Tara Chand. Singhal

Patent Trials and Appeals Board

Mar 10, 2020

14014717 - (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.
14/014,717 08/30/2013 Tara Chand Singhal 11195.259F 8349
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 2019-002412
Application 14/014,717
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 1–18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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.
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BACKGROUND
The Specification discloses “[a]n integrated portable handheld fluid-
medicine-injection device for home users.” Spec. 1, ll. 27–28.

CLAIMS
Claims 1, 11, and 16 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A portable handheld fluid-medicine-injection device for
home users, comprising:
an insulin pen, wherein the insulin pen uses exclusively a
pen needle and the insulin pen further comprising a first
assembly comprising an inject mechanism subassembly, and a
medicine vial sub-assembly with a medicine vial;
a second assembly, physically separate from the first
assembly, comprising a pen needle mount and dismount sub-
assembly for mounting and dismounting the pen injection needle
to a dispense end of the medicine vial, wherein the needle mount
and dismount sub-assembly has a slide mechanism and a guide
mechanism for mounting and dismounting the pen injection
needle on the dispense end of the medicine vial;
the guide mechanism has guide members positioned both
on the slide mechanism and the medicine vial, wherein the slide
mechanism along with the guide mechanism is used for
mounting and dismounting the pen injection needle onto and
from the medicine vial;
the slide mechanism and the guide mechanism dismount
the pen injection needle into a position where the pen injection
needle is not in fluid communication with the medicine vial, and
wherein the needle mount and dismount sub-assembly still
remains engaged with the medicine vial sub-assembly;
a pen needle storage assembly configured for storing the
pen injection needle in the dismount position on the slide
mechanism, wherein the pen needle storage assembly has a
needle cover and disposed within the needle cover are agents that
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clean, disinfect and lubricate the pen injection needle for reuse,
and wherein the pen needle storage assembly is integrated with
the slide mechanism of the needle mount and dismount assembly
as a single integrated assembly enabling the pen needle to be
prepared for reuse inside the needle cover when the single
integrated assembly is dismounted from the medicine vial.
Appeal Br. 26.
REJECTIONS
1. The Examiner rejects claims 1–18 under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. The Examiner rejects claims 1, 4, 5, 11–13, 16, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Ashkenaz2 in view of Manganini3 and
Horvath.4
3. The Examiner rejects claims 2, 6–10, 14, 15, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Ashkenaz, in view of Manganini, Horvath,
and Doyle.5
4. The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Ashkenaz, in view of Manganini, Horvath, and Knight.6
DISCUSSION
Indefiniteness
With respect to claims 1 and 11, the Examiner finds that the limitation
“the dismount position” lacks antecedent basis. Final Act. 4–5. We
disagree. Claim 1, for example, first recites “the slide mechanism and the

