Ex Parte SimasDownload PDFPatent Trial and Appeal BoardFeb 28, 201311029371 (P.T.A.B. Feb. 28, 2013) Copy Citation 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. 11/029,371 01/06/2005 Robert Simas JR. 0100/0183 3327 21395 7590 03/01/2013 LOUIS WOO LAW OFFICE OF LOUIS WOO 717 NORTH FAYETTE STREET ALEXANDRIA, VA 22314 EXAMINER GILBERT, ANDREW M ART UNIT PAPER NUMBER 3767 MAIL DATE DELIVERY MODE 03/01/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT SIMAS, JR. ____________ Appeal 2011-003062 Application 11/029,371 Technology Center 3700 ____________ Before PHILLIP J. KAUFFMAN, JILL D. HILL, and BEVERLY M. BUNTING, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert Simas, Jr. (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-29. Claims 1, 9, 16, and 23 are the independent claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-003062 Application 11/029,371 2 THE INVENTION Appellant’s claimed invention relates to needle protection devices and more particularly to a needle assembly including mechanisms at the base and the housing of the needle assembly that coact to non-removably retain the housing and the base in a secured relationship. Spec. 1, para. [001]. Claim 1 is illustrative of the subject matter on appeal and is reproduced below with the key disputed limitations emphasized. 1. A needle assembly, comprising: a base having a needle extending therefrom along a longitudinal axis thereof; a housing pivotally connected to said base, said housing having two sidewalls connected by a back wall, one catch mechanism extending from said back wall; and an other catch mechanism extending from said base configured to mate with said one catch mechanism; wherein when said housing is pivoted towards said base, said catch mechanisms are interlocked to each other to fixedly secure said housing and said base relative to each other and to cover said needle. THE EVIDENCE The Examiner relies on the following evidence: Feimer US 5,015,241 May 14, 1991 Ishikawa US 5,147,319 Sep. 15, 1992 Burns US 5,891,103 Apr. 6, 1999 Hollister US RE37,110 E Mar. 27, 2001 Bressler US 7,112,190 B2 Sep. 26, 2006 THE REJECTIONS Appellant seeks review of the following rejections: Appeal 2011-003062 Application 11/029,371 3 Claims 1-3, 5, 7-11, 13-17, 19-251, 27, and 29 as rejected under 35 U.S.C. § 102(e) as anticipated by Bressler. Ans. 4. Claims 1-5, 7-11, 13-17, 19-27, and 29 as rejected under 35 U.S.C. § 103(a) as unpatentable over Hollister, Burns, and Ishikawa. Id. Claims 6, 18, and 28 as rejected under 35 U.S.C. § 103(a) as unpatentable over Bressler and Feimer. Ans. 5. Claims 6, 12, 18, and 28 as rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Hollister, Burns, Ishikawa, and Feimer. Id.2 ANALYSIS Claims 1-3, 5, 7-11, 13-17, 19-25, 27, and 29 as anticipated by Bressler Independent claims 1, 9, 16, and 23 call for, among other things, a housing pivotally connected to a base (from which a needle extends), a catch mechanism extending from a back wall of the housing, and another catch mechanism extending from the base. When the housing pivots toward the base, the catch mechanisms interlock. 1 In the Grounds of Rejection to be Reviewed on Appeal Appellant mistakenly omits claims 24 and 25, but correctly includes these claims in the Argument. See App. Br. 9-10; see also Ans. 4. 2 In the Examiner’s Answer, the rejection of claims 4 and 26 under 35 U.S.C. § 102(e) as anticipated by Bressler was withdrawn, as was the rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over Bressler and Feimer. The Examiner rejected claims 6, 12, 18, and 28 under 35 U.S.C. § 103(a) as unpatentable over Hollister, Burns, Ishikawa, and Feimer as a new ground of rejection. Because Appellant’s corrected Appeal Brief was filed after the Examiner’s Answer, Appellant addressed the new grounds of rejection. Appeal 2011-003062 Application 11/029,371 4 The Examiner finds that Bressler teaches, as shown in Figure 1, a needle assembly comprising a base (needle assembly 16, needle hub 36) for a needle (needle cannula 34) and having a catch mechanism (locking apertures 57, 58 on flexible wings 54, 55) that