Ex Parte Bauss et alDownload PDFPatent Trial and Appeal BoardMay 11, 201611918116 (P.T.A.B. May. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111918,116 10/09/2007 25889 7590 05/12/2016 COLLARD & ROE, P.C. 1077 NORTHERN BOULEVARD ROSLYN, NY 11576 FIRST NAMED INVENTOR Markus Bauss 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. BAUSS ET AL. - 2 PCT 1238 EXAMINER BOSWORTH, KAMI A ART UNIT PAPER NUMBER 3763 MAILDATE DELIVERY MODE 05/12/2016 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 MARKUS BAUSS, ROBERT LICHA, ULRICH MOOSHEIMER, and ROBERT UNGLERT Appeal2013-003255 Application 11/918, 116 Technology Center 3700 Before EDWARD A. BROWN, JAMES P. CALVE, and GEORGE R. HOSKINS, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Markus Bauss et al. (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 9-21, 23-33, 35--47, 53-72, 74, and 75, which are the pending claims. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART and enter NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 The real party in interest is identified as Schreiner Group GmbH & Co. KG. Appeal Br. 1. Appeal2013-003255 Application 11/918, 116 CLAIMED SUBJECT MATTER Claims 9, 62, and 75 are independent. Claim 9, reproduced below, is illustrative of the claimed subject matter: 9. An assembly comprising a protective mechanism and a syringe having a syringe body and a needle that poses a risk of injury, the protective mechanism comprising: a connection region, the connection region being formed from at least one film and being attached to the syringe, the at least one film being a self-adhesive film to glue the film directly on the syringe body by said self-adhesive; a protective device, the protective device providing protection from injury and to accommodate the needle, the protective device being configured as a hard plastic part; a bridging region disposed between the connection region and the protective device; and a weakening at the transition between the connection region and the bridging region to allow defined folding over of the bridging region to allow folding the protective device away from the needle in an operational state and then to allow folding the protective device back to accommodate the needle in another operational state. EVIDENCE The Examiner relies upon the following evidence: Smith us 4,643,722 Feb. 17, 1987 Vaillancourt us 4, 704, 177 Nov. 3, 1987 Hagen us 4,735,618 Apr. 5, 1988 Glazier us 4,883,469 Nov. 28, 1989 Frederiksen us 5,506,015 Apr. 9, 1996 Bums us 5,643,219 July 1, 1997 Weder us 5,829,194 Nov. 3, 1998 Hollister US 6,328,713 Bl Dec. 11, 2001 Eakins US 6,485,460 B2 Nov. 26, 2002 Sprieck US 2003/0121812 Al July 3, 2003 Emmott US 2006/0200881 Al Aug. 21, 2008 Kessler WO 00/62848 Oct. 26, 2000 2 Appeal2013-003255 Application 11/918, 116 REJECTIONS Appellants seek review of the following rejections under 35 U.S.C. § 103(a):2 I. Claims 9-11, 33, 35-37, 57, 58, 69-71, 74, and 75 over Glazier and Vaillancourt; II. Claims 12-14, 38, 39, and 72 over Glazier, Vaillancourt, and Eakins; III. Claim 15 over Glazier, Vaillancourt, and Hagen; IV. Claims 16, 17, and 19-21 over Glazier, Vaillancourt, Eakins, and Kessler; V. Claims 16 and 18 over Glazier, Vaillancourt, Eakins, and Frederiksen; VI. Claims 23, 24, 28-32, and 53 over Glazier, Vaillancourt, and Kessler; VII. Claims 25-27 over Glazier, Vaillancourt, and Smith; VIII. Claims 54--56 and 59 over Glazier, Vaillancourt, and Bums; IX. Claims 40, 42, and 46 over Glazier, Vaillancourt, Eakins, and Emmott; X. Claims 41, 43, and 47 over Glazier, Vaillancourt, Eakins, Emmott, and Frederiksen; XI. Claims 44 and 45 over Glazier, Vaillancourt, Eakins, Emmott, Frederiksen, and Weder; XII. Claims 60 and 61 over Glazier, Vaillancourt, and Hollister; and XIII. Claims 62---68 over Glazier, Vaillancourt, and Sprieck. 2 The rejections of claims 62---68 under 35 U.S.C. § 112, first and second paragraphs, have been withdrawn. Ans. 5. 