Ex Parte DAUM

Board of Patent Appeals and Interferences

Aug 28, 2002

08552143 (B.P.A.I. Aug. 28, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte WOLFGANG R. DAUM
_______________
Appeal No. 2001-2074
Application No. 08/552,143
_______________
ON BRIEF
_______________
Before ABRAMS, PATE and BAHR, Administrative Patent Judges.
PATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
claims 1 through 5 and 8 through 18 as amended after final
Appeal No. 2001-2074
Application 08/552,143
1 Our understanding of the German reference is via a translation
into English prepared by the U.S. Patent and Trademark Office.
2
rejection. These are the only claims remaining in the
application.
The claimed invention is a deflectable needle assembly
that can be inserted in an obstructed site in a body. The needle
assembly includes a straight rigid cannula, a catheter with a
curved distal end, and a stylet inserted in the catheter. When
the catheter with the curved distal end is withdrawn into the
straight cannula, since the catheter is made of superelastic
material, the curved catheter assumes the shape of the straight
cannula.
The claimed subject matter may be further understood
with reference to the appealed claims appended to appellant’s
Brief.
The references of record relied upon by the examiner as
evidence of obviousness are:
Hillstead 5,066,285 Nov. 19, 1991
Daum DE 4223897 A1 Jan. 27, 19941
(German Offenlegungsschrift)
Appeal No. 2001-2074
Application 08/552,143
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REJECTIONS
Claims 1 through 5 and 8 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Daum. According to the examiner, Daum
discloses an outer straight tube or cannula, middle interior tube
which is of superelastic material and normally curved, and an
inner stylet tube. The examiner takes official notice of the
fact that bevelled medical instruments are known in the art. The
examiner is of the opinion that it would have been obvious to
bevel the outer and middle tubes of Daum to reduce injection site
tissue trauma.
Claims 9 through 18 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Daum in view of Hillstead. The
examiner is of the opinion that Hillstead shows handles on the
proximal end of the tube and the use of a stopper device. The
examiner is of the opinion that it would have been obvious to
provide Daum with handles for the tubes of Daum and to provide a
stopper device in the Daum invention.
OPINION
We have carefully reviewed the rejections on appeal in
light of the arguments of the appellant and the examiner. As a
Appeal No. 2001-2074
Application 08/552,143
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result of this review, we have determined that the applied prior
art does not establish a prima facie case of obviousness with
respect to the claimed subject matter. Accordingly, the
rejections of all claims on appeal are reversed. Our reasons
follow.
We find ourselves in agreement with appellant’s second
argument that there is no motivation to modify the Daum
invention. We are in agreement with the examiner that bevelled
tips are indeed well known on the end of sharpened medical
devices. However, we are in agreement with appellant that it
would not have been obvious to use such a bevelled tip on the
tubes of Daum. We have closely read the translation of the Daum
Offenlegungsschrift and we agree with appellant that there is no
indication therein that the device disclosed in Daum is for
forming the initial penetration into the body. In our view,
Daum merely discloses the assembly being inserted into an
existing body cavity, or being inserted in a hole previously
formed in the body by a trocar or the like. Thus, we find that
there is no motivation, incentive or suggestion for providing the
claimed bevelled distal tip on the cannula. Likewise, we find no
Appeal No. 2001-2074
Application 08/552,143
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motivation or suggestion for employing the distal tip on the
catheter that is recessed into the cannula when the device of
Daum is moved into the body.
We have carefully reviewed the Hillstead reference but
we find therein no disclosure which would render distal bevelled
tips on the cannula and catheter of Daum prima facie obvious.
For these reasons, the rejections of claims 1 through 5 and 8
through 18, all claims on appeal, are reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
WFP:psb
Appeal No. 2001-2074
Application 08/552,143
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James S. Parker
2421 N.W. 41st Street
Suite A-1
Gainesville, FL 32606-6669