10986820 (P.T.A.B. Apr. 10, 2013)

Ex Parte Phan

Patent Trial and Appeal BoardApr 10, 2013

10986820 (P.T.A.B. Apr. 10, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte VU PHAN ____________________ Appeal 2011-001296 Application 10/986,820 Technology Center 3700 ____________________ Before: GAY ANN SPAHN, BENJAMIN D. M. WOOD, and MICHELLE R. OSINSKI, Administrative Patent Judges. Opinion for the Board filed by WOOD, Administrative Patent Judge. Opinion dissenting-in-part filed by SPAHN, Administrative Patent Judge. WOOD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001296 Application 10/986,820 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1 and 4-11. Claims 28-35 are canceled and claims 2, 3, 12-27 and 51-54 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The claims are directed to a container for safely storing hypodermic needles. Spec.1, para. [002]. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A sharps container comprising: a space which accommodates at least one needle therein; an opening dimensioned to receive at least one needle therethrough, to be accommodated in the space; and a blocking member comprising a freely movable body which blocks the opening when the opening is positioned so that at least one needle accommodated in the space is urged towards the opening, and otherwise, does not block the opening. REFERENCES Porcelli vom Hofe US 3,779,429 US 4,489,859 Dec. 18, 1973 Dec. 25, 1984 Applicant’s Admitted Prior Art, Spec. 1, para. [003] – Spec. 2, para. [006] (hereinafter “APA”)1 1 The Examiner lists paras. [003] – [006] of Appellant’s original disclosure filed November 15, 2004 as APA. Ans. 4. Appeal 2011-001296 Application 10/986,820 3 REJECTIONS2 Claim 1 stands rejected under 35 U.S.C § 102(b) as anticipated by vom Hofe. Ans. 4. Claims 1, 4, and 5 stand rejected under 35 U.S.C § 103(a) as unpatentable over APA and vom Hofe. Ans. 4-5. Claims 6-11 stand rejected under 35 U.S.C § 103(a) as unpatentable over APA, vom Hofe, and Porcelli. Ans. 5. ANALYSIS Claim 1 – Anticipation – vom Hofe The Examiner found that vom Hofe discloses, inter alia, a container 8 with a space 33 capable of accommodating at least one needle, an opening 19, and a freely moveable blocking member 17. Ans. 4. The Examiner also indicated that “[r]etention of a sharp3 is considered [a recitation of] intended use,” “a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art,” and “[i]f the prior art structure is capable of performing the intended use, then it meets the claim.” Id. Appellant disputes the Examiner’s findings, arguing “it appears that the Examiner is relying on [an] ‘inherency’ theory to support the anticipation rejection,” and “the Examiner’s ‘inherency’ theory is not support[ed] by 2 The following rejections have been withdrawn by the Examiner: (1) claims 36-38, 40-47, 49, and 50 under 35 U.S.C. § 103(a) over Andrews (U.S. 4,614,035) and Germain (US 4,867,309); and (2) claims 39 and 48 under 35 U.S.C. 103(a) over Andrews, Germain, and Dunnican (US 3,736,824). Ans. 3. 3 We understand the Examiner to be referring here to claim 1’s preamble “[a] sharps container,” since that is the only occurrence of the term “sharps.” Appeal 2011-001296 Application 10/986,820 4 vom Hofe’s disclosure which provides no indication that its disclosed ‘container’ and ‘metering device’ for ‘liquids or free-flowing product’ can somehow accommodate, let alone retain, sharps, as claimed in Appellant’s claim 1.” Br. 12. Appellant further contends that “the Examiner’s position that vom Hofe’s ‘container 8 with a space 33 [is] capable of accommodating at least one needle . . . ’ further confirms that the Examiner’s ‘inherency’ theory has no merit. Id. (emphasis added) (citing In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (holding that inherency is not established by the fact that a certain result or characteristic may occur or be present). In response, the Examiner found that vom Hofe’s space 33 is capable of performing the function of accommodating a needle as recited in claim 1. Ans. 4, 7, and 8. In particular, the Examiner found that neither claim 1 nor the Specification specify any particular size of needle that needs to be accommodated, and that it was clear from vom Hofe’s figures 1 and 3 that vom Hofe’s container is “large enough to accommodate at least one needle having a length less than at least the distance between portions 9 and 10 of vom Hofe.” Ans. 6-7 (citing vom Hofe, col. 1, ll. 5-9, col. 2, ll. 27-29). A claim reciting an apparatus may be anticipated by a reference disclosing a device that includes each and every structural limitation in the claim and that is capable of performing each and every functional limitation in the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1478-79 (Fed. Cir. 1997) (upholding the Board’s affirmance of a rejection under section 102(b) on the basis of a finding that a device disclosed in a prior art reference was capable of performing a