Bubenik, Janko et al.

Patent Trials and Appeals Board

Oct 23, 2019

13878305 - (D) (P.T.A.B. Oct. 23, 2019)

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.
13/878,305 05/20/2013 Janko Bubenik 1131-058.101 6527
22145 7590 10/23/2019
KLEIN, O'NEILL & SINGH, LLP
16755 VON KARMAN AVENUE
SUITE 275
IRVINE, CA 92606
EXAMINER
ZAMORY, JUSTIN L
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
10/23/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
KOS_Docketing@koslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JANKO BUBENIK, HECKMANN HARALD, and HARMS
VOLKER
Appeal 2018-002305
Application 13/878,305
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–27. See Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was scheduled for
October 1, 2019. Appellant waived attendance at the hearing.
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as B. BRAUN
MELSUNGEN AG. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to hinged shield assemblies and related
methods. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A hinged shield assembly configured to shield a needle to
prevent needlesticks, the assembly comprising:
a needle hub including a first hinge part defining a first
socket and a second socket, the needle extending from the needle
hub; and
a shield including a second hinge part defining a first ball
and a second ball, the first ball and the second ball engaging the
first socket and the second socket to pivotably secure the shield
to the needle hub, the shield further including a plurality of side
walls configured to partially surround the needle when the shield
assembly is in a protected position, the plurality of side walls
including a center wall located between a first side wall having
the first ball located thereon and a second side wall having the
second ball located thereon;
wherein each of the first socket and the second socket
comprises an opening with a diameter that increases inward of
the opening to a maximum diameter then tapers down to a
narrower diameter that is smaller than the maximum diameter
and wherein each ball has a diameter that is greater than the
diameter of the opening so that the first ball and the second ball
seat within the first socket and the second socket and resist
withdrawal from the first socket and the second socket.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Nakanishi
Sweeney
Carnevali
US 4,658,471
US 5,599,318
US 6,561,476 B2
Apr. 21, 1987
Feb. 4, 1997
May 13, 2003
Newby
Sagisaka
Woehr
Akins
US 2002/0072715 A1
US 2007/0274770 A1
US 2008/0306451 A1
US 2009/0173330 A1
June 13, 2002
Nov. 29, 2007
Dec. 11, 2008
July 9, 2009

REJECTIONS
Claims 3 and 25 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1–8, 11, 14–17, 22, 23, and 26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sweeny, Akins, and Sagisaka.
Claims 9, 12, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sweeny, Akins, Sagisaka, and Newby.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sweeny, Akins, Sagisaka, and Carnevali.
Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sweeny, Akins, Sagisaka, Newby, and Carnevali.
Claims 13 and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sweeny, Akins, Sagisaka, and Woehr.
Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sweeny, Akins, Sagisaka, Woehr, and Carnevali.
Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sweeny, Akins, Sagisaka, Newby, and Woehr.
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Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sweeny, Akins, Sagisaka, and Nakanishi.
OPINION
The rejection under 35 U.S.C. § 112, second paragraph
Appellant filed an amendment purporting to overcome the rejection
under 35 U.S.C. § 112, second paragraph, on April 18, 2017. We do not find
any indication in the record as to whether this amendment was entered or
whether it overcame the rejection under 35 U.S.C. § 112, second paragraph.
The Examiner repeats the rejection under 35 U.S.C. § 112, second
paragraph, in the Examiner’s Answer of November 2, 2017 but does not
comment on the April 18, 2017 amendment. Ans. 2–3. As Appellant does
not seek review of the rejection under 35 U.S.C. § 112, second paragraph
(App. Br. 8–9), we consider any arguments that could have been raised as
waived and summarily sustain this rejection. See, e.g., In re Berger, 279
F.3d 975 (Fed. Cir. 2002) (in which the Board affirmed an uncontested
rejection of claims under 35 U.S.C. § 112, second paragraph, and on appeal
the Federal Circuit affirmed the Board’s decision and found that the
appellant had waived his right to contest the indefiniteness rejection by not
presenting arguments as to error in the rejection on appeal to the Board).
See also, Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“applicant
can waive appeal of a ground of rejection”). We leave it to the Examiner to
clarify the status of the April 18, 2017 amendment.

