Ex Parte Humphrey

Board of Patent Appeals and Interferences

Jan 31, 2012

10888967 (B.P.A.I. Jan. 31, 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.
10/888,967 07/12/2004 Grant S. Humphrey 19025-4US 3126
7590 02/01/2012
Butzel Long
Suite 1100
110 West Michigan Ave.
Lansing, MI 48933
EXAMINER
JACYNA, J CASIMER
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
02/01/2012 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 GRANT S. HUMPHREY
________________

Appeal 2010-004552
Application 10/888,967
Patent US 6,599,276 B1
Technology Center 3700
________________

Before, JENNIFER D. BAHR, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge McCARTHY

Opinion Dissenting-in-part filed by Administrative Patent Judge BAHR

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal No. 2010-004552
Application No. 10/888,967

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The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3, 8-10, 13, 14, 16-18 and 127, at least one of
which is twice rejected. The Examiner finally rejects under 35 U.S.C.
§ 103(a):claims 1 and 2 as being unpatentable over
Balaban (US 5,433,711, issued Jul. 18, 1995), Britton (US
6,315,113 B1, issued Nov. 13, 2001) and J. Van Donkersgoed,
A broken needle in my steak!, CANADIAN CATTLEMEN, January,
2000 at 28 (“Van Donkersgoed”);
claims 1, 2, 13, 16 and 127 as being unpatentable over
Balaban, Britton, Luther (US 4,449,973, issued May 22, 1984)
and Van Donkersgoed;
claims 1, 3 and 8 as being unpatentable over Balaban,
Chan (US 5,412,182, issued May 2, 1995) and Van
Donkersgoed;
claims 1, 3, 8, 14, 16, 18 and 127 as being unpatentable
over Balaban, Chan, Luther and Van Donkersgoed;
claim 9 as being unpatentable over Balaban, Britton,
Chan, Van Donkersgoed and Lowe (US 3,723,102, issued Mar.
27, 1973), with or without Luther; and

1 The Appellant identifies the real party in interest as NEOGEN
Corporation of Lansing, Michigan.
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Application No. 10/888,967

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claims 10 and 17 as being unpatentable over Balaban,
Britton, Chan, Luther, Van Donkersgoed and Lowe.2
Claims 4-7, 11, 12, 15 and 19-126 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Claims 1, 16 and 127 are independent. Claim 1 recites:
1. A system for detecting whether a
hypodermic cannula or a portion thereof is present
within a meat sample from an animal, said system
comprising:
a metal detector for detecting whether metal
is present in the meat sample; and
a hypodermic cannula having a fluid
passageway for injecting or drawing fluid and
being comprised at least in part of a stainless steel
selected from a magnetically responsive
martensitic stainless steel, ferritic stainless steel,
mixtures of ferritic stainless steel and mixtures of
martensitic stainless steel, and said cannula having
been prepared by cold drawing and having a size
from 14 to 20 gauge, wherein said cannula is more
detectable by said metal detector when said
cannula or a portion thereof is present in the meat
sample than a cannula or a portion thereof of
comparable size and made of standard austenitic
stainless steel.

2 The Examiner in the Office Action mailed July 2, 2009 also rejected
claims 1-3, 8-10, 13, 14, 16-18 and 127 under 35 U.S.C. § 251 due to a
defective reissue declaration. (Id. at 2). At the Examiner’s suggestion (see
id.), the Appellant filed a supplemental declaration concurrently with the
Notice of Appeal. The Examiner did not repeat the rejection under § 251 in
the Answer.
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Application No. 10/888,967

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The Examiner’s reasoning in support of the rejection is explained on
pages 4-5 of the Answer. The Examiner finds that Balaban describes “a
stainless steel hypodermic cannula syringe used to vaccinate animals that is
made from a size range of 10 to 18 gauge (see column 1, lines 54-60 and
column 4, lines 2-6) . . .” (Ans. 4). Britton describes chemically disposing
of thin medical sharps with a chemical dissolvent. (Britton, col. 3, ll. 24-27).
Britton describes a working example using 28 gauge type U-100 syringes,
manufactured by Becton Dickinson and Co., and 29-gauge U-100 insulin
syringes, manufactured by Sherwood Medical. Each of the two syringes
appears to be used for insulin injection. Britton describes the type U-100
syringes manufactured by Becton Dickinson and Co. as having
ferromagnetic cannulae. Britton is silent as to the composition of the
cannulae of the U-100 syringes manufactured by Sherwood Medical,
although those cannulae may also be ferromagnetic. (Britton, col. 6, ll. 11-
15 and 24-27). Britton does not suggest any advantage attributable to
ferromagnetic cannulae, as such, but instead concentrates on the dissolubility
of the cannulae. Van Donkersgoed discloses that the risk of broken needles
reaching consumers in beef products was a known problem and that
processors recommended placing metal detectors at the end of all lines in
processing facilities to detect such broken needles.
As the Appellant points out, Britton does not suggest that
ferromagnetic stainless steels were known materials for use in cannulae for
hypodermic needles for use in injecting animals. (See App. Br. 19 and 21).
Britton points out that both ferromagnetic and non-ferromagnetic stainless
steels are corrosion resistant. (Britton, col. 5, ll. 31-33). Britton also points
out that martensitic ferromagnetic stainless steel can be hardened while
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Application No. 10/888,967

