Ex Parte Dalton

Board of Patent Appeals and Interferences

May 4, 2010

11049488 (B.P.A.I. May. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL J. DALTON
____________________

Appeal 2009-007870
Application 11/049,488
Technology Center 3700
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Decided: May 5, 2010
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Before: WILLIAM F. PATE III, LINDA E. HORNER, and
MICHAEL W. O'NEILL, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
20. App. Br 5. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to needle safety and protection device. Claim
1, reproduced below, is illustrative of the claimed subject matter:
Appeal 2009-007870
Application 11/049,488

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1. A fluid delivery device comprising:

a fluid delivery tube;

a needle received within a distal portion of the fluid
delivery tube;

a planar base mounted to the fluid delivery tube adjacent
a distal portion of the fluid delivery tube; and

a planar shield connected at one end to the base with a
flexible connection, the shield having an adhesive portion
located on an outer surface, wherein in an insertion
configuration the planar base and the planar shield are
substantially parallel to the fluid delivery tube and the needle
fits through a shield aperture and the adhesive portion is
adapted to contact a target skin region, and wherein in a
protection configuration a needle tip contacts a portion of an
inner surface of the planar shield spaced apart from the shield
aperture and wherein the planar base remains substantially
parallel to the fluid delivery tube.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wanderer
Szerlip
Gyure
Rosato
US 4,850,961
US 5,364,370
US 5,681,295
US 5,951,522
Jul. 25, 1989
Nov. 15, 1994
Oct. 28, 1997
Sep. 14, 1999

REJECTIONS
Claims 1-5 and 17-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Szerlip and Wanderer. Ans. 3.
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Application 11/049,488

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Claims 6-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szerlip, Wanderer, and Gyure. Ans. 4.
Claims 10-16 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szerlip, Wanderer, and Rosato. Ans. 5.

OPINION
Appellant contends that the Examiner erred by finding that Szerlip
and Wanderer would have taught or suggested the “planar shield” recited in
claims 1, 10 and 17. Reply Br. 5. Appellant also contends that the Examiner
erred by finding that Szerlip and Wanderer would have taught or suggested
the planar base and planar shield “substantially parallel to the fluid delivery
tube” in an insertion configuration as recited in claims 1 and 10. App. Br.
11. Both of Appellant’s contentions are correct.
The Supreme Court in KSR reaffirmed the framework for determining
obviousness as set forth in Graham v. John Deere Co. (383 U.S. 1 (1966)).
The factual inquiries set forth in Graham that are applied for establishing a
background for determining obviousness under 35 U.S.C. § 103(a) are
summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at
issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
Szerlip’s helical springs 22, 32 are not planar and are therefore not
reasonably read as the claimed “planar shield.” Szerlip col. 4, ll. 15-18, col.
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Application 11/049,488

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5, ll. 1-4; Contra Ans. 3. It would have been reasonable to read planar
surfaces or faces 24, 40 of Szerlip’s cap 16, 30 as the claimed “planar
shield.” These surfaces are perpendicular to the tube of syringe 34, read as
the “fluid delivery tube.” “Perpendicular” to a tube would be understood by
one of ordinary skill in the art to mean perpendicular to the longitudinal axis
of that tube. It is further noted that the distal portion of the syringe 34 is read
as the claimed “planar base.” Ans. 3. While this interpretation may be
reasonable, this structure can not then also serve as part of the structure read
as the claimed “fluid delivery tube.” The structure read as the claimed “fluid
delivery tube” therefore includes essentially only a longitudinal portion.
Since Szerlip’s perpendicular cap face is not “substantially parallel” to the
tube, and Wanderer does not cure this deficiency, the combination of Szerlip
and Wanderer would not have taught or suggested the planar base and planar
shield “substantially parallel to the fluid delivery tube” in an insertion
configuration as recited in claims 1 and 10. Szerlip’s planar surfaces or faces
24, 40 would also fail to meet the “planar shield directly connected at one
end to the base” of claim 17, since they are connected to the base, the distal
end of the syringe, by intermediate members, springs 22, 32.
Neither Gyure nor Rosato, as applied by the Examiner, cure the
deficiencies of Szerlip and Wanderer. Since the Examiner relied upon an
unreasonable interpretation of the claim terms in determining the differences
between the prior art and the claims at issue, we are constrained to reverse
the rejections of claims 1, 10 and 17 along with dependent claims 2-9, 11-16
and 18-20.
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Application 11/049,488

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DECISION
For the above reasons, the Examiner’s rejection of claims 1-20 are
reversed.

REVERSED

vsh/nhl

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