Ex parte JAEGER et al.

Board of Patent Appeals and Interferences

Sep 28, 1998

08360109 (B.P.A.I. Sep. 28, 1998)

Application for patent filed December 20, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CLETUS W. JAEGER, JR.
and
LAURA R. CUEVAS
_____________
Appeal No. 96-3693
Application 08/360,1091
______________
ON BRIEF
_______________
Before CALVERT, STAAB and McQUADE, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
Appeal No. 96-3693
Application 08/360,109
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
to 5. Claims 6 to 11, the other claims in the application, stand
withdrawn from consideration under 37 CFR § 1.142(b) as being
directed to a nonelected species.
The claims on appeal are drawn to a hypodermic needle
and syringe assembly, and are reproduced in the appendix to
appellants' brief.
The reference applied in the final rejection is:
Bloch 3,354,881 Nov. 28, 1967
Claims 1 to 5 stand finally rejected under 35 U.S.C.
§ 102(b) as anticipated by Bloch.
"To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently." In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Appellants have argued
that claims 1 to 5 are not anticipated by Bloch, because Block
does not disclose (1) a needle cover adhered to a syringe, or
(2) a single bodied needle cover. Both of these limitations are
Appeal No. 96-3693
Application 08/360,109
3
recited in the first portion of claim 1, the only independent
claim on appeal, which portion reads (emphasis added):
A hypodermic needle and syringe assembly
having adhered to the syringe a single bodied
hollow bulb shaped flexible needle cover [,]
said needle cover comprising
In response to the limitations argued by appellants,
the examiner asserts that the "recitation of 'adhered to the
syringe' does not structurally define over the removable sliding
attachment of Bloch" (answer, page 2). He does not explain how
Bloch meets the "single bodied" limitation.
First considering the "adhered" limitation, we do not
agree with the examiner that it does not "structurally define"
over Bloch, and therefore, presumably, may be ignored in deter-
mining patentability. It is well settled that "[i]t is error to
ignore specific limitations distinguishing over the references."
In re Glass, 472 F.2d 1388, 1392, 176 USPQ 489, 491 (CCPA 1973).
In the present case, appellants are claiming the combination of a
hypodermic needle, syringe and needle cover, and the recitation
that the needle cover is "adhered" to the syringe requires that
Appeal No. 96-3693
Application 08/360,109
On page 3, lines 15 to 18, of the specification, appel-2
lants disclose that the needle cover is adhered to the syringe
"by suitable adhesion means such as adhesives, pressure-sensitive
adhesives, or mechanical means such as ribs or bands."
4
there be something (e.g., glue) present in order to cause such
adhesion. Thus, even if we were to apply the 2
examiner's reasoning, "adhered" could not be ignored because it
is a "structural" limitation. Since Bloch does not disclose,
either explicitly or inherently, any means for adhering needle
cover 11,13 to syringe 16, the anticipation rejection cannot be
sustained.
In view of the foregoing, it is unnecessary to consider
appellants' argument concerning the "single bodied" limitation.
Conclusion
The examiner's decision to reject claims 1 to 5 under
35 U.S.C. § 102(b) is reversed
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
Appeal No. 96-3693
Application 08/360,109
5
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-3693
Application 08/360,109
6
Robert L. McKellar
3031 Lois Avenue
Midland, MI 48640-8928