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ferritic ferromagnetic stainless steel cannot be hardened. (Britton, col. 5, ll.
40-41). These facts do not imply that one of ordinary skill in the art might
have had reason to select martensitic stainless steel over a non-ferromagnetic
stainless steel in manufacturing cannulae for use in injecting animals,
however.
The Examiner does not provide any persuasive reason why one of
ordinary skill in the art might have injected an animal such as a beef-
producing animal using a hypodermic cannula comprised at least in part of a
stainless steel selected from a magnetically responsive martensitic stainless
steel, ferritic stainless steel, mixtures of ferritic stainless steel and mixtures
of martensitic stainless steel. In particular, the combined teachings of
Balaban, Britton and Van Donkersgoed would not have suggested the use of
ferromagnetic cannulae for injecting animals as a solution to the risk of
broken needles reaching consumers. (See App; Br. 23). We do not sustain
the rejection of claims 1 and 2 under § 103(a) as being unpatentable over
Balaban, Britton and Van Donkersgoed.
The Examiner cites Luther as teaching “a method of manufacturing a
hypodermic stainless steel cannula that includes cold drawing as disclosed
on column 2, lines 12-16, and column 4, lines 7-10, for the purpose of
increasing the hardness and improving the strength of the cannula.” (Ans.
6). As the Appellant points out at page 20 of the Appeal Brief, Luther does
not appear to disclose the use of a ferromagnetic stainless steel in
manufacturing the cannula. Since Luther does not remedy the deficiencies
in the teachings of Balaban, Britton and Van Donkersgoed, we do not
sustain the rejection of claims 1, 2 and 13 under § 103(a) as being
unpatentable over Balaban, Britton, Luther and Van Donkersgoed.
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Independent claim 16 recites a method including a step of injecting an
animal with a hypodermic needle cannula “comprising at least in part a
magnetically responsive stainless steel.” Independent claim 127 recites a
method including the step of providing a meat sample from an animal that
has been injected with a hypodermic needle cannula “comprising at least in
part a magnetically responsive stainless steel.” Such methods would not
have been obvious from the combined teachings of Balaban, Britton, Luther
and Van Donkersgoed. We do not sustain the rejection of claims 16 and 127
under § 103(a) as being unpatentable over Balaban, Britton, Luther and Van
Donkersgoed.
Chan describes an eddy current heater 10 including a needle tube 12
made from ferromagnetic stainless steel. Chan teaches exploiting the
ferromagnetic properties of the needle tube 12 to enhance eddy current
heating. (Chan, col. 4, ll. 3-7). One of ordinary skill in the art familiar with
the structure and operation of Chan’s eddy current heater 10 would not have
had reason to select martensitic stainless steel over a non-ferromagnetic
stainless steel in manufacturing cannulae for use in injecting animals.
Therefore, the Examiner has not shown that one of ordinary skill in the art
familiar with the combined teachings of Balaban, Chan and Van
Donkersgoed might have injected an animal such as a beef-producing animal
using a hypodermic cannula comprised at least in part of a stainless steel
selected from a magnetically responsive martensitic stainless steel, ferritic
stainless steel, mixtures of ferritic stainless steel and mixtures of martensitic
stainless steel. We do not sustain the rejection of claims 1, 3 and 8 under
§ 103(a) as being unpatentable over Balaban, Chan and Van Donkersgoed.
Since Luther does not remedy the deficiencies in the combined teachings of
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Balaban, Chan and Van Donkersgoed, we do not sustain the rejection of
claims 1, 3, 8, 14, 16, 18 and 127 under § 103(a) as being unpatentable over
Balaban, Chan, Luther and Van Donkersgoed, either.
The Examiner cites column 2, lines 31-46 of Lowe as teaching that,
“in the art of manufactur[ing] iron alloys such as steel, it is well known in
the art to mix or combine martensitic and ferritic steels for the purpose of
attaining a combination of properties of the two steels.” (Ans. 10). The
teachings of Lowe do not remedy the deficiencies in the teachings of
Balaban, Britton, Chan and Van Donkersgoed for purposes of the rejection
of claim 9. Therefore, we do not sustain the rejection of claim 9 under
§ 103(a) as being unpatentable over Balaban, Britton, Chan, Van
Donkersgoed and Lowe. Neither do the teachings of Lowe remedy the
deficiencies in the teachings of Balaban, Britton, Chan, Luther and Van
Donkersgoed for purposes of the rejection of claims 10 and 17. We do not
sustain the rejection of claims 10 and 17 under § 103(a) as being
unpatentable over Balaban, Britton, Chan, Luther, Van Donkersgoed and
Lowe.

