Ex parte Tihon

Board of Patent Appeals and Interferences

Aug 29, 2001

09024732 (B.P.A.I. Aug. 29, 2001)

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publication and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CLAUDE TIHON
____________
Appeal No. 2000-0651
Application No. 09/024,732
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and McQUADE, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 9
through 16. These claims constitute all of the claims
remaining in the application.
Appellant’s invention pertains to a urethral drain. A
basic understanding of the invention can be derived from a
Appeal No. 2000-0651
Application No. 09/024,732
2
reading of exemplary claim 9, a copy of which appears in the
APPENDIX “A” of the main brief (Paper No. 15).
As evidence of obviousness, the examiner has applied the
documents listed below:
Carter 4,713,049 Dec. 15, 1987
Sachse 5,407,435 Apr. 18, 1995
The following rejection is before us for review.
Claims 9 through 16 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Sachse in view of Carter.
The full text of the examiner’s rejection and response to
the argument presented by appellant appears in the answer
(Paper No. 16), while the complete statement of appellant’s
argument can be found in the main and reply briefs (Paper Nos.
15 and 17).

Appeal No. 2000-0651
Application No. 09/024,732
In our evaluation of the applied prior art, we have1
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
3
OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the board has carefully
considered
appellant’s specification and claims, the applied teachings,1
and the respective viewpoints of appellant and the examiner.
As a consequence of our review, we make the determination
which follows.
We cannot sustain the examiner’s rejection of claims 9
through 16.
Claim 9, the sole independent claim in the application,
is drawn to a urethral drain apparatus comprising, inter alia,
Appeal No. 2000-0651
Application No. 09/024,732
Obviously, claim 9, line 8, omits the word --to--2
following the word “angle”. This obvious informality should be
remedied during any further prosecution before the examiner.
4
an elongated, flexible, tubular drain body member having a
proximal end, a closed distal end, and a lumen extending
therebetween, the tubular drain body member being of a length
such that placement of a distal end portion into a patient’s
urinary bladder will leave a proximal end portion extending
beyond the urethral meatus, the distal end portion being
preformed so that when unconstrained it forms a bladder
retention coil lying in a plane extending at a perpendicular
angle to a longitudinal axis of the tubular drain body2
member, the distal end portion further including at least one
aperture extending from a peripheral surface of the tubular
drain body member to the lumen, and a unitary tubular
stiffening device insertable into the lumen and being
sufficiently rigid to render the bladder retention coil
rectilinear to facilitate insertion of the tubular drain body
member into the patient’s urethra, the tubular stiffening
device having an open distal end and an unobstructed internal
lumen for permitting urine to flow therethrough as a signal to
Appeal No. 2000-0651
Application No. 09/024,732
5
provide an indication when the distal end portion of the
tubular drain body member has been inserted into the patient’s
urinary bladder, removal of the tubular stiffening device
following receipt of the signal allowing the distal end
portion of the tubular drain body member to reform the bladder
retention coil.
We turn now to the applied Sachse and Carter patents.
Sachse teaches a ureter tube for splinting a ureter and
Carter discloses a ureteral stent. Notwithstanding the
dispute between appellant and the examiner relative to the
examiner’s view that the references teach devices capable of
performing as a urethral drain apparatus, as explained below,
it is quite apparent to us that independent claim 9 clearly
recites features that we discern would not have been obvious
based upon the evidence before us.
We appreciate that the Sachse patent makes reference to
ureter tubes, otherwise known as “pig tail” tubes because of
their curved shape, i.e., because of the inherent curvature in
Appeal No. 2000-0651
Application No. 09/024,732
The word “unitary” relates to a unit, with a “unit”3
being a single quantity or an undivided whole. Webster’s New
Collegiate Dictionary, G. & C. Merriam Company, Springfield,
Massachusetts, 1979. This definition is consistent with the
disclosure in appellant’s application of a single tube
(tubular) stiffener 28.
6
their tips and ends (column 1, lines 8 through 18). However,
notwithstanding the mentioning of the term “pig tail” as
above, we do not perceive that one having ordinary skill in
the art would have discerned from either the Sachse or the
Carter documents a teaching of a bladder retention coil lying
in a plane extending at a perpendicular angle (to) a
longitudinal axis of a tubular drain body as now claimed,
i.e., a bladder retention coil lying in a plane orthogonal to
the longitudinal axis, consistent with the underlying
disclosure of the present application.
Claim 9 also requires a “unitary tubular stiffening3
device” sufficiently rigid to render the bladder retention
coil rectilinear and having an open distal end and an
unobstructed internal lumen for permitting urine flow
therethrough as a signal indicating that a distal end portion
has been inserted into a patient’s urinary bladder. Akin to
Appeal No. 2000-0651
Application No. 09/024,732
7
the view of appellant, we are of the opinion that one having
ordinary skill in this art would have comprehended each of
Sachse and Carter as revealing stiffening devices that are
solid mandrins or cores or that are combined tubular and solid
mandrin or core devices. Irrespective of the noted
alternatives, a solid mandrin or core effects straightening
and reforming of a ureter tube in the applied teachings.
Thus, the applied teachings would not have been suggestive of
a unitary tubular stiffening device, as set forth in claim 9.
Since the evidence relied upon by the examiner lacks a
teaching or suggestion of features of the claimed urethral
drain apparatus, as above, we cannot sustain the rejection of
appellant’s claims under 35 U.S.C. § 103(a).
The decision of the examiner is reversed.
REVERSED
Appeal No. 2000-0651
Application No. 09/024,732
8
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
ICC:pgg
THOMAS J NIKOLAI
HAUGEN AND NIKOLAI
820 INTERNATIONAL CENTRE
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402-3325