Ex Parte Gold

Patent Trial and Appeal Board

Feb 7, 2018

13067632 (P.T.A.B. Feb. 7, 2018)

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.
13/067,632 06/15/2011 Howard Gold 57220 4644
47058 7590
Dickinson Wright - BD
1825 Eye St., NW
Suite 900
WASHINGTON, DC 20006
02/09/2018 EXAMINER
CARPENTER, WILLIAM R
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
02/09/2018 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):
lorraine_kow alchuk @ bd .com
ip_docket @bd.com
DWPatents @ dickinson wright. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD GOLD
Appeal 2017-001800
Application 13/067,6321
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1-3, 6—14, 16, and 17. Final Office
Action (January 8, 2016) (hereinafter “Final Act.”). We have jurisdiction
under 35 U.S.C. § 6(b).
1 Appellant identifies Becton, Dickinson and Company as the real party in
interest. Appeal Brief 1 (June 23, 2016) (hereinafter “Appeal Br.”).
Appeal 2017-001800
Application 13/067,632
Appellant contests the Examiner’s finding of anticipation and
determination of obviousness of the claimed syringe. Specifically,
Appellant asserts that the prior art does not disclose or render obvious the
claimed collar. For reasons discussed in detail in this opinion, we find
sufficient evidence to sustain all of the rejections. Accordingly, we
AFFIRM.
CFAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “an adjustable plunger
dose stop for a syringe.” Specification 12 (filed June 15, 2011) (hereinafter
“Spec.”). Claims 1 and 12 are the independent claims. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A syringe, comprising:
a body for receiving a medicament;
a collar rotatably disposed in said body, said collar being
rotatable to set a desired dose of the medicament by axially
moving said collar with respect to said body by rotational
movement of said collar with respect to said body; and
a plunger movably disposed in said collar, said plunger
being axially movable with respect to said collar to selectively
draw in the medicament according to said set desired dose, and
to dispense the medicament.
Appeal Br. 14 (Claims Appendix).
EVIDENCE
The Examiner’s decision relies upon the following evidence:
Moorhouse US 3,343,539
US 3,672,369
US 4,583,978
Sept. 26, 1967
June 27, 1972
Apr. 22, 1986
Brown
Porat
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Application 13/067,632
Botich
Veasey
US 5,788,677
US 2007/0093761 A1
Aug. 4, 1998
Apr. 26, 2007
June 27, 1986
Dec. 19, 1986
Ogier (“Ogier ’231”) FR 2 575 231 A1
Ogier FR2 583 463 A2
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1-3, 6, 7, 12, 13, 16, and 17 stand rejected under pre-AIA
35 U.S.C. § 102(b) as anticipated by Moorhouse.
2. Claims 1, 6, 7, 12-14, 16, and 17 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Ogier, Botich, and Porat.
3. Claims 2 and 3 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ogier, Botich, Porat, and Brown.
4. Claims 8, 10, and 11 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Ogier, Botich, Porat, and Ogier ’231.
5. Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ogier, Botich, Porat, Ogier ’231, and Veasey.
ISSUES
For each of the first and second grounds of rejection, Appellant argues
the claims subject to each ground of rejection as a group. Appeal Br. 7-10.
Pursuant to 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as representative
of each group. Appellant does not present any additional arguments as to
the third through fifth grounds of rejection. Appeal Br. 11-12.
This appeal presents two issues. As to the first ground of rejection,
the issue is whether the Examiner erred in finding that Moorhouse’s collar is
“rotatable to set a desired dose of the medicament by axially moving said
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Application 13/067,632
collar with respect to said body,” as recited in claim 1. As to the second
ground of rejection, the issue is whether the Examiner erred in determining
that the combined teachings of Ogier, Botich, and Porat render obvious a
collar rotatably disposed in a body, the collar being “rotatable to set a
desired dose of the medicament by axially moving said collar with respect to
said body by rotational movement of said collar with respect to said body,”
as recited in claim 1.
ANALYSIS
First Ground of Rejection: Anticipation by Moorhouse
Appellant argues that the Examiner erred in finding anticipation of
claim 1 because adjustment of Moorhouse’s member 42 does not set a
desired dose; adjustment of member 42 is designed only to limit or lengthen
the “filling stroke.” Appeal Br. 8 (Appellant arguing, “according to
Moorhouse, the actual dose is determined by the operator sensing ‘the end of
the filling stroke with the compression of the spring 58 to the point where
the spring 57 is moved to engage the shoulder 18’”). Appellant explains that
adjustment of member 42 does not prevent the operator from continuing to
push the handle 40 downwardly after the operator senses the end of the
filling stroke. Reply Br. 2. Close examination of the claim language reveals
that this argument is a distinction without a difference because the argument
is not commensurate with the scope of the claim.
