Becton, Dickinson and Company

Patent Trials and Appeals Board

Sep 22, 2020

14246723 - (D) (P.T.A.B. Sep. 22, 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.
14/246,723 04/07/2014 Nichola Charles P-9336D1 2375
67309 7590 09/22/2020
Servilla Whitney LLC/BDX
33 Wood Ave South, Suite 830
Iselin, NJ 08830
EXAMINER
PATEL, SHEFALI DILIP
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
09/22/2020 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):
docket@dsiplaw.com
ip.docket@bd.com
lmurphy@dsiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLA CHARLES and ADAM ZERDA

Appeal 2020-001576
Application 14/246,723
Technology Center 3700
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
JAMES A. WORTH, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 6. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Becton, Dickinson and Company. Appeal Br. 3.
Appeal 2020-001576
Application 14/246,723

2

STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A method of disinfecting a vascular access device, the
method comprising:
obtaining a flush syringe having a barrel including a side
wall having an inside surface defining a chamber for retaining a
fluid, the barrel further includes an open proximal end, a distal
end including a distal wall with an elongated first tip extending
distally therefrom having a first passageway therethrough in
fluid communication with said chamber,
attaching a removable reservoir collar to the distal wall of
the barrel to surround the elongated first tip, the reservoir collar
including at least one side wall having an inside surface
defining a compartment containing a disinfectant or an
antimicrobial agent, a sealed distal end of the reservoir collar
having a removable seal, a proximal end of the reservoir collar
comprising a pierceable seal adjacent the distal wall of the
barrel, with a second tip extending distally from the proximal
end of the removable reservoir collar, a plurality of threads on
the inside surface of the removable reservoir collar, an
absorbent material in the compartment surrounding the second
tip, the absorbent material soaking up the disinfectant or the
antimicrobial agent contained in the compartment of the
reservoir collar, the first tip interlocking the second tip, the
second tip having a second passageway therethrough in fluid
communication with said first passageway of the elongated first
tip of the flush syringe, the second tip of the removable
reservoir collar adapted for connection to a hub of the vascular
access device,
partially threading the reservoir collar onto the distal wall
of the barrel of the flush syringe in an initial position such that
the pierceable seal of the proximal end of the reservoir collar is
not pierced,
Appeal 2020-001576
Application 14/246,723

3

activating the reservoir collar by twisting the proximal
end of the reservoir collar onto the distal wall of the barrel such
that the first tip of the flush syringe pierces the pierceable seal
of the proximal end of the reservoir collar and the first tip of the
flush syringe interlocks with the second tip of the removable
reservoir collar to establish fluid communication between the
first tip and the second tip;
removing the removable seal of the distal end of the
reservoir collar;
connecting the hub of the vascular access device to the
reservoir collar to compress and create friction with the
absorbent material in the compartment.

References
The prior art relied upon by the Examiner is:
Name Reference Date
Mericle US 4,343,306 Aug. 10, 1982
Palestrant US 5,336,192 Aug. 9, 1994
Howlett et al. (“Howlett”) US 2009/0062766 A1 Mar. 5, 2009

Rejection
Claims 1 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Mericle in view of Howlett and Palestrant.

ANALYSIS
Independent claim 1’s “method of disinfecting a vascular access
device” includes a step of “attaching a removable reservoir collar to the
distal wall of the barrel to surround the elongated first tip, the reservoir
collar including at least one side wall having an inside surface defining a
compartment containing a disinfectant or an antimicrobial agent.” Supra.
Appeal 2020-001576
Application 14/246,723

4

The Examiner construes the attaching step of claim 1 to “not require
the disinfectant to be present in the compartment before the removable
reservoir collar is attached to the distal wall of the barrel.” Ans. 4 (emphasis
added). Stated otherwise, it is the Examiner’s position that claim 1 requires
that the disinfectant or antimicrobial agent be present in the compartment
after the removable reservoir collar is attached to the distal wall of the
barrel. See id.
The “Appellant respectfully submits that the Examiner has
misconstrued the plain meaning of the claimed invention.” Reply Br. 2.2
The Appellant submits that “a proper construction of claim 1 requires that
the removable reservoir collar includes a compartment containing a
disinfectant or antimicrobial agent” where “[t]he disinfectant or
antimicrobial agent is present in the removable reservoir collar prior to
being attached to the distal wall of the barrel.” Id. at 4 (emphasis added).
We agree with the Appellant’s claim construction.
Claim 1 recites “attaching a removable reservoir collar to the distal
wall of the barrel to surround the elongated first tip,” then the next part of
the claim specifies the structure of the removable reservoir collar that is
involved in the attaching step. In other words, the plain language of claim 1
requires a step of attaching a removable reservoir collar, which includes at
least one side wall having an inside surface defining a compartment
containing a disinfectant or an antimicrobial agent, to the distal wall of the
barrel to surround the elongated first tip. We note that this construction of

2 The Reply Brief lacks page numbers. We designate page 1 as the page that
includes the heading “REPLY BRIEF” and number the remaining pages in
the Reply Brief consecutively therefrom.
Appeal 2020-001576
Application 14/246,723

5

claim 1’s attaching step is consistent with the Specification. See also id. at 3
(citing Spec. ¶¶ 13, 42, 43). We also note that the Examiner’s construction
of claim 1’s attaching step lacks support in the Specification.
Turning to the rejection on appeal, the Examiner finds that Mericle’s
adapter 15 and recess 22 correspond to the claimed “removable reservoir
collar” and “compartment,” respectively. Final Act. 3; Ans. 4. The
Examiner explains, Mericle teaches that recess 22 receives and contains the
disinfectant from syringe 11 after adapter 15 is attached to the distal wall of
barrel 12. Ans. 4 (citing Mericle, col. 2, ll. 50–61). The Appellant appears
to agree with the Examiner’s explanation. See Appeal Br. 12 (citing
Mericle, col. 2, ll. 50–57).
The Appellant argues that “adapter 15 of Mericle does not include a
‘compartment containing a disinfectant or an antimicrobial agent’ but,
rather, the adapter 15 of Mericle must be attached to a syringe loaded with
cleaning liquid in order to clean element 23.” Id.; Reply Br. 2, 4. The
Appellant’s argument is persuasive.
Although Mericle teaches attaching adapter 15 and recess 22 to the
distal wall of syringe 11’s barrel 12, recess 22 does not contain a disinfectant
or antimicrobial agent when this attachment occurs. Therefore, we do not
agree with the Examiner’s finding that Mericle teaches, “attaching a
removable reservoir collar to the distal wall of the barrel to surround the
elongated first tip, the reservoir collar including at least one side wall having
an inside surface defining a compartment containing a disinfectant or an
antimicrobial agent,” as recited in claim 1.
Appeal 2020-001576
Application 14/246,723

6

Further, we note that the Examiner fails to rely on the teachings of
Howlett or Palestrant in any manner that would remedy the deficiency in the
Examiner’s rejection of claim 1.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 and dependent claim 6.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 6 103(a) Mericle, Howlett,
Palestrant

1, 6

REVERSED