Ex Parte Crawford et al

Patent Trial and Appeal Board

Apr 9, 2018

12044469 (P.T.A.B. Apr. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/044,469 03/07/2008 Jamieson Crawford
32182 7590 04/11/2018
Becton, Dickinson and Company!fhe Webb Law Firm
One Gateway Center
420 Ft. Duquesne Blvd., Suite 1200
Pittsburgh, PA 15222
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.
3896-080473 (P-7537/1) 7367
EXAMINER
STOUT, MICHAEL C
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
04/11/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMIESON CRAWFORD, ROBERT ELLIS,
BRADLEY M. WILKINSON, BENJAMIN BARTFELD,
MARK C. NEWBY, CHEE LEONG TAN, JON MOH, STANLEY SIM,
and NEVILLE YU LENG CHIA1
Appeal2017-002169
Application 12/044,469
Technology Center 3700
Before ERIC B. GRIMES, RYAN H. FLAX, and DAVID COTTA,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a blood
collection assembly, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellants identify the Real Party in Interest as Becton, Dickinson and
Company. (Appeal Br. 3.)
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Application 12/044,469
STATEMENT OF THE CASE
The Specification states that a "need continues to exist for safety
needle assemblies incorporating both a visual flash indicator and a safety
shield that ... minimizes the risk of exposure to medical personnel." Spec.
i-f 10. "[T]he term 'flash chamber' includes a cavity into which a specimen,
such as blood, from a patient may pass, and through which the presence of
the specimen within the cavity may be visibly detected by a medical
practitioner." Id. i-f 173.
The Specification discloses several needle assemblies that include a
flash chamber and a safety shield. See id. i-fi-1 11-33 (summarizing various
embodiments). Appellants identify the embodiments described at
paragraphs 281-291 as including the elements of the needle assembly
defined by claim 73 on appeal. Appeal Br. 7 (Summary of Claimed Subject
Matter).
Claims 73, 85, 87-92, and 94--97 are on appeal. Claim 73 is
illustrative and reads as follows:
73. A blood collection assembly, comprising:
a housing, comprising a flash chamber, the housing having
a distal end and a proximal end engageable with a specimen
collection container;
a cannula having a patient end, a non-patient end, and a
sidewall extending therebetween defining a cannula interior, the
patient end of the cannula projecting at least partially from the
distal end of the housing, the cannula interior in fluid
communication with the flash chamber; and
a shield including an engagement member and at least one
depending arm having a locking structure associated therewith,
wherein said locking structure comprises at least one inwardly
angled restraint, said locking structure disposed at a location
distal from the engagement member, said engagement member
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comprising a fully-surrounded member engaged with a portion
of the housing, the shield being transitionable from a first
position to a second position with respect to the housing, wherein
the flash chamber includes a top surface which is free from
obstructions on the flash chamber and is visible when the shield
is in the first position, and wherein in the second position, the
shield is disposed over the patient end of the cannula and the
locking structure engages at least one ledge located solely at a
distal end of the flash chamber at a location that is distal to the
engagement member engaged with a portion of the housing to
lock the shield in the second position.
The claims stand rejected as follows:
Claims 73, 85, 87-89, 94, and 95 under 35 U.S.C. § 103(a) as obvious
based on Leong,2 Marano-Ford, 3 and Bosel4 (Ans. 2); and
Claims 73, 85, 87-92, and 94--97 under 35 U.S.C. § 103(a) as obvious
based on Leong, Marano-Ford, Bosel, and Swenson5 (Ans. 8).
I
The Examiner has rejected claims 73, 85, 87-89, 94, and 95 as
obvious based on Leong, Marano-Ford, and Bosel. The Examiner finds that
Leong discloses a blood collection assembly meeting most of the limitations
of claim 73 except that it has a different locking structure and its
engagement member (i.e., hinge) does not include a fully surrounded
member engaged with a portion of the housing. Ans. 2--4.
2 Leong et al. (US 2003/0229315 A 1; Dec. 11, 2003 ).
3 Marano-Ford (US 2003/0036732 Al; Feb. 20, 2003).
4 Bosel et al. (US 2006/0224122 Al; Oct. 5, 2006).
5 Swenson et al. (US 2005/0187493 Al; Aug. 25, 2005).
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The Examiner finds that Marano-Ford discloses a needle shield in
which a locking structure engages the distal portion of the hub. Id. at 5. The
Examiner finds that Bosel discloses a needle assembly that includes a shield
having a locking structure in which inwardly angled restraints engage fins on
the needle hub distal to the engagement member (hinge), and also teaches
hinges that include a fully surrounded member engaged with a portion of the
housing. Id. at 5---6.
