Ex Parte Neale et al

Patent Trial and Appeal Board

Sep 21, 2018

14508889 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/508,889 10/07/2014 Kevin David Neale
32182 7590 09/25/2018
Becton, Dickinson and Company/fhe Webb Law Firm
One Gateway Center
420 Ft. Duquesne Blvd., Suite 1200
Pittsburgh, PA 15222
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4684-153169 (P-07337Cl) 4783
EXAMINER
FARRAR, LAUREN PENG
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
09/25/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@webblaw.com
ip.docket@bd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN DAVID NEALE and ERIC DOMINICY-
LENOBLE
Appeal 2017-011268
Application 14/508,889
Technology Center 3700
Before BRETT C. MARTIN, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-011268
Application 14/508,889
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 30-34. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants' claims are directed generally "to a product injection
device, particularly for medical use, such as syringes, particularly furnished
with a safety system aimed at protecting the injection of the needle after
use." Spec. 1. Claim 30, reproduced below, is illustrative of the claimed
subject matter:
30. Injection device comprising:
a body designed to receive a product to be injected, the
body having a distal end with an injection needle, the body
receiving a piston rod and a piston capable of moving in the body
between a storage position and an end-of-injection position and
of pushing the product through the injection needle,
a cover for the injection needle, the cover being movable
relative to the body between a use position, in which the injection
needle is uncovered, and a final position, in which the injection
needle is at least partially covered, and
a spring for moving the cover between the use and final
positions,
wherein the piston rod comprises a first portion, in the
form of a rod having the piston located at a distal end thereof,
and a second portion, located adjacent to a proximal end of the
rod, operatively coupled together and selectively movable
together in the distal direction, at least one of the first portion and
the second portion being movable in the proximal direction
separate from the other one of the first portion and the second
portion,
wherein, with the cover being in the use position, upon
sufficient distal advancement of the piston rod, the second
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Application 14/508,889
portion moves a predetermined distance in the proximal direction
relative to the first portion.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Woehr US 2005/0080383 Al Apr. 14, 2005
REJECTION
The Examiner made the following rejection:
Claims 30-34 stand rejected under 35 U.S.C. § I02(b) as being
anticipated by Woehr. Final Act. 2.
ANALYSIS
The Examiner asserts that "because Woehr teaches the second
[portion] ( 404, Fig[ s]. 25-29) that is slidably movable along plunger rod
[ first portion] ( 406), Woehr teaches all the structure as well as being capable
of performing the recited functions of claim 30." Ans. 2; Final Act. 2-3.
We agree with Appellants, however, that this characterization of Woehr as
being capable of performing the recited functions of the claims ignores that
the claims specifically recite that the proximal movement must occur "with
the cover being in the use position," defined as when "the injection needle is
uncovered." Woehr only teaches that actuator 404 slides over plunger shaft
406 until it abuts flange 408 during assembly. Woehr ,r 105 ( emphasis
added). All of the figures in Woehr show the actuator flush against flange
408, i.e., once assembled and ready to use, such that no further proximal
movement could occur. We do not consider movement that is capable of
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Application 14/508,889
occurring during assembly to be sufficient to meet language that requires
such movement in a use position as claimed.
Further, given that this is an anticipation rejection, the Examiner's
alternative manner of use that allegedly allows for movement actually
creates a new usage of Woehr's syringe not taught therein. Given that the
claims require movement while in the usage position, Woehr would also
need to teach the usage position that allows for such proximal movement of
the actuator for a proper anticipation rejection. The Examiner asserts that
"the claims do not state when the second part of the piston rod moves
proximally," but this ignores the specific recitation of the movement
occurring in a use position.
We do not suggest that an obviousness rejection would overcome the
problems with the rejection, but merely point out that the Examiner has
failed to consider all aspects of the claims in making the rejection at issue.
We do not consider the Examiner's modified use to be one in which one of
ordinary skill in the art would actually engage given that the Examiner
provides no reason for or benefit of the proposed modified usage other than
to meet the claim language at issue. Accordingly, we do not sustain the
Examiner's rejection.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 30-34.
REVERSED
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