Ex Parte Kressirer et al

Patent Trial and Appeal Board

Mar 14, 2018

14031090 (P.T.A.B. Mar. 14, 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.
14/031,090 09/19/2013 Rudolf Kressirer SAG-010 9725
126799 7590 03/16/2018
Outran Rr Outran PP
EXAMINER
245 Saw Mill River Road, Suite 309
Hawthorne, NY 10532
GORDON, BRIAN R
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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):
Duganemail@duganpatent.com
bdugan@duganpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUDOLF KRESSIRER and EIRE ZIECHNER
Appeal 2017-006784
Application 14/031,090
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1-8, 13, 14, and 16-19.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, Siemens Healthcare Diagnostics Products
GmbH, which, according to the Appeal Brief, is the real party in interest.
Appeal Brief filed October 31, 2016 (“App Br.”), 2.
2 Claims 9-12 and 20 stand withdrawn from consideration. Final Office
Action entered July 8, 2016 (“Final Act.”), 1-2.
Appeal 2017-006784
Application 14/031,090
STATEMENT OF THE CASE
Appellant claims a hollow needle for piercing a sealing device on a
sample vessel. App. Br. 3—4. Claim 1 illustrates the subject matter on
appeal and is reproduced below:
1. A hollow needle for piercing a sealing device on a
sample vessel, comprising:
a needle axis extending in an axial direction of the
hollow needle;
a first axial portion having a first external diameter;
a second axial portion adjoining the first axial portion,
the second axial portion having a conical shape; and
a third axial portion adjoining the second axial portion;
wherein:
the third axial portion has a second external diameter
greater than the first external diameter;
the first, second, and third axial portions have a hollow
channel extending there through at a constant internal diameter,
the hollow channel having a bend in the first axial portion; the
first axial portion has a first face inclined against the needle
axis at a first angle of about 19 degrees with respect to the
needle axis, the first face forming a tip for piercing the sealing
device, the first face having an outlet of the hollow channel
arranged laterally with respect to the needle axis;
the first axial portion has a second face inclined against
the needle axis opposite the first face at a second angle of about
31 degrees with respect to the needle axis', and
the first face and the second face generate respective
force components in a radial direction during an axial
movement into the sealing device that cancel each other out.
App. Br. 10 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action, and maintains the rejections in the Examiner’s Answer entered
January 26, 2017 (“Ans.”):
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Appeal 2017-006784
Application 14/031,090
I. Claims 1-7, 13, and 16-19 under 35 U.S.C. § 103 as
unpatentable over Gulla et al. (US 7,144,554 Bl, issued December 5, 2006)
in view of Wang (US 2009/0099535 Al, published April 16, 2009) or
Ferguson (US 2012/0041337 Al, published February 16, 2012), and
VanderStek (US 2014/0276472 Al, published September 18, 2014), Bittner
(US 5,515,871, issued May 14, 1996), Huber (US 2,748,769, issued June 5,
1956), or Huber (US 2,717,600, issued September 13, 1955);
II. Claim 8 under 35 U.S.C. § 103 as unpatentable over the
modified teachings of Gulla as applied above, and further in view of
Taniguchi (US 2011/0300035 Al, published December 8, 2011); and
III. Claim 14 under 35 U.S.C. § 103 as unpatentable over the
modified teachings of Gulla as applied above, and further in view of Hur
(US 2013/0243665 Al, published September 19, 2013).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 1-8, 13, 14, and 16-19 under 35 U.S.C. § 103 for the reasons set
forth below.
Rejection I
We need consider only independent claim 1 because the remaining
claims subject to this ground of rejection depend from claim 1. As set forth
above, claim 1 requires a hollow needle to comprise a first axial portion
having a first face inclined at a first angle of about 19 degrees against an axis
extending in an axial direction of the needle, and a second face inclined
against the needle axis opposite the first face at a second angle of about 31
degrees. Claim 1 further requires the first and second faces to generate
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Appeal 2017-006784
Application 14/031,090
respective force components in a radial direction during an axial movement
of the needle into the sealing device that cancel each other out.
The Examiner finds that Gulla discloses a needle including free end
52 (first axial portion) having tip 54, and immediately above free end 52,
swage 58 (second axial portion) configured as a conical taper leading to
medial body portion 60 (third portion), which has a greater cross sectional
diameter than free end 52. Final Act. 6 (citing Gulla Figs. 2-5). The
Examiner finds that although Gulla discloses different geometries for tip 54,
including a bevel cut, Gulla does not disclose that free end 52 includes a first
face inclined against the needle axis at an angle of about 19 degrees, and a
second face inclined against the needle axis opposite the first face at an
angle of about 31 degrees. Final Act. 6 (citing Gulla col. 3,1. 30-col. 4,1.
33; Figs. 5A-E).
The Examiner finds that Wang discloses a needle including a tubular
needle body having an end consisting of a tip having a pyramidal, conical, or
