Ex Parte Baxter et al

Patent Trial and Appeal Board

Feb 22, 2013

12403588 (P.T.A.B. Feb. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHARLES S. BAXTER, DALE MARVIN GALLOGLY,
THEODORE J. MOSLER, and CHARLES R. PATZER
__________

Appeal 2011-008412
Application 12/403,588
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-11. We have jurisdiction under 35 U.S.C.
§ 6(b).
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Appeal 2011-008412
Application 12/403,588

3
compatible with an oval such that with proximal portion 12 aligned and
extending therein as seen in Fig. 5B, an effective seal is achieved with blunt
cannula 10 thereat” (id.).
Claim 1 is the only independent claim on appeal, and reads as follows:
1. An assembly comprising:
a blunt cannula sized to be received in a slit septum, the blunt cannula
having a proximal portion extending distally from a proximal end and a
distal portion extending distally from the proximal portion, the proximal
portion having a non-circular cross section that defines a major diameter and
the distal portion having a generally circular cross-section and terminating in
a tip end; and
a medical site including a housing having a flow path, and a septum
bounding a portion of the flow path, the septum having a slit therein, the
blunt cannula insertable through the slit in the septum and oriented so that
the major diameter of the proximal portion is substantially aligned to the slit
when the proximal portion is disposed in the septum.

The following grounds of rejection are before us for review:
I. Claims 1-7, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Jepson1 and Lee2
(Ans. 3).
II. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Jepson and Lee as further
combined with Frank3 and Lina4 (Ans. 6).

We reverse.

1 Jepson et al., US Pat. No. 5,899,888, issued May 4, 1999.
2 Lee et al., US Pat. No. 4,513,754, issued April 30, 1985.
3 Frank et al., US Pat. No. Re. 35,841, July 7, 1998.
4 Lina et al., Pub. No. US 20004/0006319 A1, published January 8, 2004.
Appeal 2011-008412
Application 12/403,588

4

ANALYSIS
The Examiner finds that Jepson teaches a blunt cannula that is sized to
be received in a slit septum (Ans. 4). The Examiner notes that “Jepson fails
to teach wherein the proximal portion of the cannula has an oval cross
section that tapers along the major diameter while the distal portion has a
circular cross-section and wherein the major diameter of the proximal
portion of the cannula is aligned with the slit of the housing when the
proximal portion is disposed in the septum” (id.).
The Examiner finds that “Lee teaches a cannula (Figure 10) that has a
proximal portion 202 that has an oval cross-section (col. 7, lines 11-12, 17-
18) that tapers into a distal portion with a circular cross-section (col. 7, lines
11-14)” (id. at 4-5). The Examiner finds that, as taught by Lee, such a shape
allows the cannula to be held securely and reliably in the holding means, “as
the oval cross-section is prevented from passing through the same opening
that the circular distal section would pass through (col. 2, lines 40-64)” (id.
at 5).
The Examiner thus concludes that one would have “modified the
cannula of Jepson to have the proximal portion have an oval cross-section
that tapers into a distal section with a circular cross-section as taught by Lee
in order to provide a cannula that will securely and reliably hold within the
desired holding means, as the oval cross-section is prevented from passing
through the same opening that the circular distal section would pass
through” (id.).
Appeal 2011-008412
Application 12/403,588

5
Appellants argue that the Examiner has not demonstrated a reason as
to why the ordinary artisan would have combined Lee and Jepson (App. Br.
9). Specifically, Appellants assert that Lee is “directed to a bone marrow
biopsy unit” (id. at 12), and the elliptical proximal portion “is provided for
the express purpose of rigidly holding the cannula within a collet chuck
attached to a handle” (id. at 13). Appellants assert that the ordinary artisan,
however, would not look “to a device that uses the shape as an anchor to
provide a rigid hold in order to modify a blunt cannula that is not to rigidly
hold to, but is instead to slide in and out of, the septum” (id. at 14).
Appellants argue further that the Examiner’s rejection is premised on the
oval cross-section of the proximal portion butting up against the septum,
whereas independent claim 1 requires that the proximal portion “extend into
the slit in order to be ‘disposed in the septum’” (id. at 15).
As the Supreme Court pointed out in KSR Int' l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007), “a patent composed of several elements is
not proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” Rather, the Court stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does . . . because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. at 418-419 (emphasis added); see also id. at 418 (requiring a
determination of “whether there was an apparent reason to combine the
Appeal 2011-008412
Application 12/403,588

6
known elements in the fashion claimed by the patent at issue”) (emphasis
added).
Here, for the reasons set forth by Appellants above, we agree that the
Examiner has not established a prima facie case that the ordinary artisan
would have combined Lee with Jepson to arrive at the assembly of claim 1.
We thus reverse Rejection I.
As to Rejection II, as the Examiner does not rely upon either Frank or
Lina to remedy the deficiencies discussed above (see Ans. 6-7), that
rejection is reversed as well.

REVERSED

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