Ex Parte Stepovich et alDownload PDFPatent Trial and Appeal BoardJul 25, 201613295408 (P.T.A.B. Jul. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/295,408 11/14/2011 27805 7590 THOMPSON HINE L.L.P. 10050 Innovation Drive Suite 400 DAYTON, OH 45342-4934 07/27/2016 FIRST NAMED INVENTOR Matthew J. Stepovich 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 ATTORNEY DOCKET NO. CONFIRMATION NO. OPHM-05US 6751 EXAMINER DEAK, LESLIE R ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 07/27/2016 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): ipdocket@thompsonhine.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW J. STEPOVICH, RANDY KESTEN, and JEFF ZALEWSKI 1 Appeal2014-007338 Application 13/295,408 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JACQUELINE T. HARLOW, Administrative Patent Judges. PERCURIAM DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to an apparatus and methods for sequestering fluids exhausted during fluid transfer. The claims are rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the Real Party in Interest is OnPharma, Inc. (App. Br. 3). Appeal2014-007338 Application 13/295,408 STATEMENT OF THE CASE The Specification describes an apparatus and a method "for transferring a donor liquid into a recipient container filled with a recipient liquid where excess liquid in the recipient container is exhausted from the recipient container and captured" (Spec. i-f 2). Claims 1-22 are on appeal. Claim 1 is illustrative and reads as follows (emphasis added): 1. A liquid transfer connector for providing a liquid transfer path between a donor container having a needle-penetrable septum and a recipient container having a needle-penetrable septum, said connector comprising: an enclosure having an interior chamber with a vent; a transfer needle having an inlet end extending from one side of the interior chamber and an outlet end extending from another side of the chamber, wherein both the inlet end and the outlet end are capable of penetrating a septum on a liquid container; an exhaust needle having an inlet end adjacent to the outlet end of the transfer needle and an outlet end in the interior chamber; and a liquid-absorptive mass within the interior chamber, said absortive [sic] mass adapted for rapid absorption of liquid entering the interior chamber through the exhaust needle. 2 Appeal2014-007338 Application 13/295,408 The claims stand rejected as follows: I. Claims 1, 5, 9, 11, 17, and 20-22 stand rejected under 35 U.S.C. § 103(a) as being obvious based on Paproski2 and Stepovich. 3 II. Claims 2--4 and 12-14 stand rejected under 35 U.S.C. § 103(a) as being obvious based on Paproski, Stepovich, and Qin. 4 I. The Examiner has rejected claims 1, 5, 9, 11, 17, and 20-22 under 35 U.S.C. § 103(a) as obvious based on Paproski and Stepovich. We focus our discussion on independent claims 1 and 11. Claim 1 We agree with Appellants that the Examiner erred in rejecting claim 1 as obvious over Paproski and Stepovich. We begin with claim interpretation, because until a claim is properly interpreted, its scope cannot be compared to the prior art. Claim 1 recites "a transfer needle having an inlet end extending from one side of the interior chamber and an outlet end extending from another side of the chamber, wherein both the inlet end and the outlet end are capable of penetrating a septum on a liquid container." The Examiner concludes that the broadest reasonable interpretation of this claim element encompasses two distinct transfer needles: one extending outwardly from one wall of the interior chamber, and another extending outwardly from a different wall of the interior chamber (see Ans. 7). 2 Paproski et al., US 2007/0208296 Al, published Sept. 6, 2007. 3 Stepovich et al., US 2009/0292271 Al, published Nov. 26, 2009. 4 Qin et al., US 5,985,434, issued Nov. 16, 1999. 3 Appeal2014-007338 Application 13/295,408 Notably, under the Examiner's interpretation, the two transfer needles may be separated by the interior space of the interior chamber (see id.). We do not agree. The broadest reasonable interpretation of the phrase "a transfer needle having an inlet end extending from one side of the interior chamber and an outlet end extending from another side of the chamber, wherein both the inlet end and the outlet end are capable of penetrating a septum on a liquid container," as used in claim 1, requires a single transfer needle having an inlet end extending from one side of the interior chamber, and an outlet end extending from another side of the chamber. Dependent claims 9 and 10, each of which refers to "the