The Examiner concludes that it would have been obvious "to modify
the device taught by Leong to include a detent as taught by Marano-Ford in
order to secure the needle cover in a locked position ... by substituting one
suitable locking means for another." Id. at 5. The Examiner also concludes
that it would have been obvious
to modify the device taught by Leong in view of Marano-Ford
to include a cover hinge and latch locking structure as taught by
Bosel in order to prevent the cover from being pivoted away
from the needle ... and provide a suitable means providing a
pivotable cover which indicates when the sheath has not been
sufficiently pivoted towards the cannula to reach the locked
position ... and prevent possible fluid dispersal.
Id. at 6.
We agree with the Examiner that the device of claim 73 would have
been obvious to a person of ordinary skill in the art based on the teachings of
Leong, Marano-Ford, and Bosel. Leong discloses "a shieldable fluid
collection needle assembly." Leong i-f 7.
The needle assembly includes a housing with a proximal end
wall, a distal end wall and an external sidewall extending
between the proximal and distal end walls such that a chamber
is defined. . . . [A ]t least a portion of the external sidewall is
formed from a transparent or translucent material so that the
interior of the chamber within the housing is visible.
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Id. Leong's needle assembly also includes a distal cannula and a proximal
cannula (id. i-fi-1 8-9); the "distal and proximal cannula may be integral with
one another and may include a transverse slot or aperture to provide
communication between the lumens of the distal and proximal cannulas with
the chamber in the housing." Id. i19.
Leong's needle assembly "further includes a shield that may be
hinged to a location on the housing proximally of the location where the first
indication of flashback occurs." Id. i-f 11. As noted above, an "engagement
member," as recited in claim 73, includes a hinge. See Appeal Br. 7
(identifying elements 5018 and 5020 as an engagement member), Spec.
i1291 ("The hub 58c2 may further include a collar 5018 for surrounding at
least a portion of the safety shield 64c2, such as a pivot 5020 of the safety
shield 64c2.").
"[T]he shield can be rotated from the open position to a closed
position." Leong i-f 11. "[T]he shield does not impede usage of the distal
cannula or visual observation of the chamber when the shield is in its open
position." Id. In the closed position, "the shield surrounds the distal
cannula." Id. Leong states that "[t]he shield and/or the housing may include
at least one locking element for locking the shield in the closed position."
Id.
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Leong's Figure 1 is reproduced below:
.//
/
,/
/
Figure 1 shows "an exploded perspective view of a needle assembly."
Id. i-f 12. Needle assembly 10 includes a housing 12 with proximal end 14,
distal end 16, and sidewall 18. Id. i-f 17. "Outer sidewall 18 is formed from
a transparent or translucent plastic material and defines a chamber 20." Id.
"Inner sidewall 24 also is formed from a transparent or translucent plastic
material. . . . Thus, inner sidewall 24 in this embodiment defines a flashback
chamber 26." Id.
The needle assembly also includes "an IV cannula 30 with a proximal
end 32, a distal end 34 and a lumen 36 extending between the ends." Id. i-f 18.
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"[L ]mnen 36 through IV cannula 30 communicates with flashback chamber
26." Id.
"Needle assembly 10 further includes a shield 60." Id. i-f 23. The
shield includes a hinge pin that is snapped into engagement with a hook on
the housing so that the shield can rotate from the open position shown in
Figure 1 to a closed position. Id. In the open position, shield 60 does not
interfere with observation of flashback chamber 26. Id. i-f 23.
"Collar catches 74 and 76 are configured to snap into engagement
with chevron-shaped latch 58 on collar 50." Id. i-f 23. The collar catches
thus "provide an audible and tactile indication of shielding." Id. i-f 27. As
can be seen in Leong's Figure 1, above, collar catches 74 and 76 are distal to
the engagement member (hinge).
