Ex parte Albert J. Jehle

Board of Patent Appeals and Interferences

Sep 24, 1997

08138359 (B.P.A.I. Sep. 24, 1997)

Application for patent filed October 18, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ALBERT J. JEHLE

_____________
Appeal No. 96-0957
Application 08/138,3591
______________
ON BRIEF
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Before MEISTER, STAAB and CRAWFORD, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
Appeal No. 96-0957
Application 08/138,359
2
DECISION ON APPEAL
Albert J. Jehle (the appellant) appeals from the final
rejection of claims 1, 6-11 and 23-27, the only claims remaining
in the application. We reverse.
The appellant’s invention pertains to a hypodermic
needle assembly. Independent claim 24 is further illustrative of
the appealed subject matter and reads as follows:
24. A hypodermic needle assembly comprising:
means providing a tube having a wall with a cylindrical
inner surface having a central axis, and having first and second
openings at opposite ends thereof; and
a piston having first and second opposite faces, with a
hollow needle extending from the first face, a fitting on the
second face for disconnectible, fluid-tight attachment to a
syringe, and means providing a passage within the piston for
fluid communication between the needle and the fitting, the
piston being located within the tube and frictionally engaging
the cylindrical inner surface of the wall of the tube but being
axially slidable therein when subjected to an external force, the
piston being engaged with the cylindrical inner surface at least
at two axially spaced locations whereby the needle is held
substantially parallel to the central axis of the cylindrical
inner surface of the wall of the tube as the piston slides along
the axis, the needle and piston being locatable entirely within
the tube, and axially movable to a position in which the needle
extends outward from the first opening of the tube while the
piston is inside the tube;
wherein the wall of the tube has portions which are
compressible inwardly against the piston by manual pressure
Appeal No. 96-0957
Application 08/138,359
3
exerted on the exterior of the tube while the inner surface of
the other portions of the wall remains cylindrical, to prevent
the piston from rotating relative to the tube both when the
piston is located so that the needle extends outwardly from the
first opening and when the piston is located so that the needle
is located entirely within the tube.
The references relied on by the examiner are:
Quaas 4,295,476 Oct. 20, 1981
Wilkins 5,137,521 Aug. 11, 1992
Feeney, Jr. (Feeney) 5,267,977 Dec. 7, 1993
Claims 1, 6-8, 10, 11 and 23-27 stand rejected under
35 U.S.C. § 103 as being unpatentable over Feeney in view of
Quaas.
Claim 9 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Feeney in view of Quaas and Wilkins.
The examiner’s rejections are explained on pages 4
and 5 of the answer. The arguments of the appellant and the
examiner in support of their respective positions are found on
pages 3-12 of the brief and pages 6-9 of the answer.
OPINION
Appeal No. 96-0957
Application 08/138,359
Reference to specific lines in the claims in this opinion2
is with respect to the claims as they appear in the appendix to
the appellant’s brief.
4
As a preliminary matter, we based our understanding of
the appealed subject matter upon the following interpretation of
the terminology appearing in the claims. In line 2 of claim 25 2
we interpret “said flexible portions” to be -- said compressible
portions --. In line 29 of claim 26 we interpret “the flexible
means” to be -- the flexible portion --.
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions advanced
by the appellant in the brief and by the examiner in the answer.
This review leads us to conclude that the prior art relied on by
the examiner fails to establish the obviousness of the subject
matter defined by the claims on appeal.
According to the examiner, it would have been obvious
“to include the holding means disclosed in Quaas in the invention
disclosed in Feeney” (see answer, page 5). In support of this
position the answer states that
Feeney, Jr. and Quaas are concerned with
preventing unintended movement in a needle
Appeal No. 96-0957
Application 08/138,359
5
assembly/syringe. The purpose of the
lock/holding means (26) disclosed in Quaas is
to prevent any movement of the blood
container. The purpose of the lock/holding
means (22, 24, 26, 28) in Feeney, Jr. is to
prevent any movement of the needle (18). One
of ordinary skill in the art would find it
obvious to exchange one type of lock/holding
means for another where the locks/holding
means are directed to preventing movement in
