Ex Parte Baid

Patent Trial and Appeal Board

Sep 18, 2017

13394638 (P.T.A.B. Sep. 18, 2017)

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.
00087-P0002A 7015
EXAMINER
CERIONI, DANIEL LEE
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
13/394,638 03/07/2012
79906 7590
IP Attorneys Group, LLC
16 Oxford Road, 2nd floor
Milford, CT 06460
09/18/2017
Rishi Baid
09/18/2017 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 RISHI BAID
Appeal 2015-006324
Application 13/394,638
Technology Center 3700
Before JAMES P. CALVE, JILL D. HILL, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rishi Baid (“Appellant”)1 seeks review under 35 U.S.C. § 134(a) of
the Examiner’s decision, as set forth in the Final Office Action dated July
31, 2014 (“Final Act.”), rejecting claims 13, 15—24, and 27. An oral hearing
was held on September 12, 2017. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellant identifies Poly Medicure Limited as the real party in
interest. Appeal Br. 3.
Appeal 2015-006324
Application 13/394,638
BACKGROUND
The disclosed subject matter “relates to a blood collection device.”
Spec. 13. Claims 13 and 27 are independent. Claim 13 is reproduced
below, with emphasis added for claim language at issue:
13. A blood collection device comprising:
a cannula hub defining a chamber, said
cannula hub further comprising a tubular projection
extending outwardly from said cannula hub;
an inlet cannula defining an axis and having
a distal end, the inlet cannula being mounted to the
cannula hub such that the distal end of the inlet
cannula is external of the cannula hub;
an inlet lumen extending from the inlet
cannula such that said inlet lumen communicates
with the chamber;
an outlet cannula having a proximal end, the
outlet cannula being mounted to the cannula hub
such that the proximal end of the outlet cannula is
external of the cannula hub;
an outlet lumen extending through the outlet
cannula such that said outlet lumen communicates
with the chamber;
a closed sleeve mounted over a portion of the
outlet cannula disposed externally of the cannula
hub; and
a venting mechanism providing
communication between the chamber and ambient
surroundings, said venting mechanism further
comprising a tubular insert and a membrane;
wherein:
at least a portion of the tubular insert of the
venting mechanism is contained within the tubular
projection of the cannula hub;
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Application 13/394,638
the tubular insert defines a fluid passage;
the membrane extends across said fluid
passage; and
the membrane is made from a material
permeable for air and substantially impermeable for
blood.
REJECTIONS
1. Claims 13, 15—17, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Suzuki (US 5,520,193, issued May 28, 1996)
in view of Sonoda (US 2004/0210247 Al, published Oct. 21, 2004) and/or
Roth (US 6,355,023 Bl, issued Mar. 12, 2002).
2. Claims 18—20 and 27 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Suzuki in view of Sonoda and/or Roth, and further in
view of Newby ’524 (US 2005/0004524 Al, published Jan. 6, 2005).
3. Claims 22—24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Suzuki in view of Sonoda and/or Roth, and further in view
of Newby ’483 (US 6,905,483 B2, issued June 14, 2005).
DISCUSSION
Rejection 1 — Claims 13, 15—17, and 21
For independent claim 13, the Examiner relied primarily on the
embodiment shown in Figure 16 of Suzuki for certain limitations (see Final
Act. 3—4), but stated that “[t]he embodiment relied upon above in Suzuki
does not expressly disclose said venting mechanism further comprising a
tubular insert or at least a portion of the tubular insert of the venting
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Application 13/394,638
mechanism contained within the tubular projection of the cannula hub” (id.
at 4). The Examiner stated,
However, in another embodiment of Suzuki, Suzuki
discloses wherein the venting mechanism ([elements] 12, 13)
(Fig. 11) (col. 5, lines 25—31) comprises a tubular insert (13)
(Fig. 11) (col. 5, lines 25—29) defining a fluid passage
therethrough (see Fig. 11) (col. 5, lines 25—29), a membrane (12)
(Fig. 11) (col. 5, lines 25—31) extending across the fluid passage
(see Fig. 11) (col. 5, lines 25—31), and at least a portion of the
tubular insert of the venting mechanism is contained within the
tubular projection of the cannula hub (as best seen in Fig. 11).
