Ex Parte Vaillancourft et al

Patent Trial and Appeal Board

Jul 30, 2013

12321900 (P.T.A.B. Jul. 30, 2013)

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.
12/321,900 01/27/2009 Vincent L. Vaillancourft 3138
7590 07/30/2013
Francis C. Hand, Esq.
c/o Carella, Byrne, Bain, Gilfillan, Cecchi,
Stewart & Olstein
6 Becker Farm Road
Roseland, NJ 07068
EXAMINER
PATEL, SHEFALI DILIP
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
07/30/2013 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)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte VINCENT L. VAILLANCOURT
and PATRICIA VAILLANCOURT
__________

Appeal 2011-005098
Application 12/321,900
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON REHEARING
This is an appeal under 35 U.S.C. § 134. Appellants request rehearing
of our decision dated April 24, 2013. We have jurisdiction under 35 U.S.C.
§ 6(b).
Claim 1 is illustrative:
1. In combination,
a hub;
a needle secured to and extending from said hub and having a
sharpened end for insertion in a patient;
a needle housing removably mounted on said hub, said needle housing
having an aperture at one end with said needle passing therethrough; and
Appeal 2011-005098
Application 12/321,900

2
a polyester film strip secured to and between said hub and said housing, said
strip having a series of longitudinally spaced apart apertures receiving said
needle therein and being disposed in corrugated relation between said hub
and said housing whereby before said needle is withdrawn from the patient
said housing is movable from said hub over said needle while said strip
extends between said hub and said housing and as said needle is withdrawn
from the patient said housing is movable beyond said sharpened end of said
needle while said strip is stretched to an extended state between said hub and
said housing and upon release of said housing said strip is retracted to return
said housing towards said sharpened end of said needle to retain said
housing connected to said hub under a biasing force in said strip directing
said housing towards said hub.

Cited References

Wemmert et al. US 6,234,999 B1 May 22, 2001

Discussion

Appellants argue the following basis for rehearing:
1

1. “The Board's adoption of the Examiner’s conclusionary response
that a flexible material is capable of being stretched is unsupported
by any evidence. There is no evidence in Wemmert that the
flexible material of the tether is capable of being stretched.” (Req.
Reh’g 3.)

2. “Wemmert describes the pleated configuration of the tether 44 as
providing a slight biasing force to help maintain the tether 44 in the
completely extended position. (col. 6, lines 40 to 45). This biasing
force of Wemmert is opposite to the biasing force required by
claim 1.” (Id. at 2.) “[S]ince Wemmert discloses that as the tether
prevents the needle shield from being moved distally past the

1
Appellants also separately argue claim 7 (Req. Reh’g 5). Claim 7,
however, was not argued separately in the original briefing (see Appeal Br.
10), and it is improper to argue claims separately for the first time in a
request for rehearing. See In re Kroekel, 803 F.2d 705, 708 (Fed. Cir. 1986).
Appeal 2011-005098
Application 12/321,900

3
sharp distal tip of the needle, the tether cannot be stretchable to a
length greater than the exposed length of introducer needle 31.”
(id. at 4.)

3. The Examiner and the Board did not provide any evidence or
support for the conclusionary statement that Wemmert discloses
“upon release of the housing the strip is retracted to return the
housing towards the end of said needle to retain the housing
connected to the hub under a biasing force in the strip.” (Id. at 3.)

ANALYSIS
We are not persuaded by Appellants’ proffered basis for rehearing and
decline to alter our original Decision.
With respect to bases 1 and 2 of Appellants’ request for rehearing, the
Decision, page 4, quoted the Examiner’s evidentiary finding that Wemmert
disclosed a polyester film strip (column 6, line 39) which is corrugated (Fig.
2.) (Decision 4-5.) Specifically, Wemmert discloses that “Tether 44 can be
made of any relatively stiff yet flexible material. However, polyethylene
terephthalate (PET) is the preferred material.” (Col. 6, ll. 38-40.)
Appellants do not dispute that PET is a polyester, nor have they provided
persuasive reasoning to show that a tether made from the material required
by claim 1 would not have the properties recited by claim 1.
Where . . . the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product…. Whether the rejection is based on “inherency” under
35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C.
§ 103, jointly or alternatively,

the burden of proof is the same,
and its fairness is evidenced by the PTO’s inability to
Appeal 2011-005098
Application 12/321,900

4
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (emphasis added.)

In the present case, both the claimed tether and that of Wemmert share
a corrugated structure and both are made of polyester. While the primary
purpose of the tether in Wemmert may be to maintain an extended state, “the
tether is capable of slightly retracting upon extension of the housing over the
distal tip of the needle” as reasoned by the Examiner (Ans. 8). Under the
principles of In re Best, because the claimed and prior art tether structures
are substantially the same, the burden properly shifted to Appellants to show
that the tether of Wemmert (of the same structure and material) cannot be
“stretched to an extended state between said hub and said housing,” and,
upon release of the housing, the strip will not be “retracted to return said
housing towards said sharpened end of said needle to retain said housing
connected to said hub under a biasing force in said strip directing said
housing towards said hub,” as required by claim 1. Appellants provided no
evidence to meet this burden. In other words, the Examiner provided
sufficient evidence that the claimed tether and that of Wemmert were the
same or substantially the same to properly shift the burden to Appellants.
Appellants have provided no evidence that the tether strip of Wemmert
cannot be stretched to an extended state to extend past the distal tip of the
needle or retracted, as claimed.
Similarly, as to basis 3 above, because the structure and composition
of the claimed strip or tether are the same as that of Wemmert, it is
Appellants’ burden to show that a tether of the same structure and material
Appeal 2011-005098
Application 12/321,900

5
of Wemmert would not possess a similar biasing force directing the needle
housing toward the needle hub.
Appellants have not met this burden, and the Request for Rehearing is
denied.

CONCLUSION OF LAW
We decline to alter our original Decision and the Request for
Rehearing is denied.
REHEARING DENIED

cdc