DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
As directed by the amendment filed on 21 May 2026: claim(s) 1, 4, and 11 have been amended.
Response to Arguments
Applicant's arguments filed 21 May 2026 have been fully considered but they are not persuasive.
Regarding the argument that "Andersen's disclosure is directed to pressure-responsive syphon control rather than Applicant's active vacuum-assisted transport arrangement", a recitation of the intended use of the claimed invention as an “active vacuum-assisted transport arrangement” must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding the argument that “Nothing in Andersen suggests introducing air proximate an outlet during active vacuum transport to assist conveyance through a transport channel. Nor does Andersen suggest use of a check valve or throttle valve within a vacuum-assisted cannister-free pump architecture”, Andersen teaches the claimed structures as discussed below.
Regarding the argument that "the proposed modification would alter Joseph's principle of operation and relies upon impermissible hindsight reconstruction using Applicant's disclosure as a roadmap", it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Furthermore, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Claim Objections
Claim 2 is objected to because of the following informalities: a period missing at the end of the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4 & 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Joseph et al. (US 20220305191 A1) in view of Andersen et al. (US 3598124 A).
Regarding Claims 1 & 11, Joseph discloses an apparatus/method for collecting urine from a user ("urine collection device configured to receive fluid discharged from a user" Abstract), the apparatus/method comprising:
gathering liquid with a urinary catheter ("first tube 108" [0019]; FIGs. 1A-1B) comprising an outlet to enable liquid to exit therefrom ([0027-0028]; FIGs. 1A-1B);
conveying the liquid through a transport channel ("second tube 110" [0019]) having a first end coupled to the outlet (FIGs. 1A-1B); and
drawing the liquid and air through the transport channel using a cannister-free pump module ("pump 106" [0022-0023]) coupled to a second end of the transport channel (the end distal to the fluid collection container 104 in FIGs. 1A-1B) and configured to draw the liquid and air into the cannister-free pump module and expelling, using the cannister-free pump module, the liquid into an output channel (one embodiment is “configured to allow air to pass through from the second chamber 152 into the first chamber 150 but not allow fluids” [0047], implying that both air and liquids freely pass through from the inlet 154 to the outlet 156 [0046]; FIGs. 3A-3B).
Joseph fails to specify an air entry module positioned proximate the outlet and configured to admit air into the transport channel to convey liquid removed from the urinary catheter/introducing air into the transport channel at a location proximate the outlet while drawing the liquid through the transport channel. However, Andersen teaches a urine drainage system having an indwelling catheter (1), the outlet (5) of which is connected to an air entry module (“valve 4”, Fig. 2) positioned proximate the outlet (FIG. 2) and configured to admit air into the transport channel to convey liquid removed from the urinary catheter (“valve permits the passage of air from the atmosphere into the syphon control valve bore 11 when the pressure therein is less than atmospheric” col. 2 lines 56-71 & col. 3 lines 53-59). Therefore, it would have been obvious to one skilled in the art at the time of filing to modify Joseph by adding the Andersen vent valve to allow urine to flow to the collection container more easily and eliminate airlocks in the fluid circuit.
Regarding Claims 2 & 12, Joseph discloses the urinary catheter is one of a male external urinary catheter and a female external urinary catheter ("urine collection device 102 may include a male or female fluid collection device" [0025]).
Regarding Claims 3 & 13, Joseph discloses the cannister-free pump module is further configured to generate a vacuum in the transport channel ("Suction force may be introduced into the urine collection device 102 via the first tube 108 responsive to suction (e.g., vacuum) force applied at the pump 106" [0019]).
Regarding Claims 4 & 14, Joseph fails to specify the air entry module comprises at least one of a check valve and an air throttle valve positioned proximate the outlet and configured to permit air entry while inhibiting liquid discharge through the air entry module. However, Andersen teaches the air entry module comprises at least one of a check valve and an air throttle valve (“inwardly projecting flutter valve 7” col. 2 ln. 50-51; FIG. 2) positioned proximate the outlet (see FIGs. 1-2) and configured to permit air entry while inhibiting liquid discharge through the air entry module (“valve permits the passage of air from the atmosphere into the syphon control valve bore 11 when the pressure therein is less than atmospheric, but prevents the flow of urine from the bore 11 outward when the pressure is greater than atmospheric” col. 2 ln. 64-69). Therefore, it would have been obvious to one skilled in the art at the time of filing to modify Joseph by adding the Andersen vent valve to allow urine to flow to the collection container more easily and eliminate airlocks in the fluid circuit.
Regarding Claims 5 & 15, Joseph discloses the cannister-free pump module is configured to be wirelessly activated by a remote control ("remote" [0023]).
Regarding Claims 6 & 16, Joseph discloses the cannister-free pump module is configured to be manually activated with a switch ("switch" [0023]).
Regarding Claims 7 & 17, Joseph discloses the cannister-free pump module is powered by a battery ("one or more batteries" [0020-0023]).
Regarding Claims 8 & 18, Joseph discloses the battery is rechargeable ("rechargeable battery" [0033]).
Regarding Claims 9 & 19, Joseph discloses that the battery is incorporated into the cannister-free pump module ("internal battery" [0033]; FIG. 2B).
Regarding Claims 10 & 20, Joseph discloses the output channel empties into one of a receptacle and a toilet ("suction device 106 may discharge the fluid to the fluid collection container 104" [0019]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Cheng Fong "Ted" Yang whose telephone number is (571)272-8846. The examiner can normally be reached 10am - 6pm (EST) M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rebecca E. Eisenberg can be reached at (571) 270-5879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Adam Marcetich/Primary Examiner, Art Unit 3781
Cheng Fong "Ted" Yang
Examiner
Art Unit 3781
Prosecution Insights