Id. at 4—5; see also id. at 5 (setting forth reasoning to modify the Figure 16
embodiment of Suzuki with aspects of the Figure 11 embodiment). The
Examiner stated that “Suzuki does not expressly disclose that the tubular
projection extends outwardly from the cannula hub” but found that “it is
well known in the art of blood collection devices to extend tubular
projections outwardly from cannula hubs, as evidenced by Fig. 3 of Sonoda
(i.e., see element 54) and Figs. 1 and 2 of Roth (i.e., see element 124).”
Final Act. 5. According to the Examiner, it would have been obvious for
one of ordinary skill in the art at the time of the invention
to modify Suzuki such that the tubular projection extends
outwardly from said cannula hub, in view of the teachings of
Sonoda and/or Roth, for the obvious advantage of providing a
heightened surface relative to the surface of the rest of the
cannula hub so that vented matter is dispersed away from the
device so as not to contaminate or interfere with the device.
Id. (citing Sonoda 1133).
Appellant argues that “the structure of Suzuki identified by the
Examiner does not qualify as a tubular projection of a cannula hub” because,
“[a]t most[,] the structure is a fluid passage through a cannula hub.” Appeal
Br. 26 (discussing Suzuki Fig. 11). According to Appellant, “[t]he venting
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Application 13/394,638
mechanism of Suzuki (elements 12 and 13 [in Figure 11]) is mounted in an
opening through the sidewall of the cannula hub” and, “[a]s has been
discussed throughout prosecution, an opening in the sidewall of a chamber is
not a projection extending that chamber.” Id. at 27. Appellant also argues
that “Suzuki cannot disclose at least a portion of the tubular insert of the
venting mechanism is contained within the tubular projection, because
Suzuki does not disclose the tubular projection.” Id. at 28.
Citing paragraph 36 of the Specification, the Examiner states that ‘“a
tubular projection,’ as recited in claim 13, can be any projection that extends
perpendicularly to the needle axis.” Ans. 22 (citing paragraph 36, which
provides: “The tubular projection 50 extends perpendicularly to the needle
axis from the first part 16 of the cannula hub 10 . . . .”). According to the
Examiner, because “[tjhere are two directions that are perpendicular to the
needle axis: a radially inward direction of the cannula hub and a radially
outward direction of the cannula hub,” “‘a tubular projection’ may be
construed as a projection that extends radially inward or radially outward of
the cannula hub.” Id. The Examiner states that “Suzuki discloses a tubular
projection that extends radially inward of Suzuki’s cannula hub” because
“Fig. 11 shows that the bottom half of element 5 is a tubular projection that
projects radially inward of element 2.” Id.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification, reading the claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990). From the record,
we discern two options as to the aspects of Figure 11 of Suzuki relied on as
the “tubular projection.” First, the Examiner could be understood as relying
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Application 13/394,638
on only the void space that is the bottom half of radial passage 5 (including
the volume filled by elements 12 and 13, if removed). See, e.g., Ans. 22
(stating that “Fig. 11 shows that the bottom half of element 5 is a tubular
projection that projects radially inward of element 2” (emphasis added)); see
also Suzuki, col. 5,11. 25—31 (describing element 5 as a “radial passage”).
Second, the Examiner could be understood as relying on some portion of the
structure of needle cannula support 2 directly surrounding the void space
identified in the first option above. See, e.g., Ans. 23 (stating that “tubular
projection (50) of the instant application may be described as a void space
surrounded by structure that is integral with the cannula hub (10) (see Figs.
1—3)” and that, “[i]n the same fashion, Suzuki also has a void space (see Fig.
11) that is surrounded by structure that is integral with the cannula hub (2)”);
see also Appeal Br. 27 (“The Examiner has previously argued that ‘the
tubular projection is/are the walls that surround Suzuki’s element 5.’
Advisory Action dated December 31, 2013, page 2, paragraph 4.”). For the
reasons discussed below, neither option falls within the scope of the broadest
reasonable construction of “tubular projection.”
As to the first option, we agree with Appellant that “[a] void space,
such as the opening in the chamber wall of Suzuki, is not a projection.”
Appeal Br. 27; see also Reply Br. 3 (arguing that “the lower portion of
element (5) is simply a larger void space and not a projection of any sort”
and that “the Examiner has pointed to no structure in the device of Suzuki
extending either inwardly or outwardly from of the cannula hub”). The
Specification supports construing “projection” as structure, rather than void
space (i.e., lack of structure). In each embodiment described, tubular
projection 50 is physical structure, rather than void space. See Spec., Figs.
