seal of the soft and flexible sleeve upon retraction of [a] penis inserted in the
sleeve.”4 Final Act. 3^4 (citing Rousere, ^fl[ 28, 31, 45).
In response, Appellant first contends that “there is nothing in the
relied-upon teaching in Rousere with respect to the elastomeric sleeve
forming a seal around the animal's penis.” Appeal Br. 9; Reply Br. 1—2.
3 The Examiner incorrectly included claim 22 in this grouping while
correctly including the claim with the rejection of claims 9 and 10 as
obvious over Rousere and Vayer. We review only the later rejection of claim
22.
4 It is well established that “[a]n intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003).
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Application 13/836,498
Appellant also contends that “nothing whatsoever is disclosed [in Rousere]
with respect to the tightening device (4) providing a seal.”5 Appeal Br. 10.
Furthermore, Appellant contends, that “Rousere teaches withdrawal of the
animal’s penis not by retraction but by re-opening the half-shells (3a, 3b).”6
Id. at 12—14.
Initially, we find that Appellant’s contentions are unavailing as they
are not commensurate with the scope of claim 1, which is not limited to
either an elastomeric sleeve or a tightening device that forms a seal, but
rather recites that the shell, sleeve of elastomeric material, and receptacle are
“configured to sustain a partial vacuum generated upon retraction of a
mammalian penis inserted in the sleeve.” See Appeal Br, 27, Claims App.
As we are instructed by our reviewing court, “limitations are not to be read
into the claims from the [Specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) {citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)); see also In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Furthermore, we agree with the Examiner that the sleeve and
clamping device of Rousere “would be configured to, and can have the result
that, at least a partial vacuum or seal would be generated which would be
required to stimulate ejaculation, as requiring some friction provided by at
least a partial vacuum or seal,” that “would meet the broadest reasonable
5 However, it is well settled that a prior art reference may anticipate when
the claim limitations not expressly found in that reference are nonetheless
inherent in it. “Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted).
6 Appellant’s Figures 2, 7A, and 7B disclose an embodiment substantially
identical to that taught by Rousere.
4
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Application 13/836,498
[interpretation] of the argued claimed limitation of ‘configured to sustain a
partial vacuum generated upon retraction of a mammalian penis inserted in
the sleeve.’” Ans. 13—14 (citing Rousere, 145).
Although “[a] patent applicant is free to recite features of an apparatus
either structurally or functionally . . . , choosing to define an element
functionally . . . carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). This risk is that Appellant bears the burden to prove that
the prior art does not possess the functional characteristic, once the
Examiner has shown a sound basis for believing the claimed structure to be
the same as the prior art structure. See In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990). Here we find that Appellant’s contention, which appears to be
based on an alleged new use for an old article of manufacture, is devoid of
factual evidence and merely amounts to unsupported attorney argument that
is entitled to little, if any weight. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997).
Based on the foregoing, we sustain the Examiner’s rejection of claims
1—7 and 12—14 as anticipated by Rousere.
Claims 15, 16, 19—21, and 23
While appearing to argue claims 15, 16, 19-21, and 23 separately,
Appellant merely relies on the same contentions that we found unpersuasive
with respect to the rejection of claim 1 as anticipated by Rousere. Appeal
Br. 16—17. Therefore, we discern no error in the Examiner’s findings and
sustain the Examiner’s rejection of claims 15, 16, 19-21, and 23 as
anticipated by Rousere.
5
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Obviousness of Claim 17 over Rousere and Levy
Other than reciting the limitations of claim 17, dependent from claim
15, we understand Appellant’s appeal of the rejection of claim 17 to rest on
the arguments presented supra, that we did not find demonstrative of error in
the rejection of claim 15 as anticipated by Rousere. Appeal Br. 25—26. As
such, for the same reasons, we sustain the rejection of claim 17 under 35
U.S.C. § 103(a) as unpatentable over Rousere and Levy.
Obviousness of Claims 8 and 18 over Rousere and Herr
The Examiner finds while “Rousere teaches that the receptacle (5) is
configured to be coupled to the shell (3) via the adaptor,” that “Rousere does
not teach the first and second central axes form an obtuse angle having a
value between 100 and 170 degrees, [with] the receptacle extending away
from a centerline of the elongate passageway.” Final Act. 12. However, the
Examiner finds that
Herr teaches a semen device having an adaptor portion (between
glans accommodating portion (19) and reservoir (21)). . . that is
tilted relative to the reservoir (21). . . respectively having first
(GALA) and second (RLA) axes for each end [] of the adaptor
[that] form an obtuse angle having a value between 100 and 170
degrees . . . , which meets the claim limitation of the receptacle
extending away from a centerline of the elongate passageway, to
facilitate use of the device for collection in the receptacle.
Id. (citing Herr, Fig. 7; col. 10,11. 19—31).
From the foregoing, the Examiner concludes that it would have been
obvious “to provide the angled axes of Herr in the device of Rousere, and
one of skill would have been motivated to do so, to facilitate use of the
device for collection in the receptacle.” Id. 9.