Marano-Ford discloses "a safety shield for a needle assembly of the
type having a needle and a luer hub." Marano-Ford i-f 3. "The luer hub 16
further includes an anterior body 18." Id. i-f 21. The safety shield includes a
shield body that includes a cover, which "includes a retainer 30 ... [that]
includes opposed flexible fingers 32 which are engaged with the anterior
body [of the hub] when the cover 26 is closed over the needle 14." Id.
i-fi-122-24. "Further, the retainer may be an ... adhesive, a latch or other
retaining mechanism." Id. i-f 24.
Bosel discloses "a safety needle assembly in which a safety device is
operable to cover a cannula." Bosel i-f 1. "A hub 20 is provided at the distal
end of the syringe barrel 12 and a cannula 18 is fixed in place at the hub 20."
Id. i-f 46. "[T]he hub 20 is provided with a plurality of fins 22 forming fixed
projections." Id. i-f 48. Bosel's safety device includes a sheath 50. Id. i-f 56.
"[T]he sheath 50 is adapted to be pivoted towards the cannula 18 so that the
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cannula passes ... into the interior of the sheath, whereby the cannula 18 is
covered by the sheath 50." Id. i-f 61.
"[T]he sheath 50 also comprises a pair of fin engaging members 60."
Id. i-f 62. "The distal end portion of each fin engaging member 60, 60 is
preferably provided with a fin engaging part" such as "an inwardly directed
shoulder 62, 62." Id. i-f 63. "[T]he shoulder 62, 62 on each of the fin
engaging members 60, 60 is adapted to engage one of the fins on the hub 20
of the cannula holding member 16 when the sheath 50 is pivoted from the
open (cannula uncovering) position ... to the closed (cannula covering)
position." Id.
Bosel also discloses different types of hinges that are suitable for
pivotably attaching the sheath to the rest of the device. Id. i-fi-182-85, Figs.
21-23. The hinges shown in Bosel's Figures 21-23 include pins (93, 193,
293) that are fully surrounded by mounting ears (91, 191, 291).
The combined disclosures of Leong, Marano-Ford, and Bosel would
have made obvious the device of claim 73. Leong discloses a needle
assembly that includes most of the limitations of claim 73, including a flash
chamber having a top surface that is free from obstruction and is visible
when the shield is in the open position. Leong' s device does not include a
"locking structure [that] engages at least one ledge located solely at a distal
end of the flash chamber at a location that is distal to the engagement
member" or an "engagement member comprising a fully-surrounded
member engaged with a portion of the housing," as recited in claim 73.
Marano-Ford, however, teaches a safety shield for a needle assembly,
in which the safety shield has a retainer with flexible fingers that engage the
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hub of the needle when the cover is closed over the needle. Marano-Ford
also suggests that other retaining mechanisms could be used.
Similarly, Bosel teaches a safety device for a needle assembly in
which the hub has fins, and a sheath (or shield) has fin engaging parts, each
of which has an inwardly directed shoulder that engages a fin on the hub
when the sheath is pivoted to the closed position. Bosel also discloses
different types of hinges that are suitable for pivoting a safety shield from
open to closed, including hinges that include a pin that is fully surrounded
by a mounting ear.
It would have been obvious to a person of ordinary skill in the art to
modify the needle assembly disclosed by Leong to include an engagement
member (hinge) comprising a fully-surrounded member (pin) engaged with a
portion of the housing because Bosel discloses that such hinges are suitable
for pivoting a safety shield on a needle assembly from the open position to
the closed position. "[W]hen a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
It would also have been obvious to a person of ordinary skill in the art
to modify the needle assembly disclosed by Leong to include a locking
structure like that of Bosel, in which the inwardly directed shoulders of fin-
engaging parts in the shield engage fins (or ledges) on the needle hub to lock
the shield in the closed position. Both Marano-Ford and Bosel teach that
needle shields with locking structures that engage part of the needle hub are
known to be suitable for holding a needle safety shield in the closed
position. The substitution of Bosel's locking structure for that of Leong
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requires "the mere substitution of one element for another known in the field
... [to] yield a predictable result." Id.
A fin (ledge) on the needle hub ofLeong's device would be located at
the distal end of the flash chamber and distal to the engagement member
(hinge), as recited in claim 73. Thus, the disclosures of Leong, Marano-
Ford, and Bosel would have made obvious as device meeting all of the
limitations of claim 73.