3 Appeal2013-003255 Application 11/918, 116 ANALYSIS New Ground of Rejection - 35 U.S. C. § 112, Second Paragraph Claims 11-21 Claim 9 recites "the at least one film being a self-adhesive film to glue the film directly on the syringe body by said self-adhesive." Appeal Br. 56 (emphasis added). Claim 11 depends from claim 9 and recites "wherein the at least one film has means for being affixed to the device." Id. at 57 (emphasis added). We find claim 11 is unclear. First, it is unclear what is meant by "the device" in claim 11. Appellants indicate support for "the device" is found in pages 5---6 of the Specification. Appeal Br. 4. These pages do not describe the device to which the film is affixed. Spec. 5---6. Further, claim 9 does not clarify the meaning of "the device." The only "device" recited in claim 9 is "a protective device," and claim 9 recites that the at least one film is attached to the syringe, not the protective device. Second, it is unclear if the "means for being affixed to the device" in claim 11 is the adhesive recited in claim 9 or a different element from the adhesive. If the latter, it is unclear how the at least one film of claim 11 "has means for being affixed to the device" in addition to "being [i.e., "is"] a self- adhesive film to glue the film directly on the syringe body." Appellants indicate the "at least one film" having "means for being affixed" in claim 11 is supported by pages 5---6 of the Specification. Appeal Br. 4. These pages explain that affixation "takes place by gluing, preferably adhesive gluing, or by means of physical or chemical methods." Spec. 5 (emphasis added). These pages do not, however, describe the term "means," or describe that the film has both an adhesive and means for being affixed. 4 Appeal2013-003255 Application 11/918, 116 Id. Consequently, we are unable to determine what structure is required by the "means for being affixed to the device" in claim 11. Thus, claim 11, and claims 12-21 depending therefrom, fail to comply with the requirements of 35 U.S.C. § 112, second paragraph. Claims 12-15 are unclear for additional reasons. Each of claims 12- 14 recites that "the at least one film can be shrunk." Appeal Br. 57, Claims App. (emphasis added). It is unclear what "can be shrunk" means. For example, it is unclear whether this limitation requires that the film is shrunk onto the device. Further, it is unclear whether this limitation is in addition to the self-adhesive that glues the film directly on the syringe body recited in claim 9. Claim 15 recites that "the at least one film can be stretched and can be put onto the device in tube form, with simultaneous contraction." Appeal Br. 57, Claims App. (emphasis added). It is unclear what "can be stretched" and "can be put onto the device in tube form" mean. For example, it is unclear whether the film being stretched and the film being put onto the device in tube form are both required in claim 15. Further, it is unclear whether these limitations are in addition to the self-adhesive limitation in claim 9. Claims 25-27 Claim 25 depends from claim 9 and recites "wherein the full adhesive effect of the adhesive is present only on part of an area of the film on the syringe body." Appeal Br. 59, Claims App. (emphasis added). Claim 9 does not provide antecedent basis for "the full adhesive effect" in claim 25. Consequently, the meaning of this limitation is unclear. Further, it is unclear 5 Appeal2013-003255 Application 11/918, 116 what "adhesive effect" is being referred to and how this adhesive effect is "full." Appellants indicate that the limitation of claim 25 is supported by page 12 of the Specification and Figure 6. Appeal Br. 6-7. The only mention of an adhesive on page 12 is in the description of Figure 6, stating "a protective mechanism 603 with a protective device 605, not shown in greater detail, and an adhesive layer 607 (for fixation on the object) is shown." Spec. 12. Nothing in this page explains what is meant by "the full adhesive effect." Id. Thus, claim 25, and claims 26 and 27 depending therefrom, also fail to comply with the requirements of 35 U.S.C. § 112, second paragraph. Claim 33 Claim 33 recites, "wherein the at least one film has a region that can be imprinted later." Appeal Br. 60, Claims App. (emphasis added). It is unclear what "can be imprinted later" means. For example, it is unclear whether imprinting is required in claim 33. It is also unclear what "later" means. Thus, claim 33 also fails to comply with the requirements of 35 U.S.C. § 112, second paragraph. Claim 36 Claim 36 recites that "the two regions and the protective device are formedfrom the same film." Appeal Br. 60, Claims App. (emphasis added). Claim 36 