Claim 1 recites that the collar is “rotatable to set a desired dose of the
medicament” and that the plunger is “axially movable with respect to said
collar to selectively draw in the medicament according to said set desired
dose.” Appeal Br. 14 (Claims Appendix). We interpret this claim language
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Application 13/067,632
in light of Appellant’s Specification. Appellant’s Specification describes a
problem in the syringe art is that an operator must visually measure the
liquid medication level using scale markings while the dose is being drawn.
Spec. 13. The Specification identifies a need in the art for a syringe in
which the user does not have to continuously visually monitor the scale
markings while drawing a dose. Id. The Specification further identifies a
need in the art for a syringe in which an accurate dose is easily drawn into
the syringe. Id. at | 5.
The Specification addresses this need with a syringe having an
adjustable plunger dose stop that allows an operator to select the desired
dose prior to drawing medication and provides a mechanical stop that limits
the amount of medication drawn into the syringe by the plunger. Id. at 19.
The Specification discloses that an operator using this syringe “is not
required to visually measure the liquid medication using scale markings.”
Id. The Specification describes embodiments of the invention in which an
operator “dials the desired dose” and then draws the medicament by pulling
a plunger out of the syringe body until the plunger abuts a mechanical stop,
limiting the amount of medication drawn to the set dose. See, e.g., id. at
143 (describing embodiment of Figures 1-5); see also id. at | 50 (describing
embodiment of Figure 6, in which the plunger has an integral stop feature).
Although the Specification discloses limiting movement of the
plunger using a mechanical stop so that only the desired dose can be drawn
into the syringe, the language of claim 1 is not limited to this embodiment.
Certainly, using a mechanical stop to physically prevent more than the
desired dose to be drawn into the syringe is one way to avoid the operator
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Application 13/067,632
having to visually monitor the amount of medicament during the drawing
operation. The claim language, however, recites only that the collar is
“rotatable to set a desired dose of the medicament” and that the plunger is
“movably disposed in said collar” and “axially movable with respect to said
collar to selectively draw in the medicament according to said set desired
dose.” The claim language does not require a mechanical stop to physically
limit the axial movement of the plunger with respect to the collar.
Moorhouse discloses a syringe with a collar that is rotatable to move
the collar axially to set a desired dose and a plunger that is movable to
selectively draw in medicament according to the set desired dose.
Specifically, in operation, an operator presses downwardly on the handle of
the syringe until the operator senses the end of the filling stroke, then the
operator releases the handle so that a spring biases the plunger upwardly to
draw in material, and then the operator presses downwardly again on the
handle to discharge the material from the syringe. Id. at col. 3,1. 52 - col. 4,
1. 64; Figs. 2—4. An object of Moorhouse’s invention includes means to
adjust the stroke of the piston to “predetermine the quantity of said material
drawn in.” Moorhouse, col. 1,11. 39-40; see also id. at col. 1,11. 45^47, col.
3,11. 5-7. Moorhouse describes, with reference to Figure 6, that the filling
stroke can be adjusted by threading portion 47 of member 42 further into
passage 22 to shorten the distance between the shoulder 33 and the end wall
18. Id. at col. 4,11. 31-35; compare id. at Fig. 3 with id. at Fig. 6.
Moorhouse also discloses that in operation, as the operator pushes
downwardly on the handle 40, the operator will “readily sense” the end of
the filling stroke with the compression of the spring 58 to the point where
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the spring 57 is moved to engage end wall 18 due to the increase in pressure
required to compress both springs. Id. at col. 3,1. 72 — col. 4,1. 7.
Moorhouse states that the length of this stroke determines the amount of
material that is drawn into the syringe once the handle is released and the
compressed spring 58 forces plunger 25 backup. Id. at col. 4,11. 7-13. The
upward motion of plunger 25, and thus the dosage drawn in to the syringe, is
limited by engagement of stop member 55 on the plunger with the lower
surface of member 42. Fig. 3.
It is true that once the operator of Moorhouse senses the end of the
filling stroke, there is nothing physically stopping the operator from
continuing to press downwardly on the handle. Rotation of member 42,
however, does adjust the point at which the operator, during downward
movement of the handle, receives tactile feedback that the amount of axial
movement of the plunger corresponds to the desired filling amount, e.g., a
desired dose. Also, rotation of member 42 adjusts the axial position of a
mechanical stop that physically stops the upward movement of the
handle/plunger during drawing in of the material.
We find that adjustment of member 42 to “predetermine the quantity
of said material drawn in” in the manner disclosed in Moorhouse meets the
claim language “to set a desired dose of the medicament.” Moorhouse’s
syringe allows an operator to draw a predetermined desired dose without
having to visually monitor the amount of medicament during the drawing
operation. Also, Moorhouse’s plunger is axially movable within respect to
member 42 to selectively draw in the predetermined desired dose.
