Ex Parte Jones et al

Board of Patent Appeals and Interferences

Mar 12, 2012

11525623 (B.P.A.I. Mar. 12, 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.
11/525,623 09/22/2006 Scott Jones H-KN-00257; TYCS
0257.1
1639
54964 7590 03/12/2012
Covidien
Attn: IP Legal Department
15 Hampshire Street, Bldg. 4A
Mansfield, MA 02048
EXAMINER
CARPENTER, WILLIAM R
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
03/12/2012 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 SCOTT JONES and GEORGE CLARK
____________________

Appeal 2010-001062
Application 11/525,623
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, GAY ANN SPAHN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/525,623

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STATEMENT OF THE CASE
Scott Jones and George Clark (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1-21 under 35 U.S.C.
§ 103(a). The Examiner rejected claims 1-10, 12-14, 16-18, 20, and 21 as
unpatentable over Crawford (US 2002/0099340 A1, pub. Jul. 25, 2002),
Bodicky (US 4,445,893, iss. May 1, 1984), Lopez (US 5,954,708, iss. Sep.
21, 1999), and D’Alo (US 4,326,519, iss. Apr. 27, 1982). The Examiner
rejected claims 11 and 15 as unpatentable over Crawford, Bodicky, Lopez,
D’Alo, and Fayngold (US 5,120,320, iss. Jun. 9, 1992). The Examiner
rejected claim 19 as unpatentable over Crawford, Bodicky, Lopez, D’Alo,
and Kvalo (US 4,863,432, iss. Sep. 5, 1989). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
The claims are directed to safety needle assemblies having a rigid
wing structure to facilitate stabilization of the assemblies relative to the
patient. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed
subject matter.
l. A safety needle device comprising:
an elongate housing;
a hub movably mounted within the elongate housing;
a hollow needle extending distally from the hub;
at least one rigid member extending outwardly from the
elongate housing; and
a release mechanism operatively associated with the hub,
the release mechanism including a projection pivotably
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Application 11/525,623

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supported on the hub and positioned externally of the elongate
housing, the projection configured to releasably engage a
portion of the elongate housing to enable movement of the hub
relative to the elongate housing.

OPINION
In contesting the rejection of claims 1-10, 12-14, 16-18, 20, and 21 as
unpatentable over Crawford, Bodicky, Lopez, and D’Alo, Appellants do not
present any separate arguments for the patentability of claims 2-8, 13, 14,
16-18, 20, and 21 apart from claim 1. Accordingly, we select claim 1 as
representative of the group. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants
present separate arguments for claims 9, 10, and 12. Independent claim 9 is
representative of this group.
The Examiner found that Crawford discloses a safety needle device as
called for in claim 1, with the exception that Crawford does not disclose the
dorsal fin 38 or wings being rigid (i.e., “at least one rigid member extending
outwardly from the elongate housing”) and the projection of the release
mechanism being “pivotally attached externally of the housing.”1 Ans. 3-6.
Appellants do not challenge that finding.
Relying on the teachings of Bodicky, the Examiner reasoned that it
would have been obvious to form Crawford’s wings of a rigid plastic
material, “thereby only achieving the expected results of substituting one
notoriously well-known configuration for catheter securing wings with
another art-recognized alternative.” Ans. 5. Alternatively, relying on the