Appellants argue that "[ t ]he Examiner's proposed modification of
Leong with either Marano-Ford or Bosel would destroy the intended
functioning of the Leong device, as the proposed modification would result
in obstructing a user's view of the flash chamber." Appeal Br. 12.
Appellants argue that "Leong specifically teaches a structure which would
leave the flash chamber of the hub unobstructed and visible to the user,"
while the shield arrangements taught by Marano-Ford or Bosel obstruct the
part of the needle assembly where a flash chamber would be. Id. at 13.
This argument is unpersuasive because, as the Examiner pointed out
(Ans. 17-19), Leong discloses that the sidewalls of its device are made from
a transparent or translucent material to allow a user to view the flash
chamber. Thus, it would have been obvious to a skilled artisan, in
modifying Leong' s device, to use a transparent or translucent material to
make any part of the device that might otherwise obstruct the user's view of
the flash chamber.
Appellants responded to the Examiner's reasoning by arguing that,
"even if one 'could conclude' from the combination of references that the
locking structures (or 'hub retention features') of Marano-Ford or Bosel are
formed from a transparent material, once these features are positioned on the
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hub/flash chamber of Leong, the view of the flash within the chamber would
be distorted." Reply Br. 4.
Claim 73, however, does not require that the view of the flash
chamber be undistorted. It requires only that flash chamber have a top
surface that is free from obstructions and that the flash chamber be "visible
when the shield is in the first position." Moreover, Appellants' argument is
inconsistent with their own Specification. See Spec. i-f 184 ("[T]he flash
chamber is at least partially visible to a medical practitioner when the safety
shield 36 is in the retracted position. . . . In another embodiment, at least a
portion of the shield 36 through which the flash chamber 98 is visible [is]
made of a translucent or transparent material."). According to the
Specification, therefore, a flash chamber need only be "partially visible" to
be useful, and can be adequately viewed through a transparent or translucent
safety shield.
Moreover, Leong shows the safety shield on its device attached on the
side, not on the top where it would obstruct a user's view of the flash
chamber. See Leong's Figure 1, reproduced above. Thus, in modifying
Leong' s device according to the teachings of Marano-Ford and Bosel, it
would have been obvious to a skilled artisan to keep the shield attached to
the side in order to allow a clear view of the flash chamber, particularly
since Leong touts the ability to view the flash chamber, while providing a
shield, as an advantage of its device. See Leong i-f 11 ("[T]he shield does not
impede ... visual observation of the chamber when the shield is in the open
position."), i-f 28 ("The needle assembly provides effective shielding without
impeding use of needle assembly 10 and without obscuring observation of
flashback chamber 26.").
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Appellants also argue that
one having ordinary skill in the art would not be motivated to
modify the teachings of Leong with Marano-Ford and/or Bosel
so that the locking ledges or fins are located "only" or "solely"
at the distal portion of the hub, as required by the claims, since
all of the embodiments taught by Marano-Ford and Bosel
specifically teach designs wherein the recess or fins extend the
entire length and cover most of the exposed portion of the hub.
Accordingly, modification of the Leong arrangement with
either Marano-Ford or Bosel would result in the presence of
locking ledges or fins, which would still conceal, obstruct,
and/or distort one's view of the flash chamber.
Appeal Br. 14.
This argument is unpersuasive. The hub portion of Bosel' s device is
immediately proximal to the needle (or "distal cannula" in claim 73). See
Bosel, Fig. 6, i-f 46 ("A hub 20 is provided at the distal end of the syringe
barrel 12 and a cannula 18 is fixed in place at the hub 20."). The hub in
Bosel's device therefore corresponds to element 16, the distal end of the
housing, in Leong's device. See Leong, Fig. 1 (reproduced above). Thus,
modifying Leong' s device to include the locking structure of Bosel' s device
would only require fins at the distal end of Leong's housing, which would be
distal to the flash chamber and therefore would not obstruct a user's view of
it. In addition, Leong teaches using transparent or translucent material for
parts of its housing in order to allow a user to view the flash chamber, so it
would have been obvious to a skilled artisan to use a transparent or
translucent material for any part of the housing that would otherwise
obstruct a view of the flash chamber.
Finally, with respect to claim 73, Appellants argue that "[i]n the
embodiments shown in Figs. 21-23 of Bosel, the fully surrounded member is
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engaged with a portion of the sheath (50) and not with a portion of the
housing as set forth in the claims." Appeal Br. 15.
