Ex Parte Orosz Jr.

Board of Patent Appeals and Interferences

Jul 31, 2003

08940601 (B.P.A.I. Jul. 31, 2003)

1
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEVEN J. OROSZ, JR.
____________
Appeal No. 2002-1220
Application No. 08/940,601
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and STAAB, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 5 and 9 through 14. Claims 6 through 8 stand allowed.
These claims constitute all of the claims in the application.
Appellant’s invention pertains to a medical needle combined
with a syringe for withdrawal of blood from a patient, a medical
needle for insertion into a patient, and a process of withdrawing
Appeal No. 2002-1220
Application 08/940,601
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blood from a patient with a syringe and needle assembly. A basic
understanding of the invention can be derived from a reading of
exemplary claims 1, 9, and 13, respective copies of which appear
in an appendix to the main brief, a copy of which is appended to
the examiner’s answer (Paper No. 18).
As evidence of anticipation and obviousness, the examiner
has applied the documents listed below:
Guerra 3,906,930 Sep. 23, 1975
Brinon 5,611,778 Mar. 18, 1997
Becton Dickinson (B-D) Division Product Catalog, Spinal Needles,
F2, (March 30, 1993)
The following rejections are before us for review.
1. Claims 1 through 5 and 9 through 12 stand rejected under
35 U.S.C. § 102(e) as being anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as obvious over Brinon.
2. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Guerra in view of Brinon.
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Application 08/940,601
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3. Claims 1 through 5 and 9 through 12 stand rejected under
35 U.S.C. § 102(a) as being anticipated by Becton Dickinson.
The full text of the examiner’s rejections and response to
the argument presented by appellant appears in the final
rejection and answer (Paper Nos. 13 and 18), while the complete
statement of appellant’s argument can be found in the main and
reply briefs (Paper Nos. 17 and 19).

Appellant groups the claims as follows: claims 1 through 5,
claims 9 through 12, and claims 13 and 14 (main brief, page 5).
In light of this claim grouping and the argument presented, we
select independent claims 1, 9, and 13 for review, with the
dependent claims standing or falling with their respective
independent claim.
OPINION
In reaching our conclusion on the issues, anticipation and
obviousness raised in this appeal, this panel of the Board has
Appeal No. 2002-1220
Application 08/940,601
1 In our evaluation of the applied prior art, we have
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the Board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968).
4
carefully considered appellant’s specification and claims, the
applied teachings,1 and the respective viewpoints of appellant
and the examiner. As a consequence of our review, we make the
determinations which follow.
The first rejection
We sustain the rejection of claims 1 and 9 under 35 U.S.C.
§ 102(e) as being anticipated by and, in the alternative, under
35 U.S.C. § 103(a) as obvious over Brinon. It follows that we
likewise sustain the rejection of claims 2 through 5 and 10
through 12 since these dependent claims stand or fall with
claims 1 and 9, respectively, as earlier indicated.
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Application 08/940,601
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Anticipation under 35 U.S.C. § 102 is established only when
a single prior art reference discloses, either expressly or under
principles of inherency, each and every element of a claimed
invention. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997); In re Paulsen, 30 F.3d 1475,
1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994); In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); and
RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir. 1984). However, the law
of anticipation does not require that the reference teach
specifically what an appellant has disclosed and is claiming but
only that the claims on appeal "read on" something disclosed in
the reference, i.e., all limitations of the claim are found in
the reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984).
Independent claim 1 requires a distinctly visible mark
surrounding the tip of a sharp insertion end of a medical needle
that is combined with a syringe. Independent claim 9 specifies a
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Application 08/940,601
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mark of distinctly visible color surrounding the sharp insertion
end of a medical needle body.
A review of the overall teaching of Brinon, taking into
account the appearance of the (Tuohy) needle as revealed in PRIOR
ART Figs. 1 through 3 of the reference, makes it quite apparent
to this panel of the Board that one versed in the art would
appreciate the needle as evidencing a distinctly visible mark or
a mark of distinctly visible color surrounding the tip of the
sharp insertion end thereof. In other words, the mark 15 of
Brinon, closest to the needle tip end (Fig. 2), produces a needle
tip end with a contrasting color appearance that clearly visibly
marks the tip end. It is noted that Figs. 7 and 8 of Brinon
reveal the combination of a needle and a syringe (column 3,
lines 57 through 65). Based upon the above analysis, we conclude
that the content of claims 1 and 9 is anticipated by Brinon.
The rejection of these claims under 35 U.S.C. § 103 is also
sustained, since lack of novelty is the epitome of obviousness.
See In re Fracalossi, 681 F.2d 792, 215 USPQ 569, 571 (CCPA
1982).
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The argument of appellant in the main (pages 6 through 9)
and reply briefs fails to convince us that the content of each of
independent claims 1 and 9 is not anticipated by or obvious over
the Brinon teaching. Contrary to the assertion in the main brief
(page 7) that Brinon does not disclose appellant’s medical needle
which has a distinctly visible mark at its tip, we determined
above that the claimed needle is anticipated and rendered obvious
by the prior art needle found in the Brinon patent. Thus, the
further argument in the reply brief (page 2) that focuses upon
the marking in Brinon that is spaced from the tip end is
misplaced since the contrasting color of the tip end is
responsive to the visible mark recitation now claimed.
The second rejection
We do not sustain the rejection of claims 13 and 14 under
35 U.S.C. § 103(a) as being unpatentable over Guerra in view of
Brinon.
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Independent claim 13 sets forth the process of withdrawing
blood from a patient with a syringe and needle assembly including
the step of providing a color mark surrounding the tip of a
needle to facilitate accurate directioning of a needle toward an
artery.
Simply stated, it is our opinion that it would not have been
obvious to one having ordinary skill in the art, based upon the
collective teachings of Guerra and Brinon by themselves, to
substitute a needle expressly disclosed for use in an epidural
anesthesia process (Brinon) for a needle used in a blood taking
process (Guerra). We recognize, as did appellant, that the
applied references do not address the problems faced in the
process of withdrawing blood from a patient and the solution
therefor that is the focus of the present application and its
claims 13 and 14 (main brief, page 9, and reply brief, page 2).
In light of the above, we readily perceive that one having
ordinary skill in the art would have lacked motivation to make
the examiner’s proposed modification in a process of withdrawing
blood from a patient.
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The third rejection
We sustain the rejection of claims 1 through 5 and 9 through
12 under 35 U.S.C. § 102(a) as being anticipated by Becton
Dickinson.
It is quite apparent to us, as it was to appellant (main
brief, pages 9 and 10), that the needle of Becton Dickinson is
akin to the needle taught by Brinon. Thus, in light of our
analysis and conclusion of anticipation above regarding the
Brinon teaching, we likewise sustain the rejection of appellant’s
claims based upon the Becton Dickinson document, with our earlier
reasoning being incorporated herein by reference.
In summary, this panel of the Board has sustained the first
and third rejections on appeal, but not the second rejection.
The decision of the examiner is affirmed-in-part.
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Application 08/940,601
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 2002-1220
Application 08/940,601
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Charles F. Schroeder
2317 Valleybrook Drive
Toledo, OH 43615-2953