Tara Chand. Singhal

Patent Trials and Appeals Board

Mar 10, 2020

12807481 - (D) (P.T.A.B. Mar. 10, 2020)

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.
12/807,481 09/07/2010 Tara Chand Singhal 11195.177 9920
103550 7590 03/10/2020
Tara Chand Singhal
P.O. Box 5075
Torrance, CA 90510
EXAMINER
PRICE, NATHAN R
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
03/10/2020 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):
chand@internetpromise.com
singhal@att.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TARA CHAND SINGHAL

Appeal 2019-002426
Application 12/807,481
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 5–17, and 21–23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Tara
Chand Singhal. Appeal Br. 4.
Appeal 2019-002426
Application 12/807,481

2
BACKGROUND
The Specification describes “apparatus and methods for preparing for
reuse, single-use disposable syringes and needles for a home user, to reduce
the cost of such disposables and to reduce the effort and the infrastructure
cost of disposing sharp medical waste.” Spec. 1, ll. 20–23.
CLAIMS
Claims 1, 8, 12, and 21 are the independent claims on appeal. Claim 1
is illustrative of the appealed claims and recites:
1. An injection needle apparatus, comprising:
an injection syringe with a permanently attached injection
needle, wherein the syringe has a needle cover, wherein the
needle cover when positioned over the injection needle, cleans,
disinfects and lubricates the injection needle for reuse for a same
user;
the needle cover has positioned inside, a first stack as a
wicking medium, a second stack as a disinfecting agent, and a
third stack as a lubricating agent, wherein the wicking medium,
the disinfecting agent, and the lubricating agent are stacked on
top of each other in heights for different needle lengths;
a guide mechanism, wherein the guide mechanism has
male and female parts attached to the syringe body and the needle
cover, wherein the guide mechanism using the male and female
parts guides the needle cover onto the injection needle for
temporary storage of the injection needle inside the needle cover;
and
the injection needle, when moved inside the needle cover,
first moves through the first stack, then the second and then the
third stack, thereby the needle cover cleans, disinfects and
lubricates the same injection needle for reuse by the same user.
Appeal Br. 44.
Appeal 2019-002426
Application 12/807,481

3
REJECTIONS
1. The Examiner rejects claims 1, 3, 5–7, and 21–23 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
2. The Examiner rejects claims 1, 3, 5–172 under 35 U.S.C. § 112, second
paragraph, as indefinite.
3. The Examiner rejects claims 1, 3, 5–7, and 21–23 under 35 U.S.C.
§ 103(a) as unpatentable over Swan3 in view of Manganini4 and
Horvath.5
4. The Examiner rejects claims 8 –17 under 35 U.S.C. § 103(a) as
unpatentable over Ashkenaz6 in view of Manganini and Horvath.
DISCUSSION
Written Description
With respect to independent claims 1 and 21, the Examiner finds that
written description support is lacking for the limitation “a permanently
attached injection needle.” Final Act. 4. The Examiner finds that the
original Specification only discloses embodiments with non-permanent
needles and that the only disclosure of needles with permanent needles is
related to the state of the prior art. Id. at 4–5.

2 The Examiner did not list claim 6 in this rejection. See Final Act. 6.
However, because claim 6 depends from rejected claim 1, we consider it to
have been rejected by virtue of this dependence.
3 Swan, US 2,400,722, iss. May 21, 1946.
4 Manganini et al., US 5,876,380, iss. Mar. 2, 1999.
5 Horvath et al., US 2012/0029469, pub. Feb. 2, 2012.
6 Ashkenaz, US 2,828,742, iss. Apr. 1, 1958.
Appeal 2019-002426
Application 12/807,481

