Ex Parte VaillancourtDownload PDFPatent Trials and Appeals BoardDec 18, 201411134012 - (D) (P.T.A.B. Dec. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/134,012 05/20/2005 Michael J. Vaillancourt 9387 7590 12/18/2014 Francis C. Hand, Esq. c/o Carella, Byrne, Bain, Gilfillan, Cecchi, Stewart & Olstein 5 Becker Farm Road Roseland, NJ 07068 EXAMINER GRAY, PHILLIP A ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 12/18/2014 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 MICHAEL J. VAILLANCOURT ____________ Appeal 2012-004892 Application 11/134,012 Technology Center 3700 ____________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and ULRIKE W. JENKS, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims directed to an introducer needle and valve combination, or an integrated valve and needle assembly. The Examiner rejects the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellant identifies Michael J. Vaillancourt as the Real Party in Interest. (App. Br. 2.) Appeal 2012-004892 Application 11/134,012 2 STATEMENT OF THE CASE Claims 1, 3, 6, 8, 15, 17, and 22 are on appeal, and can be found in the Claims Appendix of the Appeal Brief (App. Br. 14–16). Claim 17 is illustrative and reproduced below: 17. An introducer needle comprising a tubular forward piece having a first tapered passage extending therethrough for guiding a guide wire therethrough, a port extending radially of said first passage, and an eyespot for viewing blood in said chamber, a hollow needle secured to and extending from one end of said forward piece; an air filter in said port for passage of air from said first housing piece a rear piece permanently secured to said forward piece in co-linear relation and having a second passage tapering radially inwardly in a direction towards said needle and a luer connection at an end thereof; and a seal disposed between said forward piece and said rear piece to seal said first passage from said second passage, said seal having a slit in a center thereof for passage of a guide wire therethrough in circumferentially sealed relation. The following grounds of rejection are before us for review: I. claims 1, 3, 8, and 17 under 35 U.S.C. § 103(a) over Yamamoto2 in view of Suzuki;3 and II. claims 6, 15, and 22 under 35 U.S.C. § 103(a) over Yamamoto in view of Suzuki and in further view of Van Heugten.4 2 Yamamoto et al., US 5,290,246, issued Mar. 1, 1994. 3 Tatsuo Suzuki, US 4,682,980, issued July 28, 1987. 4 Anthony Y. Van Heugten, US 5,053,014, issued Oct. 1, 1991. App App The I claim and l Exam with Find outer need and a (Yam need Fig. 24–2 eal 2012-0 lication 11 ssue: Obv The Exa ed invent ooks to Su Does the iner’s con a transpar ings of Fa 1. Y needle ha le, a hub p valve dis amoto Ab 2. 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Fi 2 shows, “ 3, ll. 12–13 4. “T le hub 20) es 30 and rial which d flow.” ( 5. “T as a taper nal cavity. 6. “A ce, in whi amoto, co 7. W 80 is prov s 27.” (Ya t l. 9.) 04892 /134,012 g. 2 of Ya a partial s .) o visually , it is desir 40 jointly has such t Yamamoto he first ou ed portion ” (Yamam tapered s ch a rod-li l. 4, ll. 45 ith referen ided at in mamoto, c mamoto, r ectional vi confirm f able that t constitutin ransparen , col. 5, ll ter needle 31 for cau oto, col. 4 urface 41, ke membe –47.) ce to figu ternal cavi ol. 5, ll. 4 4 eproduced ew of an o lashback ( he first and g the outer cy as enab . 60–65.) hub body lking and , ll. 30–33 and more r such as a res 2 and 8 ty-side end –5.) “[F]i below: uter needl i.e., blood second o needle hu les visual 30 is subs fixing the .) preferably connecto above, “[ portions lter 80 ma e hub” Ya flow into uter needl b 20 be fo confirmati tantially c outer need a lure-tap r . . . is fitt t]he ring-l 27a of the y be 0.1 to mamoto, the outer e hub rmed of a on of a ylindrical le 10 in it ered ed.” ike vent air vent 0.5 μm” s App App the o col. cont repro The by th rear eal 2012-0 lication 11 8. V uter needl 5, ll. 20–2 act with ea 9. Th duced bel marked up e Examin piece perm 10. Su conventi membra order to opening catheter hub or th the punc opening 04892 /134,012 alve disk 7 e hub 20 w 1.) “[T]he ch other” e Examin ow: version o er to be the anently af zuki discl onal punc ne filter pe prevent th is formed hub or an e catheter ture needl , thus to pe 0 “has a fu hen the in inner need (Yamamot er’s marke f Yamamo forward p fixed to th osed that ture needle rmeable to e blood fro in a portio end plug a . . . . The e hub is re rmit smoo 5 nction of ner needle le 50 and o, col. 6, l d up versi to’s figure iece and e e forward assembly air but im m floodin n of a pun ttachable t air in the p lieved thro th flush ba preventing is pulled the valve l. 26–28.) on of Yam shows ele lement 40 piece. (An incorpora permeabl