a syringe or needle assembly. (See Quaas,
column 3, lines 12-41.) [Pages 7 and 8.]
We do not agree with the examiner’s position. The mere
fact that, as a broad proposition, both Feeney and Quaas disclose
a locking/holding means does not serve as a proper basis for
concluding that it would been obvious to substitute in Feeney for
his locking/holding means the locking/holding means of Quaas.
Instead, it is the teachings of the prior art which must provide
the motivation or suggestion to combine the references. See,
e.g., In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84
(Fed. Cir. 1992). Here, we find no such suggestion.
Feeney discloses a tube 16 which functions as a
protective sheath, a piston 14, a needle 18 mounted on one end of
the piston, a means for affixing the barrel 12 of a syringe
mounted on the other end of the piston (see column 3, line 5) and
a locking/holding means in the form of buttons 22 on the outer
surface of the piston which interact with (1) “rails” or grooves
Appeal No. 96-0957
Application 08/138,359
6
24 and (2) locking chambers 26 located on one end of the grooves.
The stated function of Feeney’s rails is to limit the travel of
the piston relative to the tube (see column 3, lines 1-5) while
the locking chambers, by virtue of the fact that the buttons may
be forced or snapped into and out of these chambers, function to
releasably retain the piston in a position wherein the needle is
located inside of the tube. Moreover, as stated on page 5 of the
brief, a self-evident purpose of Feeney’s rails and buttons is
that:
The engagement of the buttons with the rails
inherently prevents the hub from rotating,
and therefore, the syringe barrel can be
attached to, and detached from, the hub.
On the other hand, Quaas is directed to a blood
collecting device which includes (1) a generally tubular, air-
evacuated blood collection container 35 having an otherwise open
end that is closed with a needle-penetrable closure 36 and (2) a
generally cylindrical receptacle 12 having an open end and a
closed end, with a double ended needle cannula fixed to the
closed end in such a manner that one needle 20 protrudes
therefrom and the other needle 22 (which is covered by a
resilient valve sheath 25) is received within the receptacle 12.
Appeal No. 96-0957
Application 08/138,359
7
In use, the protruding needle 20 is inserted into the vein of a
patient and the end of the blood collection container 35 having
the penetrable closure 36 thereon is inserted into the receptacle
12 until the needle 22 penetrates the penetrable closure and the
resilient valve sheath 25 is compressed. The cylindrical wall of
the receptacle 12 is also provided with a locking/holding means
in the form of an inwardly depressible tongue 26 that engages a
lip 38 which is formed on the closure 36 for the stated purpose
of (1) preventing the blood collection container 35 from being
pushed out of the receptacle 12 by the “spring force” of the
compressed valve sheath (column 3, lines 1-6), (2) insuring
that there is an “uninterrupted blood draw” (column 3, lines 22
and 23) and (3) preventing injury to the patient by eliminating
the “constant inward pushing” of the blood collection container
35 (column 3, lines 35-40).
Thus, while both Feeney and Quaas both as a broad
proposition disclose a locking/holding means, they function
in an entirely different manner and are used in completely
different types of devices. Absent the appellant’s own
teachings, we can think of no cogent reason why one of ordinary
Appeal No. 96-0957
Application 08/138,359
8
skill in this art would have been motivated to seek out the
disparate locking/holding means of Quaas and incorporate it into
the device of Feeney in the manner proposed by the examiner
(i.e., by substituting the locking/holding means of Quaas for the
locking/holding means of Feeney). Indeed, if such a substitution
of locking/holding means were made, Feeney’s intended function of
limiting travel of his piston (and, hence, his needle) in both
directions would apparently be destroyed. Cf. Ex parte Hartmann,
186 USPQ 366, 367 (Bd. App. 1974).
With respect to the rejection of claim 9 under
35 U.S.C. § 103 based on the combined teachings of Feeney, Quaas
and Wilkins, we have carefully reviewed the teachings of Wilkins
but find nothing therein which would overcome the above-noted
deficiencies of Feeney and Quaas.
In view of the foregoing the examiner’s rejections of
claims 1, 6-11 and 23-27 under 35 U.S.C. § 103 are reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
Appeal No. 96-0957
Application 08/138,359
9
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-0957
Application 08/138,359
10
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