Ex parte Rashman

Board of Patent Appeals and Interferences

Sep 18, 2000

08410852 (B.P.A.I. Sep. 18, 2000)

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written for publication and is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD RASHMAN
____________
Appeal No. 2000-0798
Application No. 08/410,852
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and STAAB, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
13, all the claims remaining in the application.
The claims on appeal are drawn to an autoclavable medical
instrument (claims 1 to 6) and a method of making a medical
instrument (claims 7 to 13). The examiner states (answer,
page 3) that claims 1 and 7 are erroneously presented in the
appendix (Appendix A) of appellant’s brief, and are correctly
Appeal No. 2000-0798
Application No. 08/410,852
These claims are as amended by the amendment filed on1
Sept. 29, 1997.
Paper No. 24, Dec. 4, 1998, the third final rejection in2
the case.
2
written in an appendix to the examiner’s answer, but since no
such appendix to the answer is found, claims 1 and 7 (the only
independent claims on appeal) are reproduced as follows: 1
1. An autoclavable medical instrument
comprising:
a metallic shaft having an end; and
a colored synthetic handle molded to encase
the end of the metallic shaft wherein the color
of the synthetic handle identifies the
instrument as belonging to a predetermined
group.
7. A method of making a medical instrument
readily identifiable comprising the steps of
producing a metal portion of the instrument
having a shaft; and
encapsulating an end of the shaft in a
colored autoclavable synthetic material such
that the encapsulating synthetic material
identifies the medical instrument as belonging
to a predetermined group.
The references applied in the final rejection are:2
Hamas 4,671,916 Jun. 9,
1987
Bedner et al. (Bedner) 4,798,000 Jan. 17,
1989
Appeal No. 2000-0798
Application No. 08/410,852
The Eaton and Linden patents are already of record in3
the application. A copy of Rubricuis is enclosed herewith.
3
Additional references applied herein in a rejection pursuant
to 37 CFR § 1.196(b) are:3
Rubricuis 3,740,779 Jun.
26, 1973
Eaton et al. (Eaton) 3,750,282 Aug. 7,
1973
Linden 4,882,867 Nov. 28,
1989
Claims 1 to 13 stand finally rejected under 35 U.S.C. §
103(a) as unpatentable over Hamas in view of Bedner.
After fully conssidering the record in light of the
arguments presented in the appellant’s brief and reply brief,
and in the examiner’s answer, we conclude that the appealed
claims are patentable over the combination of references
applied in the final rejection.
On page 5 of the answer, the examiner explains the basis
for the rejection as:
It is felt that one of ordinary skill would
be aware of techniques for forming both metal
and plastic implements. Bedner notes tha both
metal and plastic may be molded for use as
handles. He states that metal is preferred due
Appeal No. 2000-0798
Application No. 08/410,852
4
to its weight and rigidity. He also states that
molding a handle is relatively inexpensive.
With this information in mind one of
ordinary skill would consider improving Hamas.
Hamas states that while plastic plugs of various
colors and shapes are useful for identification
of instruments coloring the entire handle might
be more desiralbe if it were not more expensive.
The solution would appear to be obvious. Rather
than drilling holes and inserting plastic plugs
merely mold plastic around the handle. Thus a
better and cheaper instrument is produced since
the weight and rigidity of metal is retained and
the entire handle colored by an inexpensive
process.
We do not agree with the examiner’s reasoning. Claim 1
requires that the synthetic handle be "molded to encase the
end of the metallic shaft," and claim 7, "encapsulating an end
of the shaft in a colored autoclavavle synthetic material."
The examiner does not identify where in the Hamas patent it is
disclosed that "coloring the entire handle might be more
desirable [than plastic plugs] if it were not more expensive";
presumably, this refers to Hamas’ disclosure at col. 3, lines
17 to 19, that using plastic plugs "is less costly than
painting the stainless steel handles of each instrument." In
any event, we find no disclosure in either Hamas or Bedner of
molding or encapsulating the end of the instrument shaft, as
claimed. The examiner states on page 2 of the final rejection
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Application No. 08/410,852
5
that "Bedner shows a molded handle encasing the shank of an
