Ex Parte Niermann

Board of Patent Appeals and Interferences

Sep 9, 2011

10207533 (B.P.A.I. Sep. 9, 2011)

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.
10/207,533 07/29/2002 Volker Niermann P-5291/1 9985
26253 7590 09/09/2011
David W. Highet, VP & Chief IP Counsel
Becton, Dickinson and Company
1 Becton Drive
MC 110
Franklin Lakes, NJ 07417-1880
EXAMINER
SZMAL, BRIAN SCOTT
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
09/09/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VOLKER NIERMANN
____________________

Appeal 2010-002465
Application 10/207,533
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, LINDA E. HORNER, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002465
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
9-17. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
THE INVENTION
Appellant’s claimed invention relates “to a stackable array of needle
holders which provide for convenient packaging.” Spec. 1, para. [0001].
Independent claim 9, reproduced below, is representative of the claimed
subject matter:
9. An assembly of needle holders comprising:
a plurality of needle holder bodies, each body having a
generally closed end for supporting a needle, an opposed open
end for insertably accommodating a specimen collection tube,
and a tubular wall therebetween, said tubular wall having an
inner diameter adjacent said open end which is greater than an
outer diameter of said tubular wall adjacent said closed end;
said plurality of needle holder bodies arranged in a
stacked array with said closed end of one of said needle holders
being insertably supported within the open end of an adjacently
stacked needle holder.
REJECTIONS1
Appellant seeks review of the following rejections:
1. Rejection of claims 9-15 under 35 U.S.C. § 103(a) as unpatentable
over Kasai (US 4,991,601; issued February 12, 1991) and Cook
(US 6,213,938 B1; issued April 10, 2001).
2. Rejection of claims 16 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Kasai, Cook, and Bennett (US 6,325,243 B1; issued
December 4, 2001).

1 The Answer omits a separate list of the evidence which was relied upon,
and that list was provided in a subsequent communication. Ans. 2; Office
Communication dated February 24, 2009.
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ISSUES
Has Appellant demonstrated that Kasai’s holding bodies 40 are
incapable of being arranged in a stacked array as called for in claim 9?
Does the failure of the references to suggest the relevance of paper
cups, as disclosed by Bennett, to blood collection tubes, as disclosed by
Kasai, demonstrate that a person of ordinary skill in the art would not have
considered Bennett?
ANALYSIS
Rejection of claims 9-15 under 35 U.S.C. § 103(a) as unpatentable over
Kasai and Cook
Claims 9-13
Appellant argues claims 9-13 as a group, and we select claim 9 as the
representative claim. See Br. 3-4; see also 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 9 is directed to an assembly of needle holders, and
calls for a plurality of needle holder bodies to be arranged in a stacked array
(i.e., so that the closed end of one needle holder is insertably supported
within the open end of an adjacently stacked needle holder).
The Examiner found that Kasai discloses a needle holder (holder body
40) capable of being arranged in a stacked array. Ans. 3-6. The Examiner
also found that it was known in the art that items having bodies comprised of
a tubular wall with an open end having a larger inner diameter than the inner
diameter of the opposed closed end, such as disclosed by Kasai and Cook,
may be arranged in a stacked array, as evidenced by Cook. Id. The
Examiner does not rely on Cook to modify the structure of Kasai’s holder
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body 40; rather, Cook is used only to provide evidence that arranging such
items in a stacked array was known.2 Id.
Appellant argues that a person of ordinary skill in the art would have
been strongly motivated to avoid arranging Kasai’s holding bodies 40 in a
stacked array, as called for in claim 9, because the lands 46 of holding
bodies 40 are designed to firmly hold blood sample tubes and thus would
grip the inner holding body 40 when placed in a stacked array, making
removal difficult. Br. 3-4. When the Examiner found that Kasai’s holder
body 40 is capable of being arranged in a stacked array, the burden shifted to
Appellant to show Kasai’s device is not capable of such use. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (once the Examiner finds
that the prior art structure would be capable of performing all of the
functions claimed, the burden shifts to the applicant to show that this is not
the case). Thus, the relevant inquiry is not whether a person of ordinary skill
would have been motivated to arrange Kasai’s holding bodies 40 in a
stacked array. The relevant inquiry is whether Appellant has demonstrated
that Kasai’s holding bodies 40 are incapable of being arranged in a stacked
array as called for in claim 9. We consider Appellant’s argument to the
extent that it suggests Kasai’s lands 46 render holder bodies 40 incapable of
such arrangement.
The inner wall surface of Kasai’s holder body 40 includes three
angularly equally spaced, radially inwardly projecting lands 46. Col 3, l. 67
– col. 4, l. 2; fig. 4. The lands 46 extend a distance, l4, axially along holder