4
We find that there is adequate support for “a permanently attached
injection needle” as recited in each of claims 1 and 21. We agree with the
Examiner that permanently attached needles are described in the
Specification with respect to the prior art. Specifically, the Specification
discloses that Figure 1C depicts a prior art syringe “where the needle is
permanently attached to the syringe.” Spec. 5, ll. 8–9. Further, a review of
Figures 1C and 2D shows that the syringe and needle have a similar
structure. We also note that the Specification discloses that Figure 2C
depicts a preferred embodiment of the present invention. See id. at 9, ll. 13–
14. Thus, where the Specification discloses that “Figure 2D illustrates
embodiment 30 used with syringes 8 with attached needles as in prior art
Figure 2C,” one would understand that the reference to Figure 2C is a
typographical error and should have been a reference to Figure 1C. Under
this understanding of the disclosure, we find that the Specification
reasonably conveys that Appellant was in possession of the claimed
invention at the time the Specification was filed.
Based on the foregoing, we do not sustain the written description
rejection of independent claims 1 and 21 or dependent claims 3, 5–7, 22, and
23.
Indefiniteness
With respect to claim 1, the Examiner finds that the recitation of “the
syringe body” lacks antecedent basis. Final Act. 6. We agree. The claim
recites “a guide mechanism, wherein the guide mechanism has male and
female parts attached to the syringe body and the needle cover.” Appeal
Br. 44. The claim earlier recites “an injection syringe with a permanently
attached injection needle . . . [and] a needle cover.” Id. The claim does not
Appeal 2019-002426
Application 12/807,481

5
provide any earlier indication such that one of ordinary skill in the art would
understand what the later recited “syringe body” is, i.e., without first
referencing a body portion of the syringe, one of ordinary skill in the art
would not understand from the claim language where the claimed guide
mechanism is attached. Thus, we sustain this rejection of claim 1. We also
sustain this rejection of dependent claims 3 and 5–7 based on their
dependency from claim 1. For the same reasons, we also sustain the
Examiner’s separate rejection of claim 7 based on the recitation of “a
syringe body.” See Final Act. 6.
With respect to independent claim 8, the Examiner finds that the
limitations “the injection needle” and “the same injection needle” lack
antecedent basis. We agree. Claim 8 first recites “[a]n injection needle
apparatus,” indicating that the entire claim is directed to an injection needle.
Appeal Br. 45. Claim 8 further recites “a pen needle for injection.” Id.
Claim 8 later recites “the injection needle” and “the same injection needle.”
Id. However, it is unclear from the context of the claim whether these later
recitations of “the injection needle” and “the same injection needle” are
intended to refer to “a pen needle for injection” or the “injection needle
apparatus” as a whole. For this reason, we sustain this rejection of claim 8.
We also sustain the rejection of claims 9–11 based on their dependency from
claim 8.
Similarly, the Examiner finds that claim 12 includes the limitation
“the injection needle,” which lacks antecedent basis. Final Act. 7. We
agree. Claim 12 includes the limitations “a pen injection needle,” “the pen
injection needle,” and “the injection needle.” Appeal Br. 46–47. Given the
inconsistency of language in the claim, it is unclear if “the injection needle”
Appeal 2019-002426
Application 12/807,481

6
is intended to refer to the same “pen injection needle” as the limitation “the
pen injection needle.” Accordingly, we sustain this rejection of claim 12.
We also sustain the rejection of claims 13–17 based on their dependency
from claim 12.
Obviousness
Each of independent claims 1, 8, 12, and 21 requires a first stack
including a wicking medium. See Appeal Br. 44–46, 48. With respect to
independent claims 1 and 21, the Examiner acknowledges that the
combination of Swan, Manganini, and Horvath does not teach a first stack
that includes a wicking medium. Final Act. 23, 27. Similarly, with respect
to independent claims 8 and 12, the Examiner acknowledges that the
combination Ashkenaz, Manganini, and Horvath does not teach a first stack
that includes a wicking medium. Id. at 9, 16. For each claim, the Examiner
determines that using a wicking medium in the first stack would have been
an obvious design choice over the septum provided in Manganini’s first
stack. See, e.g., id. at 9. Specifically, the Examiner finds and determines:
However, Ashkenaz in view of Manganini et al does not
teach or suggest the first stack being a wicking medium. Rather,
Manganini's first stack is a septum (col. 7, lns 18–21). However,
Manganini does discloses a wicking medium (i.e. gauze; col. 7,
ln 23).
It would have been obvious to one having ordinary skill in
the art at the time the invention was made to modify the first stack
being a septum material as taught by Manganini et al with the
cotton gauze material as taught by Manganini for the purpose of
a simple substitution of one known stack element for another
with a predictable and similar result. Here, using a cotton gauze
instead of a septum as the first stack 94 would be an obvious
design choice as a simple substitution of one stack material for
another with a predictable and similar result.
Appeal 2019-002426
Application 12/807,481

