Ex Parte Ziman

Patent Trial and Appeal Board

Jul 24, 2018

13729430 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/729,430 12/28/2012
135866 7590 07/25/2018
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Lynn A. Ziman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0100/0232 1033
EXAMINER
SHAH, NILAY J
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
07/25/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte LYNN A. ZIMAN
Appeal2017-010260 1
Application 13/729,430
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 24--26, 28-35,
and 37--41. We have jurisdiction to review the case under 35 U.S.C. §§ 134
and 6.
The invention relates generally to "an adapter for coupling a
medication providing device with a connector for providing medication to a
patient." Spec. ,r 1.
1 The Appellants identify Smiths Medical ASD, Inc. as the real party in
interest. Appeal Br. 3.
Appeal2017-010260
Application 13/729,430
Claim 24 is illustrative:
24. A connector comprising one and other portions adapted to
be coupled together, the one portion having an end not coupled
to the other portion configured to have a given configuration that
includes an elongate connector end having an outer wall and a
distal end with an opening and two projections extending
orthogonally from opposite sides of the outer wall at a distance
away from the distal end so that the elongate connector end can
only couple to another connector end of another connector
having a corresponding configuration that accepts the elongate
connector end of said connector, the another connector end of the
another connector having a proximal end with a proximal
opening that faces the opening of the elongate connector end, the
elongate connector end coupling to the another connector end
when the projections are mated to an internal thread of the
another connector end that begins from the proximal opening of
the another connector end, the other portion having an end not
coupled to the one portion of said connector having an opening
whereto one end of a catheter is adapted to be fitted.
Claims 24--26 and 28-32 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Smith et al. (GB 2 383 828 A, pub. July 9, 2003)
(hereinafter "Smith") and Delvigo (US 5,925,028, iss. July 20, 1999).
Claim 34, 35, and 37--40 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Smith, Haury et al. (US 2002/0128607 Al, pub. Sept. 12,
2002) (hereinafter "Haury"), and Delvigo.
Claim 33 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Smith, Delvigo, and Roberts et al. (US 5,738,232, iss. Apr. 14, 1998)
(hereinafter "Roberts").
Claim 41 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Smith, Haury, Delvigo, and Roberts.
We AFFIRM.
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Application 13/729,430
Claims 24. 25. and 29-32
ANALYSIS
Claim 24 recites a first connector with two ends, and a portion of a
second connector that mates with one of the two ends of the first connector.
On the first connector, one end has "two projections extending orthogonally
from opposite sides of the outer wall at a distance away from the distal end."
The other end of the first connector has "an opening whereto one end of a
catheter is adapted to be fitted." On the second connector, which mates with
the first connector's end with projections, is a connector with threads into
which the projections engage.
The Examiner finds Smith discloses two connectors, 14 and 30, which
meet the aforementioned claim limitations, except for the recited location of
the protrusions "at a distance away from the distal end," and that Delvigo
discloses mating connectors where the protrusions are positioned, as
claimed. Final Act. 3-5.
Smith discloses connector 30, corresponding to the claimed "one
portion" and "other portion," where one end has an elongate end with
protrusions, at elements 32 and 34, and the other end is adapted to be fitted
to a catheter. See Smith 12, 11. 29-31 ("second converter 30 is also shown in
Figure 1. This comprises a female connector 32 adapted to fit the different
male connector 18 of the first converter 14"'); id. at 13, lines 5-7
("converter 30 at its other end comprises a standard male 6% luer
connector 3 6").
Smith also discloses connector 14 ', corresponding to the claimed
"another connector," which "has a different male connector 18' at its end
remote from the inlet 16.' The 'different' male end 18' is merely different
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Application 13/729,430
from the 6% luer connector 12 so that it could not mate with a 6% luer
female connector." Smith 11, 1. 3 1 to 12, 1. 7.
We are not persuaded by the Appellant's argument that Smith fails to
disclose a "connector having an opening whereinto one end of a catheter is
adapted to be fitted." Appeal Br. 10. Smith's element 36 on connector 30
has a male luer connector, and, thus, is adapted to be fitted to a catheter with
a female luer connector. See Smith 7, 1. 32 to 8, 1. 3 ("With the converters it
is possible to connect ... any number of existing components currently in
use and having normal 6% luer ( or other standard) connections. Such
components include filters, tubes, stopcocks, junctions[,] etc.").
