Ex Parte MacLean et al

Patent Trial and Appeal Board

May 10, 2013

11785504 (P.T.A.B. May. 10, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/785,504 04/18/2007 David MacLean 0100/0200 4385
21395 7590 05/13/2013
LOUIS WOO
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
EXAMINER
CARPENTER, WILLIAM R
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
05/13/2013 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 DAVID MACLEAN, FRANK BLINKHORN, TROY M. DERBY,
QUINTON FARRAR, MARIUS HAURI, LAWRENCE P. HUDON, and
ROBERT SIMAS JR.
____________

Appeal 2012-001236
Application 11/785,504
Technology Center 3700
____________

Before PETER F. KRATZ, KAREN M. HASTINGS, and
DONNA M. PRAISS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 15-32. We have jurisdiction pursuant to 35
U.S.C. § 6.
We AFFIRM.

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BACKGROUND
The invention relates to a method of color coding needle assemblies to
enable a user to readily determine the needle gauge (Spec. 1, 2, ¶ ¶ [001],
[004]). “It is well established that the gauge of the needle may be
determined by the color of the hub” (Spec. 1, ¶ [002]). Appellants color
code the needle protective housing (in addition to the hub) by adding the
appropriate color that corresponds to the needle gauge in accordance with
the International Standard Organization (ISO) standard during molding
(Spec. 2, ¶ [004]).

Claim 15 is illustrative of the claimed subject matter and is
reproduced below:
15. A needle device, comprising: a needle having a
particular gauge, a needle assembly having a base including a
needle hub and a luer end and a needle protection housing
pivotable relative to said base formed from a plastic molding
material, said molding material having added thereto a specific
color pigmentation preassigned to correspond to said particular
gauge, said needle hub, said luer end and said housing each
having said specific color, said needle fixedly or integrally
extending from said needle hub, a needle sheath fitted to said
needle hub to cover said needle and said needle hub prior to
said needle being used, wherein after said sheath has been
removed from said needle hub, said needle is adapted to be
covered by said housing when said housing is pivoted to a
position in alignment along the longitudinal axis of said base,
wherein the gauge of said needle can be ascertained by looking
at the color of said housing, said needle hub and/or said luer
end when said sheath fits over said needle hub and covers said
needle.

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Each of independent claims 15, 20 and 28 “requires that the housing,
needle hub and luer end of the needle assembly be color coded to reflect the
gauge of the needle” (Br. 12).
The Examiner maintains, and Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
claims 15, 19-21, 25-28, 31, and 32 as being unpatentable over the
combined prior art of Marano-Ford1, Hollister 1102, Hollister 4263, and
Knox4;
claims 16, 22, and 29 as being unpatentable over the combined prior
art of Marano-Ford, Hollister 110, Hollister 426, and Gibbs5; and
claims 17, 18, 23, 24, and 30 as being unpatentable over the combined
prior art of Marano-Ford, Hollister 110, Hollister 426, and Sturman6.
Appellants argue the claims as a group in the first ground of rejection
under § 103. Accordingly we select independent claim 15 as representative.
Appellants have not presented substantive separate arguments for any of the
other claims, including those claims separately rejected (Br. 17).
MAIN ISSUE ON APPEAL
Have Appellants identified reversible error in the Examiner’s
obviousness rejection of claim 15 over the applied prior art? If not, have
Appellants overcome the rejection by rebutting the prima facie case with
sufficient evidence of commercial success?