extends from the base, and a housing (shield 20) having side walls (channel 63) and a back wall (tabs 64, 65) on which a catch mechanism (locking fingers 67, 68) is located. Ans. 4; see also Bressler, col. 4, l. 56 - col. 6, l. 15. Appellant argues that the tabs 64, 65 of Bressler are not part of a back wall that connects its side walls. App. Br. 11. The claims, however, do not limit the “back wall” to the area between the side walls (nor is the housing recited to be “defined” by the two side walls), and we therefore are not persuaded by Appellant’s argument that Bressler does not disclose that the tabs 64 and 65 are part of the back wall. Appellant also argues that Bressler’s wings 54, 55 are not catch mechanisms that extend from the base and are not part of the needle hub 36. Rather, wings 54, 55 are part of a tubular mount that fits over the needle hub 36. Appellant argues that apertures 57, 58 are not catch mechanisms that extend from the base because they are holes and extend “into” rather than “from.” Appellant’s argument does not address the rejection as articulated by the Examiner. The Examiner’s finding, stated in a different way, is that the aperture 57 and at least a portion of the wing 54 that extends from the base 36 to the aperture 57 define a first catch mechanism that engages catch mechanism 67 of the housing, and aperture 58 and at least a portion of the wing 55 that extends from the base 36 to the aperture 57 define a second catch mechanism that engages catch mechanism 68 of the housing. See Ans. Appeal 2011-003062 Application 11/029,371 5 4, 6. We agree with the Examiner that Bressler discloses the claimed other catch mechanism extending from the base. Regarding claims 2, 10, 19, and 24, which recite that one catch mechanism comprises a pair of fingers and the other catch mechanism comprises a projection that is adaptable to move between and be held by the fingers, the Examiner finds that Bressler teaches such claimed subject matter with “rib 36” (Ans. 4) and then more specifically states that “[t]he examiner considers the wings 54 and 55 to be equivalent to the ‘fingers’ as claimed and the locking fingers 67 and 68 to be the projections which are held by the fingers.” Ans. 7. Appellant argues that Bressler’s wings 54, 55 are not equivalent to the claimed fingers, and that the Examiner erred in finding that Bressler’s fingers 67, 68 are projections rather than fingers, and that Bressler’s wings are the claimed fingers. We agree with Appellant that the Examiner has not met the burden of establishing that Bressler discloses the claimed catch mechanism comprising a pair of fingers for holding a projection. A pair of “fingers” implies that there are two parts, and the claim sets forth that the pair of fingers hold a projection. A pair of fingers holding a projection implies cooperation of the fingers to accomplish holding the projection. The Examiner has not explained how Bressler’s wings 54, 55 comprise two parts that hold a projection, or two parts that cooperate to hold a projection. Regarding claims 5, 13, and 27, which recite that the housing sidewalls prevent access to the catch mechanisms when the housing is fixedly secured to the base, the Examiner finds that Bressler teaches “sidewalls [that are] are designed to completely cover the needle and allow the catch mechanisms to fully engage without interference from the Appeal 2011-003062 Application 11/029,371 6 sidewalls. This prevents the user from accessing the catch mechanisms because once fully engaged they are not removable.” Ans. 7. Appellant argues that the sidewalls 63 of Bressler “do not prevent access to anything other than the needle.” App. Br. 15-16. We agree with Appellant. The Examiner has not explained how any side wall of Bressler prevents access to the catch mechanism. Regarding claims 7, 14, 21, and 29, each calls for a catch mechanism comprising a hook and another catch mechanism comprising a rib formed at the base and having an opening through which the hook latches when the housing and the base are pivoted toward each other, the Examiner finds “Fig 5 showing a rib (58) and hook (68).” Ans. 7. Appellant argues that Bressler teaches no such hook and rib catch mechanisms, and that rib 58 is actually a locking aperture through which locking fingers 68b project. App. Br. 23 (citing Bressler, col. 6, ll. 32-35). We are not persuaded by Appellant’s arguments. While Bressler’s element 58 may be an aperture, it is an aperture in the wing 55, fingers 68a are hooked fingers, and the elements cooperate to accomplish a hooked engagement of the base and the housing when they are pivoted toward each other. Appellant does not advance any separate argument suggesting that claims 3, 8, 11, 15, 17, 20, 22, and 25 might be patentable over Bressler if claims 1, 9, 16, and 23 are anticipated by Bressler. We therefore sustain the rejection under 35 U.S.C. § 102(e) with respect to claims 1, 3, 7-9, 11, 14-17, 20-23, 25, and 29. We do not sustain the rejection under 35 U.S.C. § 102(e) with respect to claims 2, 5, 10, 13, 19, 24, and 27. Appeal 2011-003062 Application 11/029,371 7 Claims 1-5, 7-11, 13-17, 19-27, and 29 over Hollister, Burns, and Ishikawa As stated above, independent claims 1, 9, 16, and 23 call for, among other things, a housing pivotally connected to a base (from which a needle extends), a catch mechanism extending from a back wall of the housing, and another catch mechanism extending from the base. When the housing pivots toward the base, the catch mechanisms interlock. The Examiner finds that Hollister teaches a needle assembly comprising a base 18 with a needle 14, a housing 6 having side walls and a back wall (Figure 6), and a catch mechanism 60 on the base 62. Ans. 4. The Examiner also finds that Burns’ Figure 4 teaches a hook 58 extending from a needle housing 38 that engages a rib 48 on a needle base. Ans. 5. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the hook and rib lock of Burns as an alternate latching means to the assembly of Hollister. Id. Appellant argues that Hollister’s hole does not “extend from” its back wall, and that Burns does not teach a catch mechanism extending from the back wall of the housing. App. Br. 16-17. The Examiner responds that Hollister’s hole 60 (Figure 6) is a catch mechanism on the back wall of a pivotable needle shield, and Burns’ Figure 6 teaches that a needle shield catch can include a rib 30 disposed longitudinally about the base and a hook 58 to engage the base. Ans. 7. The Examiner states that the rib 48 and hook 58 arrangement of Burns can be substituted for the opening 60 and anchor 62 arrangement of Hollister, resulting in a projection extending from the back wall of Hollister to engage a rib on the base of Hollister. Id. We agree with the Examiner and adopt these findings as our own. With respect to claims 2, 10, 19, and 24, the Examiner finds that Appeal 2011-003062 Application 11/029,371 8 Ishikawa’s Figure 2 teaches a pair of fingers 10a extending from one side of a needle guard and a projection 10b which engages the fingers. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the finger and projection lock of Ishikawa as an alternate latching means to the assembly of Hollister. Ans. 5. The Examiner also states that, in combining Hollister with Ishikawa, one catch mechanism of Hollister can be replaced with Ishikawa’s projection 10b and Hollister’s other catch mechanism can include the fingers 10a. Ans. 7. One catch would be on the back wall and the other on the base, as shown in Hollister. Id. The Examiner states that both Burns and Ishikawa are used to teach alternate catch mechanisms, not the placement of the catch mechanisms, which is already taught by Hollister to be on the base and the housing back wall. Ans. 7-8. We agree with the Examiner that it would have been obvious to substitute the catch mechanism of either Burns or Ishikawa for the catch mechanism 60, 62 of Hollister. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966) (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”) Appellant does not advance any separate argument suggesting that claims 3, 5, 8, 11, 13, 15, 17, 20, 22, and 25 might be patentable over Hollister, Burns, and Ishikawa if claims 1, 9, 16, and 23 are obvious over Hollister, Burns, and Ishikawa. We therefore sustain the rejection of claims 1-5, 7-11, 13-17, 19-27, and 29 under 35 U.S.C. § 103(a) as unpatentable over Hollister, Burns, and Ishikawa. Appeal 2011-003062 Application 11/029,371 9 Claims 6, 18, and 28 over Bressler and Feimer The Examiner finds that Bressler teaches the limitations of the needle guard with respect to claims 1, 16, and 23, but does not teach a needle cover that is color-coded to signify the needle gauge. Ans. 5. The Examiner finds that Feimer teaches a needle cover that is color-coded to signify the needle gauge. Id. (citing Feimer, col. 7, l. 55). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the needle guard of Bressler with the color coding of Feimer to easily distinguish needles of different gauges. Id. Appellant argues that Feimer teaches color coding a container at column 7, lines 44-56, and that combining Hollister with Feimer would provide the device of Hollister housed in a color coded container, which differs from the claimed “housing and base . . . molded as a one piece unit that has a predetermined color that signifies the gauge of said needle.” App. Br. 19. Appellant argues that color coding the base and housing as claimed, rather than a container for the base and the housing, advantageously allows a user to know the gauge of the needle even after he has discarded the container. Id. The Examiner responds that Feimer teaches that a plastic cover 10, 10a may be color coded to signify the needle gauge, and the teaching of a color-coded syringe cover could be readily applied to a plastic needle cover by one of ordinary skill in the art. Ans. 8. We agree with the Examiner that Feimer teaches color coding a plastic needle cover, and that it would be obvious to one skilled in the art at the time of the invention to apply Feimer’s color-coding to Hollister’s base and housing. We therefore sustain the rejection of claims 6, 18 and 28 under 35 U.S.C. § 103(a) as Appeal 2011-003062 Application 11/029,371 10 unpatentable over Bressler and Feimer. Claims 6, 12, 18, and 28 over Hollister, Burns, Ishikawa, and Feimer As explained above, the Examiner finds that Hollister, Burns, and Ishikawa teach the limitations of the needle guard as recited in claims 1, 16, and 23. The Examiner finds that Hollister, Burns, and Ishikawa do not teach a needle cover that is color-coded to signify the needle gauge. Ans. 5-6. The Examiner finds that Feimer teaches a needle cover that is color-coded to signify the needle gauge. Ans. 6 (citing Feimer, col. 7, l. 55). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the needle guard of Hollister, Burns, and Ishikawa with the color coding of Feimer to easily distinguish needles of different gauges. Id. Appellant again argues that “Feimer fails to disclose any integral base housing device that is color coded to reflect the gauge of a needle of the device.” App. Br. 20. We agree with the Examiner that Feimer teaches color coding a plastic needle cover, and that it would be obvious to one skilled in the art at the time of the invention to apply Feimer’s color-coding to the base and housing taught by the combination of Hollister, Burns, and Ishikawa. We therefore sustain the rejection of claims 6, 12, 18, and 28 under 35 U.S.C. 103(a) as unpatentable over Hollister, Burns, Ishikawa, and Feimer. DECISION We affirm the rejection of claims 1, 3, 7-9, 11, 14-17, 20-23, 25, and 29 under 35 U.S.C. § 102(e) as anticipated by Bressler. Appeal 2011-003062 Application 11/029,371 11 We reverse the rejection of claims 2, 5, 10, 13, 19, 24, and 27 under 35 U.S.C. § 102(e) as anticipated by Bressler. We affirm the rejection of claims 1-5, 7-11, 13-17, 19-27, and 29 under 35 U.S.C. § 103(a) as unpatentable over Hollister, Burns, and Ishikawa. We affirm the rejection of claims 6, 18, and 28 under 35 U.S.C. § 103(a) as unpatentable over Bressler and Feimer. We affirm the rejection of claims 6, 12, 18, and 28 under 35 U.S.C. § 103(a) as unpatentable over the combination of Hollister, Burns, Ishikawa, and Feimer. AFFIRMED mls Copy with citationCopy as parenthetical citation