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In separately arguing the rejection of claim 8, Appellant reasons “the
text of Herr does not appear to disclose a value of the angle between the axes
labeled RLA and GALA in Figure 7,” and that “its appearance in Figure 7
suggests it is an acute, not [an obtuse] angle, contrary to the assertion in the
Office Action,” concluding that “[njeither is there articulated reasoning
based on a rational underpinning to support the conclusory obviousness
allegation with respect to the range of angle values in claim 8.” Appeal Br.
22.
We note that claim 8 lacks antecedent basis for “the first and second
central axes,” as claims 5 and 1, from which claim 8 depends, do not recite
any axes. Claim 7 recites a first central axis and a second central axis with
respect to two ends of an “adapter,” but lacks antecedent basis for an
adapter, which is not recited in claims 5 and 1, from which claim 7
depends.7 The Examiner appears to interpret claim 8’s “first and second
central axes” to mean those recited in claim 7, if the adapter in claim 7 is
interpreted as that recited in claim 6. See Final Act. 12 (referring to an
“adaptor”). Following that interpretation for purposes of this decision only,
we agree with the Examiner’s findings as to the scope and content of Herr as
set forth on page 16 of the Answer. Thus, we adopt as our own the
Examiner’s reasoning as to why one having ordinary skill in the art would
have been led to modify Rousere, in light of the teaching of Herr, in the
manner broadly claimed. Appellant’s argument that the angle “A” identified
7 If there is further prosecution of this application, the Examiner may wish
to consider whether the claims 7 and 8 should be rejected under 35 U.S.C.
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the inventor regards as the
invention.
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Application 13/836,498
in Figure 7 of Herr appears to be acute ignores the adjacent, supplementary
angle identified by the Examiner.
In separately arguing the rejection of claim 18, Appellant contends
that the Examiner “does not particularly identity the structure in the device
of Herr that allegedly teaches the adapter,” further contending that “there
does not appear to be any teaching or suggestion that the elbow region of
glans accommodating portion (19) is configured to removably connect a
shell to a receptacle.” Appeal Br. 23.
However, we agree with the Examiner that “Herr teaches a semen
device having an adaptor portion (between glans accommodating portion
(19) and reservoir (21)). . . that is tilted relative to the reservoir (21)... to
facilitate use of the device for collection in the receptacle.” Ans. 17 (citing
Herr, Fig. 7; col 10,11. 24—26); see also Final Act. 12. Appellant has not
disputed these findings.
Based on the foregoing, we sustain the Examiner’s rejection of claims
8 and 18 over Rousere and Herr.
Obviousness of Claims 9, 10, and 22
We are persuaded by Appellant’s arguments that the Examiner erred
in rejecting claims 9, 10, and 22 over Rousere and Vayer. See Reply Br. 13—
17.
While acknowledging that “Rousere does not teach that the device
further comprises a vent between the passage and the receptacle, wherein the
vent has an orifice that when unblocked, fluidly couples the interior volume
to atmospheric pressure or releases entrained air from the device,” the
Examiner determines that Vayer teaches a semen collecting device with a
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vent that “has an orifice that when unblocked, fluidly couples the interior
volume to atmospheric pressure.” Final Act. 13. Based on the foregoing,
the Examiner concludes that it would have been obvious “to provide the vent
of Vayer in the device of Rousere, and one of skill would have been
motivated to do so, to facilitate removal of the device by introducing
atmospheric air into the receptacle.” Id.
However, the Examiner misreads Vayer. Appellant clarifies that
“[t]he orifice (16) in Vayer is to introduce air into the chamber (7) between
the internal face (15) of the body and the flexible membrane (5) so as to
deform the flexible membrane.” Appeal Br. 24. Thus, in Vayer, the vent
does not fluidly couple the interior volume to atmospheric pressure, as
recited by claim 9. We agree with Appellant that in Vayer, “there can be no
fluid coupling of an interior volume (as set forth in claim 9 through its
dependency from claim 1) because of the presence of the membrane.” Id.
In response, the Examiner contends that “Vayer only needs to teach a
device with an element that is capable of fluidly coupling the interior
volume (of the receptacle) to the atmosphere.” Ans. 17. However, “[t]he
mere fact that the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) {citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984)). Here, the Examiner fails to provide a persuasive reason for
modifying Vayer to create the fluid coupling recited by claim 9. Absent
some articulated rationale for doing so, the Examiner’s conclusory assertion
is inadequate to support a conclusion of obviousness. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
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Based on the foregoing, we do not sustain the rejection of claims 9,
10, and 22 as obvious over Rousere and Vayer.
Obviousness of Claims 24, 27, and 28 over Rousere and Matsuura8
We select claim 24 as the representative claim of this group, and the
remaining claims in this group stand or fall with claim 24. See 37 C.F.R.