1 US 6,869,418 B2, issued Mar. 22, 2005.
2 US RE37,110 E, reissued Mar. 27, 2001.
3 US 5,993,426, issued Nov. 30, 1999.
4 US 3,642,123, issued Feb. 15, 1972.
5 US 5,085,640, issued Feb. 4, 1992.
6 US 4,863,435, issued Sep. 5, 1989.
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We answer both of these questions in the negative.
ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter of representative claim 15 would have been obvious
to one of ordinary skill in the art within the meaning of § 103 in view of the
applied prior art. We determine that, after consideration of all of the
evidence of record, including the Miller Declaration regarding commercial
success (filed March 4, 2010), that the evidence of record tending to
establish the obviousness of the claimed subject matter outweighs any
evidence of record that may tend to indicate the non-obviousness thereof.
Accordingly, we will sustain the Examiner’s rejections for this claim
for essentially those reasons expressed in the Answer, including the
Examiner’s Response to Argument section, and we add the following
primarily for emphasis.
Appellants do not specifically refute the Examiner’s determination of
obviousness (Br. 13); rather, they rely upon a Declaration of Alan Miller, a
manager of the assignee of the instant application, “to evidence that the
instant invention is not obvious due to the secondary consideration of
commercial success” (id.; see also Evidence Appendix).
The burden rests with Appellants to establish that the ‘“asserted
commercial success of the product must be due to the merits of the claimed
invention beyond what was readily available in the prior art’” See Asyst
Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008); quoting J.
T. Eaton & Co., Inc. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed.
Cir. 1997). A primary consideration in demonstrating actual commercial
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success is if sales of the claimed invention have produced a substantial share
of the marketplace. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
On this record, Appellants have not shown what percentage of the market he
has acquired (see, e.g., Ans. 14, 15, 19, 20).
Moreover, even if the evidence proffered sufficiently demonstrates
commercial success, that success is only relevant in the obviousness context
if there is proof that the success results from the unique characteristics of the
claimed invention--as opposed to other economic and commercial factors
unrelated to the quality of the claimed invention. In re Huang, 100 F.3d at
140.
We determine that Appellants have not met the burden for showing
commercial success for at least the reasons aptly provided by the Examiner
(Ans. 12-19). The facts and law support the position of the Examiner.
Significantly, Appellants have not persuasively rebutted the
Examiner's determination that the Declaration does not evince
nonobviousness because Appellants have failed to show a nexus between
commercial success of their “Edge” products and the claimed subject matter
(Ans. 18 “Appellant has provided no logical or critical nexus that
demonstrates color coding of the needle shield [in addition to the known
color coding of needle hubs] is critical”). Under these circumstances,
Appellants’ commercial success argument lacks persuasive merit.
The Examiner’s de facto position that higher sales for needles with
more color coding indicators on them is not necessarily evidence of
commercial success if, e.g., the difference in price is not significant, is
reasonable (Ans. 14, 15). Secondary considerations “including substantial
evidence of commercial success, praise, and long-felt need, were inadequate
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to overcome a strong showing of primary considerations that rendered the
claims at issue invalid.” Agrizap, Inc., v. Woodstream Corp., 520 F.3d
1337, 1344 (Fed. Cir. 2008). See also, e.g., B.F. Goodrich Co. v. Aircraft
Braking Systems Corp., 72 F.3d 1577, 1583 (Fed. Cir. 1996) (“Considering
the minor difference between the claimed invention and the teachings of
Dunlop, the secondary considerations were not sufficiently compelling.
[Citation omitted.]”).
Commercial success is also not apparent where there is demand for a
product that fills a need, and the claimed product merely satisfies that need,
e.g., for more color coding indicia. See In re Fielder, 471 F.2d 640, 646
(CCPA 1973)
In any event, it is not at all clear from the evidence that
any successful use which might be credited stems from the
advent of the claimed ballots as distinguished from the
contemporary drive toward the greater use of automated data
processing techniques. A nexus between the claimed invention
and the alleged success has not been established.

Notably, Appellants admit that the process of color coding needle
hubs was “well established” by an ISO standard. The ISO Standard alone
suggests adding the color to other parts of the needle and/or packaging. The
applied prior art exemplifies adding the color coding to other parts of the
needle housing. Indeed, the Examiner’s position that the evidence of
commercial success sales is not compared to the sales of any other prior art
color coded product(s) is unrefuted (generally Br.; Miller Declaration).
In addition, we emphasize that, although secondary considerations
such as unexpected results must be taken into account, they do not
necessarily control the obviousness conclusion. See Agrizap, Inc., 520 F.3d
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at 1344; see also, Sud-Chemie, Inc. v. Multisorb Technologies, Inc., 554
F.3d 1001, 1009 (Fed. Cir. 2009) (“[e]vidence of unexpected results and
other secondary considerations will not necessarily overcome a strong prima
facie showing of obviousness”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1372 (Fed. Cir. 2007) (“[T]his secondary consideration does not overcome
the strong showing of obviousness in this case. Although secondary
considerations must be taken into account, they do not necessarily control
the obviousness conclusion.”); see also, Newell Cos., Inc. v. Kenney Mfg.
Co., 864 F.2d 757, 769 (Fed. Cir. 1988).
Here, the case of obviousness is so strong that Appellants’ alleged
commercial success is ultimately insufficient (see also, e.g., Ans. 14).
Accordingly, the § 103 rejections advanced by the Examiner in this
appeal are sustained.
ORDER
The Examiner’s decision 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).

AFFIRMED

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