2 Ashkenaz, US 2,828,742, iss. Apr. 1, 1958.
3 Manganini et al., US 5,876,380, iss. Mar. 2, 1999.
4 Horvath et al., US 2012/0029469 A1, pub. Feb. 2, 2012.
5 Doyle, US 2003/0187401 A1, pub. Oct. 2, 2003.
6 Knight et al., US 2006/0184117 A1, pub. Aug. 17, 2006.
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guide mechanism dismount the pen injection needle into a position where
the pen injection needle is not in fluid communication with the medicine
vial, and wherein the needle mount and dismount sub-assembly still remains
engaged with the medicine vial sub-assembly.” Appeal Br. 16. Claim 11
recites a similar limitation. Id. at 28. Based on this limitation, one of
ordinary skill in the art would understand that the limitation “the pen
injection needle in the dismount position” to be the position into which “the
slide mechanism and guide mechanism dismount the pen injection needle.”
As such, we find sufficient antecedent basis for the term at issue.
Accordingly, we do not sustain this rejection of independent claims 1 and
11, and for the same reasons, we do not sustain this rejection of dependent
claims 2–10 and 12–15.
With respect to claim 16, the Examiner finds that the terms “the pen
injection needle” and “the needle cover” lack antecedent basis such that
claim 16 is indefinite. Final Act. 5. We agree. Claim 16 recites
“dismounting the pen injection needle on to and from the medicine vial”
without first referencing any structure that one of ordinary skill in the art
would clearly understand to be a pen injection needle. Similarly, claim 16
recites “the pen needle to be prepared for reuse inside the needle cover”
without first referencing any structure that one of ordinary skill in the art
would understand to be a needle cover. Accordingly, we sustain this
rejection of claim 16 and dependent claims 17 and 18.
Obviousness
With respect to the obviousness rejections, Appellant relies on the
same arguments for all claims. See Appeal Br. 12–25. We address
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independent claim 1 below, and claims 2–18 will stand or fall with claim 1.
See 37 C.F.R. 41.37(c)(1)(iv).
With respect to claim 1, the Examiner finds that Ashkenaz teaches an
injection device as claimed including an insulin pen, a second assembly, a
guide mechanism, a slide mechanism, and a storage assembly, except that
Ashkenaz does not teach that the storage assembly includes agents for
cleaning, disinfecting, and lubricating the needle for reuse. Final Act. 5–7
(citing Ashkenaz Figs. 1–3, 5–8). With respect to the claimed cleaning and
disinfecting agents, the Examiner concludes that including such agents in
Ashkenaz would have been obvious in view of the disclosure of such in
Manganini. Id. at 7–8 (citing Manganini col. 7, ll. 13–30). With respect to
the lubricant, the Examiner concludes that the inclusion of a lubricant would
have been obvious in view of the disclosure of Horvath. Id. at 8 (citing
Horvath ¶ 31).
We agree with and adopt the Examiner’s findings and conclusions
with respect to the rejection of claim 1. See Final Act. 5–9; see also Ans. 4–
13. As discussed below, we are not persuaded of error in the rejection by
Appellant’s arguments.
Appellant first argues that the Examiner has applied an unreasonable
interpretation of the claim in equating the claimed pen needle, needle cover,
and guide mechanism to the injection syringe taught by Ashkenaz. Appeal
Br. 16. We are not persuaded of error.
The scope of a claim of a patent application is determined not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
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art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Appellant asserts that the Examiner has made several errors in
applying the broadest reasonable interpretation of the present claims by
equating structures in Ashkenaz to the structure required in the present
claims. Appeal Br. 14–16. However, without further explanation, we are
not persuaded of error for the reasons provided by the Examiner. See
Ans. 4–5. Specifically, the Examiner provides an interpretation of the term
“pen needle” in light of the Specification and determines that Ashkenaz
teaches a pen needle according to this interpretation. Id. We agree with the
Examiner’s reasoning, and Appellant provides no explanation regarding why
the Examiner has erred, beyond generally asserting that the Examiner’s
interpretation is unreasonable. See, e.g., Reply Br. 3.
Next, Appellant argues that Ashkenaz is not analogous art. Appeal
Br. 17. Appellant asserts that Ashkenaz is non-analogous “because
Ashkenaz does not teach or disclose [a] pen needle, with features of a needle
cover for pen needle and a guide mechanism for mounting the needed [sic]
cover over the pen needle.” Id. We are not persuaded of error by this
argument.
Our reviewing court has set forth a two-prong test for determining
whether a prior art reference is analogous: (1) whether the reference is from
the same field of endeavor as the claimed invention, and (2) if the reference
is not within the same field of endeavor, whether the reference is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Here, we determine that