combination pyramidal/conical shape. Final Act. 6-7 (citing Wang 6 and
Figures). The Examiner finds that Ferguson discloses a hollow microneedle
having a tip shaped as a square pyramid that includes opposing inclined
surfaces. Final Act. 7 (citing Ferguson 80-84; Figures A-C3).
Based on these disclosures, the Examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time of Appellant’s
invention to manufacture the tip of the needle disclosed in Gulla with
opposing inclined surfaces as taught by Wang and Ferguson to allow the
3 Although the Examiner cites “Figures A-C,” the Examiner appears to refer
to Figures 5A-C based on the Examiner’s description of the relied-upon
disclosures. Final Act. 7.
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Appeal 2017-006784
Application 14/031,090
needle to pierce a subject and deliver or extract a fluid from the subject.
Final Act. 8. The Examiner determines that the “degree of incline of the
faces would have been within the common sense and routine technical skills
of one ordinary skill in the art.” Id.
However, the tips of the needles disclosed in Wang and Ferguson
have faces inclined at the same angles relative to the needle axes. Wang
Figs. 1-5; Ferguson Figs. 5A-C. The Examiner does not identify any
disclosure in these references of first and second faces of a needle tip that
are inclined against a needle axis at different angles. Final Act. 6-8.
Although the Examiner asserts for the first time in the Answer that Bittner
and VanderStek disclose needle tips having two faces that are inclined
against a needle axis at different angles, the angles of inclination disclosed in
these references differ significantly from those recited in claim 1. Ans. 9-
10. Specifically, Bittner discloses that one of the faces of the needle tip
illustrated in Figures 1A and IB forms an angle of approximately 6 degrees
with the axis of the needle, and Bittner is silent regarding the inclination
angle of the other tip face illustrated in the drawing. Bittner col. 4,11. 19-37;
Figs. 1A, IB. Similarly, while noting that “other angles are possible,”
VanderStek discloses that one face of the needle tip illustrated in Figure 2B
forms an angle of about 1 to about 9 degrees with the axis of the needle, and
does not indicate the angle of inclination of the other tip face illustrated in
the drawing. VanderStek 17; Fig. 2B.
Thus, the inclination angles disclosed in Bittner and VanderStek—
about 6 degrees, and about 1 to about 9 degrees, respectively—differ from
the inclination angles recited in claim 1 of about 19 degrees and about 31
degrees. The Examiner does not identify any disclosure in Bittner or
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Appeal 2017-006784
Application 14/031,090
VanderStek, or provide any other evidence or reasoning, establishing that
one of ordinary skill in the art would have utilized inclination angles as
claimed, or that the inclination angles would affect any result. In particular,
the Examiner fails to explain why one of ordinary skill in the art reasonably
would have expected that the inclination angles recited in claim 1 would be
useful in view of the much smaller inclination angles disclosed in Bittner
and VanderStek. Moreover, the Examiner does not identify any disclosure
in the applied prior art indicating that particular inclination angles of first
and second needle tip faces could result in respective force components in a
radial direction during an axial movement of the needle into a sealing device
that cancel each other out, as recited claim 1.
Thus, the Examiner does not adequately explain why the relied-upon
disclosures in the applied prior art would have provided one of ordinary skill
in the art with an apparent reason to incline first and second faces of a needle
tip against a needle axis at angles of about 19 degrees and about 31 degrees,
respectively, as recited in claim 1. Belden v. Berk-TekLLC, 805 F.3d 1064,
1073 (Fed. Cir. 2015) (“[OJbviousness concerns whether a skilled artisan not
only could have made but would have been motivated to make the
combinations or modifications of the prior art to arrive at the claimed
invention.”).
Further, the Examiner’s conclusory assertion that the inclination
angles recited in claim 1 would have been within the “common sense” and
“routine technical skills” of one of ordinary skill in the art (Final Act. 8)
does not suffice to provide a reason having rational underpinning for why
the applied prior art would have led the ordinarily skilled artisan to a hollow
needle having first and second faces inclined at the angles recited in claim 1.
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Appeal 2017-006784
Application 14/031,090
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[Rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” (Citation
omitted)) Accordingly, consistent with Appellant’s arguments (App. Br. 5-
8), we do not sustain the Examiner’s rejection of claims 1-7, 13, and 16-19
under 35 U.S.C. § 103.
Rejections II and III
We also do not sustain the Examiner’s rejections of claims 8 and 14
because the Examiner does not rely on the additional references applied in
these rejections for any disclosure that remedies the deficiencies of the prior
art references applied in Rejection I. Final Act. 9-10.
DECISION
We reverse the Examiner’s rejections of claims 1-8, 13, 14, and lb-
19 under 35 U.S.C. § 103.
REVERSED
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