§ 41.37(c)(l)(iv). Regarding claim 24, the Examiner relies on Rousere for
teaching a method of collecting seminal fluid from a mammalian male,
including, inter alia, a stimulating step, but “does not specifically teach that
the stimulating step is done by reciprocatory motion.” Ans. 11. However,
the Examiner determines that Matsuura teaches a sperm collecting device,
“wherein the stimulating step is done by reciprocating motion,” and reasons
that it would have been obvious “to provide the reciprocatory motion of
Matsuura with [the] stimulating step of Rousere, and one of skill would have
been motivated to do so, in order to stimulate the penis by the known
method of reciprocatory motion for sperm collection.” Id.
In response, Appellant first contends that “there is no motivation to
modify the teachings of Rousere in view of Matsuura as a matter of law.”
Reply Br. 11. However, Appellant’s contention is foreclosed by KSR, 550
U.S. at 402, in which the Court rejected the rigid requirement of a teaching,
suggestion, or motivation to combine known elements in order to show
obviousness. Id. at 415. Thus, “if a technique has been used to improve one
8 The Examiner incorrectly includes claim 26 in this rejection, as if it did not
contain the limitations of claim 25, even though claim 26 is dependent from
claim 25. Ans. 11—12; see also Reply Br. 13—14. We correct this error by
limiting our reviewing of the rejection of claim 26 to the rejection of claim
25 as being obvious over Rousere, Matsuura, and Vayer.
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device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” Id. at 417.
Appellant continues by contending that “modifying Rousere to replace
the teaching of exertion of pressure with reciprocatory motion changes the
principle of operation of Rousere,” reasoning that “the exertion of pressure
and reciprocatory motion are inconsistent with each other.” Reply Br. 11.
However, Appellant’s contention amounts to unsupported attorney
argument, and thus is entitled to little, if any, weight. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997).
Based on the foregoing, we sustain the Examiner’s rejection of claims
24, 27, and 28 as obvious over Rousere and Matsuura.
Obviousness of Claims 25 and 26 over Rousere, Matsuura, and Vayer
We are persuaded by Appellant’s arguments that the Examiner erred
in rejecting claims 25 and 26 over Rousere, Matsuura, and Vayer. See Reply
Br. 13-17.
The Examiner first determines that “the combination of Rousere and
Matsuura does not teach that the device further comprises a vent between the
passage and the receptacle, wherein the vent has an orifice that when
unblocked, fluidly couples the interior volume to atmospheric pressure or
releases entrained air from the device.” Ans. 12. However, the Examiner
reasons that “Vayer teaches a semen collecting device, comprising ... a vent
(orifice) (16) Fig. 1 [col. 4,1. 4] between the body (8) of the device and the
inner portion of the sleeve (chamber) (7) Fig. 1 [col. 4,11. 3—4], where the
internal passage (of the receptacle) is connected (via (4)) to the inside of the
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sleeve (chamber) (7)), in order to couple the inner chamber of the receptacle
to atmospheric pressure via ‘air introduction’ vent (orifice) (16).” Id. at 12—
13.
From the foregoing, the Examiner concludes that it would have been
obvious “to provide the vent of Vayer in the device of Rousere and
Matsuura, and one of skill would have been motivated to do so, to couple the
inner chamber of the receptacle to atmospheric pressure via [an] ‘air
introduction’ vent, and to facilitate removal of the device by introducing
atmospheric air into the receptacle.” Id. at 13.
However, as we explained in more detail supra., in not sustaining the
rejection of claims 9, 10, and 22 over Rousere and Vayer, the Examiner
misreads Vayer, which does not disclose “venting an interior volume of the
receptacle to atmospheric pressure.” Appeal Br. 32, Claims App. Again, the
Examiner fails to provide a persuasive reason for modifying Vayer to vent
an interior volume of the receptacle to atmospheric pressure, as recited by
claim 25. Absent some articulated rationale for doing so, the Examiner’s
conclusory assertion is inadequate to support a conclusion of obviousness.
See KSR, 550 U.S. at 418.
Thus, we do not sustain the rejection of claims 25 and 26 as obvious
over Rousere, Matsuura, and Vayer.
DECISION
We AFFIRM the Examiner’s rejection of claims 1—7, 12—16, 19—21,
and 23 under 35 U.S.C. § 102 (b) as anticipated by Rousere.
We AFFIRM the Examiner’s rejection of claim 17 under 35 U.S.C.
§ 103(a) as unpatentable over Rousere and Levy.
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We AFFIRM the Examiner’s rejection of claims 8 and 18 under 35
U.S.C. § 103(a) as unpatentable over Rousere and Herr.
We REVERSE the Examiner’s rejection of claims 9, 10, and 22 under
35 U.S.C. § 103(a) as unpatentable over Rousere and Vayer.
We AFFIRM the Examiner’s rejection of claims 24, 27, and 28 under
35 U.S.C. § 103(a) as unpatentable over Rousere and Matsuura.
We REVERSE the Examiner’s rejection of claims 25 and 26 under 35
U.S.C. § 103(a) as unpatentable over Rousere, Matsuura, and Vayer.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN—PART
13