DECISION
We REVERSE the Examiner’s decision rejecting claims 1-3, 8-10, 13,
14, 16-18 and 127.

REVERSED

Klh
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Application No. 10/888,967

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BAHR, Administrative Patent Judge, dissenting-in-part.
I join the majority in reversing the rejections of claims 1, 3, and 8 as
unpatentable over Balaban, Chan, and Van Donkersgoed, and of claims 1, 3,
8, 14, 16, 18, and 127 as unpatentable over Balaban, Chan, Luther, and Van
Donkersgoed. For the reasons that follow, however, I cannot join the
majority in reversing the remainder of the rejections involved in this appeal.
As recognized by the majority, Balaban describes a stainless steel
hypodermic cannula syringe used to vaccinate animals. (Balaban, col. 1, ll.
6-10; col. 4, ll. 2-3). Britton teaches that needles for syringes and for
suturing are generally made of stainless steels. (Britton, col. 2, ll. 62-64; col.
5, ll. 62-65). Britton also teaches that ferritic and martensitic stainless steels
are usually ferromagnetic while austenitic stainless steel is not. (Id. at col. 5,
ll. 38-39). Additionally, Britton teaches that stainless steels used for needles
are most probably AISI Type 420, a magnetic, martensitic stainless steel, or
one of Types 410, 414, and 440A, which comprise only minor differences in
composition from Type 420. (Id. at col. 5, ll. 42-65). Britton further
discusses type U-100 syringes made by Becton Dickinson and Co. that are
typically used for insulin injections and have needles that are ferromagnetic.
(Id. at col. 6, ll. 11-14). These teachings of Britton suggest that
ferromagnetic ferritic or martensitic stainless steel was known in the art at
the time of Appellant’s invention for use in syringe needles for giving
injections.
Based on the teachings of Balaban and Britton, it would have been
obvious to a person of ordinary skill in the art to employ a ferromagnetic
ferritic or martensitic stainless as the stainless steel material for the
hypodermic cannula syringe of Balaban for use in injecting animals, based
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Application No. 10/888,967

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on its known use in syringe needles for giving injections. See KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (stating “when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”). Unlike the majority, I do not
consider the fact that “Britton does not suggest that ferromagnetic stainless
steels were known materials for use in cannulae for hypodermic needles for
use in injecting animals” to be particularly determinative as to whether it
would have been obvious to employ such materials in Balaban’s cannulae
for use in injecting animals. The Supreme Court has stated that a rigid
insistence on teaching, suggestion, or motivation is incompatible with its
precedent concerning obviousness. Id. at 419. Neither the majority nor the
Appellant has pointed to any teaching in Britton suggesting that the syringe
needles discussed therein are specifically restricted to use on humans. In
any event, even assuming that the teachings of Britton are interpreted as
being directed particularly to syringes used on humans, common sense
would suggest that the same types of cannula materials considered suitable
for use on humans would likewise be considered appropriate for use on other
animals, including the types of animals ultimately slaughtered for
consumption as beef. After all, common sense teaches that “familiar items
may have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” Id. at 420.
Additionally, as also recognized by the majority, “Van Donkersgoed
discloses that the risk of broken needles reaching consumers in beef products
was a known problem and that processors recommended placing metal
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Application No. 10/888,967

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detectors at the end of all lines in processing facilities to detect such broken
needles.” Thus, the Examiner’s conclusion that it would have been obvious
to use a metal detector in conjunction with the hypodermic needle of
Balaban while vaccinating animals, as taught by Van Donkersgoed, “in
order to detect any needles that may have broken while vaccinating the
animals” (Ans. 5) has rational underpinnings.
Further, the ferromagnetic ferritic or martensitic stainless steel
employed in Balaban’s cannula, in view of the teachings of Britton, for use
in injecting animals, would be more detectable by the metal detector than
standard austenitic stainless steel, which is not ferromagnetic. See Spec.,
col. 1, ll. 26-27, 38-41; col. 2, ll. 19-21. The fact that the more ready
detectability of the ferromagnetic stainless syringe needle material might not
have been recognized in the prior art as an advantage of its use does not
detract from the obviousness of its use in Balaban’s cannula for injecting
animals. “In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under § 103.” KSR, 550 U.S.
at 419-20.
For the above reasons, I dissent from the decision of the majority to
reverse the rejections of claims 1 and 2 as unpatentable over Balaban,
Britton, and Van Donkersgoed; claims 1, 2, 13, 16, and 127 as unpatentable
over Balaban, Britton, Luther, and Van Donkersgoed; claim 9 as
unpatentable over Balaban, Britton, Chan, Van Donkersgoed, and Lowe,
with or without Luther; and claims 10 and 17 as unpatentable over Balaban,
Britton, Chan, Luther, Van Donkersgoed, and Lowe.