Ex Parte Weilbacher et al

Board of Patent Appeals and Interferences

Aug 29, 2012

12004278 (B.P.A.I. Aug. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/004,278 12/20/2007 Eugene E. Weilbacher H-KN-00636 (1502-209) 9340
54964 7590 08/30/2012
Covidien
Attn: IP Legal Department
15 Hampshire Street, Bldg. 4A
Mansfield, MA 02048
EXAMINER
PANI, JOHN
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
08/30/2012 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 EUGENE E. WEIBACHER,
ANTHONY M. SACCHETTI, and MICHAEL J. NOBLE
__________

Appeal 2011-012487
Application 12/004,278
Technology Center 3700
__________

Before DEMETRA J. MILLS, MELANIE L. McCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a phlebotomy needle. The Patent Examiner rejected the
claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
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STATEMENT OF THE CASE
Claims 18, 20, and 22 are on appeal. Claim 18 is representative and
reads as follows (emphasis added):
18. A phlebotomy needle comprising:
a needle including a distal needle portion having a sharpened distal
end configured to pierce tissue and a proximal needle portion having a
sharpened proximal end configured to pierce a stopper of a blood collection
tube, the distal needle portion and the proximal needle portion defining a
fluid channel;
a housing supported on the needle, the housing being formed of a
translucent material and including a passive vent;
a hydrophilic material supported within the housing adjacent the
passive vent, the hydrophilic material providing a visual indication of blood
flow through the translucent housing; and
an elastomeric shield positioned about the proximal needle portion,
the elastomeric shield and the proximal needle portion defining a fluid flow
path into the housing;
wherein the housing defines a viewing region for visualizing blood in
the housing.

The Examiner rejected claims 18, 20, and 22 under 35 U.S.C.
§ 102(b) as anticipated by Percapio (US 4,106,497, Aug. 15, 1978).

ANTICIPATION
The Issue
Appellants contend that Percarpio did not anticipate the invention
because Percarpio “fails to set forth each and every element recited in claims
18, 20, and 22.” (App. Br. 3.) Appellants contend that Percarpio “does not
include ‘an elastomeric shield positioned about the proximal needle portion,
the elastomeric shield and the proximal needle portion defining a fluid flow
path into the housing’ as recited in claim 18.” (Id. at 3.) According to
Appellants, “Percarpio’s sleeve 70 does not define a fluid flow path into the
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housing with needle 50, such as required by claim 18. As clearly shown in
FIG. 4 of Percarpio, the space between needle 50 and adaptor 40 is sealed
with epoxy 52 (emphasis added). As such, there can be no flow between
sleeve 70 and needle 50 into the housing.” (Id. at 4.)

Findings of Fact
1. Percarpio’s Figure 1 is reproduced here:

“FIG. 1 is a longitudinal sectional view of the apparatus of the
invention with a fragmentary portion of an evacuated collection
container in partial association therewith and a fragmentary portion of
the veni-puncture needle depicted.” (Percarpio, col. 2, ll. 28-32.)

2. Percarpio’s Figure 4 is reproduced here:

“FIG. 4 is an enlarged fragmentary sectional view [of a needle
assembly] subsequent to coupling with an evacuated collection
container with arrows showing the flow of blood into the container for
collection.” (Id., col. 2, ll. 38-41.)
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3. Percarpio stated:
The exposed end portion of needle 50 which extends beyond
the rear edge 48 of adapter 40 is surrounded or capped by a resilient,
self-sealing elestomeric sleeve 70 of a conventional material such as
natural or synthetic 40 rubber.

(Id., col. 3, ll. 37-41.)
4. The Examiner found that Percarpio disclosed “a housing (section of
hub 26 surrounding material 90 …) supported on the needle …, the
housing being formed of a translucent material … and including a
passive vent (gap between 26 and 40 at 34).” (Ans. 4-5.)
5. The Examiner found that Percarpio disclosed
an elastomeric shield (70) positioned about the proximal needle
portion, the elastomeric shield and the proximal needle portion
defining a fluid flow path into the housing (see Fig. 1; a space is
located between the proximal end of 50 and the proximal end of shield
70, and because this space, 50, and 40 are hollow and connected, and
hollow section 42 is within the housing as defined above, fluid could
flow along this path, for example if the device was partially full such
as in Fig. 4 and the device were turned upside down); wherein the
housing defines a viewing region for visualizing blood in the housing
(portion surrounding 90).

(Id. at 5.)

Principles of Law
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).

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Analysis
The phlebotomy needle defined by claim 18 comprises “an
elastomeric shield positioned about the proximal needle portion, the
elastomeric shield and the proximal needle portion defining a fluid flow path
into the housing.”
The rejection identified Percarpio’s 26 as forming a housing about
hydrophilic material 90, which may be seen in Figure 4. In ordinary use, as
shown by the arrows in Figure 4, blood would flow from a patient’s body
through needle portion 22 and out needle 50 into, for example, collection
tube 96, shown in Figure 1. It is undisputed that an additional flow path
allows blood to flow to indicator means 90. (See Percarpio, col. 6, cited at
Ans. 5.)
The rejection proposed that if Percarpio’s device were partially full of
blood and turned upside down, blood would flow into the housing via, in
part a space located between the proximal end of 50 and the proximal end of
shield 70, through needle 50, through adaptor 40, and into hollow section 42.
(FF 5.) That is, blood flowing along this path would reach hollow section
42, and because hollow section 42 is in the housing, blood in hollow section
42 should be considered as having flowed through this defined fluid path
“into the housing” as claimed.
Accepting the Examiner’s proposed flow path, we cannot agree with
the Examiner that blood present in Percarpio’s hollow section 42 should be
considered as if it were “in” housing 26. The rejection is therefore reversed.
Because Appellants’ first argument is persuasive, we do not reach their
second argument about the meaning of “needle.”

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SUMMARY
We reverse the rejection of claims 18, 20, and 22 under 35 U.S.C.
§ 102(b) as anticipated by Percapio.

REVERSED

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