2 The Examiner essentially determined that claim 9 is anticipated by Kasai’s
holder body 40. Cook is only relied on as evidence that it was known to
arrange such items in a stacked array. We affirm this rejection under
35 U.S.C. § 103(a) because anticipation is the epitome of obviousness. In re
Pearson, 494 F.2d 1399, 1402 (CCPA 1974).
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body 40 from a central portion towards the closed end (needle joint 34).
Col. 4, ll. 2-5, ll. 9-12; figs. 2, 4. The portion of holder body 40 from the
open end (at flange 42) to the beginning of l4 does not include lands 46. Fig.
3.
Accordingly, if a first holder body 40 is inserted in the open end
(flange 42) of a second holder body 40 so that the closed end (needle joint
34) of the first holder body 40 does not reach the lands 46 of the second
holder body 40, then the lands 46 of the second holder body 40 would not
hold the first holder body 40. Thus, Kasai’s holder bodies 40 are capable of
being arranged in a stacked array with the closed end (needle joint 34) of
one needle holder (holder body 40) being insertably supported within the
open end (flange 42) of an adjacently stacked needle holder (holder body 40)
as called for in claim 9. Consequently, Appellant’s contention that lands 46
render Kasai’s holder bodies 40 incapable of being arranged in a stacked
array is not supported by the reference.
Further, Kasai discloses that tube holder (holder body 40) “reliably
and firmly” retains the blood sample tube. Col. 2, ll. 39-47. Though not
explicitly stated in Kasai, the blood sample tube is subsequently removed for
processing. Thus, Kasai’s lands 46 of holder body 40 hold a blood sample
tube, firmly, but removably. Based on this, Kasai’s holder bodies 40 are
capable of being arranged in a stacked array as called for in claim 9, and
each holder body 40 would be firmly, but removably retained.
Appellant failed to identify any structural distinction between Kasai’s
holder body 40 and the needle holder body of claim 9. Br. 3-4. Further,
Appellant’s argument is not supported by objective evidence, as Appellant
failed to set forth any affidavits or declarations in support of that assertion.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (Appellant’s
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arguments do not take the place of evidence); see also In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984) (lawyer arguments and conclusory statements which are
unsupported by factual evidence are entitled to little probative value).
Consequently, Appellant failed to carry the burden of proving Kasai’s holder
bodies 40 are incapable of being arranged in a stacked array, as called for in
claim 9.
Appellant also argues that: “Kasai gives no suggestion or indication
that it is necessary, possible or desirable to store its holders in stacked
arrays”; the references do not contain a teaching, suggestion, or motivation
for combining Kasai with Cook; and nothing in the references suggests that
stacked otoscopes tips, such as disclosed by Cook, are in any way relevant to
blood collection tube holders. Br. 3. Each of these arguments is based upon
the premise that the rejection modifies Kasai’s needle holder body (holder
body 40) based on a disclosure in Cook. However, as explained supra,
Cook is not relied upon for any modification of Kasai’s device; rather, Cook
is only used to provide evidence that arranging such items in a stacked array
was known. Ans. 3-6. Consequently, Appellant’s arguments related to
modification of Kasai’s device are unpersuasive.
In light of this, we sustain the rejection of claim 9, and claims 10-13
fall with claim 9.
Claims 14 and 15
Appellant argues claims 14 and 15 as a group, and we select claim 14
as the representative claim. See Br. 4; see also 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 14 is similar to independent claim 9 in that it calls
for a plurality of needle holder bodies capable of being arranged in a stacked
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array. Claim 14 differs from claim 9 in that it also calls for a carton for
supporting and enclosing the stacked array of needle holder bodies.
Appellant repeats the arguments used against the rejection of claim 9
related to the reasons for the proposed modification of Kasai as taught by
Cook. Br. 4. For the reasons explained in the analysis of claim 9, supra,
those arguments are unconvincing here as well. As such, we sustain the
rejection of claims 14 and 15.

Rejection of claims 16 and 17 under 35 U.S.C. § 103(a) as unpatentable
over Kasai, Cook, and Bennett
Appellant argues claims 16 and 17 as a group, and we select claim 16
as the representative claim. See Br. 4-5; see also 37 C.F.R.
§ 41.37(c)(1)(vii).
Claim 16 depends from independent claim 14, and adds the limitation
that “each stacked array is encased in a flexible sleeve.”
Appellant repeats the arguments used against the rejection of claim 9,
adding that Bennett does not cure the deficiencies of Kasai and Cook. Br. 4.
For the reasons explained in the analysis of claim 9, supra, those arguments
are unconvincing here as well, and there are no deficiencies for Bennett to
cure.
Appellant also argues that a person of ordinary skill in the art would
not have considered Bennett because there is nothing in the references that
suggests that paper cups are relevant to blood collection tubes. Br. 4-5
(referring to the argument at Br. 2). This argument implies that the art itself
must contain a suggestion regarding the relevance of the other reference, or
references, involved. Such is not the law. The Supreme Court rejected the
rigid requirement of a teaching, suggestion, or motivation to combine known
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elements in order to show obviousness. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). Rather, “when the question is whether a patent
claiming the combination of elements of prior art is obvious” the relevant
inquiry is “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id. at 417.
Here the Examiner found, and Appellant did not contest, that Bennett
discloses a device for enclosing a stacked array. Ans. 4; Br. 4-5; see also
Bennett, col. 2, ll. 9-10; fig. 1. Further, as explained in the analysis of claim
9, supra, Kasai discloses a needle holder body (holder body 40) capable of
being arranged in a stacked array. See Ans. 3-6; Br. 3-5. In this light, the
proposed combination appears to be nothing more than the predictable use of
prior art elements according to their established functions.
As such, we affirm the rejection of claims 16 and 17.
CONCLUSIONS
Appellant failed to demonstrate that Kasai’s holding bodies 40 are
incapable of being arranged in a stacked array as called for in claim 9.
The failure of the references to suggest the relevance of paper cups,
such as disclosed by Bennett, to blood collection tubes, such as disclosed by
Kasai, does not demonstrate that a person of ordinary skill in the art would
not have considered Bennett.
DECISION
We affirm the Examiner’s decision to reject 9-17.
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)(1)(iv).
AFFIRMED
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