g out. . . . cture need o the punc uncture n ugh the ai ck of the blood lea out” (Yam disk 70 ar amoto’s F ment 30 c consistin s. 7.) tes a e to blood [A]n air re le hub, ture needl eedle and r relief blood. kage from amoto, e in tight ig. 8 is onsidered g of the , in lief e in Appeal 2012-004892 Application 11/134,012 6 (Suzuki Abstract) Specifically, “[t]he air is then discharged to the outside through at least one opening 12 formed in the hub 3.” (Suzuki col. 5, ll. 54– 56.) “[O]pening 12 is forxed [sic] at the downstream side of the small chamber 5 viewed in the direction of flow of air or blood during flushing back.” (Suzuki, col. 6, ll. 10–13.) “[T]he opening 12 may be formed in at least a portion of the outer peripheral wall of the proximal end portion of the puncture hub 3.” (Suzuki, col. 6, ll. 42–44.) Principle of Law “In the prosecution of a patent, the initial burden falls on the PTO to set forth the basis of any rejection, i.e., a prima facie case” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007); see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability”). Analysis We will consider the rejections together because they rely upon the teaching of Yamamoto and Suzuki regarding the needle and valve structure assemblies. Claims 1 and 8 Claim interpretation is at the heart of patent examination because a claim cannot be compared to the prior art before its scope is properly ascertained. In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1146 (Fed. Cir. 2012)). At issue for claims 1 and 8 is the limitation of a valve comprising a Appeal 2012-004892 Application 11/134,012 7 “forward piece having a transparent nose portion fitting into” a hub of a needle. In Yamamoto, the flared portion of the needle sits up against the clear material of the forward valve nose piece, and Yamamoto explains that this tapered portion is for caulking and affixing the outer needle to the internal cavity (FF 5). The Examiner looks to a dictionary to discern the meaning of the word “into” and finds that one of the definitions explains the word means “3. against; up against: he drove into a wall” (Ans. 8). Based on this definition the Examiner concludes that the tapered portion of the hollow needle (FF 3 (see element 31), FF 8), the portion that makes contact with the transparent martial of the forward piece (FF 3, 5), meets the limitation of “forward piece nose portion fitting into an opposite end of hub” as claimed (Ans. 10). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Claim terms are construed in light of Specification and drawings, they are “not construed in a lexicographic vacuum.” Toro Co. v. White Consolidated Inds., 199 F.3d 1295, 1301 (Fed. Cir. 1999); see also id. at 1299 (“[A] person would not rely solely on a dictionary of general linguistic usage, but would understand the claims in light of the specification and the prior art, guided by the prosecution history and experience in the technologic field”). We recognize, but are not persuaded by, the Examiner’s position that Yamamoto’s element 31 (see FF 3, 5) lying against the transparent material of the valve assembly element 30 (see FF 3, 5), meets the “fitting into” limitation as required by the claims. The Specification provides that the Appeal 2012-004892 Application 11/134,012 8 valve contains “[t]he forward piece 16 of the housing 15 has a cylindrical nose portion 18 for fitting into a bore (not shown) of the hub 12 of the introducer needle 11, for example, in a side-fit or friction-fit manner” (Spec. 5.) In addition, the Specification also discloses two different hub structures. The first hub is associated with “an introducer needle 11 of conventional structure includes a hub 12 and a hollow needle 13 that is secured to and that extends from one end of the hub 12.” (Spec. 4, see also Fig. 1) The other is an “integrated construction 32 [that] includes a hub 33 and a hollow needle 34 that is secured to and that extends from one end of the hub 33.” (Spec. 7, see also Fig. 11.) In either case, the hubs are constructed in such a way that they receive fittings (or valves) that press against the inside wall of the hub. Thus, when read in light of the Specification the ordinary artisan would understand that “fitting into” is akin to placing something in a container. This is in line with another the definition of “into” as meaning “to the interior or inner parts of: to look into a case” (Ans. 7.) Based on the description of the valves and the examples of hubs disclosed in the Specification, we find that the Examiner’s interpretation, based on the present facts, is not tenable. We conclude that the preponderance of the evidence of record does not support the Examiner’s conclusion that the combination of Yamamoto and Suzuki teaches the hub and