10373531 (B.P.A.I. Sep. 15, 2010)

Ex Parte Westbye

Board of Patent Appeals and InterferencesSep 15, 2010

10373531 (B.P.A.I. Sep. 15, 2010)

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. 10/373,531 02/24/2003 Lars Tommy Westbye 706737.42 3675 34313 7590 09/16/2010 ORRICK, HERRINGTON & SUTCLIFFE, LLP IP PROSECUTION DEPARTMENT 4 PARK PLAZA SUITE 1600 IRVINE, CA 92614-2558 EXAMINER MEHTA, BHISMA ART UNIT PAPER NUMBER 3767 MAIL DATE DELIVERY MODE 09/16/2010 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 LARS TOMMY WESTBYE ____________ Appeal 2009-009459 Application 10/373,531 Technology Center 3700 ____________ Before JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A. SILVERBERG, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009459 Application 10/373,531 2 STATEMENT OF THE CASE Lars Tommy Westbye (Appellant) appeals under 35 U.S.C. § 134 (2002) from the Examiner’s decision finally rejecting claims 1-9 and 11-22 under 35 U.S.C. § 102(e) as anticipated by Grenfell (US 6,416,323 B1, issued Jul. 9, 2002) and claim 10 under 35 U.S.C. § 103(a) as unpatentable over Grenfell and Talonn (US 5,395,339, issued Mar. 7, 1995). We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002). THE INVENTION Appellant’s invention relates to a medicine injection device including a cartridge having a barrel 92 pre-filled with a medicine or drug, a plunger 98 having a plunger shaft 97 slidable within the cartridge barrel, and a plunger locking mechanism 12 that prevents removal of the plunger from the cartridge barrel. Spec. 2, ll. 16-18; Spec. 3, ll. 10-13; and fig. 15. The plunger shaft 97 includes a locking stop, i.e. flange 100, which engages aperture 114 of flange 110 of plunger locking mechanism 12 in an interference fit. Spec. 3, ll. 14-17 and figs. 3, 6, 7, and 16. Claim 1 is representative of the claimed invention and reads as follows: 1. A needle guard for syringes, comprising: a medical cartridge having a cartridge barrel and a plunger, the plunger comprising a plunger shaft slidable within the medical cartridge; a body having a proximal end, a distal end, and a cavity configured for receiving the medical cartridge; and a plunger locking mechanism attached to the proximal end of the body for preventing access to the contents of the cartridge, the Appeal 2009-009459 Application 10/373,531 3 plunger locking mechanism including a flange with an aperture formed on an edge of the flange that, when the medical cartridge is received within the cavity of the body, is configured to allow the plunger shaft to slide within the aperture, while preventing the plunger from being removed from the cartridge barrel. SUMMARY OF DECISION We AFFIRM. ANALYSIS Appellant argues the rejection under 35 U.S.C. §102 (e) of claims 1-9 and 11-22 together as a group. App. Br. 13. Therefore, in accordance with 37 C.F.R. 41.37(c)(1)(vii)(2009), we have selected claim 1 as the representative claim to decide the appeal, with claims 2-9 and 11-22 standing or falling with claim 1. Claim 1 requires a plunger locking mechanism configured for “preventing the plunger from being removed from the cartridge barrel.” Pointing to column 7, lines 53-67 of Grenfell, the Examiner found that the plunger locking mechanism 130 (finger grip plug) includes a flange 137 and an aperture 138, and “is configured to allow the plunger shaft to slide within the aperture while preventing the plunger [from] being removed from the cartridge barrel.” Ans. 3. Appellant argues that in contrast to the claimed invention where the locking mechanism prevents the plunger from being removed from the cartridge barrel, the finger grip plug 130 (locking mechanism) of Grenfell’s medical device merely prevents piston 94 from being removed from the syringe. App. Br. 14-15. Although we appreciate Appellant’s position, nonetheless, we agree with the Examiner that, “the plunger locking mechanism [130] which Appeal 2009-009459 Application 10/373,531 4 prevents the removal of the piston from the cartridge barrel would also prevent the removal of the plunger from the cartridge barrel.” Ans. 7. We further agree with the Examiner’s position that “[t]he claims are not drawn to the permanent prevention of the removal of the plunger from the barrel.” Id. Emphasis added. We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Although the plunger 120 of Grenfell may be removed for recycling purposes, as Appellants argue, however, during use, tab 129 of plunger 120 abuts distal edge 135 of finger grip plug 130 (locking mechanism) so as to prevent the removal of plunger 120 from finger grip plug 130. Grenfell, col. 7, ll. 33-44 and figs. 5A and 7A. Moreover, because inwardly disposed ledges 139 of fingers 136 prevent the removal of piston 94, and plunger 120 is attached to piston 94 by harpoon 127, inwardly disposed ledges 139 of fingers 136 also prevent the removal of plunger 120. See Grenfell, col. 6, ll. 54-58 and fig. 6A. Pointing to column 9, line 39 through column 10, line 14 of Grenfell, Appellant further argues that in contrast to the claimed invention the detents 137 of Grenfell “actually assist the user in removing the plunger by providing the means for separating the plunger from the piston.” Reply Br. 3. However, in the same cited portion, Grenfell also teaches that if the leading edges 137a of detents 137 are substantially blunt the finger grip plug 130 is permanently attached to the body 20. Grenfell, col. 9, ll. 53-56. Hence, since the finger grip plug 130 and the body 20 are permanently attached, and the tab 129 prevents the removal of plunger 120 from finger Appeal 2009-009459 Application 10/373,531 5 grip plug 130, we conclude that the removal of plunger 120 in Grenfell’s device is also prevented. In conclusion, for the foregoing reasons, the rejection of claim 1 under 35 U.S.C. § 102(e) as anticipated by Grenfell, and claims 2-9 and 11-22 standing or falling with claim 1, is sustained. With respect to claim 10, Appellant does not present any arguments separate from the arguments presented with respect to claim 1. Accordingly, the rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable over Grenfell and Talonn is likewise sustained. SUMMARY The decision of the Examiner to reject claims 1-22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED mls ORRICK, HERRINGTON & SUTCLIFFE, LLP IP PROSECUTION DEPARTMENT 4 PARK PLAZA SUITE 1600 IRVINE, CA 92614-2558