We are also unpersuaded by the Appellant's argument that Smith fails
to disclose the connector that mates with the different male connector 18 of
the first converter 14', because "there is no description in Smith of the
'another connector' as recited in limitations b, bl[,] and b2 of claim 24
reproduced above." Appeal Br. 10. The connector in Smith that
corresponds to the claimed "another connector" is element 18/18' of
connector 14/14' that mates with element 32 of element 30. See Final
Act. 4.
We are not persuaded by the Appellant's argument that "there would
not be any need for modifying the different female connector 32 of the 2nd
converter 30 with the teeth 212 ofDelvigo." Appeal Br. 11; see also Reply
Br. 6.
The Examiner notes that in the rejection "Smith is modified in view of
Delvigo only to change position of the projections 34 of Smith with respect
to the distal end," and that this modification is a simple substitution of
Delvigo's projection position, some distance from a distal end, for the
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Application 13/729,430
protrusions in Smith, at a distal end. Answer 5. Smith explains a reason to
create a unique connector that is different from other connectors, because
"when a patient has a number of tubes connected to different parts of the
body, a great deal of care has to be taken to ensure that a drug or infusion
intended for one region of the body is not mistakenly directed elsewhere."
Smith 1, 11. 20-24. Smith further explains:
Mistakes are inevitable because, instead of unique
connectors being used for different classes of tubular connection
to the human body, there is, in fact, almost universal
interchangeability. The ubiquitous 6% 1 uer connector is
employed in nearly every area, from body fluid drainage, through
intravenous injections and infusions, to neuraxial access.
Id. at 1, 1. 30 to 2, 1. 1. Therefore, Smith aims to create connectors with
unique "keys" so that the connectors "are unique to each application of the
system so that they prevent connection of a female component of one
application to a male component of another application." Id. at 3, 11.
8-25. By substituting Delvigo's protrusion arrangement, another unique set
of "keys" would have been created to create another set of connectors that
are "unique." A prima facie conclusion of obviousness may be supported by
a showing that the claims are directed to a process, machine, manufacture, or
composition of matter already known in the prior art that is altered by the
mere substitution of one element for another known in the field, and such
modification yields a predictable result. See KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007) (citing US. v. Adams, 383 U.S. 39, 40 (1966)). To
that end, we are persuaded that the Examiner's analysis and factual
underpinnings on this issue are adequate.
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Application 13/729,430
Therefore, we sustain the rejection of independent claim 24, as well as
of dependent claims 25 and 29-32 that were rejected along with claim 24
and for which separate argument was not advanced by the Appellant.
Dependent Claim 2 6
Claim 26 recites, "[t]he connector of claim 24, wherein the one and
other portions of said connector have respective complementary opposing
surfaces so that the one and other portions may only be coupled to each
other."
The Examiner relies on the ends of connectors 14 and 30 of Smith,
which mate to other connectors, not each other ("respective complementary
opposing surfaces 40, 42"), as meeting the claim language. Final Act. 5.
Taken narrowly and literally, the claim language recites language that
could be interpreted as meaning that the mating parts on the ends of the
same connector can only connect to each other. This means the claim recites
language that requires a flexible connector that can connect the ends, recited
as the one portion and other portion, only to each other, in a closed loop. In
order for the portions to connect only to each other, as claimed, there would
need to be a way to ensure no other copies of the connecting portions exist
on other connectors, so that neither connector would connect to any other
connector.
When the Specification is read as a whole, however, we are
unpersuaded that it is reasonable to construe the aforementioned claim
limitation to require that both ends of the same connector can only connect
to each other in a closed loop. See, e.g., Spec. Figure. 1. Therefore, we
construe the claim language to, more broadly but reasonably, mean that the
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Application 13/729,430
connector can only connect to other connectors that have the same
complementary opposing surfaces, for connecting different connectors of the
same connecting type to each other, rather than for only connecting the one
and other portion of the same connector to each other, as recited.
The Examiner has interpreted the claim as we have, and relies on the
luer connectors on the ends of the combined connector 14/30. The end of
connector 30 that does not mate to connector 14 has a male luer connector
(Smith col. 13, 11. 5-7), and the end of connector 14 that does not mate to
connector 30 has a female luer connector (id. at lines 11-18). Final Act. 5;
see also Answer 5.
The Appellant argues "connector 30 and connector 16 of Smith each
are not 'can only be coupled to each other', as required in claim 26, as each
of those connectors can be coupled to other counterpart standard luer
connectors." Appeal Br. 7; see also id. at 12.
