10544431 (B.P.A.I. Nov. 5, 2010)

Ex Parte Nakayama et al

Board of Patent Appeals and InterferencesNov 5, 2010

10544431 (B.P.A.I. Nov. 5, 2010)

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. 10/544,431 05/25/2006 Toru Nakayama 782_233 7161 25191 7590 11/05/2010 BURR & BROWN PO BOX 7068 SYRACUSE, NY 13261-7068 EXAMINER FOREMAN, JONATHAN M ART UNIT PAPER NUMBER 3736 MAIL DATE DELIVERY MODE 11/05/2010 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 TORU NAKAYAMA, MARIKO NAKAYAMA, MASAFUMI NAKAYAMA, and TAKAYUKI NAKAYAMA ____________ Appeal 2009-013513 Application 10/544,431 Technology Center 3700 ____________ Before MICHAEL W. O’NEILL, STEFAN STAICOVICI, and FRED A. SILVERBERG, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown in the PTOL-90A cover letter attached to this decision. Appeal 2009-013513 Application 10/544,431 2 STATEMENT OF THE CASE Toru Nakayama et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1 and 3 under 35 U.S.C. § 103(a) as unpatentable over Kiesewetter (U.S. Patent No. 4,547,735, issued Oct. 15, 1985), Lambert (U.S. Patent No. 5,035,704, issued Jul. 30, 1991), and Cunningham (U.S. Patent Application Publication No. 2002/0169393 A1, published Nov. 14, 2002). Appellants cancelled claim 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Invention The claims on appeal relate to a painless blood-collecting method. Claim 1, reproduced below, with emphasis added, is illustrative of the subject matter on appeal. 1. A method for collecting blood with little pain, comprising: forming a puncture at a puncture site of a finger of a human being by one of a needle and another puncturing device, wherein (a) a depth of the puncture is no more than 0.4 mm, and (b) the puncture site is located on the dorsal surface of a finger and is defined by an area from a finger joint to a proximal nail wall and the area extending from the proximal nail wall to a lateral nail wall, wherein the finger joint is one of an IP joint of a thumb and a DIP joint of a finger other than the thumb; and enhancing bleeding by applying persistent positive pressure using a method selected from the group consisting of inflecting the finger joint of the punctured finger, asserting compression or avascularization at a proximal area from the puncture site on the finger, and compressing a tip of the punctured finger. Appeal 2009-013513 Application 10/544,431 3 DISCUSSION Issue The determinative issue in this appeal is: Did the Examiner err in determining that Kiesewetter discloses a puncture site located on the dorsal2 surface of a human being’s finger? Analysis Appellants contend that “Kiesewetter is completely silent with respect to the use of the dorsal surface of the finger as a puncture site for blood collection.” App. Br. 8. Appellants also contend that “[i]n Kiesewetter, the puncture site is simply not particularly defined with any specificity and simply is not an indispensable feature with respect to the success of obtaining a suitable volume of blood with little or no pain, like the claimed puncture site of the present invention.” Id. Appellants also contend that “one skilled in the art would have reasonably interpreted that the finger puncture site in Kiesewetter is necessarily and advantageously located on the bottom (palm-side) surface of the lateral (side) surface of the finger.” App. Br. 9. Indeed, Appellants contend that “using the claimed dorsal surface of the finger as a puncture point for blood collection would have been counter intuitive, because using the dorsal surface of the finger as a puncture 2 In anatomy, certain terms are used to denote orientation. The term “dorsal” is used to denote the back, as opposed to the ventral. More particularly, the definition of “dorsal” is: Relating to the back or posterior of a structure. As opposed to the ventral, or front, of the structure. Some of the dorsal surfaces of the body are the back, buttocks, calves, and the knuckle side of the hand. See MedicineNet.com accessed at http://www.medterms.com/script/ main/art.asp?articlekey=9282. Appeal 2009-013513 Application 10/544,431 4 location had heretofore been conventionally discouraged due to notable drawbacks associated with the puncture site.” Id. More particularly, Appellants contend that since “a nail (germinal) matrix for constructing nails and an extensor tendon for extending the bent finger joint exist immediately below the epidermis in the location of the