Obviousness
All of the prior-art rejections presented rely entirely or in part on the
combination of Sweeny, Akins, and Sagisaka. The Supreme Court in KSR
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Int’l. v. Teleflex, 550 U.S. 398 (2007) reaffirmed the framework for
determining obviousness as set forth in Graham v. John Deere Co. (383 U.S.
1 (1966)). The first of the factual inquiries set forth in Graham that are
applied for establishing a background for determining obviousness under 35
U.S.C. § 103(a) is determining the scope and content of the prior art. The
determination of the scope and content of the prior art includes determining
whether prior art references are “analogous.” Whether a reference in the
prior art is “analogous” is a fact question. In re Clay, 966 F.2d 656, 658
(Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg., 810 F.2d 1561,
1568 n.9 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987)). Two criteria have
evolved for determining whether prior art is analogous: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed, and
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. Id. (citing In re Deminski, 796 F.2d 436, 442
(Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). “A
reference is reasonably pertinent if, even though it may be in a different field
from that of the inventor's endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor's
attention in considering his problem. Thus, the purposes of both the
invention and the prior art are important in determining whether the
reference is reasonably pertinent to the problem the invention attempts to
solve. If a reference disclosure has the same purpose as the claimed
invention, the reference relates to the same problem, and that fact supports
use of that reference in an obviousness rejection.” In re Clay, 966 F.2d at
659.
Concerning analogousness, Appellant argues:
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Akins and Sagisaka are not from the same fi[el]d of invention,
i.e., from the field of hinged cap needle devices. . . Thus, under
the first In re Bigio [(381 F.3d 1320 (Fed. Cir. 2004))] prong,
Akins and Sagisaka are non-analogous art.
. . .
[T]he Office fails to consider whether Akins and Sagisaka are
reasonably pertinent under the factors outlined in MPEP Section
2141.01(a). For example, the Office did not discuss the problems
to be solved by the instant application, by Akins, or by Sagisaka.
Instead, the Office merely asserts that Sweeney, Akins, and
Sagisaka are combinable as the combination “represents a well-
known method of connecting two parts together and would be
obvious to one of ordinary skill during the design of such a
device.” (OA, p. 5) This conclusory statement is defective and
fails to address the non-analogous nature of Akins and Sagisaka
App. Br. 22–23.
In response, “[t]he Examiner maintains that the scope of the prior art
encompasses all known hinge designs wherein the hinge is pivoted about a
single axis.” Ans. 16. Even if this statement were correct, it would not
explain why Sagisaka, which relates to “ball joints used in automobile
suspension devices or steering devices” (Sagisaka para. 2) as opposed to
“hinge designs,” would pass muster as analogous art. The only further
comment by the Examiner in the record before us that relates to this issue
appears to be, “[t]he fact that Sagisaka is drawn to an automobile ball joint is
immaterial as it is only relied upon to teach said engagement means
explicitly.” Ans. 14. The Examiner provides neither authority nor
explanation as to why the subject matter to which Sagisaka is drawn is
“immaterial” to the obviousness inquiry under 35 U.S.C. § 103(a).
Obviousness of the claimed subject matter under § 103(a) is judged from the
perspective of a hypothetical person “having ordinary skill in the art to
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which said subject matter pertains.” 35 U.S.C. § 103(a) (Emphasis added).
Our reviewing court’s predecessor has stated:
Section 103 requires us to presume full knowledge by the
inventor of the prior art in the field of his endeavor. . .but it does
not require us to presume full knowledge by the inventor of prior
art outside the field of his endeavor. . .In that respect, it only
requires us to presume that the inventor would have that ability
to select and utilize knowledge from other arts reasonably
pertinent to his particular problem which would be expected of a
man of ordinary skill in the art to which the subject matter
pertains.
In re Antle, 444 F. 2d 1168, 1171–72 (CCPA 1971).
Appellant also challenges the Examiner’s stated reasoning for
incorporating the teachings of Akins and Sagisaka, which is: “the ball and
socket represents a well-known method of connecting two parts together and
would be obvious.” App. Br. 24–25 (citing Non-Final Act. 5). We agree with
Appellant that this reasoning lacks any fact-specific context. The Examiner
does not appear to expound on this reasoning anywhere else in the record
before us. MPEP §§ 2141–43 each state that “[t]he key to supporting any
prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious.” “[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l. v. Teleflex, 550 U.S. 398, 418 (2007). The
equivalency of two connection methods for a particular application, the
reasons or motivating factors for substituting them, the expectation of
success, and the predictability of the results associated with doing so, are all
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factual questions relevant to determining obviousness. See, e.g., MPEP
§ 2143(I). Where, as here, the record is incomplete with respect to the
factual findings and reasoning relied on to reach a conclusion of
unpatentability, it becomes difficult to provide any meaningful appellate
review. In re Zurko, 258 F. 3d 1379, 1386 (Fed. Cir. 2001).
Our reviewing court has frequently cautioned that it is not proper to
base a conclusion of obviousness upon facts gleaned only through hindsight.
To draw on hindsight knowledge of the patented invention, when the prior
art does not contain or suggest that knowledge, is to use the invention as a
template for its own reconstruction—an illogical and inappropriate process
by which to determine patentability. Sensonics Inc. v. Aerosonic Corp., 81
F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). The invention must be viewed
not after the blueprint has been drawn by the inventor, but as it would have
been perceived in the state of the art that existed at the time the invention
was made. Id. (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1138 (Fed. Cir. 1985)). The analogous-art inquiry, and the requirement for
articulating fact-specific reasons for combining reference teachings, as
discussed above, provide important guards against the use of hindsight in
determining obviousness. In light of the fact that the Examiner has not
provided a persuasive explanation as to why Sagisaka should be considered
within the scope of the prior art that should be considered in judging
obviousness, and the fact that the Examiner has not articulated a persuasive
reason supported by rational underpinnings for combining the reference
teachings in the manner proposed, we conclude that it is more likely than not
that the Examiner improperly resorted to hindsight in reaching a conclusion
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of obviousness. Accordingly, the prior-art rejections before us cannot be
sustained on the grounds set forth by the Examiner.
CONCLUSION
The Examiner’s indefiniteness rejection is summarily sustained.
The Examiner’s prior-art rejections are reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
3 and 25 112, second
paragraph
Indefiniteness 3 and 25
1–8, 11, 14–
17, 22, 23,
and 26
103(a) Sweeny, Akins, and
Sagisaka
1–8, 11,
14–17, 22,
23, and 26
9, 12, 20,
and 21
103(a) Sweeny, Akins,
Sagisaka, and Newby
9, 12, 20,
and 21
10 103(a) Sweeny, Akins,
Sagisaka, and
Carnevali
10
18 103(a) Sweeny, Akins,
Sagisaka, Newby, and
Carnevali
18
13 and 24 103(a) Sweeny, Akins,
Sagisaka, and Woehr
13 and 24
25 103(a) Sweeny, Akins,
Sagisaka, Woehr, and
Carnevali
25
19 103(a) Sweeny, Akins,
Sagisaka, Newby, and
Woehr
19
27 103(a) Sweeny, Akins,
Sagisaka, and
Nakanishi
27
Overall Outcome 3 and 25 1, 2, 4–24,
26, and 27
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Application 13/878,305
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TIME PERIOD FOR RESPONSE
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).
AFFIRMED-IN-PART