Ex Parte Felsovalyi et al

Patent Trial and Appeal Board

Feb 14, 2017

12859544 (P.T.A.B. Feb. 14, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/859,544 08/19/2010 Flora Felsovalyi 4606-102153 (P-8868) 8148
7590 02/14/2017
David W. Highet, Esq.
Becton Dickinson and Company
1 Becton Drive
Franklin Lakes, NJ 07417-1880
EXAMINER
PATEL, SHEFALI DILIP
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
02/14/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLORA FELSOVALYI and ERIC SCHILLER1
Appeal 2014-007848
Application 12/859,544
Technology Center 3700
Before WILLIAM A. CAPP, AMANDA F. WIEKER, and
SEAN P. O’HANLON, Administrative Patent Judges.
Opinion for the Board filed by WIEKER, Administrative Patent Judge
Opinion Concurring filed by CAPP, Administrative Patent Judge
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Flora Felsovalyi and Eric Schiller (“Appellants”) appeal under 35
U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—5, 7—9, 11,
12, 14—16, 20—22, and 24—34.2 We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the Real Party in Interest is Becton Dickinson
France. Appeal Br. 3 (filed Sept. 12, 2013).
2 The Examiner indicated that claims 10, 13, 17—19, 23, and 35—37 contain
patentable subject matter. Final Act. 15 (mailed Mar. 25, 2013). Claim 6
has been cancelled. Appeal Br. 23 (Claims App.).
Appeal 2014-007848
Application 12/859,544
CLAIMED SUBJECT MATTER
The invention concerns a “hypodermic syringe having a reduced
profile prior to use, [which] further includes an integral tip guard for
maintaining sterility.” Spec. 12. Claim 1 is illustrative of the subject matter
on appeal, and recites:
1. A syringe assembly, comprising:
a syringe barrel having an inside surface defining a
chamber, an open proximal end, and a distal end having an
opening therethrough;
an elongated plunger rod extending between a first end and
a second end;
a guard disposed on the first end of the plunger rod; and
a plunger head extending within the chamber of the
syringe barrel, the second end of the plunger rod interconnected
with the plunger head through a pivotable connection,
wherein the plunger head is adapted for slidable
movement within the syringe barrel between the proximal end
and the distal end,
wherein the plunger rod is adapted to pivot with respect to
the plunger head between a first position in which the guard is
adjacent the distal end of the syringe barrel and a second position
in which the plunger rod is in general axial alignment with the
syringe barrel, and is further adapted for axial movement so as to
cause said slidable movement of the plunger head through the
syringe barrel, and
wherein the guard is adapted to cover the opening in the
distal end of the syringe barrel when the plunger rod is in the
first position.
Appeal Br. 22 (Claims App.) (emphasis added).
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Appeal 2014-007848
Application 12/859,544
REJECTION
Claims 1—5, 7—9, 11, 12, 14—16, 20—22, and 24—34 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Kuntz3 and Koopman.4
ANALYSIS
With respect to independent claim 1, the Examiner finds that Kuntz
discloses a syringe assembly substantially as claimed, including guard 42.
Final Act. 3^4. The Examiner finds that Kuntz does not teach that guard 42
is disposed on the first end of plunger rod 20, but finds that Koopman
teaches a syringe with “a guard (tip cap [54]). . . disposed on a first end of a
plunger rod (plunger [52]).” Id. at 4. The Examiner concludes that it would
have been obvious to modify Kuntz’s guard “to be disposed on the first end
of the plunger rod, as taught by Koopman,” in order to “provide a
convenient and time-efficient means in which the guard covers the opening
of the distal end of the syringe at the same time that the plunger rod is
moved to the first position external to the syringe barrel.” Id. (citing
Koopman 130); see Ans. 3^4. Specifically, in the Examiner’s proposed
modification, Kuntz’s guard would be modified to include a “connecting
bridge between the plunger rod [20] and guard [42] of Kuntz and the guard
[42] modified with a side opening.” Ans. 6—7 (providing Examiner’s
annotated Figure). The Examiner makes similar findings and conclusions
regarding independent claims 26 and 33. Final Act. 8—9, 10-12; Ans. 3—4,
6-7.
3 US 4,581,023, iss. Apr. 8, 1986.
4 US 2006/0229568 Al, pub. Oct. 12, 2006.
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Appeal 2014-007848
Application 12/859,544
Appellants contend, inter alia, that “[n]either Kuntz nor Koopman
teach or suggest a ‘connecting bridge’ or modification of the guard with a
‘side opening’.” Reply Br. 5 (filed July 1, 2014); see also Appeal Br. 15—
17; Reply Br. 3^4.
We agree with Appellants. The Examiner’s proposed combination of
Kuntz and Koopman requires that Kuntz’s guard is “modified with a side
opening.” Ans. 6—7. The Examiner depicts this modification in an
annotated Figure, which is reproduced below.
The Examiner’s annotated Figure depicts an element (“bridge”) connecting
Kuntz’s plunger 20 with guard 42, wherein the guard is modified to include
an opening extending along the length of its underside. However, Kuntz
teaches away from such a modification. Kuntz specifies that guard 42