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Application 13/394,638
1—3,136. This construction is also supported by the dictionary cited by
Appellant, which defines “projection” as “a projecting or protruding part.'”
Appeal Br. 27 (emphasis added) (citing Response to Non-Final Office
Action Mailed June 13, 2013 (dated Sept. 11, 2013), at 8 (quoting
Dictionary.com, http://www.dictionary.com/browse/projection (last visited
Sept. 13, 2017))). Thus, the void space at issue in this first option (i.e., a
portion of radial passage 5) is not a “projection” as recited in claim 13.
We turn now to the second option. Although the structure of needle
cannula support 2 directly surrounding the void space discussed above
would (by definition) be structure rather than void space, that structure does
not, as found by the Examiner, “extend[] radially inward of Suzuki’s cannula
hub.” Ans. 22; see also id. (construing “tubular projection” as including “a
projection that extends radially inward ... of the cannula hub”). The
structure at issue in this second option does not extend radially inward from
the identified “cannula hub” because it is (at least part of) the “cannula hub.”
See Final Act. 3 (identifying element 2 in various figures, including Figure
11 of Suzuki, as the “cannula hub”); see also Appeal Br. 28 (“The inner
walls alone do not describe a structure of a projection from a cannula hub
any more than Element 5; the inner walls merely form a fluid passage that is
contained within the cannula hub, as shown in Fig. 11.”); Reply Br. 3
(“There is no part projecting either into or out of the cannula hub for
mounting the venting mechanism in any embodiment disclosed by Suzuki.”).
This understanding is supported by the dictionary cited by Appellant, which
defines the verb “project” as “to extend or protrude beyond something else.”
Appeal Br. 27 (emphasis added) (referring to Response to Non-Final Office
Action Mailed June 13, 2013 (dated Sept. 11, 2013), at 8 (quoting
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Dictionary.com, http://www.dictionary.com/browse/projecting (last visited
Sept. 12, 2017)). Moreover, this meaning is consistent with the claim
language, which recites the tubular projection “extending outwardly from
said cannula hub.” Appeal Br. 51 (Claims App.) (emphasis added).2 Thus,
the structure at issue in this second option is not a “projection” as recited in
claim 13.
For these reasons, we do not sustain the rejection of claim 13, or the
rejection of claims 15—17 and 21, which depend from claim 13.
Rejection 2 — Claims 18—20 and 27
A. Claims 18—20
Claims 18—20 depend from claim 13. Appeal Br. 52—53 (Claims
App.). The Examiner’s added reliance on Newby ’524 does not remedy the
deficiencies in the combined teachings of Suzuki in view of Sonoda and/or
Roth, discussed above (see supra Rejection 1). Thus, for the same reasons
discussed above, we do not sustain the rejection of claims 18—20.
B. Claim 27
Similar to independent claim 13, independent claim 27 recites “a
cannula hub further comprising a tubular projection” and recites “at least a
portion of the tubular insert of the venting mechanism is contained within
the tubular projection of the cannula hub.” Compare Appeal Br. 54—55
(Claims App.), with id. at 51—52. For claim 27, the Examiner relies on the
same deficient findings and conclusions with regard to Suzuki as discussed
2 Sonoda and/or Roth—relied on by the Examiner to teach an
outwardly extending projection (Final Act. 5)—do not teach a projection
extending radially inwardly of a cannula hub (Ans. 22), and thus do not
remedy this deficiency of Suzuki as to the second option.
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above with regard to claim 13 (see supra Rejection 1). Compare Final Act.
8—11, with id. at 3—5; see also Ans. 28 (relying on prior arguments).
Moreover, the Examiner’s reliance on Newby ’524 does not remedy the
deficiencies in the combined teachings of Suzuki in view of Sonoda and/or
Roth, discussed above (see supra Rejection 1). Thus, for the same reasons
discussed above, we do not sustain the rejection of claim 27.
Rejection 3 — Claims 22—24
Claims 22—24 depend from claim 13. Appeal Br. 53 (Claims App.).
The Examiner’s added reliance on Newby ’483 does not remedy the
deficiencies in the combined teachings of Suzuki in view of Sonoda and/or
Roth, discussed above (see supra Rejection 1). Thus, for the same reasons
discussed above, we do not sustain the rejection of claims 22—24.
DECISION
We reverse the decision to reject claims 13, 15—24, and 27.
REVERSED
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