Ashkenaz is in the same field of endeavor as the claimed invention. Claim 1
is directed to a “fluid-medicine injection device.” Appeal Br. 26. Ashkenaz
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discloses “a cartridge-needle unit for use in injection syringes which
provides for separation of injection needle for medicament before use . . . .”
Ashkenaz col. 1, ll. 15–17. Thus, Ashkenaz is related to a needle for
injection syringes used to inject medicaments, i.e., a medicine injection
device. Because Ashkenaz and the claimed invention are related to
medicine injection devices, we determine they are in the same field of
endeavor, and thus, Ashkenaz is analogous art.
Next, Appellant argues that the Examiner has misapplied the Graham
v. John Deere Co., 383 U.S. 1 (1966) obviousness analysis. Appeal Br. 18–
21. Here, Appellant asserts that the art of record does not teach or suggest
the claimed features of a pen needle, a needle cover, and a guide mechanism.
Id. at 19. However, as noted above, the Examiner has identified the
differences between the claims and the prior art of record; the Examiner has
identified where each limitation of the claim is taught in the prior art; and
the Examiner provides specific reasons why one of ordinary skill in the art
would have had a reason to combine the art relied upon to arrive at the
claimed invention. See Final Act. 5–9. Appellant’s argument fails to
explain, with specificity, what error or errors are present in the rejection
under this argument heading.
We are also not persuaded by Appellant’s argument in the Reply Brief
that the claim is directed to a pen needle for reuse at home, and the teaching
of such is lacking in the art such that there is no teaching, suggestion, or
motivation to combine the art to arrive at the claimed configuration. Reply
Br. 7.
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
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1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). However,
“apparatus claims cover what a device is, not what a device does.” Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
(emphasis added). To the extent the claims here describe that an intended
use of the device is that it may be reusable at home, Appellant has not
identified any structure that results from such an intended use that would
distinguish the claims over the prior art, as that art is relied upon by the
Examiner. Thus, we are not persuaded of error in the rejection by
Appellant’s argument here.
Further, Appellant argues that the rejection is based on hindsight.
Appeal Br. 22. This argument is premised on the arguments above, in which
Appellant asserts that the prior art does not teach or suggest the claimed
invention. Id. However, as discussed, we are not persuaded that Appellant
has adequately shown any error in the Examiner’s findings or conclusions
regarding this rejection. Further, Appellant has not otherwise explained how
the rejection is based in any part on knowledge gleaned only from
Appellant’s disclosure, which would be indicative of the rejection relying on
hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Finally, Appellant argues that the art teaches away from the claimed
invention. Appeal Br. 24. In support, Appellant asserts that the
[c]ited combination of the prior art is directed to an
injection syringe as in primary cited art of Ashkenaz, and this
teaches away from a pen injection needle of the clamed subject
matter with specific limitations of a needle cover and a guide.
Further the combination of Manganini and Horvath also teaches
away from the claimed subject matter by teaching elements not
in the claimed subject matter directed to a pen needle and its
features and functions of a needle cover and a guide mechanism.
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Id. We are not persuaded.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). At best, Appellant’s argument merely points to differences
between the prior art and the claimed invention that, as indicated above, are
adequately addressed in the rejection. Appellant does not identify any
teaching in the art that suggests a person of ordinary skill in the art would be
discouraged or diverted from a path leading to the combination proposed by
the Examiner.
Based on the foregoing, we sustain the rejection of claim 1 as obvious.
We also sustain the rejections of the remaining claims 2–18, for which
Appellant relies on the same arguments, as noted above.

CONCLUSION
We REVERSE the rejection of claims 1–15 under 35 U.S.C. § 112,
second paragraph. We AFFIRM the remaining rejections of the claims on
appeal.
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–18 112, second
paragraph
Indefiniteness 16–18 1–15
1, 4, 5, 11–
13, 16, 18
103(a) Ashkenaz,
Manganini,
Horvath
1, 4, 5, 11–
13, 16, 18

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Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
2, 6–10, 14,
15
103(a) Ashkenaz,
Manganini,
Horvath, Doyle
2, 6–10, 14,
15, 17

3 103(a) Ashkenaz,
Manganini,
Horvath, Knight
3
Overall
Outcome
1–18

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