depends from claim 9, which requires that "the protective device [be] configured as a hard plastic part" (emphasis added). That is, the protective device recited in claim 9 is a hard plastic part. It is unclear how 6 Appeal2013-003255 Application 11/918, 116 the same protective device can be both a hard plastic part and a film at the same time. Appellants indicate claim 3 6 is supported by pages 8-9 of the Specification and Figure 1. Appeal Br. 8-9. The Specification states, "[the protective device] can be configured both as a film and as a hard plastic part or similar component." Spec. 8. The Specification does not describe that the same protective device can be both a film and hard plastic part at the same time. In fact, Appellants explained previously during prosecution that the protective device is a hard plastic part, and effectively distinguished a hard plastic part from a film, when arguing how the "hard plastic part" limitation added to claim 9 overcame the prior art. 3 Consequently, the meaning of claim 36 is unclear. Thus, claim 36 also fails to comply with the requirements of 35 U.S.C. § 112, second paragraph. Claims 3 8--4 7 Claim 3 8 recites that "the functional part is a film" and depends from claim 3 7, which recites that "the protective device is a functional part attached at least to the bridging region." Appeal Br. 60, Claims App. (emphasis added). Claim 3 8 is similar to claim 3 6, both claims requiring the protective device be both a hard plastic part and a film, and the above 3 Appellants stated: "[The] protective mechanism includes a hard plastic part in the form of the protective device that accommodates the needle. Thus, Applicants' protective mechanism as recited in claims 9, 62 and 69 as amended combines a film-like element for attaching to the device and a hard plastic part for accommodating the needle." See Arndt. 23 (filed Jan. 25, 2010) (emphasis added). 7 Appeal2013-003255 Application 11/918, 116 analysis for claim 36 also applies to claim 38. Accordingly, claim 38 is unclear for the same reasons as claim 36. Thus, claim 38, and claims 39--47 depending therefrom, fail to comply with the requirements of 35 U.S.C. § 112, second paragraph. Claims 69-72 Claim 69 recites "[a] device containing a needle that poses a risk of injury, wherein the device is equipped with a protective mechanism according to claim 9." Appeal Br. 64, Claims App. Claim 9 recites "[a]n assembly comprising a protective mechanism and a syringe having a syringe body and a needle that poses a risk of injury," the protective mechanism comprising "a protective device, the protective device providing protection from injury and to accommodate the needle." Id. at 56. It is unclear whether claim 69 requires a single needle, or two needles, as it is unclear whether the needle accommodated in the protective device recited in claim 9 is the same or different from the needle contained in the device recited in claim 69. See Appeal Br. 14 (claim 69 depends from claim 9). Thus, claim 69, and claims 70-72 depending therefrom, fail to comply with the requirements of 35 U.S.C. § 112, second paragraph. For the above reasons, we enter a new ground of rejection of claims 11-21, 25-27, 33, 36, 38--47, and 69-72 under 35 U.S.C. § 112, second paragraph, in accordance with 37 C.F.R. § 41.50(b). New Ground of Rejection - 35 U.S. C. § 112, Fourth Paragraph Claim 69 recites "[a] device containing a needle that poses a risk of injury, wherein the device is equipped with a protective mechanism according to claim 9." Appeal Br. 64, Claims App. (emphasis added). Claim 9 recites "[a]n assembly comprising a protective mechanism and a 8 Appeal2013-003255 Application 11/918, 116 syringe having a syringe body and a needle that poses a risk of injury." Id. at 56 (emphasis added). "A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers." 35 U.S.C. § 112, fourth paragraph; see also MPEP 608.0l(n)(II) (emphasis added). In the instant case, the device of claim 69 requires "a needle" and "a protective mechanism according to claim 9." However, the assembly in claim 9 comprises a protective mechanism and a syringe. As claim 69 does not require a syringe, and all the limitations in the body of claim 9 that refer to the syringe, claim 69 fails to incorporate all the limitations of claim 9. Thus, claim 