Mary Prody

Patent Trials and Appeals Board

Nov 1, 2021

2021002065 (P.T.A.B. Nov. 1, 2021)

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.
14/450,260 08/03/2014 Mary Ann Robinson Prody 15012 7320
44977 7590 11/01/2021
BERGGREN LAW OFFICES, LLC
7090 43RD STREET NORTH
OAKDALE, MN 55128
EXAMINER
MENSH, ANDREW J
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
11/01/2021 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):
sfwolf01@comcast.net
william@berggrenlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARY ANN ROBINSON PRODY
____________

Appeal 2021-002065
Application 14/450,260
Technology Center 3700
____________

Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–4, 6–15, 17, and 20. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a).
Appeal 2021-002065
Application 14/450,260
2
THE INVENTION
Appellant’s invention is a belt that supports a fluid reservoir. Spec. 6.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. An apparatus for collecting a bodily fluid in a medical
draining procedure, the apparatus comprising:
a belt, having an outside surface and an inside surface
opposite the outside surface, adapted for extending around a
body part of a patient, wherein the belt comprises a fastener for
securing the belt at a selected tightness about the body part of
the patient, the belt being adjustable as to said tightness;
one or more spaced apart elongate fasteners attached to the
outside surface of the belt, the fasteners aligned with a
longitudinal axis of the belt,
wherein each of the fasteners comprises a first surface
attachment element integral with the outside surface of the belt,
and a second surface attachment element permanently fastened
at one end of the first surface attachment element and extending
longitudinally in removable, mutually engaged contact with the
first surface attachment element, said second surface attachment
element further comprising a handle, wherein the handle
comprises an extension of the second surface attachment
element that extends beyond the first surface attachment
element,
wherein the extension, comprising hook/loop material, is
folded back upon itself and permanently fastened by sewing,
and wherein the handle has greater thickness than the second
surface attachment element; and
a drainage reservoir providing an attachment band
comprising a loop adapted for receiving one end of said second
surface attachment element for engaging the drainage reservoir
with the belt for disposing the drainage reservoir within reach
of a patient wearing the belt.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Ness US 4,067,337 Jan. 10, 1978
Alexander US 5,257,419 Nov. 2, 1993
Prody US 6,610,032 B1 Aug. 26, 2003
The following rejections are before us for review:
1. Claims 1–4, 6–15, 17, and 20 are rejected under the doctrine of
nonstatutory double patenting over Prody, Ness, and Alexander.
2. Claims 1–4, 6–15, 17, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Prody, Ness, and Alexander.
OPINION
Unpatentability of Claims 1–4, 6–15, 17, and 20
over Prody, Ness, and Alexander
The Examiner finds that Prody, which is a prior work of the named
inventor in the application on appeal, discloses the invention substantially as
claimed except for a handle and hook/loop fastener extension that is sewn
and folds back upon itself. Final Act. 9–11. The Examiner relies on Ness as
teaching a handle and further relies on Alexander as teaching a handle that is
folded back on itself and sewn. Id. at 10. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
the invention was made to modify Prody with a handle as taught by Ness.
Id. The Examiner also concludes that it would have been obvious to a
person of ordinary skill in the art at the time the invention was made to
further modify Prody to stitch the folded back fabric together. Id. at 10–11.
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According to the Examiner, a person of ordinary skill in the art would have
done this to provide the belt with an accessible and sturdy pull tab. Id.
Appellant argues that Ness is nonanalogous art. Appeal Br. 5−6.
Appellant argues that its invention is in the field of medical/surgical devices
and that Ness is from the field of disposable diapers, which Appellant
characterizes as a different field of endeavor. Id. at 6. Appellant further
argues that Ness is not reasonably related to the problem faced by the
inventor. Id. Appellant characterizes the problem addressed by the
application under appeal as securing and improving ease of use of a surgical
drainage reservoir. Id. Appellant characterizes Ness as directed to opening
and closing a diaper without tearing the film of the diaper. Id. at 7.
According to Appellant:
[T]he tape tab of Ness is used to secure the diaper around the
waist of the user. The tab of the instant invention is attached to
a fabric band and used to secure drainage reservoirs to the band.
