Ex Parte Reid

Patent Trial and Appeal Board

Aug 3, 2016

12264509 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/264,509 11104/2008
22494 7590 08/05/2016
DALY, CROWLEY, MOFFORD & DURKEE, LLP
SUITE 301A
354A TURNPIKE STREET
CANTON, MA 02021-2714
Alan Reid
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.
MMED-002DUS 1298
EXAMINER
SCHMIDT, EMILY LOUISE
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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):
docketing@dc-m.com
amk@dc-m.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN REID
Appeal2014-009064
Application 12/264,509
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL 1
This Appeal under 35 U.S.C. § 134(a) involves claims 1-3, 5-11, and
15-29 (App. Br. 1). Examiner entered rejections under and 35 U.S.C. §112,
first paragraph and 35 U.S.C. §102(e). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the Real Party in Interest as the inventive entity, Alan
Reid (App. Br. 2).
Appeal2014-009064
Application 12/264,509
STATEMENT OF THE CASE
Appellant's invention "relates generally to medical devices and, more
particularly, to medical devices having a needle for insertion into a patient"
(Spec. i-f 3). Independent claims 1, 17, 21, and 26 are representative and
reproduced in the Claims Appendix of Appellant's Appeal Brief.
Claim 28 stands rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement.
Claims 1-3, 5-11, and 15-292 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Huet. 3
Written Description:
ISSUE
Does the preponderance of evidence on this record support
Examiner's finding that Appellant's Specification fails to provide written
descriptive support for the claimed invention?
2 We note that claim 5 depends from canceled claim 4 and claim 22
incorrectly depends from itself (see Appellant's Claims Appendix).
3 Huet, US 6,663,604 Bl, issued Dec. 16, 2003.
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Application 12/264,509
FACTUAL FINDINGS (FF)
FF 1. Appellant's Figure 2A is reproduced below:
L,"1(" 2 .. ·4 ,,_." . .1. ... Y.f
Figure 2A shows that "the structure of the device 100 leverages the
force applied to the wing portions 104 and the first member 110 to ease
extraction of the needle from the patient" (Spec. i-f 42), and that "[t]he
applied pressure forces the central structural member 106 and wings 104 up
and away from the base member 108 and the needle 102 retracts into the
cavity 182 in first member 110" (id. at i-f 43).
ANALYSIS
The device of Appellant's claim 28 requires that "the cavity
arrangement leverages the force applied to the wing portions and the first
member to ease extraction of the needle from the patient" (see Appellant's
claim 28).
Examiner finds that "[t]he specification at the time of filing does not
specifically disclose that the cavity arrangement leverages the force applied
to the wings" (Final Act. 2).
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Application 12/264,509
Appellant "points to the text appearing from page 7, paragraph [0042]
to page 8, paragraph [0043] of [Appellant's] disclosure" and contends that
"the cavity 182 is part of the structure of the device 100" and that " [ s] ince
the 'structure of the device 100 leverages the force applied to the wing
portions 104 and the first member 110 to ease extraction of the needle from
the patient,' the cavity 182 may also leverage 'the force applied to the wing
portions and the first member to ease extraction of the needle from the
patient"' (App. Br. 14; see also Reply Br. 8-9).
We are not persuaded. Claim 28 recites "the cavity arrangement" and
does not recite "the structure of the device." As Appellant points out, the
Specification discloses that "the structure of the device 100 leverages the
force" and that "[t]he applied pressure forces the central structural member
106 and wings 104 up and away from the base member 108" (FF 1 ).
Therefore, we agree with Examiner that
Appellant has pointed to the portion of the specification which
recites "the structure of the device 100 leverages the force ... "
[but] this is not the same thing as a cavity arrangement which
leverages the force. The cavity is indicated as 182, [but] a cavity
is an empty space and not the device itself, [and therefore,] it's
not clear how a cavity can leverage force.
(Ans. 3.) Accordingly, we affirm the rejection of claim 28 for failing to
comply with the written description requirement.
Anticipation:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
Examiner's finding that Huet teaches Appellant's claimed invention?
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Appeal2014-009064
Application 12/264,509
FACTUAL FINDINGS (FF)
We adopt Examiner's findings concerning the scope and content of
the prior art (Final Act. 3---6; Ans. 2-3), and repeat the following findings for
emphasis.
FF 2. Huet suggests
Anti-stick device for the safe handling of a needle for
transcutaneous injection, this device being formed by two plates
(F,D) arranged one above the other and fixed to one another by
links (D,C,E,A) such that the device can change from a
configuration in which the two plates are pressed against one
another to a configuration in which they are spaced apart from
one another, providing between them a space surrounded by the
said links, and into which the part (17) of the needle which
penetrated the skin can be retracted as it is removed.