69, and claims 70-72 depending therefrom, fail to comply with the requirements of 35 U.S.C. § 112, fourth paragraph. Accordingly, we enter a new ground of rejection of these claims under 35 U.S.C. § 112, fourth paragraph. lvew Ground of Rejection - 35 U.S. C. § 112, First Paragraph Claim 36 As discussed above, claim 36 requires the protective device be both a hard plastic part and a film. Also as discussed above, Appellants' Specification describes the protective device as a film, hard plastic part, or something similar to a hard plastic part. Spec. 8. The Specification does not describe that the same protective device can be both a hard plastic part and a film at the same time. Id. Consistent with the description of the protective device in the Specification, Appellants distinguished a hard plastic part from a film. See Arndt. 23 (filed Jan. 25, 2010). Claim 36, therefore, does not comply with the written description requirement of 35 U.S.C. § 112, first paragraph, because the claim contains subject matter that was not described 9 Appeal2013-003255 Application 11/918, 116 in the Specification in such a way as to reasonably convey to one skilled in the art that the inventor, at the time the application was filed, had possession of the claimed invention. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citations omitted). Claims 3 8--4 7 As claim 38, like claim 36, requires the protective device be a hard plastic part and a film, the above analysis pertaining to claim 36 and the written description requirement also applies to claim 38. Thus, claim 38, and claims 39--47 depending therefrom, also fail to comply with the written description requirements of 35 U.S.C. § 112, first paragraph. For the above reasons, we enter a new ground of rejection of claims 36 and 38--47 under 35 U.S.C. § 112, first paragraph. Rejection I The Examiner rejected claims 9-11, 33, 35-37, 57, 58, 69-71, 74, and 75 as obvious over Glazier and Vaillancourt. Final Act. 4--11. Claims 11, 33, 36, and 69-71 Initially, we do not reach the merits of the rejection of claims 11, 33, 36, and 69-71, because we are unable to review the rejection without having to make speculative assumptions about the meaning of the language of these claims, as discussed above for the new ground of rejection under 35 U.S.C. § 112, second paragraph. Consequently, we are constrained to reverse the rejection of claims 11, 33, 36, and 69-71 as unpatentable over Glazier and Vaillancourt. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language). 10 Appeal2013-003255 Application 11/918, 116 Claims 9, 10, 35, 37, 74, and 75 Appellants argue claims 9, 10, 35, 37, 74, and 75 together as a group in contesting the rejection of these claims. See Appeal Br. 19-33. We select claim 9 as representative of the group, and claims 10, 35, 37, 74, and 75 stand or fall with claim 9. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner found that Glazier teaches an assembly comprising protective mechanism 24 and syringe 10 including syringe body 12 and needle 22, with protective mechanism 24 including a connection region in the form of one end of hinge 32 attached directly to the exterior of syringe 10, the connection region being attached to syringe 10 directly on syringe body 12. Final Act. 4 (citing Glazier, col. 4, 11. 60-64; Fig. 1). The Examiner found that Glazier further discloses protective device 34 and bridging region 32 (i.e., hinge 32), with a weakening at the transition at the one end of hinge 32 "to allow defined folding over of the bridging region to allow folding the protective device away from the needle in an operational state and then to allow folding the protective device back to accommodate the needle in another operational state." Id. (citing Glazier, col. 5, 11. 1-35; Figs. 1, 3). The Examiner found that Glazier does not disclose "that the connection region is formed of a self-adhesive film to glue the film by the self-adhesive." Id. at 4--5. The Examiner found that Vaillancourt teaches protective mechanism 28 having connection region 25 formed from at least one self-adhesive film 26 that glues the film directly on the body of a fluid delivery structure for the purpose of tightly engaging the surface of the fluid delivery structure and maintaining low cost. Final Act. 5 (citing Vaillancourt, col. 5, 11. 