7
Id.
We determine that the Examiner erred with respect to this reasoning.
A so-called “design choice” rationale, such as the Examiner relies upon here,
has been deemed appropriate where one prior art element or property is
proposed to be substituted for another that achieves the same purpose. See
ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016)
(“The prior art consistently locates the two sensors at issue in the shredder’s
feed, and no party disputes that an ordinary artisan would have found this
the obvious location for the combination of sensors. The ordinary artisan
would then be left with two design choices.”); Ex parte Maeda, Appeal
2010-009814, 2012 WL 5294326, at *3 (PTAB Oct. 23, 2012) (informative).
Cf. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (“The Board held that Gal
had simply made an obvious design choice. However, the different
structures of Gal and Matsumura achieve different purposes.”). Our
reviewing court has cautioned that “[m]erely stating that a particular
[limitation] is a design choice does not make it obvious.” Polaris Indus.,
Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 n.4 (Fed. Cir. 2018) (quoting
Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016)
(nonprecedential)).
Here, the Examiner does not adequately established the predicate
finding for a design-choice position — i.e., that the prior art provides an
alternative element that achieves the same purpose as what is claimed. See
ACCO Brands, 813 F.3d at 1367. The Examiner states only that substituting
a wicking material for Manganini’s septum would be a design choice “as a
simple substitution of one stack material for another with a predictable and
similar result.” Final Act. 9. Thus, the Examiner finds that the claimed
Appeal 2019-002426
Application 12/807,481

8
wicking material and Manganini’s septum achieve the same result or
purpose.
However, the Examiner does not cite to any evidence or provide any
further explanation regarding this finding. The rejection seeks to replace
Manganini’s septum 94 with a wicking material. Notably, the Examiner has
not provided evidence or explanation as to what the purpose of septum 94 is.
Manganini discloses several septa that may be sterile and provide a seal
around a needle, and thus, one might conclude that septum 94 is intended to
provide a sterile seal. See, e.g., Manganini col. 7, ll. 14–31. In contrast, the
Specification describes the wicking medium as a material that absorbs
excess fluid droplets from a needle head. See Spec. 8, ll. 11–12. Without
further explanation, we fail to see how Manganini’s septum and the claimed
wicking material achieve the same purpose such that the Examiner may
appropriately rely on a design choice rationale to show obviousness.
Based on the foregoing, we do not sustain the rejections of
independent claims 1, 8, 12, and 21. For the same reasons, we do not sustain
the rejections of dependent claims 3, 5–7, 9–11, 13–17, 22, and 23.
CONCLUSION
We AFFIRM the rejection of claims 1, 3, and 5–17 as indefinite. We
REVERSE the remaining rejections of the claims on appeal.
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
1, 3, 5–7, 21–
23
112, first
paragraph
Written
description
1, 3, 5–7,
21–23
1, 3, 5–17 112, second
paragraph
Indefiniteness 1, 3, 5–17
Appeal 2019-002426
Application 12/807,481

9
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
1, 3, 5–7, 21–
23
103(a) Swan,
Manganini,
Horvath
1, 3, 5–7,
21–23
8–17 103(a) Ashkenaz,
Manganini,
Horvath
8–17
Overall
Outcome
1, 3, 5–17 21–23

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

AFFIRMED-IN-PART