Ex Parte Alheidt et al

Patent Trial and Appeal Board

Feb 25, 2013

11031151 (P.T.A.B. Feb. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS ALHEIDT and ANTHONY J. KOSINSKI
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Appeal 2011-007086
Application 11/031,151
Technology Center 3700
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Before STEPHEN WALSH, ERICA A. FRANKLIN, and
ULRIKE W. JENKS, 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 flush syringe assembly. The Patent Examiner rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
Claims 1, 3, 6-8, and 14-20 are on appeal. Claim 1 illustrates the
subject matter on appeal and reads as follows:
1. A flush syringe assembly comprising:
a barrel including a cylindrical side wall having an inside surface
defining a chamber for retaining fluid, an open proximal end and a distal end
including a distal wall with a tip extending distally therefrom having a
passageway therethrough in fluid communication with said chamber;
a plunger including an elongate body portion having a proximal end,
and a distal end, a stopper slidably positioned in fluid-tight engagement with
said inside surface of said barrel for driving fluid out of said chamber by
movement of said stopper relative to said barrel, said elongate body portion
extending outwardly from said open proximal end of said barrel,
a discontinuity on said plunger for engaging said barrel for stopping
the distal motion of said plunger before said stopper fully delivers all liquid
from said chamber,
said stopper including a proximal stopper portion connected to said
distal end of said plunger and a distal stopper portion separated from said
proximal stopper portion by a spring for moving said distal stopper portion
in a distal direction to drive more liquid out of said chamber after said
discontinuity on said plunger engages said barrel to stop distal motion of
said plunger.

The Examiner rejected the claims as follows:
I. claims 1, 3, 6-8, 14, 15, 16, 18, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Leibinsohn1 and Vaillancourt;2 and
II. claims 17 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Leibinsohn, Vaillancourt, and Odell.3

1 Saul Leibinsohn, US 4,064,879, issued Dec. 27, 1977.
2 Vincent L. Vaillancourt, US 5,429,610, issued July 4, 1995.
3 Robert B. Odell et al., US 6,361,524 B1, issued March 26, 2002.
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I
The Issues
The Examiner’s position is that Leibinsohn described a syringe
assembly as claimed except for expressly disclosing a discontinuity on the
plunger. (Ans. 4.) The Examiner found that Vaillancourt disclosed that it
was known to provide a discontinuity on a syringe plunger for the purpose of
providing a flange to catch and stop the plunger at a position inside the
barrel. (Id.) The Examiner concluded that it would have been obvious “to
modify the plunger and barrel as taught by Leibinsohn with the discontinuity
and mounted catch as taught by Vaillancourt for the purpose of catching an
indentation to stop the plunger at a position inside the barrel.” (Id. at 5.)
Appellants first contend that Vaillancourt adds nothing to Leibinsohn,
because Leibinsohn already contains the Vaillancourt discontinuity, i.e.,
circular strengthening rib 512c shown in Leibinsohn Figure 11. (App. Br.
13.) However, “rib 512c does not function to stop the distal motion of the
plunger,” which “explains the necessity of retaining member 503 in
Leibinsohn to lock the plunger shaft in the first place.” (Id. at 13-14.)
“Appellants also submit that one of skill in the art would not have sought to
modify the dual chamber syringe of Vaillancourt with the springed piston in
Leibinsohn.” (Id. at 14.)
The issues with respect to this rejection are:
(a) whether the rejection’s proposed modification added something
from Vaillancourt’s syringe that was not in Leibinsohn’s retainer
arrangement; and
(b) whether the rejection proposed modifying Vaillancourt’s dual
chamber syringe with Leibinsohn’s springed piston.
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Findings of Fact
1. The Examiner’s findings may be found at Answer 3-6.
2. The Examiner directed attention to Leibinsohn’s Figures 2, 3, 9, 10,
and disclosure at col. 5 l. 24 – col. 6, l. 28. (Ans. 3-4.)
3. Leibinsohn’s patent is entitled “Pressure-Indicating Syringe.”
4. Leibinsohn taught:
FIGS. 11-16 illustrate another aspect of the invention involving
the use of a retainer member carried by the barrel and engagable with
the plunger shaft for retaining the latter in an intermediate position
with respect to the barrel. There are important advantages for such a
feature as will be described more particularly below.