This argument is unpersuasive, because the rejection is based on
modifying Leong' s device to include one of the functionally equivalent
hinges disclosed by Bosel, not on physically combining the two devices.
See Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir.
1983) ("There is a distinction between trying to physically combine the two
separate apparatus disclosed in two prior art references on the one hand, and
on the other hand trying to learn enough from the disclosures of the two
references to render obvious the claims in suit.").
In this case, modifying Leong' s device to include one of the hinges
shown in Figures 21-23 of Bosel would result in a device in which the hinge
pin (elements 93, 193, 293 in Bosel's figures) would be fully surrounded by
a portion of the housing (elements 91, 191, 291 in Bosel's figures) because,
in Leong's device, the hinge consists of a hinge pin that engages a hook that
is part of the housing. See Leong, Fig. 1 (reproduced above); i-f 23 ("[H]inge
pin 66 ... is snapped into engagement with hook 56 so that shield 60 can
rotate.").
Appellants also present separate arguments with respect to some
dependent claims. Appeal Br. 16-17. However, with respect to claims 85
and 87, Appellants merely state that "the combination of Leong fails to
render these claims obvious." Id. at 16. This conclusory statement does not
constitute separate argument of the claims. See In re Huai-Hung Kao, 639
F.3d 1057, 1065 (Fed. Cir. 2011) (Statements in a briefthat "merely mention
[a] claim ... and lack any type of separate, substantive argument concerning
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the claim" do not constitute separate argument regarding that claim under
37 C.F.R. § 41.37(c)(l)(iv).).
With respect to dependent claims 88 and 89, Appellants argue that
"[ c ]laim 88 includes the feature that the at least one ledge is located at a
bottom side of the flash chamber so as to leave the top side of the flash
chamber free from any ledges," and the "combination of references fails
to teach the features set forth" in the claim. Appeal Br. 16. Claim 89
depends from claim 88. Similarly, Appellants argue that "claim 94 recites
that the locking structure engages the flash chamber at a bottom side of the
blood collection assembly" and "[ n ]one of the cited references teach or
suggest this claimed arrangement of the locking structure engagement with
the flash chamber." Id. at 17.
We agree with Appellants that the Examiner has not shown that the
cited references teach or would have made obvious the limitations of claims
88 or 94, both of which require that the locking structure of the shield
engages the flash chamber. Rather, the references make obvious a locking
structure that engages fins or ledges that are on the hub of the needle
assembly, as disclosed by Bosel. The hub is a separate element from the
flash chamber of the device defined by claim 73. This is made clear by
dependent claim 95, which further limits claim 73 by requiring that "the
locking structure engages a hub at a location distal to the flash chamber."
Since the hub can be located at a location different from (and, in claim 95,
distal to) the flash chamber, it must be a different element from the flash
chamber itself.
The Examiner points to different arrangements of the fins on Bosel' s
device (Ans. 26) but in each case, the fins are located on the hub of the
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device, not on a flash chamber (which Bosel's device lacks). The Examiner
does not present any reasoning to support modifying Leong' s device to
include fins on the flash chamber itself, rather than on the needle hub. We
therefore reverse the rejection of claims 88, 89, and 94 based on Leong,
Marano-Ford, and Bosel.
Appellants argue that "claim 95 recites that the locking structure
engages a hub at a location distal to the flash chamber. None of the cited
references teach or suggest this claimed arrangement of the locking structure
engagement with ... the hub." Appeal Br. 17.
This argument is not persuasive because, for the reasons discussed
above with respect to claim 73, the cited references would have made it
obvious to a skilled artisan to modify Leong's device to include Bosel's
locking structure, in which fin-engaging parts of the shield engage fins on
the needle hub to lock the shield in the closed position. A skilled artisan
would have recognized that this modification requires "the mere substitution
of one element for another known in the field ... [to] yield a predictable
result." KSR, 550 U.S. at 416.
In summary, for the reasons above, we affirm the rejection of claims
73, 85, 87, and 95 under 35 U.S.C. § 103(a) based on Leong, Marano-Ford,
and Bosel, but reverse the rejection as applied to claims 88, 89, and 94.