autoclavable knife," but we find no such disclosure in Bedner;
rather, this reference discloses a handle which is all metal
(col. 1, line 14) or, arguably, all plastic (col. 1, lines 6
and 7) and which holds a detachable surgical blade 40 at one
end. Absent any teaching or suggestion in the prior art of
molding or encapsulating the end of the instrument shaft, the
examiner’s conclusion that it would have been obvious to
"merely mold plastic around the handle" appears to be based on
improper hindsight gleaned from appellant’s own disclosure.
It follows that a prima facie case of obviousness has not been
established.
The rejection of claims 1 to 13 therefore will not be
sustained.
Appeal No. 2000-0798
Application No. 08/410,852
6
Rejection Pursuant to 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), claims 1 to 5 and 7 to 12
are rejected under 35 U.S.C. § 103(a) as unpatentable over
Rubricuis in view of Eaton or Linden, taken with Hamas.
Rubricuis discloses a medical instrument comprising a
metal scalpel blade 1 attached to a handle 2 which is made of
polypropylene (col. 4, line 14) and is colored so that
different size scalpel blades can be easily identified (col.
2, lines 44 and 49). Rubricuis does not specifically
discloses that the instrument should be autoclavable, but it
would have been obvious to make the handle out of autoclavable
plastic in view of Rubricius’ disclosure that it can be
"presterilized", and the teaching of Hamas that plastic used
in surgical instruments should be autoclavable (col. 2, lines
46 to 52).
Claim 1 calls for the handle to be molded to encase the
end of the metallic shaft, and claim 7, for encapsulating an
end of the shaft in synthetic material. Rubricuis discloses
that scalpel blade 1 is attached to the handle 4 by "snap
clamp 2 or other suitable means" (col. 2, lines 11 to 13).
Both Eaton and Linden disclose medical instruments in which a
Appeal No. 2000-0798
Application No. 08/410,852
7
plastic handle (Eaton 16, Linden 1) is attached to the
metallic portion (blades 18 of Eaton, tools 2, 3 of Linden) by
molding the handle would the metallic portion (Eaton, col. 2,
lines 50 to 54; Linden,
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Application No. 08/410,852
8
Fig. 4 and col. 2, line 60, to col. 3, line 2). In view of
either of Eaton or linden, it would have been obvious to
employ molding as the "other suitable means" referred to by
Rubricuis at col. 2, line 13, for attahing the metal scalpal
blade 1 to plastic handle 4, noting that Rubricuis states at
col. 2, lines 38 and 39, tht plastic can be "easily injection
molded." The use of molding to attach Rubricuis’ handle 4 to
the end of blade 1 would have been the obvious selection of a
known attachment method, and would have been particularly
suggested to one of ordinary skill in the art by Eaton’s
disclosure that such a method of attachment is strong, rigid
and inexpensive (col. 4, lines 36 to 40).
With regard to claims 2 and 9, the handle of the
Rubricuis scalpel, beings polypropylene, would inherently be
nondegradable in body fluids, as appellant discloses at page
6, lines 25 and 26 of the specification.
As for claims 4 and 11, one of ordinary skill would
obviously select a polypropylene for the handle of the
Rubricuis device which would resist the autoclave
temperatures; seee Hamas’s disclosure at col. 5, last two
paragraphs, of the desirability of using plastics having a UL
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Application No. 08/410,852
9
temperature index of around 120EC. (248EF) or higher, most
preferably of a material which can be heated to 250EC.
(482EF.).
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Application No. 08/410,852
10
The recitation in claims 5 and 10 of a handle which is
nonporous and defines substantially no interstices with the
shaft would appear to be the inherent result of the molding
process, and in any event these would obviously be desirable
characteristics of a medical device.
Conclusion
The examiner’s decision to reject claims 1 to 13 is
reversed. Claims 1 to 5 and 7 to 12 are rejected pursuant to
37 CFR § 1.196(b).
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
REVERSED; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
Appeal No. 2000-0798
Application No. 08/410,852
11
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
SLD
Appeal No. 2000-0798
Application No. 08/410,852
12
BLAKELY, SOKOLOFF, TAYLOR
& ZAFMAN
7TH FLOOR
12400 WILSHIRE BLVD
LOS ANGELES, CA 90025
Shereece
Appeal No. 2000-0798
Application No. 08/410,852
APJ CALVERT
APJ KEYBOARD()
APJ KEYBOARD()
REVERSED
Prepared: June 28, 2001