Ex parte Rechtin

Board of Patent Appeals and Interferences

Dec 15, 1997

08045323 (B.P.A.I. Dec. 15, 1997)

Application for patent filed April 7, 1993.1
We note that although appellant cancelled claim 19 in2
the Amendment Under Rule 116 filed July 29, 1994 (Paper No.
(continued...)
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL D. RECHTIN
__________
Appeal No. 95-3421
Application 08/045,3231
__________
ON BRIEF
__________
Before CALVERT, ABRAMS and CRAWFORD, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 9 to
18, 20 and 21 . Claims 1 to 8, the other claims remaining in2
Appeal No. 95-3421
Application 08/045,323
(...continued)2
6), the examiner included claim 19 as one of the “claims
rejected” in part 3 of the Advisory Action of August 22, 1994
(Paper No. 9), and as one of the claims under rejection in the
examiner's answer. However, in view of the indication in
Paper No. 9 that the proposed amendment would be entered upon
the filing of an appeal, we will consider claim 19 as having
been cancelled.
2
the application, stand withdrawn from consideration as being
directed to a nonelected invention. 37 CFR § 1.142(b).
Claim 21 is representative of the appealed subject mater,
and reads:
21. An article of manufacture for disinfecting a medical
sharp for use on a patient, comprising:
a medical sharp having a syringe housing and coupled
needle with a tip; and
a disinfectant housing means integrally coupled to said
syringe housing, said disinfectant housing means for holding
disinfectant and including a disinfectant reservoir and a
reservoir sleeve in communication with said reservoir, said
reservoir sleeve of said disinfectant housing means being
initially held fixed apart from the tip before use of said
needle and after use of said needle said reservoir sleeve is
displaceable away from said syringe housing to at least
partially enclose said needle, including the tip, and said
needle and the tip remain in their fixed positions relative to
said syringe housing before and after use of said medical
sharp.
The references applied by the examiner in the final
rejection are:
Appeal No. 95-3421
Application 08/045,323
3
Armao 3,134,380 May 26,
1964
Hall 4,416,663 Nov.
22, 1983
Miskinyar 4,894,054 Jan.
16, 1990
Spier et al. (Spier) 4,921,490 May 1,
1990
Hart 5,188,614 Feb.
23, 1993
Boese 5,195,983 Mar. 23,
1993
The claims stand finally rejected under 35 U.S.C. § 103
as unpatentable over the following combinations of references:
1. Claims 9, 11, 12, 14, 16, 20 and 21, over Hall in view of
Boese or Spier.
2. Claims 13 and 18, over Hall in view of Boese or Spier,
further in view of Armao.
3. Claims 10 and 15, over Hall in view of Boese or Spier,
further in view of Miskinyar.
4. Claim 17, over Hall in view of Boese or Spier, further in
view of Hart.
We will first consider the rejection of claim 21, the
broadest claim on appeal.
Appellant and the examiner both seem to agree (brief,
page 4; answer, page 4) that the recited structure differs
Appeal No. 95-3421
Application 08/045,323
4
from that of Hall in that Hall does not disclose a reservoir
sleeve which is “initially held fixed apart from the tip
before use.” Rather, in the Hall apparatus, the tip 18 of
needle 12 is within the sleeve 26 before use (col. 5, lines 4
to 11). The examiner, however, contends that such a
modification of the Hall syringe would have been obvious
because (answer, pages 3 to 4):
if one were willing to forego the advantages of
having the disinfecting reservoir contact the needle
before use (i.e. assuring that the needle is sterile
before use) as does Hall, it would have been obvious
to one of ordinary skill in the art to “fix” or
maintain the sleeve away from the needle until after
use.
Also, referring to the needle guard disclosed by Boese and the
lockable spring/cover of Spier, the examiner asserts that
(answer, page 4):
It would have been obvious to one of ordinary skill
in the art to use the retraction/extension system of
either Spier et al or Boese in the invention of Hall
when one did not wish the sleeve 26 to come into
contact with the needle until after use or if it
were felt that the sleeve would interfere with use
if not in a locked retracted position during use.
After fully considering the record in light of the
arguments presented in appellant's brief and the examiner's
Appeal No. 95-3421
Application 08/045,323
5
answer, we conclude that the subject matter recited in claim
21 is patentable over the prior art applied.
Under §103, the teachings of references can be combined
only if there is some teaching, suggestion or incentive to do
so. ACS Hospital Systems, Inc. v. Montefiore Hospital, 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). We do
not find any such teaching or suggestion here. The purpose of
the Hall apparatus is to automatically sterilize the syringe
needle after each inoculation, while still permitting rapid
successive uses of the same syringe (col. 1, lines 35 to 39).
In the Spier and Boese syringes, by contrast, the shield or
guard is located over the end of the needle after use, which
would prevent rather than allow rapid reuse of the same
needle. As we understand the examiner's position, it is that
it would have been obvious to utilize the guard-operating
system of Spier or Boese to control the action of Hall's
disinfectant reservoir/sleeve 26, but we perceive no
motivation for one of ordinary skill to do this, for the
sleeve would then be locked in the forward position after one
use and the needle could not be rapidly reused. We also do
not consider that there would be any suggestion to one of
Appeal No. 95-3421
Application 08/045,323
6
ordinary skill to fix sleeve 26 of Hall away from the tip of
the needle prior to its first use; since the purpose of Hall's
apparatus is to allow a multitude of inoculations to be made
by the same needle in rapid succession, it is not evident what
would be gained by modifying it in this fashion.
Accordingly, the rejection of claim 21 will not be
sustained. The rejection of claims 9, 11, 12, 14, 16 and 20,
which are more limited than claim 21 and are rejected over the
same combination of references, will likewise not be
sustained. We also will not sustain the rejections of claims
10, 13, 15, 17 and 18, since the additional references applied
thereagainst do not supply the deficiencies noted with regard
to the combination of Hall in view of Boese or Spier.
Conclusion
The examiner's decision to reject claims 9 to 18, 20 and
21 is reversed.
REVERSED
Appeal No. 95-3421
Application 08/045,323
7
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge)
Appeal No. 95-3421
Application 08/045,323
8
Michael D. Rechtin
9080 N. Greenbrook Court
River Hills, WI 53217