function which the appellant alleged to distinguish the appellant’s apparatus from the device). The Examiner reasonably inferred from vom Hofe’s figures 1 and 3 both that the container 8 depicted Appeal 2011-001296 Application 10/986,820 5 therein is capable of performing the recited intended use to contain sharps and that space 33 is capable of accommodating a needle of at least the size the Examiner specified, i.e., one that has a length that is less than the distance between elements 9 and 10 shown in figures 1 and 3. Appellant has not offered any persuasive evidence or argument in rebuttal. Accordingly, we sustain the Examiner’s rejection of claim 1 as anticipated by vom Hofe. Claims 1, 4, and 5 – Obviousness –APA and vom Hofe The Examiner found that APA discloses a sharps container with a space for accommodating at least one needle, and a blocking member including a ball movable between a blocking position and an unblocking position. Ans. 5. The Examiner acknowledged that the APA does not expressly disclose that the ball is freely movable, and therefore relied on vom Hofe for this teaching. Id. The Examiner concluded that it would have been obvious to a person of ordinary skill to provide the device disclosed in APA with a freely movable blocking member “in order to limit the parts for assembly,” since a normally closed blocking member would necessarily require additional structures, such as a spring or other resilient member. Id. Appellant responds that “applying the teaching of vom Hofe’s ball valve . . . which is designed to keep the blocking member from normally blocking the aperture, to APA’s sharps containers designed specifically to have a metal ball normally block the needle aperture, would render the APA sharps container unworkable as described and intended.” Br. 18. But this argument confuses the APA device’s intended purpose -- “keeping needles from falling out of the box when in the open position” (APA, para. [005]) – with the structure for achieving that purpose. The proposed combination substitutes the APA device’s normally closed blocking member for vom Appeal 2011-001296 Application 10/986,820 6 Hofe’s freely movable valve to achieve APA’s stated purpose. We therefore find this argument unpersuasive. Appellant further argues that neither vom Hofe nor APA discloses or suggests a blocking member that does not block the opening as recited in Appellant’s claim 1. Br. 19. Since the Examiner does not rely on APA for this teaching, this argument is unpersuasive as to that reference. As for vom Hofe, Appellant contends that vom Hofe’s valve ball 17 contained within the housing 16 “is arranged to at least partially block the bottom opening 9 into container 8, and at least partially block the neck 19 of housing 16, at any tilt angle of container 8.” Br. 18 (citing vom Hofe, figs. 1-4) (emphasis omitted). But it is evident from figure 3 that in at least the upright orientation shown, the valve ball does not block opening 19. We therefore do not find this argument persuasive as to vom Hofe as well.4 We sustain the Examiner’s rejection of claims 1, 4, and 5 as obvious over APA and vom Hofe. Claims 6-11 – Obviousness –APA, vom Hofe, and Porcelli Appellant does not raise any additional arguments as to the patentability of claims 6-11. Br. 19. We therefore sustain the Examiner’s rejection of claims 6-11 as obvious over the APA, vom Hofe, and Porcelli. DECISION For the above reasons, the Examiner’s rejection of claims 1 and 4-11 is affirmed. 4 Also, as noted above, Appellant asserted in support of another argument that vom Hofe’s valve “is designed to keep the blocking member from normally blocking the aperture.” Br. 18. Appeal 2011-001296 Application 10/986,820 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh Appeal 2011-001296 Application 10/986,820 1 SPAHN, Administrative Patent Judge, dissenting-in-part. Although I join in my colleagues’ affirmance of the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by vom Hofe, I do not join in the majority’s affirmance of the Examiner’s rejections, under 35 U.S.C. § 103(a), of: claims 1, 4 and 5 as unpatentable over APA and vom Hofe; and claims 6-11 as unpatentable over APA, vom Hofe, and Porcelli. Independent claim 1 is directed to a sharps container including, inter alia, “a blocking member comprising a freely movable body which blocks the opening when the opening is positioned so that at least one needle accommodated in the space is urged toward the opening, and otherwise, does not block the opening.” The Examiner found that APA discloses a sharps container having “a movable blocking member (ball, see paragraph [005]),” but “APA does not expressly disclose that the ball is freely movable.” Ans. 5. The Examiner also found that “one of ordinary skill in the art would recognize that the provision of a blocking member as normally closed would necessarily entail additional structures (i.e.[,] a spring or resilient member),” and that “vom Hofe teaches a freely movable blocking member for a ball-type closure inhibitor.” Id. The Examiner concludes that “it would have been obvious to one of ordinary skill in the art . . . to provide the APA with a freely movable blocking member in order to limit the parts for assembly.” Id. In response to the Examiner’s statement that “APA does not expressly disclose that the ball is freely movable,” Appellant points out that the Specification “expressly discloses that the ball is not freely movable, but [is] retained in the blocking position.” Br. 16 (citing Spec. 2, paras. [005] and Appeal 2011-001296 Application 10/986,820 2 [006]). Appellant also points out that “[v]om Hofe, in an unrelated field of packaging containers for ‘a liquid or free-flowing product,’ discloses ‘a metering device with a ball valve which ball valve closes the product dispensing opening of the container when the container is tilted,” whereas APA “describes certain prior art sharps containers where a metal ball was configured to normally block the needle aperture.” Br. 17-18 (citing vom Hofe, Abstr. and col. 2, ll. 26-48, and Spec. 2, paras [006]-[008]). Appellant argues that “applying the teachings of vom Hofe’s ball valve (fitted to a container after it is filled), which is designed to keep the blocking member from normally blocking the aperture, to APA’s sharps containers designed specifically to have a metal ball normally block the needle aperture, would render the APA sharps containers unworkable as described and intended” and/or “incapable of performing their intended function.” Br. 18 and 19. In other words, Appellant argues that “APA modified to have a freely movable normally open member is inapposite to APA’s spring biased normally closed blocking member, particularly when the modification is performed by removing the very structure that makes APA functional, and, as acknowledged by the Examiner, would have been recognized by one of ordinary skill in the art as the necessary additional structure in APA.” Br. 18 I am persuaded by Appellant’s arguments that the Examiner’s modification of “provid[ing] the APA with a freely movable blocking member” 17 as taught by vom Hofe would render APA unfit for its intended purpose and would change the principle of operation of APA. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic Appeal 2011-001296 Application 10/986,820 3 principles under which the [primary reference] construction was designed to operate.” (Emphasis added)). In Ratti, the modification suggested by the Examiner changed the basic principle of sealing from attaining sealing through a rigid, press-fit, interface between the components, to attaining sealing by providing a resilient interface between the components. Id. at 811-13. This modification fundamentally changed the technical basis of how a seal performed its sealing function and how a sealed interface was attained. In the present case, the Examiner’s proposed modification of APA by the teachings of vom Hofe would similarly fundamentally change the technical basis of how the blocking member or ball performed its blocking function and how a blocking of the opening was attained. The sharps container in APA functions to contain sharps or needles by having a ball normally block the needle aperture or opening, wherein the ball only moves away from the aperture or opening when a needle is inserted into the aperture or opening to move the ball out of the way in order for a needle to be inserted into the interior of the box of the sharps container. Spec. 2, paras. [005] and [006]. First, the Examiner’s modification of “provid[ing] the APA with a freely movable blocking member” 17 as taught by vom Hofe would add superfluous structure to the APA sharps container because the Examiner has not indicated that the freely movable blocking member or ball of vom Hofe would be “substituted” for the APA’s normally closed blocking member as suggested by my colleagues. Rather, the Examiner has merely added an unnecessary freely movable blocking member or ball to the APA sharps container which already has a normally closed blocking member or ball. Appeal 2011-001296 Application 10/986,820 4 Second, even if the Examiner had proposed to modify APA by substituting the freely movable blocking member 17 as taught by vom Hofe for the normally closed blocking member or ball of APA, the modification would be improper because APA would have its basic principle of operation changed and would be rendered unfit for its intended purpose. Instead of normally blocking the needle aperture except when the needle is inserted as taught by the APA, the APA as modified by the teachings of vom Hofe would always be open except when the sharps container is turned upside down so that the force of gravity causes the ball to block the aperture or opening. This would clearly be a “change in the basic principles” of operation of APA as the APA sharps container would no longer be normally closed to keep needles from falling out of the box when in the open position. In addition, the Examiner’s proposed modification would cause the modified APA to not function as intended (i.e., keep the needles from falling out of the box when in the open position by forcing the blocking member or ball away from the aperture or opening only by action of the insertion of the needle). See Spec. 2, para. [005]. Moreover, it is not clear how it would be possible for one of ordinary skill in the art to substitute the freely movable blocking member or ball 17 as taught by vom Hofe for the normally closed blocking member or ball of APA and still have the APA sharps container prevent needles from falling out when in the open position. If my colleagues are saying that one of ordinary skill in the art would know how to perform this substitution while maintaining the requisite function of the sharps container, I disagree because APA has only four paragraphs of disclosure (i.e., Spec. 1, para. [003] through Spec. 2, para. [006]) and the functioning of the blocking member or Appeal 2011-001296 Application 10/986,820 5 ball is not described in sufficient detail for one of ordinary skill in the art to know how to perform the substitution. If my colleagues are saying that the Examiner is substituting the entire adapter part 1 as taught by vom Hofe onto the sharps container of APA in place of APA’s blocking mechanism, then the Examiner’s reason for modifying, namely, “in order to limit the parts for assembly” by no longer needing additional structure such as a spring or resilient member, lacks rational underpinning because the additional structure of the adapter part 1 with blocking member or ball 17 as taught by vom Hofe does not limit the parts for assembly, but rather adds more parts. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that “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.”). The Examiner responds that “[i]t has been held that omission of an element and its function is obvious if the function of the element is not desired.” Ans. 10-11 (citing to Ex parte Wu, 10 USPQ.2d 2031 (BPAI 1989)). It is believed that the Examiner is referring to omitting the spring or resilient member of APA (see Ans. 5) from the normally closed blocking member or ball. However, the Examiner has not cited to any evidence that APA does not desire the function of the spring or resilient member. In fact, the APA clearly requires the spring or resilient member for the blocking member to be normally closed and thus, block exit of the needles from the sharps container at all times except when a needle is to be inserted into the box in the interior of the sharps container. The Examiner is reading the drawbacks discussed in Appellant’s Specification as background to the present invention as evidence that APA did not desire to have its blocking Appeal 2011-001296 Application 10/986,820 6 member be spring biased which is not the case. See Spec. 2, paras. [007] and [008]. The basic principle of operation of APA requires a spring or resilient member to bias the blocking member or ball so that the aperture or opening is normally closed against egress of needles. My colleagues also find unpersuasive Appellant’s argument that “neither vom Hofe, nor APA discloses or suggests a blocking member that does not block the opening, as recited in Appellant’s claim 1” (Br. 19) and note that “the Examiner did not rely upon APA for this teaching” and “it is evident from figure 3 [of vom Hofe] that in at least the upright orientation shown, the valve ball does not block opening 19.” This misses the point of Appellant’s argument which is that APA and vom Hofe do not teach “a blocking member that does not block the opening, as recited in Appellant’s claim 1,” i.e., “a blocking member comprising a freely movable body which blocks the opening when the opening is positioned so that at least one needle accommodated in the space is urged toward the opening, and otherwise, does not block the opening.” Br. 19 (emphasis added); see also App. Br., Clms. App’x. I am persuaded by Appellant’s argument that neither APA nor vom Hofe teaches a blocking member that does not block the opening at all times when the opening is not positioned so that at least one needle accommodated in the space is urged toward the opening and a freely movable body blocks the opening. Inasmuch as the majority’s opinion has not persuaded me that the Examiner’s proposed modification of APA by the teachings of vom Hofe would prevent the APA sharps containers from being rendered “unworkable as described and intended” and would not change the basic principle of operation of the APA sharps container as argued by Appellants, I would Appeal 2011-001296 Application 10/986,820 7 reverse the Examiner’s rejections, under 35 U.S.C. § 103(a), of claims 1, 4 and 5 as unpatentable over APA and vom Hofe, and claims 6-11 as unpatentable over APA, vom Hofe, and Porcelli, and I respectfully dissent- in-part.