(Leibinsohn, col. 5, ll. 24-29.)
5. Leibinsohn taught:
In one angular position of the plunger shaft (FIG. 12), its wall is
aligned with recess 505 of the retainer tongue 503, permitting the free
movement of the plunger shaft axially within the barrel, but when the
plunger shaft is angularly rotated, as shown in FIG. 13, a wall 512a of
the plunger shaft wedges against the retainer tongue 503 to thereby
lock the plunger shaft in that particular position within the barrel.
This simple feature provides a number of important advantages.

(Id. at col. 5, ll. 43-53.)
6. Leibinsohn’s Figures 11, 12, and 13 are reproduced here:
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“FIGS. 11-13 illustrate the use of one form of retainer member for
retaining the plunger shaft in an intermediate position with respect to
the barrel.” (Id. at col. 2, ll. 49-51.)
7. Leibinsohn taught:
Another advantage in the use of the retainer arrangement is that it
enables the syringe to be utilized for continuously injecting a fluid
(for example into a muscle) at a slow rate, this being effected by
locking the plunger shaft to the barrel and permitting the piston spring
to effect the continuous, slow injection of the fluid.

(Id. at col. 6, ll. 3-9.)
8. Leibinsohn taught at least a second form of retainer member. (Id. at
col. 6, ll. 10-28.)
9. Vaillancourt taught a stop and catch means to stop a plunger.
(Vaillancourt, col. 5, ll. 42-57.)
10. Vaillancourt’s Figure 2 is reproduced here:
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Figure 2 illustrates a syringe with catch 28 positioned to abut cross-
piece 20 and prevent plunger movement into the barrel. (Id.)

Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.

Analysis
Claim 1
Appellants have argued that the rejection should be reversed because
Vaillancourt’s discontinuity, stop or cross-piece 20, corresponded to
Leibinsohn’s circular strengthening rib, and thus Vaillancourt did not add
anything to Leibinsohn. We agree that the cross-pieces or ribs are a
discontinuity common to both plungers. Leibinsohn stopped its plunger by
rotating a plunger rib 512 into retainer tongue 503. (FF 5; compare Figs. 12
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and 13 in FF 6.) However, the rejection proposed using Vaillancourt’s catch
28 to catch Leibinsohn’s circular strengthening rib. Effectively, the
rejection proposed substituting Vaillancourt’s plunger stopping
configuration for Leibinsohn’s. Contrary to Appellants’ argument, using
Vaillancourt’s catch 28 does add to Leibinsohn’s syringe. Appellants’ first
argument is therefore unpersuasive.
Appellants next argue that modifying Vaillancourt’s syringe with
Leibinsohn’s springed piston would destroy the intended function of
Vaillancourt’s dual chamber syringe. The rejection did not propose that
modification. We find this argument unpersuasive for the same reasons the
Examiner found it unpersuasive. (See Ans. 7.)
We conclude that the evidence supports the rejection. Leibinsohn and
Vaillancourt described similar discontinuities on a plunger. Vaillancourt
disclosed a catch mechanism by which the discontinuity would engage the
barrel for stopping the distal motion of the plunger. The rejection proposed
the combination of familiar elements according to known methods, yielding
the expected result. We conclude the rejection should be affirmed. See
KSR, 550 U.S. at 416.
Claims 3, 6-8, 15, 16, 18, and 20 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

Claim 14
Claim 14 further limits the syringe assembly of claim 1 by reciting
“wherein deflection of said spring occurs when said liquid pressure is about
5mm Hg[] (0.1 psi) or more.” The Examiner found that the combined
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teachings of Leibinsohn and Vaillancourt did not expressly disclose 5 mm
Hg as the deflection pressure for Leibinsohn’s spring, but concluded:
It would have been obvious to one having ordinary skill in the art at
the time the invention was made to modify the spring deflection as
taught by Leibinsohn and Vaillancourt with the deflection occurring at
about 5 mmHg or more since Leibinsohn and Vaillancourt performs
substantially the same function in substantially the same manner and
since it has been held that where the general conditions of a claim are
disclosed in the prior art, discovering the optimum or workable
rangers involves only routine skill in the art. In re Aller, 105 USPQ
233[, 220 F.2d 454 (CCPA 1955)].