It is the band that secures the support to the patient. So the tabs
are used for different purposes and therefore would not have
commended the inventor's attention as relevant prior art.
Id.
In response, the Examiner finds that Appellant and Ness come from
the same field of endeavor because, under the PTO classification scheme,
the classifications assigned to Ness and Appellant refer to each other in their
respective definitions. Ans. 5.
Not only do the IPC classifications of appellant's claimed
invention and Ness refer to one another in each of their
definitions, but the CPC classification A61F 5/4408 and IPC
classification A61F 13/15 each include means for supporting or
fastening to a user's body in their definition. Appellant alleges
that the Ness patent is in the field of consumer products and not
medical/surgical devices; however, Ness appears to be
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classified in USPC class 128 - Surgery. Accordingly, it is clear
that Ness is in the same field as appellant's endeavor; namely,
the means for supporting and fastening of receptacles to the
body of a user.
Id. The Examiner further states that Appellant’s invention and Ness both
improve existing waist support strap fasteners by employing a handle or
pull-tab extending from the fastener to reinforce the fastener and assist in
fastener detachment. According to the Examiner, Ness is reasonably
pertinent to the problem faced by the inventor, which the Examiner
characterizes as easing the attachment and removal of waist support strap
fasteners.
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate tests
define the scope of analogous art: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The “field of
endeavor” test asks if the structure and function of the prior art is such that it
would be considered by a person of ordinary skill in the art because of
similarity to the structure and function of the claimed invention as disclosed
in the application.” Id. at 1325−26. “A reference is reasonably pertinent . . .
if it is one which, because of the matter with which it deals, logically would
have commended itself to an inventor's attention in considering his
problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference
disclosure has the same purpose as the claimed invention, the reference
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relates to the same problem, and that fact supports use of that reference in an
obviousness rejection.” Id.
Having considered the respective arguments of Appellant and the
Examiner, we consider the Examiner’s position to be the better one.
Whether a user is fastening or unfastening an entire waistband or an article
that is suspended from a waistband, a user, in either event, needs to grasp
and pull one end of the fastener to secure or loosen it. Providing a “handle”
on the end of the fastener would be equally helpful whether fastening the
entire waistband or an article suspended from the waistband. Thus, we view
Ness’s handle as reasonably pertinent to the problem faced by the inventor.
We also note the relative simplicity of the mechanical concepts involved
here. See In re Heldt, 433 F.2d 808, 812 (CCPA 1970) (explaining that it is
not unreasonable in cases involving relatively simple mechanical concepts
to permit inquiry into other areas where one of even limited technical skill
would be aware that similar problems exist). Having found Ness to be
reasonably pertinent, we need not and do not comment on the Examiner’s
use of the PTO’s classification scheme to determine whether two inventions
are from the same field of endeavor.
In view of the foregoing, we sustain the Examiner’s unpatentability
rejection of Claims 1–4, 6–15, 17, and 20.
Double Patenting Rejection of Claims 1–4, 6–15, 17, and 20
over Prody, Ness, and Alexander
Appellant groups it arguments concerning the double patenting
grounds of rejection and the Section 103 obviousness grounds of rejection
together. Appeal Br. 4–8. Although obviousness type double patenting and
Section 103 obviousness are not identical legal concepts, we discern no error
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Application 14/450,260
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in the Examiner’s alternative grounds of rejection based on double patenting
and Appellant has provided no separate arguments that demonstrate
Examiner error. See 37 C.F.R. § 41.37(c)(iv) (requiring Appellant to present
arguments explaining why the Examiner erred as to each contested ground
of rejection).
Accordingly, we sustain the Examiner’s nonstatutory double patenting
rejection of claims 1–4, 6–15, 17, and 20.
CONCLUSION
Claims
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed
1-4, 6-15,
17, 20
Non-statutory double
patenting
1-4, 6-15,
17, 20

1-4, 6-15,
17, 20
103 Prody, Ness, Alexander 1-4, 6-15,
17, 20

Overall
Outcome
1-4, 6-15,
17, 20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED