Ex Parte Phan

Patent Trial and Appeal Board

Sep 12, 2018

13916323 (P.T.A.B. Sep. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/916,323 06/12/2013 Vu Phan
47058 7590 09/14/2018
Dickinson Wright - BD
1825 Eye St., NW
Suite 900
WASHINGTON, DC 20006
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P-6085Cl (60675) 7339
EXAMINER
WAY,JAMESR
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
09/14/2018 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):
DWPatents@dickinsonwright.com
ip.docket@bd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VU PHAN1
Appeal2017-005308
Application 13/916,323
Technology Center 3700
Before MICHELLE R. OSINSKI, FRANCES L. IPPOLITO, and
LISA M. GUIJT, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-25, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Becton, Dickinson and Company ("Appellant") is the Applicant as
provided in 37 C.F.R. § 1.46 and is identified as the real party in interest.
Appeal Br. 1.
Appeal2017-005308
Application 13/916,323
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
1. A sharps container comprising:
a housing comprising a space which accommodates at
least one needle therein;
an opening in the housing dimensioned to receive at least
one needle therethrough, to be accommodated in the space;
a blocking member comprising a freely movable body
selectively disposed in the housing in a first position to block the
opening when the opening is positioned so that at least one
needle accommodated in the space is urged towards the opening,
and a second position to provide unrestricted access of the
opening whenever the opening is positioned so that at least one
needle accommodated in the space is not urged towards the
opemng.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Porcelli
vom Hofe
Andrews
Cha
us 3,779,429
us 4,489,859
us 4,614,035
US 2007/0102312 Al
THE REJECTIONS
Dec. 18, 1973
Dec. 25, 1984
Sept. 30, 1986
May 10, 2007
I. Claim 1 stands rejected under 35 U.S.C. § I02(b) as anticipated by
vom Hofe. Final Act. 4.
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Application 13/916,323
II. Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Appellant's Admitted Prior Art ("AAPA")2 and
vom Hofe. Id. at 4--5.
III. Claims 4--9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over AAPA, vom Hofe, and Porcelli. Id. at 5.
IV. Claims 1, 10-13, 15-22, 24, and 25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Andrews and vom Hofe. Id. at 6-10.
V. Claims 14 and 23 stand rejected under 35 U.S.C. § 103(a) over
Andrews, vom Hofe, and Cha. Id. at 10.
RELATED APPEAL
The application on appeal is a continuation of Application
10/986,820, which also was the subject of an appeal to this Board. In the
related appeal, the Board affirmed rejections of: claim 1 under 35 U.S.C.
§ 102(b) as anticipated by vom Hofe; claims 1, 4, and 5 under 35 U.S.C.
§ 103(a) as unpatentable over AAPA and vom Hofe; and claims 6-11 under
35 U.S.C. § 103(a) as unpatentable over AAPA, vom Hofe, and Porcelli.
Appeal 2011-001296 (PTAB Apr. 12, 2013) (hereinafter "Prior Decision").
In the related appeal, the Examiner found that vom Hofe discloses, inter
alia, an opening 19 and a freely movable blocking member 17 which blocks
opening 19 when opening 19 is in certain positions. Prior Decision 2, 4. As
noted by the Examiner in the current appeal, opening 19 of vom Hofe that is
referred to the Prior Decision is different "than what is being used [ to
2 The Examiner refers to paragraphs 3-6 of the Specification as AAP A.
Final Act. 4.
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Application 13/916,323
correspond to the claimed opening] in the interpretation of the Final
Rejection" of this appeal. Ans. 4.
OPINION
Rejection I
The Examiner finds that vom Hofe discloses, inter alia, "a container
(8) with a space (33) capable of accommodating at least one needle, an
opening ( openings of perforated disk 18), and a freely movable blocking
member (17)." Final Act. 4. As to blocking member 17 "being disposed in
the housing" that comprises space 3 3, as required by claim 1, the Examiner
finds that "there are not any limitations within the claims that detail the
housing in such a manner that the blocking member [ 17] of vom Hofe has to
be considered on the outside of the housing." Adv. Act. 2. The Examiner
explains that "[ a ]s the metering device [ which contains blocking member
17] is held within the housing, it is considered as reading on all of [the]
limitations of the claim." Id.
As to the "blocking member ... [being] disposed in the housing in a
first position to block the opening when the opening is positioned so that at
least one needle accommodated in the space is urged towards the opening,"
as required by claim 1, the Examiner finds that blocking member 17 "blocks
the opening ( openings of perforated disk 18) when the container is
positioned upside-down." Final Act. 4.
As to the "blocking member ... [being] disposed in the housing in ...
a second position to provide unrestricted access of the opening whenever the
opening is positioned so that at least one needle accommodated in the space
is not urged towards the opening," as required by claim 1, the Examiner
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Application 13/916,323
finds that blocking member 17 "normally does not block the opening [ of
perforated disk 18] when the opening is positioned so that at least one needle
in the space [33] is not urged towards the opening." Final Act. 4. The
Examiner details that "only one of the openings of the perforated disk [ 18] is
required to be completely unobstructed when the contents of the container
are not urged toward the opening." Id. at 2. The Examiner explains that "if
the container of vom Hofe is held at an angle such that the ball bearing is
urged toward the bottom comer of the metering device, this position allows
for an opening near the opposite end of the perforated dis[k] [18] to be
completely unobstructed, and the contents of the container are continuing to
not be urged toward the opening." Id. The Examiner includes an annotated
reproduction of Figure 3 of vom Hofe to illustrate what the Examiner
considers to be the unobstructed opening in this scenario. Id. at 3. The
Examiner's annotated version of vom Hofe's Figure 3 is reproduced below.
Annotated Figure 3 of vom Hofe
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Application 13/916,323
Figure 3 of vom Hofe depicts a section view through a combination of
a closure for a container and a tubular ball bearing housing which acts as a
valve. vom Hofe 2: 19-21. The annotated figure includes a notation with an
arrow extending to a circled portion where the Examiner determines there to
be an unobstructed opening when the opening is positioned so that at least
one needle is not urged toward the opening. Final Act. 3; see also Adv. Act
2 ("If the container of vom Hofe is tilted 5 degrees to one side[,] gravity
would force the ball to a single side leaving a guaranteed set of openings
open in this position while gravity is urging the contents still away from the
openings.").
Appellant argues that "valve ball 17 will not block any opening in
perforated disk 18 when content of container 8 is urged toward that opening,
thereby permitting free flow of content of container 8 through any opening
in perforated disk 18 when content of container 8 is urged toward the
opening." Appeal Br. 13 (citing vom Hofe 4:29-37). We agree with
Appellant that the Examiner has not adequately explained how blocking
member 1 7 is disposed in the housing to block an opening in perforated disk
18 when the opening is positioned so that at least one needle accommodated
in space 33 is urged toward that opening in perforated disk 18. The
Examiner explains only that blocking member 17 blocks the opening of
perforated disk 18 "when the container is positioned upside-down" (Final
Act. 4) and/or that "upon fully tilting the container[,] the ball valve would
then block all of the openings while the contents are being urged toward the
openings" (Adv. Act. 2). Although we agree that positioning the container
of Fig. 3 of vom Hofe upside down or at a full tilt would urge the contents of
container 8 in space 33 toward the openings in perforated disk 18, we do not
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Application 13/916,323
see how such positioning would allow blocking member 17 to block any of
the openings of perforated disk 18. Rather, it appears such positioning
would urge blocking member 17 away from the perforated disk 18 and
toward sealing cone 20 of tubular ball bearing housing 16. See Appeal Br.
14 ( emphasis omitted) ("[F]ully tilting ... container 8 would unblock all of
the openings in perforated disk 18, which is inapposite to Appellant's
invention as claimed in claim 1. ").
Appellant also argues that "any opening in perforated disk 18 can be
either blocked, partially blocked, or not blocked by valve ball 17 when
container 8 is position[ ed] such that the content of container 8 is not urged
toward the openings in perforated disk 18 (see vom Hofe's Figure 3)."
Appeal Br. 13. We agree with Appellant. For example, the same opening
identified by the Examiner in annotated Figure 3 of vom Hofe would be
blocked if the container were tilted at an opposite angle such that valve ball
17 would be urged toward the bottom comer of metering device 16 in which
the Examiner-identified opening is located. At the same time, the contents
of the container would continue to not be urged toward the Examiner-
identified opening due to gravity, in accordance with the findings of the
Examiner. See Adv. Act. 2.
The claim requires "unrestricted access of the opening whenever the
opening is positioned so that at least one needle accommodated in the space
is not urged toward the opening." Appeal Br. 20 (Claims App.) ( emphasis
added). Because there is at least one scenario in which blocking member 17
is not disposed in the housing in a position to provide unrestricted access of
the Examiner-identified opening when the Examiner-identified opening is
positioned so that at least one needle accommodated in space 33 is not urged
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Application 13/916,323
toward the Examiner-identified opening (i.e., the Examiner-identified
opening is blocked by blocking member 1 7 when a needle accommodated in
space 33 is not urged toward the Examiner-identified opening due to gravity,
in accordance with the Examiner's findings), the Examiner has not
adequately explained how there is unrestricted access of the opening
whenever the opening is positioned so that at least one needle
accommodated in the space is not urged toward the opening, as required by
the claim.
For the foregoing reasons, Appellant has shown that the Examiner
erred in finding that vom Hofe discloses all of the limitations of independent
claim 1. We do not sustain the rejection of claim 1 under 35 U.S.C. § 102(b)
as anticipated by vom Hofe.
Rejections II and III
The Examiner's rejections of claims 1-9 under 35 U.S.C. § 103(a)
with AAP A as the primary reference rely on the same erroneous finding that
"vom Hofe teaches a freely movable blocking member ... wherein there is
unrestricted access to the opening ( openings of perforated disk 18)
when[ ever] the opening is positioned so that at least one needle
accommodated in the space is not urged towards the opening (Fig. 3)." Final
Act. 5. The Examiner does not explain how AAP A and/or Porcelli would
remedy the deficiency of vom Hofe. Accordingly, we do not sustain, under
35 U.S.C. § 103(a), the rejections of: claims 1-3 as unpatentable over AAPA
and vom Hofe; and claims 4--9 as unpatentable over AAP A, vom Hofe, and
Porcelli.
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Re} ections IV and V
The Examiner's rejections of claims 1 and 10-25 under 35 U.S.C.
§ 103(a) with Andrews as the primary reference rely on the same erroneous
finding that "vom Hofe teaches ... a free moving body (17) that ... in
another position provid[ es] unrestricted access of the opening whenever the
opening is positioned so that at least one needle accommodated in the space
is not urged towards the opening (Fig[s]. 2--4)." Final Act. 6. The Examiner
does not explain how Andrews and/or Cha would remedy the deficiency of
vom Hofe. Accordingly, we do not sustain, under 35 U.S.C. § 103(a), the
rejections of: claims 1, 10-13, 15-22, 24, and 25 as unpatentable over
Andrews and vom Hofe; and claims 14 and 23 as unpatentable over
Andrews, vom Hofe, and Cha.
DECISION
The Examiner's decision to reject claim 1 under 35 U.S.C. § 102(b) as
anticipated by vom Hofe is reversed.
The Examiner's decision to reject claims 1-3 under 35 U.S.C.
§ 103(a) as unpatentable over AAPA and vom Hofe is reversed.
The Examiner's decision to reject claims 4--9 under 35 U.S.C.
§ 103(a) as unpatentable over AAPA, vom Hofe, and Porcelli is reversed.
The Examiner's decision to reject claims 1, 10-13, 15-22, 24, and 25
under 35 U.S.C. § 103(a) as unpatentable over Andrews and vom Hofe is
reversed.
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Application 13/916,323
The Examiner's decision to reject claims 14 and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Andrews, vom Hofe, and Cha is reversed.
REVERSED
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