(Ans. 5.)
Appellants contend: (i) “subsequent cases shed doubt on the
continued viability of Aller in this type of rejection” (App. Br. 15, citing In
re Yates, 663 F.2d 1054 (CCPA 1981)); (ii) “the Examiner has exalted form
over substance in rejecting claim 14” because “the fundamental design
differences between the syringe in Leibinsohn and the claimed flush syringe
show that the two syringes do not perform substantially the same function in
substantially the same manner” (id. at 16); and (iii) “A particular parameter
must first be recognized as a result-effective variable, i.e., a variable which
achieves a recognized result, before the determination of the optimum or
workable ranges of said variable might be characterized as routine
experimentation.” (id.)
In Yates, the court reviewed the obviousness rejection of a claim to an
oxidation process for preparing an aldehyde. Yates, 663 F.2d at 1054-55.
The rejection was based on the “position that controlling the degree of
conversion to optimize the acid-aldehyde ratio would have been obvious.”
Id. at 1056. The court reversed because the record supported “appellant’s
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position that degree of conversion was not recognized to be a result-effective
variable.” Id.
In the present appeal, the evidence is that Leibinsohn described a
pressure-indicating syringe. (FF 1.) That is, Leibinsohn identified pressure
as a variable. The fact that Leibinsohn described a syringe indicating
various pressures is undisputed. Leibinsohn also described using a spring to
inject fluid. (FF 7.) A person of ordinary skill in the art seeking to make
and use Leibinsohn’s syringe would have had to choose a spring that could
provide sufficient pressure to push fluid out of the syringe. We therefore
agree with the Examiner that spring pressure was recognized as a result-
effective variable, and that a person of ordinary skill seeking to practice
Leibinsohn’s invention would necessarily have had to choose a spring
deflecting at an effective pressure. These facts distinguish this case from
Yates. We therefore find Appellants’ first and third arguments unpersuasive.
We also agree with the Examiner that the Leibinsohn syringe
assembly, modified as proposed in the rejection, performs substantially the
same function in substantially the same manner as the syringe assembly
defined in the claim. (See Ans. 8.) Although Appellants’ preamble names
the assembly a “flush” assembly, the assembly defined in the claim is the
same syringe assembly suggested by Leibinsohn and Vaillancourt. The
assembly suggested by the prior art, and used in Leibinsohn’s method is
configured “to drive more liquid out of said chamber after said discontinuity
on said plunger engages said barrel to stop said distal motion of said
plunger,” as claimed. To the extent Appellants may be referring to a
possible difference between the manner in which the plunger and barrel
engage as shown in Specification Figures 4 and 5, and how the Leibinsohn
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and Vaillancourt plunger and barrel engage, the features shown in the
Specification’s Figures are not imported into the claim. The claim phrase
“plunger for engaging said barrel” includes both direct engagement and
indirect engagement, and Appellants have waived argument that the claim
should be limited to direct engagement. For a discussion of “engagement”
see Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012)
(“The term ‘engagement’ connotes a connection between two objects in
which the motion of one object is constrained by the other. This connection
can be indirect, such as where a motor is engaged with a gear through a
second, intermediate gear.”).
We conclude that the rejection of claim 14 should be affirmed.

II
The Examiner’s position is: “It would have been obvious to one
having ordinary skill in the art at the time the invention was made to modify
the device as taught by Leibinsohn and Vaillancourt with the tip cap and
needle assembly as taught by Odell et al for the purpose of maintaining
sterility and performing an injection into a patient.” (Ans. 5-6.)
Appellants contend that the “Examiner has pointed to nothing in Odell
that remedies the deficiency of Leibinsohn and Vaillancourt.” (App. Br. 17.)
As discussed in part I above, we do not agree there is a deficiency in
the rejection based on Leibinsohn and Vaillancourt. We conclude that the
rejection of claims 17 and 19 should be affirmed.

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SUMMARY
We affirm the rejection of claims 1, 3, 6-8, 14, 15, 16, 18, and 20
under 35 U.S.C. § 103(a) as unpatentable over Leibinsohn and Vaillancourt.
We affirm the rejection of claims 17 and 19 under 35 U.S.C. § 103(a)
as unpatentable over Leibinsohn, Vaillancourt, and Odell.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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