(Huet Abstract; see also Final Act. 3.)
FF 3. Huet's Figure 1 is reproduced below:
Figure 1 shows
The device represented in the figures is formed from a
single wall, for example a semi-rigid sheet cut from a blank of
synthetic material.
This single wall has weakening lines (1-5) which form 5
parallel fold lines that divide the wall into 6 successive panels
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Appeal2014-009064
Application 12/264,509
(A,B,C,D,E,F); panels (F) and (D) respectively form a needle-
carrying plate and a base plate; panels (B), (C) and (E) form
connecting panels between these two plates, and panel (A) forms
a panel suitable for fixing to the needle-carrying plate (F) by
adhesive bonding or welding.
(Huet 1 :65-2:7; see also Final Act. 3-6.)
FF 4. Huet's Figures 4 and 5 are reproduced below:
Figures 4 and 5 show
One (A) of the end panels of the series of panels laid flat
has two elongate parallel apertures (7,8) and the other panel (F)
of the series of panels laid fiat has two lateral lugs (9,10), which
can be folded at right angles to the panel, facing one another
(FIG. 4), and can be introduced into the apertures in panel (A)
when these two panels are pressed against one another (FIG. 5).
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Application 12/264,509
(Huet 2:8-13; see also Final Act. 3---6.)
FF 5. Huet's Figures 8-10 are reproduced below:
Figures 8-10 show
F'W B .~
an adhesive strip (20) is pressed onto the device thus flattened
and onto the skin to hold the needle and the device (FIG. 8) in
place.
To extract the needle, the operator removes the adhesive
strip, raises the lugs (9,10) and pulls them towards him with one
hand to extract the needle from the skin while keeping the central
section (D) pressed against the skin (FIG. 9) with his other hand.
The device deforms due to the fold lines during the process of
extraction such that the piercing branch (17) of the needle
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Appeal2014-009064
Application 12/264,509
remains continuously within the pentagon formed by the panels
(A) to (E) of the device (FIG. 10).
(Huet 2:54---65; see also Final Act. 3---6.)
ANALYSIS
We adopt Examiner's findings concerning the scope and content of
the prior art (Final Act. 3---6; Ans. 2-3), and agree that the claims are
anticipated by Huet. We address Appellant's arguments below.
Claims 1and26:
Appellant's independent claim 1 requires, inter alia, a medical device
having
a housing having first and second portions each having
respective first and second ends, the second portion having a first
position in the use position and a second position in the non-use
position, wherein the second housing portion includes pivotably
coupled first and second pieces such that the first and second
pieces are generally planar in the use position and pivot to the
non-use position.
(see Appellant's claim 1.) Appellant's independent claim 26 similarly
requires, inter alia, a medical device having "a housing having first and
second housing portions, ... " in which "the first housing portion extending
along an axis" (see Appellant's claims 26). Claim 1 further requires a
"longitudinal member extending from the housing in the use position and
captured by the housing in the non-use position, ... the second housing
portion to pivot away from the longitudinal member to the non-use
position," and claim 26 similarly further requires "the longitudinal member
is extended from the housing along the axis and a non-use position in which
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Application 12/264,509
the longitudinal member is captured by the first housing portion" (see
Appellant's claims 1 and 26.)
Appellant describes the task of folding a piece of paper into six
segments (A, B, C, D, E, F) and contends that
the tasks above are illustrative of the device disclosed in Huet. It
is not clear to [Appellant] how one of the six segments ( e,g.,
segment A) of the piece of paper can be interpreted as separate
from the piece of paper, attached to the piece of paper, or extend
from the piece of paper when the segment (e.g., segment A) is
part of the piece of paper.
(App. Br. 6-7; see also Reply Br. 2---6.) Appellant points out to Huet
discloses that "[t]he device represented in the figures is formed from a single
wall" and that "fold lines that divide the wall into 6 successive panels" (App.
7-8, emphasis omitted; see also FF 3).
We are not persuaded. Claims 1 and 26 do not require the housing,
portions, pieces, or members to be "separate" (see Appellant's claims 1 and
26). "[L]imitations are not to be read into the claims from the specification."
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). See also In re Self,
671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the
outset because ... they are not based on limitations appearing in the
claims."). Therefore, we are not persuaded by Appellant's intimation to the
contrary.
Appellant contends that "panel A of Huet is limited to being part of
the housing of Huet' s disclosed device" and that "panel A of Huet cannot
reasonably [be] construed as teaching a 'longitudinal member extending
from the housing in the use position and captured by the housing in the non-
use position,' as required by claim 1" (App. Br. 7; see also Reply Br. 6).