18-20, 23- 26, col. 6, 11. 25-28, 45--46; Figs. 1, 2). The Examiner concluded that it 11 Appeal2013-003255 Application 11/918, 116 would have been obvious to modify Glazier to include the connection region formed from at least one self-adhesive film, as taught by Vaillancourt, for tightly engaging the surface of the fluid delivery structure and maintaining low cost. Id. Appellants contend that a person skilled in the art would not have combined the disclosure of Vaillancourt with Glazier. Appeal Br. 22. Appellants assert there "is no hinge in Vaillancourt that needs to be attached to a body carrying the needle," and "Vaillancourt does not show a folding over or folding back" for its connectors. Id. Appellants' arguments are unpersuasive. As the Examiner explains, the modification of Glazier includes "a self-adhesive film, such as that taught by Vaillancourt, as a connection means since Glazier is silent as to how exactly the connection region is attached to the syringe body." Ans. 6- 7. Vaillancourt was not applied for its specific teachings in relation to the hinge and folding over or folding back of its connectors. Appellants' arguments do not specifically address the Examiner's reasoning of using the self-adhesive film of Vaillancourt as part of the connection region of Glazier in attaching the end of the hinge to the exterior of the syringe. Id.; Final Act. 5. Appellants contend that it is unresolved how to attach the hinge of Glazier to the exterior of the syringe. Appeal Br. 24--25; Reply Br. 2. Glazier teaches that one end of hinge 32 can be connected to the exterior of syringe 10. Glazier, col. 4, 11. 60-64. The Examiner's proposed combination would attach Glazier's hinge 32 to the syringe 10 using the self-adhesive film of Vaillancourt, which would be attached directly to the body of syringe 10. Ans. 6-7. Appellants' contentions do not apprise us of 12 Appeal2013-003255 Application 11/918, 116 any error in the Examiner's combination, and, consequently, are not persuasive. Appellants further contend that Vaillancourt discloses "only the idea to completely cover a connection between a needle and two connectors so that they are in a fixed and static spatial connection," and as such, the operability of the Glazier assembly is destroyed. Appeal Br. 24--25. These contentions do not explain how the Examiner's application of Vaillancourt is incorrect. Consequently, Appellants' contentions do not apprise us of error in the Examiner's reasoning in using the self-adhesive film of Vaillancourt as part of the connection region of Glazier. Appellants contend that "[t]he only basis for combining these references is a hindsight reconstruction of the prior art by utilizing the [Appellants'] own disclosure." Appeal Br. 25-26. In response, the Examiner explains that "motivation for the combination was provided by Vaillancourt who states that using a self-adhesive film provides the benefits of tight engagement between the protection assembly and the fluid delivery structure ... and low cost." Ans. 9. Rejections based on obviousness must be supported by "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 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, the Examiner provided findings and articulated reasoning for combining the teachings of Glazier and Vaillancourt supporting a prima facie case of obviousness of claim 9. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants have not shown error in the Examiner's position. See id. 13 Appeal2013-003255 Application 11/918, 116 For the above reasons, we sustain the rejection of claim 9, and claims 10, 35, 37, 74, and 75 falling with claim 9, as unpatentable over Glazier and Vaillancourt. Claims 57 and 58 Claim 57 recites that "the functional part is an injection-molded part," and claim 58 recites that "the functional part is a part produced from an extruded profile." Appeal Br. 62, Claims App. The Examiner construed the limitations of both claims 57 and 58 as product-by-process limitations. Final Act. 8. For each claim, the Examiner concluded that "it appears that Glazier [and] Vaillancourt's product would be the same or similar as that claimed." Id. Appellants contend that the rejections of claims 57 and 58 are based on hindsight, as "Glazier does not disclose that the connection region is formed of a self-adhesive