Ex Parte Jenkins et al

Board of Patent Appeals and Interferences

Jan 31, 2012

11530975 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/530,975 09/12/2006 RICHARD P. JENKINS P-6969 1487
26253 7590 02/01/2012
David W. Highet, VP & Chief IP Counsel
Becton, Dickinson and Company
1 Becton Drive
MC 110
Franklin Lakes, NJ 07417-1880
EXAMINER
PATEL, SHEFALI DILIP
ART UNIT PAPER NUMBER
3767
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 RICHARD P. JENKINS and S. RAY ISAACSON
________________

Appeal 2009-012062
Application 11/530,975
Technology Center 3700
________________

Before STEFAN STAICOVICI, CHARLES N. GREENHUT and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/530,975

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-3, 6-8, 10, 12-15 and 17-21. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM

The Claimed Subject Matter
The claimed subject matter pertains to a safety needle having a
cannula and a housing surrounding a portion of the cannula. The safety
needle further including means for preventing the housing from extending
beyond the cannula end, means for enveloping the cannula as the housing is
moved and means for preventing the re-exposure of the cannula end.
Independent claim 18 is illustrative of the claims on appeal and is
reproduced below:

18. A safety needle assembly comprising:
a cannula having a proximal end secured to a hub and
distal end;
a housing slidable with respect to the cannula and
covering a portion of the cannula;
means for preventing the housing from extending beyond
a distal end of the cannula and for enveloping the cannula as the
housing is moved distally with respect to the cannula; and
means for preventing proximal movement of the housing
after the housing covers the distal end of the cannula.

References Relied on by the Examiner
Trenner US 4,781,684 Nov. 1, 1988
White US 5,478,313 Dec. 26, 1995
Vaillancourt US 6,761,706 B2 Jul. 13, 2004

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The Rejection on Appeal
1. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Vaillancourt and White (Ans. 3).
2. Claims 1-3, 6-8, 10, 12-15, 17 and 19-21 are rejected as being
unpatentable under 35 U.S.C. § 103(a) over Vaillancourt, White and Trenner
(Ans. 5).

ISSUE
Has the Examiner provided sufficient evidence and technical
reasoning to show that the combination of Vaillancourt and White render
obvious a cannula partially surrounded by a housing and means for
preventing the housing from extending beyond the cannula end and for
enveloping the cannula as the housing is moved as set forth in claim 18?
Has the Examiner provided sufficient evidence and technical
reasoning to show that the combination of Vaillancourt, White and Trenner
render obvious a specific embodiment of claim 18 that further requires a
spring washer associated with the housing as set forth in claim 1?

