Ex Parte Cohen

Patent Trial and Appeal Board

Apr 15, 2013

12043273 (P.T.A.B. Apr. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte NAHUM COHEN
__________

Appeal 2011-005201
Application 12/043,273
Technology Center 3700
__________

Before DEMETRA J. MILLS, DONALD E. ADAMS and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to a
device for administering injections. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses “a fluid transfer device employing a
removable cartridge having multiple needles, where the cartridge is
automatically advanced to the next unused needle after a needle has been
used, until all of the needles in the cartridge have been used once” (Spec. 1).
Appeal 2011-005201
Application 12/043,273

2
In this way, “a separate, sterile needle is employed for each injection,
reducing the risk of disease transfer from one subject to the next” (id. at 2).
Claims 1-4, 8-13, 15, and 17-19 are on appeal. Claim 1 is
representative:
1. A fluid transfer device comprising:
a cartridge comprising a plurality of needles;
an advancer operative to selectably advance any of said plurality of
needles in said cartridge to a needle deployment position;
a fluid reservoir shareable by a plurality of said needles; and
a syringe operative, for each of said needles in said cartridge that is
selectably advanced to said needle deployment position, to enter said
cartridge, wherein a distal end of said syringe enters a receptacle formed in a
proximal end of said needle to couple with said needle in said needle
deployment position, and convey fluid from said fluid reservoir and into said
needle via said cartridge.

Issue
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as obvious in view of D’Antonio.1 The Examiner finds that
D’Antonio discloses a single-fluid-reservoir embodiment that includes most
of the limitations of claim 1, but differs in that it “us[es] a single exit nozzle
967” rather than a plurality of needles (Answer 4-5).
The Examiner finds that, in a separate embodiment, D’Antonio
discloses that “it is known to have a plurality of needles … for the purpose
of maintaining sterility” (id. at 5). The Examiner concludes that it “would
have been obvious to one having ordinary skill in the art … to modify the
single exit nozzle (967) … in the single fluid reservoir embodiment with the
multiple one-use needles provided in a needle cartridge as taught by

1 D’Antonio et al., US 6,056,716, May 2, 2000.
Appeal 2011-005201
Application 12/043,273

3
D’Antonio et al for the purpose of improving health standards for the single
fluid reservoir embodiment” (id. at 5). The Examiner reasons that, with this
modification, “the reservoir 500 in the multiple needles would be removed
and instead the receptacle space occupied by reservoir 500 would be coupled
with the single orifice exit nozzle (967) … such that fluid would flow from
the single exit nozzle (967) into the receptacle … and into the needle (506)”
(id. at 5-6).
Appellant argues that “modifying the jet injector of Fig. 7C to be used
with the needle cartridges shown in Figs. 5A - 5D would require substantial
reconstruction and redesign of D’Antonio’s jet injector and needle
cartridges, as well as a change in the basic principles under which
D’Antonio’s jet injector and needle cartridges are designed to operate” (App.
Br. 5-6). Appellant argues that “the bellows 500 of the needle cartridges
shown in Figs. 5A-5D, which D’Antonio teaches are sealed … would need
to be modified and provided with an opening such that bellows 500 could be
filled from serum container 962” (id. at 6). Appellant argues that
“[a]dditionally, D’Antonio’s jet injector of Fig. 7C would need to be
modified such that every dose is not administered through the same orifice
969, whereas D’Antonio’s stated principle of operation for Fig. 7C is to
administer every dose through the same orifice 969” (id.).
We agree with Appellant that the Examiner has not adequately shown
that it would have been obvious to modify D’Antonio’s single-fluid-
reservoir embodiment to include a cartridge comprising a plurality of
needles and a shared fluid reservoir. D’Antonio discloses an “apparatus for
Appeal 2011-005201
Application 12/043,273

4
the hypodermic injection of fluids” (D’Antonio, col. 1, ll. 17-18). Figure 7A
of D’Antonio is shown below:

Figure 7A shows a jet injector “with a fresh magazine with N unused
injections positioned in the dispenser” (id. at col. 8, ll. 15-17). D’Antonio
discloses that “[d]ispenser 700 includes at its forward end a receptacle or
opening 919 for receiving a cartridge 800 holding a serum for injection” (id.
at col. 22, ll. 35-38).
Figure 5A of D’Antonio is shown below:

Appeal 2011-005201
Application 12/043,273

5
Figure 5A shows a cross-sectional view “of a needle hypodermic injector”
(id. at col. 20, l. 54) that can be used with the injector of Figure 7A (id. at
col. 24, ll. 34-41). D’Antonio discloses that the “bellows 500 may contain a
liquid serum” (id. at col. 20, l. 64); pressure on pressure piston 501 “will
force the serum in 500 to be expelled through the exit port of needle 506”
(id. at col. 21, ll. 24-26).
Figure 7C of D’Antonio is shown below:

Figure 7C shows an alternative to Figure 7A that allows “an even larger
multi-shot system” in which “the multiple-shot cartridge system is replaced
by serum container 962” (id. at col. 24, ll. 54-57). D’Antonio discloses that,
in this embodiment, “the correct dose of serum 960 is pulled out of container
962 through connecting tube 965 [sic, 964?] and into the injection head.…
[E]very dose is administered through the same orifice 969.” (Id. at col. 24,
ll. 60-65.)
The Examiner argues (Answer 8-9) that D’Antonio’s single-fluid-
reservoir embodiment could be modified to be used with the needle
cartridges of Figure 5A without substantial reconstruction. The Examiner’s
Appeal 2011-005201
Application 12/043,273

6
reasoning, however, relies on modifying the single-fluid-reservoir
embodiment to include an “injection head (similar to 703, shown in Fig 7)
[that] would pull back drawing serum 960 from the reservoir 962 through
the connecting tube 965 and fill [the cartridge] with the appropriately sized
dose” (id. at 8), after which “the injection head would push forward pushing
serum through the single exit nozzle 967 and into the receptacle formed by
502 … [and] out of the receptacle and into the needle 506 for delivery” (id.
at 8-9). The “needle cartridge can then be discarded and a new needle
cartridge can be put into place” (id. at 9).
After considering the respective positions of the Examiner and
Appellant, we agree with Appellant that modifying D’Antonio’s single-
fluid-reservoir embodiment to include the limitations of claim 1 would have
required substantial reconstruction in order to modify it to include the single-
use needle cartridges of that separate embodiment, and the Examiner has not
provided an adequate basis for concluding that the required modifications
would have been obvious based on the teachings of D’Antonio. The
Examiner has not pointed to any teachings in D’Antonio that would have
suggested combining the shared fluid reservoir of D’Antonio’s single-fluid-
reservoir embodiment with the single-use needles of its magazine
embodiment. D’Antonio in fact expressly states that “the multiple-shot
cartridge system is replaced by serum container 962” (D’Antonio, col. 24,
ll. 56-57, emphasis added) in its single-fluid-reservoir embodiment, which is
typically applied for “veterinary and agricultural uses” (id. at col. 24, ll. 55-
56), where the necessity of using a fresh needle for each injection is
apparently not an important consideration.
Appeal 2011-005201
Application 12/043,273

7
The Examiner has also not provided any persuasive technical
reasoning showing that the proposed modification would have otherwise
been obvious to a person of ordinary skill in the art who was unaware of the
disclosure of the present application. We therefore conclude that the
Examiner has not persuasively shown that the modifications proposed by the
Examiner would have been obvious to a person of ordinary skill in the art
based on D’Antonio and the knowledge in the art, without the benefit of
hindsight. Cf. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“Once appellant
had taught how this could be done, the redesign may, by hindsight, seem to
be obvious to one having ordinary skills in the [relevant] art. However,
when viewed as of the time appellant’s invention was made, and without the
benefit of appellant’s disclosure, we find nothing in the record which
suggests appellant’s [invention].”). Thus, we reverse the rejection of
independent claim 1 and dependent claims 2-4, 8, 9 and 18 as being obvious
in view of D’Antonio.
Independent claim 10 is directed to a method for fluid transfer that
comprises, among other steps, conveying fluid from a fluid reservoir serially
through multiple needles. Since the Examiner's rejection of claim 10 also
relies on D’Antonio as discussed above, we also reverse the rejection of
independent claim 10 and dependent claims 11-13, 15, 17, and 19.
SUMMARY
We reverse the rejection of claims 1-4, 8-13, 15 and 17-19 under 35
U.S.C. § 103(a).
REVERSED
lp