We are not persuaded by the Appellant's argument, because it
essentially equates "only" in the claim with "not a standard luer connector."
The claim language, however, as we interpret it, does not recite language as
to the relative rarity of a connector type, but only that the two different
connectors can mate only with connectors of the same type, which includes
mating luer connectors.
For this reason, we affirm the rejection of claim 26.
Dependent Claim 2 8
Claim 28 recites, "[t]he connector of claim 25, wherein the catheter,
once fitted into the opening of the other portion, enables medication from the
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Application 13/729,430
medical providing device to be conveyed to a patient through the connector
and the catheter."
We are not persuaded by the Appellant's argument that "Smith
describes component 52 to be a needle of the hypodermic needle 50, not a
catheter (p. 13, lines 30-33)." Appeal Br. 12. Smith discloses that the
connectors are for connecting more than just needles, in that the claimed
invention is directed "to connectors therefor that interconnect different
tubing and component articles s of the system (that is to say, items such as
needles, canulae, filters, pumps, syringes, medicine and sample collection
containers[,] etc[.])." Smith 1, 11. 3-7. Specifically, the "connectors of the
present invention also comprise a stub, by means of which they are
connected to the tubing or component of which they form a part. In the case
of the converters 30,14 of Figures 1 to 4, the stub is the standard luer
connection 36,38,40 and 16,42 respectively." Id. at 18, 11. 19-24.
Therefore, because medicine is conveyed through tubing connected
via a luer connector, Smith meets the claim language. For this reason, we
sustain the rejection of claim 28.
Dependent Claim 3 3
Dependent claim 33 recites:
The connector of claim 24, wherein said connector is
coupled to the another connector end having the corresponding
configuration when the elongate connector end is rotated in one
direction relative to the another connector end, said connector
freely rotates relative to the another connector end after the
elongate connector end is fully mated to the another connector
end if said connector is further rotated in the one direction
relative to the another connector end, said connector is
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Appeal2017-010260
Application 13/729,430
removable from the another connector end when rotated in a
direction opposite to the one direction.
The Examiner finds the combination of Smith and Delvigo does not
disclose a connection that rotates freely after tightening, but Roberts
discloses an arrangement "for the purpose of preventing the overtightening
of [the] connector with the another connector thereby damaging the threads."
Final Act. 13.
We are not persuaded by the Appellant's argument that the ordinary
artisan would not have combined Roberts' teaching with the combination of
Smith and Delvigo, because "to substitute the cap of Roberts for the another
connector would mean that the connector would not be able to be coupled to
the another connector." Appeal Br. 16. It is not the entire cap of Roberts
that is relied upon by the Examiner, but only the freely-rotating aspect of the
connector, applied to the connector of Smith/Delvigo, to protect the threads.
"Combining the teachings of references does not involve an ability to
combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA
1973).
For this reason, we sustain the rejection of claim 33.
Independent Claims 34 and 37-40
In addition to relying on the same arguments for claim 34 that were
advanced for claim 24 (see Appeal Br. 14), the Appellant argues Haury fails
to disclose connecting to a catheter because in Haury tubing is disclosed
between the catheter and the structures that correspond to the claimed
connector. Id. at 15.
We are not persuaded by the Appellant's argument. Haury discloses,
"connecting tube is used to provide a fluid pathway between the pre filled
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Application 13/729,430
( or conventional) syringe and a catheter in a patient. The sterile connecting
tube includes male and female luer connectors at respective ends thereof."
Haury ,r 6. Because the catheter and tubing in Haury both have luer
connectors, the disclosed catheter can connect directly to the disclosed luer
connector in Smith, for example at element 16/16,' thus, meeting the claim
language.
Because the Appellant's arguments fail to demonstrate error on the
part of the Examiner, we sustain the rejection of claim 34, as well as of
claims 37--40 that were rejected along with claim 34 and not argued
separately.
Dependent Claim 3 5
The Appellant advances the same argument for claim 35 which was
advanced for claim 26, above. Appeal Br. 15. We find it unpersuasive for
the same reasons as for claim 26. Therefore, we sustain the rejection of
claim 35.
Dependent Claim 41
The Appellant advances the same arguments for claim 41 as advanced
for claims 33 and 34, above. Id. at 16-17. We find them unpersuasive for
the same reasons as we set forth above. Therefore, we sustain the rejection
of claim 41.
DECISION
We affirm the rejections under 35 U.S.C. § 103(a) of claims 24--26,
28-35, and 37--41.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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