ANALYSIS
Independent claim 18 is separately argued and will be separately
addressed (App. Br. 12). Claims 1-3, 6-8, 10, 12-15, 17 and 19-21 are
argued as a group and we select independent claim 1 for review (App. Br.
17). Claims 2, 3, 6-8, 10, 12-15, 17 and 19-21 stand or fall with claim 1.
The rejection of claim 18 over Vaillancourt and White
Independent claim 18 requires means for limiting the extension of the
housing and means for enveloping the cannula. There is no dispute that
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claim 18 includes means-plus-function limitations or that Appellants
describe tether 50 and tether 70 as structure that performs these functions
(Spec. ¶¶ [0021] and [0025], Figs. 4 and 7; Br. 14).
In order for a prior art element to meet a section 112, paragraph 6
means-plus-function limitation, the prior art element must either be the same
as the disclosed structure or be a section 112, paragraph 6 equivalent (In re
Donaldson Co., 16 F.3d 1189, 1195). Two structures may be “equivalent”
for purposes of section 112, paragraph 6 if they perform the identical
function, in substantially the same way, with substantially the same result
(Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir.
2000)).
The Examiner relies on Vaillancourt for teaching all the limitations of
claim 18 (including the means for limiting the extension of the housing) with
the exception that the Examiner relies on White for teaching a means for
enveloping the cannula as the housing is moved (Ans. 4). The Examiner
reasons that it would have been obvious to a person having ordinary skill in
the art at the time the invention was made “to substitute” Vaillancourt’s
Mylar strip 110 for White’s shield 72 “to completely encase the cannula to
prevent exposure to any part of the cannula before and after use” (Ans. 4).
In essence, the Examiner reasons that the modified assembly of Vaillancourt
and White would perform Vaillancourt’s “function of preventing the housing
[101] from extending beyond the distal end of the cannula [312]” as well as
“completely encase the cannula to prevent exposure to any part of the
cannula” as taught by White (Ans. 13). The Examiner finds this combined
structure to be “reasonably expected” from one having ordinary skill in the
art (Ans. 13).
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Appellants contend that White’s “structure is not described” as being
capable of limiting the housing’s extension and that “there is absolutely no
indication in White” that shield 72 “is designed to prevent extension of the
housing” (Br. 15). The Examiner did not rely on White for limiting the
extension of the housing, instead, the Examiner relied on Vaillancourt “for
preventing the housing [101] from extending beyond a distal end of the
cannula [312]” (Ans. 4, see also 13). Further, "[n]on-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references." In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Accordingly, Appellants’ contention is
not persuasive.
Appellants also contend that “one of ordinary skill in the art would
have had no reason to modify the fully functional needle guard of
Vaillancourt” because Vaillancourt “already includes a housing 101 for
covering the distal tip of a cannula” (Br. 16). We disagree. The Examiner’s
stated reason for modifying Vaillancourt is “to completely encase” the
cannula, not just cover the distal tip of the cannula (Ans. 4). The Examiner
states that a medical professional would want to cover the entire cannula
body so as not to expose the “contaminants of the patient’s body that are
present on the cannula body” to the user, other patients or the environment
(Ans. 4-5, see also 14-15). Accordingly, we do not find Appellants’
contention persuasive.
Appellants also question the Examiner’s use of White’s collar hub 22
as the claimed housing (Br. 16). However, the Examiner relies on
Vaillancourt for teaching this housing structure, not White (Ans. 3).
Appellants’ contention is not persuasive.
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In view of the above and based on the record presented, we sustain the
Examiner’s rejection of claim 18 over Vaillancourt and White.
The rejection of claim 1 over Vaillancourt, White and Trenner
Appellants state that claim 1 “is directed to a structural embodiment
of the means recited in claim 18,” and more specifically “a tether” (Br. 19).
Claim 1 also requires a spring washer associated with the housing to prevent
re-exposure of the cannula end. Appellants reiterate contentions previously
made with respect to claim 18 stating that “White does not disclose a tether
capable of performing the recited function” (Br. 19). As the Examiner so
succinctly stated “White is not the only reference being applied” (Ans. 15).
In accordance with our analysis stated above, we are not persuaded by
Appellants’ reiterated contentions.
Appellants further contend that adding White’s shield 72 would
render Vaillancourt’s “lock 102 redundant and unnecessary” (Br. 20). We
disagree. The Examiner states that Trenner’s Belleville washer (a spring
washer) “can be substituted” for Vaillancourt’s lock washer 102 (Ans. 6).
The Examiner’s rejection is based on a substitution of washers and as such,
Appellants’ contention regarding redundancy and not being necessary is not
persuasive.
Accordingly, and for the reasons stated above, we sustain the
Examiner’s rejection of claims 1-3, 6-8, 10, 12-15, 17 and 19-21.

CONCLUSION
The Examiner has provided sufficient evidence and technical
reasoning to show that the combination of Vaillancourt and White render
obvious a cannula partially surrounded by a housing and means for
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preventing the housing from extending beyond the cannula end and for
enveloping the cannula as the housing is moved as set forth in claim 18.
The Examiner has provided sufficient evidence and technical
reasoning to show that the combination of Vaillancourt, White and Trenner
render obvious a specific embodiment of claim 18 that further requires a
spring washer associated with the housing as set forth in claim 1.

DECISION
The rejection of claims 1-3, 6-8, 10, 12-15 and 17-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

MP