11161549 (B.P.A.I. Mar. 2, 2012)

Ex Parte Albert et al

Board of Patent Appeals and InterferencesMar 2, 2012

11161549 (B.P.A.I. Mar. 2, 2012)

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. 11/161,549 08/08/2005 Sean J Albert MDXVA-97US6 2548 26875 7590 03/02/2012 WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 EXAMINER BOSWORTH, KAMI A ART UNIT PAPER NUMBER 3767 MAIL DATE DELIVERY MODE 03/02/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte SEAN J. ALBERT and DENNIS M. BIALECKI ____________________ Appeal 2011-002750 Application 11/161,549 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, LINDA E. HORNER, and WILLIAM V. SAINDON, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002750 Application 11/161,549 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b). Claim 7, reproduced below with added emphasis, is illustrative of the claimed subject matter. 7. A needle protector comprising: a housing; a ledge within the housing; a clip positioned within the housing and having a first wall with an aperture adapted to slidably receive a needle shaft therethrough in a first state of the clip and to grip the needle shaft in a second state of the clip, the clip having a second wall with a portion adapted to bear against the shaft in the first state and being adapted to confront a tip of the needle in the second state, a strut connecting the first and second walls, and a heel extending from the first wall, the first wall and heel being disposed to opposite sides of the strut, the heel abutting the ledge in the first state of the clip and pivoting about the ledge as the clip moves from the first state toward the second state; and a spring member within the housing biasing the clip toward the second state. Rejections I. Claims 1-6 are rejected under 35 U.S.C. § 103(a) as unpatentable over Schramm (US 2004/0049155 A1, pub. Mar. 11, 2004), Ferguson (US 2002/0193745 A1, pub. Dec. 19, 2002), and Bialecki (US 6,652,486 B2, iss. Nov. 25, 2003). II. Claims 7-10 are rejected under § 103(a) as unpatentable over Schramm and Ferguson. Appeal 2011-002750 Application 11/161,549 3 SUMMARY OF DECISION We REVERSE. OPINION Independent claim 7 requires, in relevant part, a heel and a ledge, wherein the heel extends from a first wall of a clip and abuts the ledge. The Examiner found that Ferguson teaches these features and proposes to modify the clip of Schramm to include these features. Ans. 6-7. Appellants argue that the heel and ledge from Ferguson would not function in Schramm’s clip. App. Br. 16-17. As shown in figures 4-5, Schramm’s clip operates by a spring biasing the clip to rotate in a clockwise fashion when needle riding lip 54 no longer bears against the needle. Para. [0107]. After clockwise rotation, the aperture 50 binds the needle and horizontal leg 48 of shield 28 further prevents the needle from reuse. Schramm, paras. [0107]-[0108]. The heel (extension of binding member 18”) and ledge (blocking member 42) identified by the Examiner (Ans. 7) in Ferguson operate, in contrast, in a counterclockwise fashion. In particular, after the needle is bound in the aperture 20” of binding member 18”, if the needle is moved towards the distal end, the extension of the binding member 18” bears against the blocking member 42 to further bind the needle and prevent it from further distal movement. See Ferguson, para. [0059], fig. 11. The Examiner does not identify the particular modification proposed of Schramm. Given that the heel and ledge of Ferguson operate in a different fashion than the clip in Schramm, it is not clear what modification the Examiner proposes, as the use of the heel/ledge of Ferguson would appear to frustrate the operation of Schramm. See, e.g., App. Br. 17 Appeal 2011-002750 Application 11/161,549 4 (depicting a possible combination). Accordingly, the Examiner has not set forth a basis for us to reasonably conclude that the subject matter of claim 7 would have been obvious in view of the teachings of Schramm and Ferguson. As such, we do not sustain Rejection II, or Rejection I, which relies on a similar proposed combination of Schramm/Ferguson. See Ans. 4- 5. DECISION For the above reasons, we reverse the Examiner’s decision regarding claims 1-10. REVERSED hh