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We do not find this argument persuasive. As discussed above, the
claims do not require the housing, portions, pieces, or members to be
"separate." Therefore, we agree with Examiner that "[s]imply because
member A is attached to the housing does not mean the Examiner must
consider it as part of the housing[;] there is nothing preventing the Examiner
from considering member A as the longitudinal member" (Ans. 2; FF 3).
Further, Huet's Figures 4 and 5 of shows
One (A) of the end panels of the series of panels laid flat
has two elongate parallel apertures (7,8) and the other panel (F)
of the series of panels laid fiat has two lateral lugs (9,10), which
can be folded at right angles to the panel, facing one another
(FIG. 4), and can be introduced into the apertures in panel (A)
when these two panels are pressed against one another (FIG. 5).
(FF 4.) Therefore, we agree with Examiner that Huet teaches
a longitudinal member having first and second ends (Fig. 1
member A free end and end at 1 ), the longitudinal member
extending from the housing in the use position and being
captured by the housing in the non-use position (see transition
from Figs. 8 to 10, extends in 8 and is captured by 9 and 10 in
Fig. 10).
(Final Act. 3; FF 5.)
Appellant argues that "since panel A of Huet is part of the housing of
Huet' s disclosed device, it is impossible for panel A in Huet [to] provide
'pressure on the first end of the longitudinal member causes the first and
second pieces of the second housing portion to pivot away from the
longitudinal member to the non-use position,' as claimed" (App. Br. 1 O; see
also Reply Br. 7). We are not persuaded.
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Appeal2014-009064
Application 12/264,509
Huet's Figures 8-10 show that
To extract the needle, the operator removes the adhesive
strip, raises the lugs (9,10) and pulls them towards him with one
hand to extract the needle from the skin while keeping the central
section (D) pressed against the skin (FIG. 9) with his other hand.
The device deforms due to the fold lines during the process of
extraction such that the piercing branch (17) of the needle
remains continuously within the pentagon formed by the panels
(A) to (E) of the device (FIG. 10).
(FF 5.) Therefore, we agree with Examiner that "as shown in the transition
from Figs. 8-10, pressure on portion A, as A is lifted, causes portions of the
housing to pivot into the non-use position" (Ans. 3).
In regard to claim 26, Appellant contends that
The Examiner rejects independent claim 26 for
substantially the same reasons as independent claim 1. For at
least the reasons discussed above, it is submitted that claim 26 is
patentable at least since Huet neither describes nor suggests ... a
longitudinal member . . . being movable from a use position in
which the longitudinal member is extended from the housing
along the axis and a non-use position in which the longitudinal
member is captured by the first housing portion .. , as required
by claim 26.
(App. Br. 12.)
Therefore, we are not persuaded for the reasons discussed above. We
note that claim 26 does not specify a particular axis other than "the first
housing portion extending along an axis" such that the axis can be in any
direction as long as it extends from the first housing.
Claim 17:
Appellant's independent claim 1 7 requires, inter alia, a method for
providing safety in a medical device comprising "providing a housing for
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Application 12/264,509
receiving a longitudinal member having first and second ends and a channel,
the housing having first and second portions each having first and second
ends, ... " (see Appellant's claim 17).
Appellant contends that "[t]he Examiner rejects independent claim 17
for substantially the same reasons as independent claim 1. For at least the
reasons discussed above, it is submitted that claim 17 is patentable at least
since Huet neither describes nor suggests ... a housing for receiving a
longitudinal member.,, as required by claim 17" (App. Br. 11 ).
Accordingly, we are not persuaded for the reasons discussed above.
Claim 21:
Appellant's independent claim 21 similarly requires, inter alia, a
method of removing a medical device needle comprising "pressuring, in the
use position, an end of a longitudinal member having first and second ends
and a channel into a housing having first and second portions .. . "(see
Appellant's claim 21 ).
Appellant contends that
The Examiner rejects independent claim 21 for
substantially the same reasons as independent claim 1. For at
least the reasons discussed above, it is submitted that claim 21 is
patentable at least since Huet neither describes nor suggests ...
pressuring, in the use position, an end of a longitudinal member
... into a housing .. , as required by claim 21.
(App. Br. 11.)
Therefore, we are not persuaded for the reasons discussed above.
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Application 12/264,509
CONCLUSION OF LAW
The rejection of claim 28 under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement is affirmed.
The rejection of claims 1, 17, 21, and 26 under 35 U.S.C. § 102(e) as
being anticipated by Huet is affirmed. Because they were not separately
argued, claims 2, 3, 5-11, 15, 16, 24, and 25 fall with claim 1, claims 18-20
fall with claim 17, claims 22 and 23 fall with claim 21, and claims 27-29 fall
with claim 26.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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