valve structures as claimed. Even though, Suzuki shows valves having “the Yamamoto type of port placement and the ‘radially extending’ type port placement [as] taught in Suzuki” (Ans. 11), the combination as explained by the Examiner does not meet the limitation of a valve “fitting into” a hub as claimed. Accordingly, the Examiner has not Appeal 2012-004892 Application 11/134,012 9 met the burden of presenting a prima facie case, we reverse the rejection of claims 1 and 8 as well as any dependents thereof. Claim 17 Appellant contends that claim 17 is directed to an integrated valve needle assembly (App. Br. 12). According to Appellant, “there is no disclosure in Yamamoto that the internal cavity 25 of the outer needle hub 20 guides a guide wire (or any other element) therethrough” (id. at 11–12.). Yamamoto disclosed an integral valve and needle structure (FF 1–8). The Examiner has interpreted that the transparent nose portion functions as an eyespot (Ans. 14–15; FF 4). Yamamoto’s disclosed structure shows a first tapered passage (see FF 2 (element 30), FF 3 (element 30 and 31), FF 5 (element 31)). Yamamoto also disclosed a rear piece that also includes a tapered surface (FF 6, see also FF 2, 3) containing a luer connection (FF 8). According to the Examiner, Yamamoto disclosed “the claimed invention except for the radial extension of the port and air filter” (Ans. 5; see also FF 1–8). “Suzuki which show[s] the Yamamoto type of port placement and the ‘radially extending’ type port placement taught in Suzuki.” (Ans. 11; FF 10; see also Suzuki Fig. 2A and 3a). We agree with the Examiner’s conclusion that it would have been obvious to “modify the [port] system as taught by Yamamoto with radial extension of the port and air filter as taught by Suzuki, since such a modification would provide the system with a radial extension of the port and air filter for providing direct and shortest/thinnest direction or outlet to the outside of the downstream housing” (Ans. 5). We recognize, but are not persuaded by, Appellants contention that Yamamoto does not provide a disclosure “that the internal cavity 25 of the Appeal 2012-004892 Application 11/134,012 10 outer needle hub 20 guides a guidewire (or any other element) therethrough” (App. Br. 12). The Examiner has interpreted the limitation of “guiding a guidewire therethrough” as an intended use limitation (see Ans. 15). Although statements of intended use often “appear in the claim’s preamble,” a statement of intended use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987). We note that “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). “[T]he patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Here, both Yamamoto’s forward and rear valve pieces have tapered sides (FF 5 & 6), thereby meeting the claimed structural limitations. Accordingly, we agree with the Examiner’s conclusion that “the elements disclosed in the prior art of record are fully capable of satisfying all structural, functional, spatial, and operational limitations” (Ans. 15). We are also not persuaded by Appellant’s contention that and “[t]here is no disclosure of a ‘luer connection’ on the end of the hub part 40 as required by claim 17” (App. Br. 12). Yamamoto disclosed that the rear portion of the valve assembly contains a tapered surface, specifically, “a lure-tapered surface” (FF 6). Accordingly, we agree with the Examiner’s conclusion that “[a] Luer connection or ‘Luer taper’ is a standardized system of small-scale fluid fittings used for making leak-free connections between a male-taper fitting and its mating female part on medical and laboratory Appeal 2012-004892 Application 11/134,012 11 instruments, including hypodermic syringe tips and needles or stopcocks and needles.” (Ans. 15.) On the record before us, we conclude the Examiner did not err in rejecting claim 17 under 35 U.S.C. § 103(a) as being unpatentable over Yamamoto and Suzuki. Appellant does not present arguments for the separate patentability of claim 22 other than those arguments presented for claim 17 (App. Br. 13). We, thus, affirm the rejection of claim 22 under 35 U.S.C. § 103(a) for the reason set out above for claim 17. SUMMARY We reverse the rejection of claims 1, 3, and 8 under 35 U.S.C. § 103(a) over Yamamoto in view of Suzuki. We affirm the rejection of claim 17 under 35 U.S.C. § 103(a) over Yamamoto in view of Suzuki. We reverse the rejection of claims 6 and 15 under 35 U.S.C. § 103(a) over Yamamoto in view of Suzuki and in further view of Van Heugten. We affirm the rejection of claim 22 under 35 U.S.C. § 103(a) over Yamamoto in view of Suzuki and in further view of Van Heugten. TIME PERIOD FOR RESPONSE 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-IN-PART cam Copy with citationCopy as parenthetical citation