Ex Parte Thompson et al

Board of Patent Appeals and Interferences

May 21, 2012

11454076 (B.P.A.I. May. 21, 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.
11/454,076 06/14/2006 Jeffrey S. Thompson 067407-5038-US 5962
67374 7590 05/21/2012
MORGAN, LEWIS & BOCKIUS, LLP (SF)
ONE MARKET SPEAR STREET TOWER
SAN FRANCISCO, CA 94105
EXAMINER
MARCETICH, ADAM M
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
05/21/2012 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 JEFFREY S. THOMPSON and GEORGE N. PROPER
__________

Appeal 2010-010495
Application 11/454,076
Technology Center 3700
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a sampling
needle used for retrieving and dispensing samples in automated analytical
processes. The Examiner entered rejections for anticipation and
obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

Appeal 2010-010495
Application 11/454,076

2
STATEMENT OF THE CASE
Automated systems for chromatographic analysis of large numbers of
samples frequently use a “needle arm controlled by a user-defined program
to analyze an array of samples in a tray. The needle arm forces the needle
downward to pierce the septum or seal of a sample vial lid in the array. The
needle draws in the sample and delivers it to a column” (Spec. [0003]). The
use of metal needles in such systems has certain drawbacks; for instance, in
“high-performance liquid chromatography (HPLC) applications, the metal
can become corroded or interact with samples thereby diminishing system
performance” (id. at [0004]).
Appellants thus invented a sampling needle composed of a hollow
rigid support member encased in a “sheath member [which] isolates the
septum-piercing end of the support member from the environment” (id. at
[0010]).
Claims 1-18, 35, and 36 are pending (App. Br. 5).
1
Claims 1-18 and
35 stand rejected (see Ans. 4-13).
2

Claim 1 is representative and reads as follows:
1. A sampling needle for piercing a septum of a vial
containing a sample, the needle comprising:
a hollow, rigid support member having an inner wall, an outer
wall, and a septum-piercing end; and
a sheath member affixed to the rigid support member, wherein
the sheath member covers the septum-piercing end of the support
member, the inner wall, and at least a portion of the outer wall

1
Appeal Brief entered November 25, 2009.
2
While Appellants state that, “[t]o the exten[t] that claim 36 is rejected, the
rejection is hereby appealed” (App. Br. 5), we see no rejection of that claim
in the Examiner‟s Answer.
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Application 11/454,076

3
adjacent the septum-piercing end to isolate the support member from
the sample while piercing the septum and aspirating the sample.

The following rejections are before us for review:
(1) Claims 1-3, 6, 10, 12-14, 16, and 35, under 35 U.S.C. § 102(b) as
anticipated by Tatsumi
3
(Ans. 4-7);
(2) Claims 7, 8, and 11, under 35 U.S.C. § 102(b) as anticipated by or,
in the alternative, under 35 U.S.C. § 103(a) as obvious over Tatsumi (Ans.
7-8);
(3) Claim 4, under 35 U.S.C. § 103(a) as obvious over Tatsumi (Ans.
9); and
(4) Claims 17 and 18, under 35 U.S.C. § 103(a) as obvious over
Tatsumi and Stone
4
(Ans. 12-13).
The Examiner also rejected claim 5 as obvious over Tatsumi and
Harris
5
(Ans. 10), as well as claims 9 and 15 as obvious over Tatsumi and
Zeus Polymers
6
(Ans. 10-12). Appellants do not appeal those rejections
(Reply Br. 3; see also App. Br. 5).
Accordingly, we summarily affirm the Examiner‟s rejections of
claims 5, 9, and 15. See MPEP 1205.02 (“If a ground of rejection stated by
the examiner is not addressed in the appellant‟s brief, that ground of
rejection will be summarily sustained by the Board.”); see also Ex parte

3
U.S. Patent App. Pub. No. 2002/0102185 A1 (published August 1, 2002).
4
U.S. Patent No. 4,713,974 (issued December 22, 1987).
5
U.S. Patent No. 4,404,862 (issued September 20, 1983).
6
Zeus products PEEKshrink
TM
- PEEK Heat Shrinkable Tubing. Archived
copy dated 03/13/2006. Accessed 4/16/2008.
http://web.archive.org/web/20060313112741/www.zeusinc.com/peekshrink.
asp.
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Application 11/454,076