“protects] the needle 12 from contamination and physical damage.” Kuntz,
4:31—33. Including an opening within Kuntz’s guard 42, as proposed by the
Examiner, would expose the entire length of Kuntz’s needle to
contamination and physical damage, which is directly contrary to the
disclosed purpose of Kuntz’s guard 42. See In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).
Kigriz (Figure 3) modifies! by (Figure 6;
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Appeal 2014-007848
Application 12/859,544
Accordingly, we reverse the Examiner’s rejection of independent
claims 1, 26, and 33, as well as the rejection of claims 2—5, 7—9, 11, 12, 14—
16, 20-22, 24, 25, 27—32, and 34, which depend therefrom.
DECISION
The rejection of claims 1—5, 7—9, 11, 12, 14—16, 20-22, and 24—34 is
REVERSED.
REVERSED
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Appeal 2014-007848
Application 12/859,544
OPINION CONCURRING
CAPP, Administrative Patent Judge
I concur in the result reached by the majority. However, I write
separately because I do not agree that Kuntz necessarily teaches away from
the claimed invention. A reference does not teach away if it merely
expresses a general preference for an alternative invention but does not
“criticize, discredit, or otherwise discourage” investigation into the invention
claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In my
opinion, the language relied on by the majority merely expresses a
preference for an alternative design, but does not rise to the level of
criticizing, discrediting, or otherwise discouraging investigation into a
pivotable guard with a side opening.
I would reverse the Examiner’s rejection because, in my opinion,
Appellants have successfully rebutted the Examiner’s prima facie case that
Appellants’ invention is obvious within the meaning of 35 U.S.C. § 103(a).
Kuntz and Koopman both disclose using an axial motion to remove a guard
from a syringe. See, e.g., Kuntz, 4:31—37, Fig. 1; Koopman 130, Fig. 5.
Kuntz may teach a pivotable plunger, but neither Kuntz nor Koopman teach
or suggest combining a pivotable plunger with a guard where the guard is
removed and the plunger is pivoted into its operable position in a single
motion. This idea belongs to Appellants. In my opinion, the Examiner’s
conclusion of obviousness has been overcome by Appellants’ evidence and
argument.
Appellants’ invention may, at least to some, appear to be
mechanically simple. However, simplicity is not inimical to patentability.
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Appeal 2014-007848
Application 12/859,544
In re Oeticker, 977 F.2d 1443, 1447 (Fed. Cir. 1992); see also Goodyear
Tire & Rubber Co. v. Ra)^0—Vac Co., 321 U.S. 275, 279 (1944) (simplicity
of itself does not negate invention); Panduit Corp. v. Dennison Mfg. Co.,
810 F.2d 1561, 1572 (the patent system is not foreclosed to those who make
simple inventions), cert, denied, 481 U.S. 1052.
It is well settled that the mere fact that the prior art may be modified
in the manner suggested by the Examiner does not necessarily make the
modification obvious. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).
Rather, to support a rejection, it is necessary for the Examiner to prima facie
show that the proposed modification would have been obvious to one of
only “ordinary” skill. The person of ordinary skill in the art is an objective
legal construct presumed to think along conventional lines without
undertaking to innovate, whether by systematic research or by extraordinary
insights. See Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454
(Fed. Cir. 1985). Subsequently, the Supreme Court has elucidated and
explained that the person of ordinary skill in the art is a person of only
“ordinary” creativity. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007). In my opinion, the creativity exhibited by Appellants, as embodied
in the claims at issue, transcends the “ordinary” level of creativity.
In the instant case, the Examiner proposes to modify Kuntz by:
(1) connecting the pivotable plunger to the guard; (2) creating an opening in
the side of the guard; and (3) removing the guard with a sideward/pivoting
motion instead of an axial movement. Ans. 6—7. Given that Kuntz and
Koopman both teach guards that completely detach from the syringe body
and are removed with an axial movement, the Examiner’s proposed
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Application 12/859,544
modification strikes me as an exercise in hindsight reconstruction. See
ZoltekCorp. v. U. S., 815 F.3d 1302, 1313 (Fed. Cir. 2016).
To imbue one of ordinary skill in the art with knowledge of the
invention in suit, when no prior art reference or references of
record convey or suggest that knowledge, is to fall victim to the
insidious effect of a hindsight syndrome wherein that which
only the inventor taught is used against its teacher.
W.L. Gore &Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.
1983).
I would reverse the Examiner because, in my opinion, Appellants’
improvement to the prior art demonstrates a degree of insight and ingenuity
that exceeds the bounds of mere “ordinary” skill. Apart from the foregoing
discussion, I concur in the result reached by the majority.
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