transfer needle," further underscore that the transfer needle is a single needle that extends through the interior chamber. Moreover, this interpretation is consistent with the Specification, which describes a single transfer needle that extends through the interior chamber (see Spec. i-f 22, Figs. 1, 2A-2B). Because we conclude that claim 1 requires that the recited inlet and outlet belong to the same transfer needle, and because the Examiner acknowledges that Paproski does not disclose a single needle that extends all the way through the interior chamber (Ans. 7), we reverse the rejection of claim 1. As they depend from claim 1, the rejection of claims 5, 9, and 22 is also reversed. Claim 11 We also agree with Appellants that the Examiner erred in rejecting claim 11 as obvious over Paproski and Stepovich. Claim 11 recites "establishing an exhaust flow path from the closed container to an absorbent mass." Claim 11 further recites "causing a volume 4 Appeal2014-007338 Application 13/295,408 of the donor liquid to flow into the closed container through the transfer flow path which in tum causes a like volume of the recipient liquid to flow through the exhaust flow path into the absorbent mass, wherein the entire volume of the exhausted recipient liquid is absorbed by the absorbent mass." Even crediting the Examiner's assertion that the disclosed apparatus could be used to achieve a flow path opposite that taught by Paproski (see Ans. 8, 10), as well as the Examiner's contention that fluid could be pushed through Paproski's vent needle (see id. at 8-9), we do not agree that it would be obvious to replace Paproski's air filter with Stepovich's absorbent material as the Examiner suggests (see id. at 9-10). The embodiment of Paproski on which the Examiner relies discloses that "air is drawn into or expelled from the vial [] through the vent needle [] and this air passes through the air filter[]" (Paproski i-f 86). The Examiner nevertheless asserts that it would be obvious to replace Paproski' s air filter with an absorbent material as disclosed by Stepovich to retain fluid drawn into the unsealed reservoir using the vent needle (Ans. 9). The Examiner bases this assertion on the teaching, set forth in an unrelated embodiment of Paproski, that a "self-sealing tip cap [] assists in retaining any extra fluid in [a] receiving space []of the connector" (id.). We agree with Appellants that replacing Paproski's air filter with Stepovich's absorbent material would render Paproski's device unsatisfactory for its intended purpose, and change its principle of operation (App. Br. 11-13). As the Examiner acknowledges (Ans. 9), Paproski's receiving space, in which one wall is defined by self-sealing cap, and its interior chamber, in which one wall is defined by an air filter, are different spaces that serve different purposes. (See Paproski i-f 81 ("The penetration in 5 Appeal2014-007338 Application 13/295,408 the tip cap [] from the needle [] is self-healed by the material of the tip cap [] and the fluid is retained within the barrel [], syringe orifice [] and receiving space []."), i-f 86 ("air is drawn into or expelled from the vial []through the vent needle [] and this air passes through the air filter []. "), i-f 64 ("[ t ]he air filter[] is preferably able to filter external air that may potentially include contaminants that could contaminate the fluid or medication within the syringe [] or the vial [].").) Accordingly, we conclude that the modification proposed by the Examiner would render Paproski unsatisfactory for its intended purpose, and thus that there is no suggestion or motivation to make the modification proposed. In re Fritch, 972 F .2d 1260, 1266 n.12 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)). Therefore, we reverse the rejection of claim 11. As they depend from claim 11, the rejection of claims 17 and 20-21 is also reversed. II. The Examiner has rejected claims 2--4 and 12-14 under 35 U.S.C. § 103(a) as obvious based on Paproski, Stepovich, and Qin. Because the Examiner has pointed to no clear or specific teaching in Qin that addresses the deficiencies discussed above of Paproski and Stepovich with respect to claims 1 and 11, from which claims 2--4 and 12-14 depend, we also reverse this rejection. SUMMARY We reverse the rejection of claims 1, 5, 9, 11, 17, and 20-22 under 35 U.S.C. § 103(a) based on Paproski and Stepovich. We reverse the rejection of claims 2--4 and 12-14 under 35 U.S.C. § 103(a) based on Paproski, Stepovich, and Qin. 6 Appeal2014-007338 Application 13/295,408 REVERSED 7 Copy with citationCopy as parenthetical citation