film to glue the film by the self-adhesive." Appeal Br. 29. However, the Examiner responds that claims 57 and 58 refer to "the functional part," not the "connection region." Ans. 10. As Appellants' contention does not address the Examiner's positions for claims 57 and 58 regarding the functional part, it is unpersuasive. We sustain the rejection of claims 57 and 58 as unpatentable over Glazier and Vaillancourt. Rejections 11-V We do not reach the merits of the rejections of: claims 12-14, 38, 39, and 72 over Glazier, Vaillancourt, and Eakins (Rejection II); claim 15 over Glazier, Vaillancourt, and Hagen (Rejection III); claims 16, 17, and 19-21 over Glazier, Vaillancourt, Eakins, and Kessler (Rejection IV); and claims 16 and 18 over Glazier, Vaillancourt, Eakins, and Frederiksen (Rejection V). In order to make this review, we would be required to speculate about the 14 Appeal2013-003255 Application 11/918, 116 meaning of the claim language, as discussed above in relation to the new ground of rejection under 35 U.S.C. § 112, second paragraph. Consequently, we reverse Rejections II-V. See Steele, 305 F.2d at 862. Rejection VI The Examiner rejected claims 23, 24, 28-32, and 53 as obvious over Glazier, Vaillancourt, and Kessler. Final Act. 15-16. Claims 23 and 24 Claim 23 recites that "the adhesive is not soluble in water," and claim 24 recites that "the adhesive is a permanently adhering adhesive." Appeal Br. 58, Claims App. The Examiner found that Glazier and Vaillancourt do not disclose these limitations. Final Act. 15. The Examiner found that Kessler discloses protective mechanism 5 attached to a needle by means of an adhesive that is not soluble in water and is permanently adhering, for the purpose of ensuring that the device cannot be removed then replaced. Id. (citing Kessler 3, 11. 26-30; Figs. 7, 8). The Examiner concluded that it would have been obvious to modify the combination of Glazier and Vaillancourt "to include an adhesive that is not soluble in water and is permanently adhering, as taught by Kessler[], for the purpose of ensuring that the device cannot be removed then replaced." Id. Appellants contend that the permanent adhesive of Kessler would "prevent the claimed bridging region from folding over away from one operational state and then to allow folding back to another operational state." Appeal Br. 39. This contention fails to address the Examiner's rejection. In the Examiner's proposed combination of Glazier, Vaillancourt, and Kessler, it does not appear the adhesive would prevent folding over of the bridging region because the adhesive is used only to attach the end of the hinge to the 15 Appeal2013-003255 Application 11/918, 116 syringe. As such, Appellants do not apprise us of Examiner error with respect to claims 23 and 24. Thus, we sustain the rejection of these claims over Glazier, Vaillancourt, and Kessler. Claims 28-32 and 53 For claims 28-32, and for claim 53, Appellants rely on the same argument presented for claims 23 and 24. Appeal Br. 39--40. In the Reply Brief, Appellants present a new argument for claim 31. Reply Br. 3. We will not consider this untimely argument because it was not raised in the Appeal Brief.4 Accordingly, we sustain the rejection of claims 28-32 and 53 over Glazier, Vaillancourt, and Kessler for the same reasons as above. Rejections VII and IX-XI We do not reach the merits of the rejections of claims 25-27 over Glazier, Vaillancourt, and Smith (Rejection VII); claims 40, 42, and 46 over Glazier, Vaillancourt, Eakins, and Emmott (Rejection IX); claims 41, 43, and 47 over Glazier, Vaillancourt, Eakins, Emmott, and Frederiksen (Rejection X); and claims 44 and 45 over Glazier, Vaillancourt, Eakins, Emmott, Frederiksen, and Weder (Rejection XI). As we would be required to speculate about the meaning of the claim language, for the reasons discussed above in relation to the new ground of rejection under 35 U.S.C. § 112, second paragraph, we reverse Rejections VII and IX-XI. See Steele, 305 F.2d at 862. 4 "Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown." See 37 C.F.R. § 41.41(b)(2). 