dorsal surface of the finger at the claimed puncture site,” the “piercing of this particular site without specifically designating and carefully controlling the piercing depth poses an immediate danger of damaging the delicate physiology of the digit” which could lead to permanent loss of the fingernail or injury of the extensor tendons. Id. Appellants further contend that “Kiesewetter does not contain any disclosure to even remotely begins to otherwise contradict this generally held knowledge with respect to the claimed puncture site, nor does Kiesewetter even begin to provide any cautions with respect to the otherwise totally counterintuitive use of such conventionally discouraged puncture sites.” App. Br. 10. Appellants also contend that “[o]ne skilled in the art simply would not have had any logical reason to interpret the generalized disclosure of finger puncture locations in Kiesewetter to possibly include any puncture sites that are otherwise recognized as unsuitable, much, much less the specifically claimed puncture site.” Id. The Examiner’s position is that since Kiesewetter discloses taking blood from the finger between the nail and the most distal finger joint, this necessarily means that the puncture site is on the dorsal surface. Ans. 3. Indeed, the Examiner points to column 6, lines 45-49 of Kiesewetter, which states that: The blood may be taken from any point on the patient’s body that is readily got at, as for example from the part of the finger between the nail and the Appeal 2009-013513 Application 10/544,431 5 most distal finger joint using a needle and letting off the drops of blood directly onto the lower electrode 28. Ans. 4. From the above-quoted disclosure in Kiesewetter, the Examiner posits that “[b]ecause the nail of a finger is located on the [dorsal] surface, it is clear that Kiesewetter et al. is explicitly disclosing forming a puncture site at the claimed location.” Id. While the Examiner correctly looks to apply a broadest reasonable interpretation of the claim terms under examination, it is also necessary for the Examiner to properly construe what the applied reference fairly teaches or discloses. See, e.g., In re Fracalossi and Wajer, 681 F.2d 792 (CCPA 1982). In the present case, we cannot agree with the Examiner that Kiesewetter’s disclosure of the blood collection site as being “from the part of the finger between the nail and the most distal finger joint” necessarily means that the dorsal surface of the finger is being punctured. Indeed, we find that one of ordinary skill in the art would reasonably interpret Kiesewetter’s disclosure as fairly teaching a finger puncture site located on the ventral, front, or palm-side surface of the finger because this is the puncture site a phlebotomist3 would normally use. Kiesewetter’s disclosure of the puncture site being between the nail and the most distal finger joint does not necessarily mean that the puncture site is on the dorsal surface as suggested by the Examiner. A puncture site on the ventral surface of the finger could still be considered to be between the nail and the most distal finger joint. 3 “A person who draws blood” according to MedicineNet.com accessed at http://www.medterms.com/script/main/art.asp?articlekey=4876. Appeal 2009-013513 Application 10/544,431 6 Moreover, we agree with Appellants that one of ordinary skill in the art would not interpret Kiesewetter’s disclosure of “the part of the finger between the nail and the most distal finger joint” to mean the dorsal surface of the finger because conventional wisdom would discourage the puncturing of the finger on the dorsal surface due to the dangers of piercing this particular site, namely, permanent loss of the fingernail from damaging the nail bed or injury to the extensor tendon preventing extension of the finger bent at the distal interphangeal or upper finger joint. In view of the foregoing, we do not sustain the Examiner’s rejection of claims 1 and 3 under 35 U.S.C. § 103(a) as unpatentable over Kiesewetter, Lambert and Cunningham. CONCLUSION The Examiner erred in determining that Kiesewetter discloses a puncture site located on the dorsal surface of a human being’s finger. DECISION We reverse the Examiner’s rejection of claims 1 and 3 under 35 U.S.C. § 103(a) as unpatentable over Kiesewetter, Lambert, and Cunningham. REVERSED Appeal 2009-013513 Application 10/544,431 7 Klh BURR & BROWN PO BOX 7068 SYRACUSE, NY 13261-7068