1 Notably, claim 1 does not require that the projection be pivotally attached
externally of the housing. Rather, claim 1 requires the projection to be
“pivotably supported on the hub and positioned externally of the elongate
housing.”
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teachings of D’Alo, the Examiner reasoned that it would have been obvious
to form the dorsal fin of Crawford to be rigid “in order to allow suitable
manipulation of the fin.” Id. Appellants do not dispute that either of the
proposed modifications would have been obvious.
The issue joined in this appeal is whether the Examiner’s proposed
further modification of Crawford to locate the projection (actuator 42) on the
dorsal fin such that the dorsal fin may selectively cant between a locked
position and an unlocked position, as disclosed by Lopez, would have been
obvious. According to the Examiner, such a modification would “only
[achieve] the expected results of replacing one notoriously well-known
locking mechanism with another for the shared purpose of selectively
preventing the disconnection of a needle hub and a housing.” Ans. 6.
We adopt the Examiner’s reasoning in responding to the arguments
presented by Appellants in their Appeal Brief. See Ans. 8-17.
Appellants argue that Lopez is in a different field of endeavor than
Appellants’ invention, and thus is non-analogous art. App. Br. 11-12. We
do not agree with Appellants.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992). The “field of endeavor” test asks if the
structure and function of the prior art is such that it would be considered by a
person of ordinary skill in the art because of the similarity to the structure
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and function of the claimed invention as disclosed in the application. In re
Bigio, 381 F.3d 1320, 1325-27 (Fed. Cir. 2004).
For the reasons articulated by the Examiner (Ans. 9, ll. 1-4, 18-20),
we agree with the Examiner that Lopez is in Appellants’ field of endeavor.
Moreover, we also agree with the Examiner (see Ans. 9, l. 20 – 10, l. 5) that
Lopez is reasonably pertinent to the particular problem with which
Appellants were concerned. Accordingly, the Examiner correctly found that
Lopez is analogous art.
As explained by the Examiner (Ans. 5, l. 19 – 6, l. 11; 11, ll. 9-14),
Crawford and Lopez disclose two different locking arrangements for
selectively locking and unlocking the hub of a needle with respect to a
housing or shield. Crawford’s locking arrangement comprises a projection
(actuator 42) attached to a portion (tubular passage 36) of the hub 14
disposed within the safety shield 20 and adapted to extend radially
outwardly into/through retention aperture 72 in shield 20 (figs. 1, 2) until the
actuator 42 is moved transversely by transverse deflection of dorsal fin 38
sufficiently to move inside the passage of shield 20, thereby unlocking the
hub from the shield to permit spring 22 to propel the hub and shield in
opposite directions into the shielded position (fig. 3). Paras. [0016], [0021].
Lopez, on the other hand, utilizes a projection (catch tips 76) on clips 74
attached to a portion of the hub structure (hollow cylindrical element 72 of
cap member 70) disposed outside of the tubular housing (conduit 22). Fig.
5. The catch tips 76 engage a groove 78 in the conduit 22 to lock the needle
in position within the conduit 22 until the clips 74 are depressed to overcome
the spring bias of hinges 75 to release the catch tips from the groove and
unlock the needle. Col. 7, ll. 9-38. The modification proposed by the
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Examiner is nothing more than the obvious substitution of one element
(locking arrangement) for another known in the field that yields a
predictable result. 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”).
Appellants argue, in their Reply Brief, that because Crawford’s
actuator 42 and Lopez’s clips 74 move in opposite directions, one of
ordinary skill in the art would be discouraged from the combination
proposed by the Examiner. Reply Br. 6. Thus, according to Appellants,
Crawford teaches away from combination with Lopez. Id. We do not agree
with Appellants. Simply that there are differences between two references is
insufficient to establish that such references teach away from any
combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir.
1992). Prior art does not teach away from claimed subject matter merely by
disclosing a different solution to a similar problem unless the prior art also
criticizes, discredits or otherwise discourages the solution claimed. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants have not pointed
to, and we do not find, any teachings in Crawford that criticize, discredit, or
otherwise discourage the type of locking projection arrangement claimed.
Appellants additionally assert that given the disparity in structure and
operation between Crawford’s actuator 42 and Lopez’s clips 74, Crawford
would have to undergo substantial redesign and reconstruction to incorporate
the proposed modification, and reiterate their argument that neither
Crawford nor Lopez teaches exactly how such incorporation could be
accomplished. Reply Br. 6. The Examiner has addressed this argument
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(Ans. 13-14). We do not agree with Appellants that the differences in
structure and operation between Crawford’s actuator and Lopez’s clips are
so profound as to place the modification beyond the technical grasp of a
person of ordinary skill in the art. “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. See
also Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed.
Cir. 2009) (“while an analysis of obviousness always depends on evidence
… it also may include recourse to logic, judgment, and common sense
available to the person of ordinary skill that do not necessarily require
explication in any reference”).
We conclude that the Examiner’s proposed further modification of
Crawford to locate the projection (actuator 42) on the dorsal fin such that the
dorsal fin may selectively cant between a locked position and an unlocked
position, as disclosed by Lopez, would have been obvious. Accordingly, the
Examiner did not err in rejecting claim 1 as unpatentable over Crawford,
Bodicky, Lopez, and D’Alo. We thus sustain the rejection of claim 1 and of
claims 2-8, 13, 14, 16-18, 20, and 21, which fall with claim 1.
Appellants additionally argue, with respect to claim 9, that D’Alo
does not cure the asserted deficiencies of Crawford, in that D’Alo fails to
disclose a safety needle “including, inter alia, ‘a finger pad operatively
coupled to the hub and positioned externally of the elongate housing
between the dorsal fin and the needle.’” App. Br. 17. This argument is not
persuasive, as it is not directed to the combination of references proposed by
the Examiner. Appellants also argue that Lopez does not disclose a safety
needle having these features. App. Br. 18. Nonobviousness cannot be
established by attacking the references individually when the rejection is
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Application 11/525,623

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predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The argument also does not take
into account the Examiner’s finding that Lopez discloses “a pad (74a)” (Ans.
6, l. 11) and articulated reasoning with respect to the placement of the finger
pad on Crawford’s modified device “on the distal surface of the dorsal fin,
between the fin and the needle, in order to provide adequate leverage to cant
the dorsal fin and operate the release mechanism” (Ans. 6, l. 20 -7, l. 6).
We sustain the rejection of claim 9 and its dependent claims 10 and
12, which fall with claim 9.
In contesting the rejections of claims 11 and 15 as unpatentable over
Crawford, Bodicky, Lopez, D’Alo, and Fayngold and of claim 19 as
unpatentable over Crawford, Bodicky, Lopez, D’Alo, and Kvalo, Appellants
merely add that neither Fayngold nor Kvalo cures the asserted deficiencies
in the combination of Crawford, Bodicky, Lopez, and D’Alo. Inasmuch as
we do not agree with Appellants with respect to the asserted deficiencies of
Crawford, Bodicky, Lopez, and D’Alo, we sustain the rejections of claims
11, 15, and 19.

DECISION
For the above reasons, the Examiner’s decision 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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