16 Appeal2013-003255 Application 11/918, 116 Rejection VIII The Examiner concluded that claims 54--56 and 59 would have been obvious over Glazier, Vaillancourt, and Bums. Final Act. 17-18. The Examiner cites Bums' s strip 70 shown in Figure 4 in connection with the "transition" properties recited in claims 54--56. Id. Appellants contend that "the structure of Burns is not relevant to the structure of the claims on appeal." Appeal Br. 42. This contention relies on Bums's slot 46 and rib 68 shown in Figures 5 and 7. Id. Appellants' contention does not specifically address the Examiner's findings as to Bums's strip 70, or point out why the findings are in error. In addition, Appellants do not apprise us of any error in the Examiner's reasoning for combining the teachings of Bums with those of Glazier and Vaillancourt. Accordingly, we sustain the rejection of claims 54--56 over Glazier, Vaillancourt, and Bums. For claim 59, Appellants rely on the same argument as for claims 54-- 56. Appeal Br. 42. Accordingly, we sustain the rejection of claim 59 over Glazier, Vaillancourt, and Bums for the same reasons as above. Rejection XII The Examiner found that Glazier and Vaillancourt do not disclose "the functional part is a comb-like or feeler-like part," as recited in claim 60. Final Act. 22; Appeal Br. 62 (Claims App.). The Examiner found that Hollister teaches a protective mechanism comprising feeler-like functional part 22 for locking a needle. Final Act. 22 (citing Hollister, col. 3, 1. 7; Fig. 1 ). The Examiner concluded that it would have been obvious to "modify Glazier [and] Vaillancourt to include a feeler-like component, as taught by Hollister, for the purpose of locking the needle." Id. 17 Appeal2013-003255 Application 11/918, 116 Appellants contend there is no motivation to combine Hollister with Glazier and Vaillancourt. Appeal Br. 48. According to Appellants, Hollister discloses the needle contacting fluid absorbable material, and this material would easily contact the needle tip, plugging up the needle tip and rendering the needle inoperable. Id. These contentions do not address the Examiner's rejection. As the Examiner explains, the modification of Glazier and Vaillancourt in view of Hollister adds a "feeler-like component," and does not add the absorbable material. Ans. 4. Appellants' arguments do not specifically address the Examiner's reasoning of using Hollister's feeler-like component. Id.; Final Act. 22. Accordingly, we sustain the rejection of claim 60 over Glazier, Vaillancourt, and Hollister. For claim 61, the Examiner found that Glazier and Vaillancourt do not disclose "the protective mechanism has a moisture-absorbing material," as claimed. Final Act. 22; Appeal Br. 62, Claims App. The Examiner found that Hollister teaches a protective mechanism comprising a moisture- absorbing material 26 for the purpose of drying a needle. Final Act. 22 (citing Hollister, col. 3, 11. 14--15; Fig. 1). The Examiner concluded that it would have been obvious to "modify Glazier [and] Vaillancourt to include a moisture-absorbing material, as taught by Hollister, for the purpose of drying the needle." Id. at 22-23. Appellants contend that one skilled in the art would not have relied upon Hollister for any teaching because its fluid absorbable material would "plug up the needle tip." Appeal Br. 49. Appellants assert that "[t]his disadvantage does not occur with the present invention." Id. 18 Appeal2013-003255 Application 11/918, 116 The Examiner responds that Appellants' contention of the material plugging up the needle is opinion and not factual evidence. Ans. 20. The Examiner also states that "the claimed invention does not require that such an action is prevented from occurring." Id. Appellants do not explain adequately why plugging of the needle would occur. Nor do Appellants explain how their invention, as claimed, would prevent such plugging of the needle. Appeal Br. 49. As such, Appellants' contentions are conclusory remarks that are unsupported attorney argument and cannot take the place of evidence in the record and/or a reasoned analysis based on evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Accordingly, we sustain the rejection of claim 61 over Glazier, Vaillancourt, and Hollister. Rejection XIII Appellants argue claims 62---68 together as a group in contesting the rejection over Glazier, Vaillancourt, and Sprieck. Appeal Br. 49-53; see Final Act. 23-25. We select claim 62 as representative of the group, and claims 63---68 stand or fall with claim 62. Claim 62 recites an