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Appellant further argues that Moorhouse “teaches away from dose
setting by a collar rotatably disposed in a body of a syringe.” Appeal Br. 8
(citing Moorhouse’s teaching that indicia are not provided to indicate exact
measurement because an experienced operator can readily determine the
proper adjustment of the device as to the length of the filling stroke).2 For
the reasons set forth above, we find that Moorhouse teaches dose setting.
Moorhouse teaches that indicia to indicate an exact measurement of the
amount of material are not necessary in this art of artificial insemination of
hens because operators can rely on their experience to readily determine the
proper adjustment of the device to achieve the appropriate filling stroke and
thus desired amount of semen. This disclosure is not a teaching away from
setting a desired dose. Instead, this statement indicates that indicia showing
operators an exact measurement of the dose may not be necessary in this art
because experienced operators will be able to readily determine the desired
dose. Nonetheless, the syringe allows the operator to adjust member 42 to
set a desired dose.
For these reasons, Appellant has not identified an error in the
Examiner’s rejection of claims 1-3, 6, 7, 12, 13, 16, and 17 as anticipated by
Moorhouse. Thus, we affirm the first ground of rejection.
2 Even if Moorhouse teaches away, it can still anticipate if there are no
structural differences between the claimed subject matter and the structure
disclosed in the prior art reference. See Celeritas Techs., Ltd. v. Rockwell
Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“[T]he question whether a
reference ‘teaches away’ from the invention is inapplicable to an
anticipation analysis.”). We understand this argument to be in support of
Appellant’s position that Moorhouse does not teach setting the dose.
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Second Ground of Rejection: Obviousness over Ogier, Botich, and Porat
Appellant contends that the Examiner erred in rejecting claim 1
because Ogier does not teach that its tube 2 can be moved axially by
rotational movement of the tube. Appeal Br. 9. Appellant explains that in
Ogier, the lug 2c rides along an axial track If to allow for axial movement of
the tube 2 within tube 1, and the only rotational movement of tube 2 is when
lug 2c is rotated into indentation 1 e, and this rotational movement does not
result in axial movement of the tube. Id. at 9-10. Appellant fails to address
in its Appeal Brief the explicit suggestion in Ogier of a modification to the
axial track If to make it helical. Ogier 4 (machine translation). The
Examiner relied on this explicit teaching in Ogier of a helical arrangement in
the ground of rejection. Final Act. 6. Only in the Reply Brief does
Appellant acknowledge that Ogier discloses another “embodiment” in which
the track If is “possibly helical.” Reply Br 2. Appellant contends that this
disclosure is insufficient to render the claimed invention obvious because
Ogier does not teach how this helical track can be implemented. Id.
Appellant argues that the Examiner’s reliance on the teachings in Botich and
Porat is insufficient to fill the gap in Ogier’s disclosure. Id. at 3.
We agree with the Examiner that a person having ordinary skill in the
art would understand “helical” to mean “spiral” in shape. Ans. 8. We
further agree that “the use of helical screw threads . . . translate [s] a
rotational movement into an axial movement.” Ans. 6 (discussing
Moorhouse’s helical threads, but equally applicable to Ogier’s helical track
embodiment). As evidenced by the additional references cited by the
Examiner, a person having ordinary skill in the art would readily understand
how to use a helical slot in place of a bayonet-type fitting, such as depicted
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in Ogier. See Botich, col. 12,11. 18-26 (describing in the syringe art that
instead of using a detent and sealing ring to retain a cartridge within a
housing, other engaging means such as screw threads or bayonet slots could
be used); Porat, col. 1,1. 38 — col. 2,1. 13 (describing a syringe having
corresponding threads on the inside of outer housing 1 and on the outside of
casing 5 so that rotation of casing 5 within housing 1 causes axial movement
of casing 5 and adjustment of space 17). The implementation of a helical
slot in place of a bayonet-type fitting is the predictable use of prior art
elements according to their established functions. KSR Int 7. Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). To Appellant’s argument that the claimed
collar would not have been obvious because Ogier fails to describe explicitly
implementation of its alternate helical embodiment, “[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.” Id. at 421.
For these reasons, Appellant has not identified an error in the
Examiner’s rejection of claims 1, 6, 7, 12-14, 16, and 17 as unpatentable
over Ogier, Botich, and Porat. Thus, we affirm the second ground of
rejection.
Remaining Grounds of Rejection
Appellant argues only that the remaining grounds of rejection should
be reversed because the addition of Brown, Ogier ’231, and Veasey do not
cure the deficiencies of the combination of Ogier, Botich, and Porat with
regard to claim 1. Appeal Br. 11-12. Finding no such deficiencies, we
likewise sustain the rejections of dependent claims 2, 3, and 8-11.
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DECISION
The decision of the Examiner rejecting claims 1-3, 6, 8-14, 16, and
17 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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