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Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential) (non-appealed
claims must be canceled).
DISCUSSION
Appellants contend that the Examiner erred in finding that Tatsumi
anticipates independent claims 1 and 3 because the coating on Tatsumi‟s
needle is not properly considered a sheath member affixed to the rigid
support member, as both of those claims require (App. Br. 12). In particular,
Appellants urge, the Examiner must interpret the claims in a manner
consistent with the Specification, and the Specification “is replete with
discussions contrasting conventional coatings from the claimed sheath
member” (id. at 14).
The Examiner responds that the Specification “does not provide a
special definition of a sheath member that precludes a coating from
reasonably being interpreted as a sheath member,” and notes in particular
that Tatsumi‟s coating can use the same material, “PEEK,” described in the
Specification as forming a coating (Ans. 13). The Examiner advances a
number of dictionary definitions of the term “sheath” as simply being a
protective covering, and concludes that, based on these definitions, and the
absence of a specific definition in the Specification for the term, “sheath
may be interpreted reasonably to include coatings as the PEEK coating of
Tatsumi” (id. at 14).
While we find this to be a close case, we conclude that a
preponderance of the evidence supports Appellants‟ position.
The PTO must ultimately “determine[] the scope of claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction „in light of the specification as
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it would be interpreted by one of ordinary skill in the art.‟” Phillips v. AWH,
415 F.3d at 1316 (emphasis added) (quoting In re American Academy Of
Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
However, “while „the specification [should be used] to interpret the
meaning of a claim,‟ courts must not „import[ ] limitations from the
specification into the claim.‟ . . . [I]t is improper to „confin[e] the claims to
th[e] embodiments‟ found in the specification . . . .” In re Trans Texas
Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (quoting Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (citations omitted,
bracketed text in internal quotes in original).
We recognize that “the distinction between using the specification to
interpret the meaning of a claim and importing limitations from the
specification into the claim can be a difficult one to apply in practice.”
Phillips, 415 F.3d at 1323.
In this case, however, because Appellants‟ Specification explicitly
distinguishes between the sheath of their invention and prior art coatings, we
agree that an ordinary artisan would not have reasonably interpreted “a
sheath member affixed to the rigid support member” as encompassing
Tatsumi‟s coatings.
The Specification initially describes shortcomings in prior art coated
needles (Spec. [0007]), and then describes the inventive sheath member as a
discrete structure which can be formed by extrusion and placed onto the
needle by insertion or interference fit (see id. at [0009]-[0017]), thereby
being advantageous in comparison to coatings (see id. at [0064]-[0066]).
In addition, as Appellants point out, the Specification explicitly
contrasts coatings with the inventive sheath (id. at [0036] (“In contrast to
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coatings, the sheath member is a discrete member affixed to the support
member rather than a material adhered to the support member.”); also
[0056] (“In contrast to coating and other prior methods, the crowning
member has a significant dimensional thickness and sufficient structural
integrity to withstand repeated contact with septa and sealing to an injection
port 90.”)).
As the Specification explains, “[b]ecause the sheath member is
formed from separate tube structures with thickness, it has superior strength
and fatigue-resistance to prior art coatings” (id. at [0065]). Moreover, in
contrast to prior art coatings applied to the septum-piercing end of the
needle, “the crowning member of the sheath member fully insulates the
septum-piercing end and provides some degree of structural integrity” (id. at
[0066]).
Thus, given the Specification‟s description of the sheath, as well as its
distinction from coatings, we interpret the sheath member recited in claims 1
and 3 as being a discrete tubular element that has structural integrity without
being applied to its underlying support member.
We acknowledge that the portion of Tatsumi‟s protective coating
applied to the needle‟s outer surface can be composed of a synthetic resin
such as PEEK, applied by powder coating (Tatsumi [0025]). We also note
Tatsumi‟s disclosure that the needle‟s inner coating can be a chemical vapor-
deposited thin film of quartz or metal (id. at [0044]-[0046]).
The Examiner does not, however, point to any portion of Tatsumi
suggesting that a powder coating or vapor deposited coating would have any
degree of structural integrity without being applied to the supportive needle.
Nor do we see any disclosure in Tatsumi suggesting that such coatings have,
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inherently or otherwise, any degree of structural integrity absent their
application to an underlying support member.
Thus, as we are not persuaded that Tatsumi describes a sampling
needle having all of the features of claims 1 and 3, when those claims are
given their broadest reasonable interpretation consistent with the
Specification, we reverse the Examiner‟s rejection of those claims, and their
dependent claims 2, 6, 10, 12-14, 16, and 35, as anticipated by Tatsumi.
The Examiner also rejected claims 7, 8, and 11, as anticipated by or,
in the alternative, as obvious over Tatsumi (Ans. 7-8). The Examiner
reasoned that, although Tatsumi did not described its coating as being
formed by extrusion or mechanical crimping, given the nature of product-by-
process claims, Appellants had not demonstrated any difference between the
claimed product and the prior art product (see id.).
We acknowledge that it is “well settled that the presence of process
limitations in product claims, which product does not otherwise patentably
distinguish over the prior art, cannot impart patentability to that product.”
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1318 (Fed. Cir.
2006) (quoting In re Stephens, 345 F.2d 1020, 1023 (CCPA 1965).
Here, however, as noted above, an ordinary artisan would have
reasonably interpreted the sheath member of claims 1 and 3, from which
claims 7, 8, and 11 depend, as being a discrete tubular element that has
structural integrity without being applied to its underlying support member.
As also noted above, the Examiner does not point to any teaching in Tatsumi
that describes its needle as including such a structure. As the Examiner
identifies no teaching in Tatsumi suggesting a substitution of a sheath
member with the required structural integrity for the coating described in the
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reference, we reverse the Examiner‟s alternative anticipation/obviousness
rejection of claims 7, 8, and 11 over Tatsumi.
Similarly, as the Examiner‟s reasoning in rejecting claim 4, which
depends from claim 3, and claims 17 and 18, which depend from claim 1,
does not explain why an ordinary artisan would have considered it obvious
to use a sheath as claimed instead of Tatsumi‟s coating (Ans. 9, 12-13), we
also reverse those obviousness rejections.
SUMMARY
We reverse the Examiner‟s anticipation rejection of claims 1-3, 6, 10,
12-14, 16, and 35 over Tatsumi.
We also reverse the Examiner‟s rejection of claims 7, 8, and 11, as
anticipated by or, in the alternative, as obvious over Tatsumi.
We also reverse the Examiner‟s obviousness rejection of claim 4 over
Tatsumi.
We also reverse the Examiner‟s obviousness rejection of claims 17
and 18 over Tatsumi and Stone.
However, we summarily affirm the Examiner‟s rejection of claim 5 as
obvious over Tatsumi and Harris, as well as the Examiner‟s rejection of
claims 9 and 15 as obvious over Tatsumi and Zeus Polymers.
TIME PERIOD
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-IN-PART

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