arrangement of protective mechanisms, each capable of being used with a syringe having a syringe body and each protective mechanism comprising "a connection region formed from at least one film" with "the at least one film being a self-adhesive film to glue the film directly on the syringe body by said self-adhesive." Appeal Br. 63, Claims App. Similar to claim 9, claim 62 further recites that the protective mechanism additionally includes a protective device and a bridging region, with "a weakening at the transition between the connection region and the 19 Appeal2013-003255 Application 11/918, 116 bridging region." Id. Unlike claim 9, claim 62 recites that the "protective mechanisms are directly or indirectly connected with one another." Id. Similarly to claim 9, the Examiner determined that the protective mechanism of claim 62 is taught by the combination of Glazier and Vaillancourt. Final Act. 23-24. Additionally, the Examiner found that "Glazier discloses that each protective mechanism is within a protective package," and "neither Glazier nor Vaillancourt disclose multiple protective mechanisms that are directly or indirectly connected with one another." Id. at 24. The Examiner found that Sprieck discloses an arrangement of protective mechanisms 10 indirectly connected with one another for packaging all the protective mechanisms together in a single-use form. Final Act. 24 (citing Sprieck, paras. 36-40; Figs. 6, 7). The Examiner concluded that it would have been obvious to modify Glazier and Vaillancourt "to include multiple protective mechanism[ s] along with the respective syringes connected with one another, as taught by Sprieck [] for the purpose of packaging all the protective mechanism[ s] together in a single-use form." Id. For claim 62, Appellants present the same contentions in regard to Glazier and Vaillancourt as for claim 9. Appeal Br. 51. These contentions are not persuasive for reasons similar to those discussed for claim 9. Appellants also contend that Sprieck cannot be combined with any of the structures of Glazier and Vaillancourt. Appeal Br. 52. According to Appellants, prongs of the bifurcated needle of Sprieck "would not fit within the structure of Glazier nor fit within the structure of Vaillancourt." Id. 20 Appeal2013-003255 Application 11/918, 116 Appellants' contentions appear to pertain to structures of Sprieck not applied in the rejection. Final Act. 24. As the Examiner explains, the modification of Glazier and Vaillancourt includes an arrangement of protective mechanisms, as taught by Sprieck, and not the addition of the bifurcated needle. Ans. 20-21. Appellants' arguments do not specifically address the Examiner's use of Sprieck' s arrangement of protective mechanisms in the combination. Appeal Br. 52. Accordingly, we are not apprised of error in the Examiner's findings or reasoning and sustain the rejection of claims 62---68 over Glazier, Vaillancourt, and Sprieck. DECISION For Rejection I, we affirm the rejection of claims 9, 10, 35, 37, 57, 58, 74, and 75, and reverse the rejection of claims 11, 33, 36, and 69-71. We reverse Rejections II-V, VII, and IX-XI. We affirm Rejections VI, VIII, XII, and XIII. We enter a new ground of rejection of claims 11-21, 25-27, 33, 36, 38--47, and 69-72 under 35 U.S.C. § 112, second paragraph. We enter a new ground of rejection of claims 69-72 under 35 U.S.C. § 112, fourth paragraph. We enter a new ground of rejection of claims 36 and 38--47 under 35 U.S.C. § 112, first paragraph. Regarding the affirmed rejections, 37 CPR§ 41.52(a)(l) provides "Appellant[s] may file a single request for rehearing within two months from the date of the original decision of the Board." 37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 21 Appeal2013-003255 Application 11/918, 116 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter considered by the examiner, in which event the proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. § 141or145 with respect to the affirmed rejections, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejections are overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejections, including any timely request for rehearing thereof. 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-IN-PART; 37 C.F.R. § 41.50(b) 22 Copy with citationCopy as parenthetical citation