II
The Examiner has rejected all of the claims on appeal as obvious
based on Leong, Marano-Ford, Bosel, and Swenson. For the reasons
discussed above, we conclude that claims 73, 85, 87, and 95 would have
been obvious based on Leong, Marano-Ford, and Bosel. We therefore
affirm the rejection of claims 73, 85, 87, and 95 under 35 U.S.C. § 103(a)
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based on Leong, Marano-Ford, Bosel, and Swenson, for the same reasons.
The Examiner points to nothing in Swenson that makes up for the
deficiencies in Leong, Marano-Ford, and Bosel discussed above with
respect to claims 88, 89, and 94. See Ans. 13-15. We therefore reverse the
rejection of claims 88, 89, and 94 under 35 U.S.C. § 103(a) based on Leong,
Marano-Ford, Bosel, and Swenson.
The remaining issue with respect to this rejection is whether claims
90-92, 96, and 97 would have been obvious based on Leong, Marano-Ford,
Bosel, and Swenson. The Examiner finds that Swenson discloses the
limitations of dependent claims 90-92, 96, and 97, and concludes that it
would have been obvious "to modify the device taught by Leong to include a
fully surrounded engagement member as taught by Swenson in order to
maintain the hangar bar within hook portion." Ans. 12, 14, 15-16.
Appellants argue that "claim 92 ... includes the feature that the
protrusion configured to engage the first portion includes a tab member
extending therefrom configured to engage the fully-surrounded member to
hold the fully-surrounded member in the first portion of the housing."
Appeal Br. 18. Appellants argue that "Swenson fails to disclose or suggest
that the protrusion of the second portion of the housing includes" the recited
tab member. Id. at 19.
We agree with Appellants that the Examiner has not shown that the
cited references would have made obvious the device of claim 92. Claim 92
depends from claim 91, which requires that a (second) portion of the housing
includes a protrusion that engages a (first), c-shaped, portion of the housing.
Claim 92 adds the limitation that the protrusion includes a tab member that
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holds a hinge-pin in place in the first portion. Appeal Br. 22 (Claims
App'x).
The Examiner points to element 18 of Swenson's device as meeting
the limitation of a protrusion. Ans. 14 ("(the hook portion 3 8 being c-
shaped, see Figures 6-9)(the annular skirt 18 engages the hook portion)").
The Examiner also points to element 18 as meeting the requirement of claim
92 for a tab portion on the protrusion. Id. ("(the annular skirt 18 ...
comprises a projecting member, which engages 51 holding it in place, see
Figures 5, 6 and 1 O)").
However, the Examiner has not identified any part or feature of
annular skirt 18 of Swenson's device, other than the part that engages c-
shaped element 3 8, as a "tab member" that carries out the function recited in
claim 92. Even if annular skirt 18 is capable of carrying out both of the
recited functions---engaging a c-shaped portion of the housing and holding a
hinge-pin in place-that does not meet the limitations of claim 92, which
limits the claimed device to one in which the protrusion includes an
additional structure ("tab member") that holds a hinge-pin in place.
"[C]laims are interpreted with an eye toward giving effect to all terms in the
claim." Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
The Examiner has not identified the structure in Swenson that meets the
additional limitation of claim 92, and therefore has not made out a prima
facie case of obviousness with respect to that claim.
With respect to claims 90, 91, 96, and 97, Appellants present only
conclusory statements that the cited references would not have made
obvious the devices defined by these claims. Appeal Br. 17-18, 19.
However, Appellants present no reasoned basis to support their position that
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the limitations of claims 90, 91, 96, and 97 would not have been obvious
based on the cited combination of references. Appellants therefore have not
separately argued these claims under 37 C.F.R. § 41.37(c)(l)(iv). See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board [has] reasonably
interpreted Rule 41.3 7 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art."). Claims 90,
91, 96, and 97 therefore fall with claim 73. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 73, 85, 87, and 95 under 35 U.S.C.
§ 103(a) based on Leong, Marano-Ford, and Bosel.
We reverse the rejection of claims 88, 89, and 94 under 35 U.S.C.
§ 103(a) based on Leong, Marano-Ford, and Bosel.
We affirm the rejection of claims 73, 85, 87, 90, 91, and 95-97 under
35 U.S.C. § 103(a) based on Leong, Marano-Ford, Bosel, and Swenson.
We reverse the rejection of claims 88, 89, 92, and 94 under 35 U.S.C.
§ 103(a) based on Leong, Marano-Ford, Bosel, and Swenson.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
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