Ex parte SMITH

Board of Patent Appeals and Interferences

Mar 30, 1998

07990098 (B.P.A.I. Mar. 30, 1998)

Application for patent filed December 14, 1992.1
We observe that the claim 5 amendment has not been2
clerically processed notwithstanding the entry authorization by
the examiner.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL W. SMITH
__________
Appeal No. 95-2607
Application No. 07/990,0981
__________
ON BRIEF
__________
Before GARRIS, PAK and WALTZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1 through 4, 6 and 12 and from the refusal of the examiner
to allow claim 5 as amended subsequent to the final rejection . 2
The only other claims in the application, which are claims 7
Appeal No. 95-2607
Application No. 07/990,098
It is not apparent how the device of claim 1 is further3
limited, in accordance with the fourth paragraph of 35 U.S.C.
§ 112, by the recitation in dependent claim 6 that “said fluid is
blood or blood sera.” The appellant and the examiner should
address and resolve this matter in any further prosecution that
may occur.
2
through 11, stand withdrawn from further consideration by the
examiner.
The subject matter on appeal relates to a fluid transfer
device which includes a punch made of synthetic resin and having
dimensions said to enable the punch to be inserted through a
rubber stopper or cap of a tube containing fluid to be
transferred such as blood. Further details of this subject
matter are readily apparent from a review of illustrative
independent claim 1, a copy of which taken from the appellant’s
Brief is appended to this decision.
The reference relied upon by the examiner as evidence of
obviousness is:
Hein et al. (Hein) 2,514,576 Jul. 11, 1950
Claims 1 through 6 and 12 are rejected under 35 U.S.C. 3
§ 103 as being unpatentable over Hein.
We refer to the Brief and Reply Brief and to the Answer for
a complete exposition of the respective viewpoints advanced by
Appeal No. 95-2607
Application No. 07/990,098
3
the appellant and the examiner concerning the above noted
rejection.
For the reasons which follow, this rejection cannot be
sustained.
As well explained and thoroughly detailed by the appellant
in the Brief and Reply Brief, Hein contains no teaching or
suggestion concerning the here claimed punch and the dimensions
thereof. Further, we completely agree with the appellant that
patentee’s resilient bulb syringe could not be reasonably
considered as even capable of performing a punch function. This
incapability is evinced by several aspects of the patent device
including the manner in which the nozzle (which the examiner
equates to the here claimed punch) readily demounts from the bowl
seat (e.g., see lines 42 through 47 in column 2), the angled
nozzle embodiments shown in Figures 2 and 3 and the fact that
patentee’s preferred nozzle is made of resilient rubber (see
lines 15 through 17 in column 5), all of which militate against a
punching function.
In short, a mature and objective study of the Hein patent
reveals that patentee’s resilient bulb syringe is the type of
syringe that is used for irrigation purposes rather than a
hypodermic syringe used for injection purposes. Thus, we find
Appeal No. 95-2607
Application No. 07/990,098
4
nothing and the examiner points to nothing in this patent
evidencing a punch capability of any kind. On the other hand, we
find in the patent disclosure a significant quantity of evidence
that Hein’s device would be incapable of performing any type of
punching function.
For the reasons set forth above and in the briefs, it is
clear to us that the examiner’s § 103 rejection of claims 1
through 6 and 12 over Hein is improper and cannot be sustained.
The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge)
Appeal No. 95-2607
Application No. 07/990,098
5
Appeal No. 95-2607
Application No. 07/990,098
6
Lane, Aitken & McCann
Watergate Office Building, Suite 600
2600 Virginia Avenue, NW
Washington, DC 20037
Appeal No. 95-2607
Application No. 07/990,098
7
APPENDIX
1. A fluid transfer device comprising a receptacle formed
by resilient sides defining a reservoir and an opening, a punch
made of synthetic resin with a central passage, and connecting
means to retain said punch on said receptacle and align said
central passage over said opening, said punch having walls
defining said central passage, said punch having a distal end
with a minimum diameter of approximately .045 inches, a maximum
diameter of approximately .090 inches and said central passage
having a minimum diameter of approximately .015 inches and said
wall having a minimum thickness of approximately .015 inches.