Ex Parte Salto et al

Patent Trial and Appeal Board

Mar 18, 2013

11452643 (P.T.A.B. Mar. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DAVID J. SALTO and
EUGENE E. WEILBACHER
__________

Appeal 2011-004920
Application 11/452,643
Technology Center 3700
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a safety
shields for medical needles. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses “manually activated safety shields” for
medical needles (Spec. 1:8-10). Figure 3 of the Specification is shown
below:
App
App

Figu
4:19
mem
such
from
exten
eal 2011-0
lication 11
re 3 shows
). The Spe
ber, such
as … a tu
a retracte
ded posit
The Spe
04920
/452,643
a cross-se
cification
as … barre
bular shiel
d position
ion … whe
cification’
ction of th
discloses
l 12” (id.
d 14 … m
… whereb
reby the n
s Figure 6
2
e distal po
that the ap
at 7:7-8) a
ounted wit
y the need
eedle 16 i
, in relevan
rtion of th
paratus in
nd a “seco
h the barr
le 16 is ex
s covered”
t part, is s
e apparatu
cludes “a f
nd tubular
el 12 and
posed, to
(id. at 7:1
hown belo
s (id. at
irst tubula
member,
… movabl
an
5-18).
w:

r
e
Appeal 2011-004920
Application 11/452,643

3
Figure 6 shows a perspective view of the barrel of the apparatus (id. at
5: 3). The Specification discloses that a “distal portion 36 of the barrel 12
includes a post 40” (id. at 8:8-11). “Barrel 12 … includes a channel such as,
for example, race 46” (id. at 8:16). “[R]ace 46 and post 40 define a cavity
44 configured for slidable movement of the shield 14.… The race 46 and
post 40 guide and support the shield 14 during travel in the cavity 44.” (Id.
at 8:16-18.)
Claims 1-3, 5-14, 16, 18-26, and 46-55 are on appeal. Claim 1 is
representative and reads, in part, as follows:
1. A safety apparatus comprising:
a first member including a proximal portion defining a cavity and a
distal portion including an elongated post, the elongated post defining a
longitudinal bore and being configured to receive a needle cannula, wherein
the distal portion of the first member further includes a cylindrical race
positioned about the elongated post such that the cylindrical race and
elongated post define a second annular cavity, the cylindrical race defining a
longitudinal slot extending through the cylindrical race;
a second member mounted with the first member, the second member
being movable between a first position whereby the needle is exposed and a
second position whereby the needle is covered; and
a lock mounted on the elongated post of the first member….

Claim 1 also requires that the lock includes a tang and a flange,
separated by a gap, but those limitations are not relevant to the dispositive
issue in this appeal.
The Examiner has rejected claims 1-3, 5-10, 12-14, 16, 18, and 19
under 35 U.S.C. § 103(a) as obvious in view of Altschuler1 and Haber.2 The

1 Altschuler, US 5,318,547, June 7, 1994.
2 Haber et al., US 4,947,863, Aug. 14, 1990.
Appeal 2011-004920
Application 11/452,643

4
Examiner has also rejected claims 1-3, 5-14, 16, 18-26, 46-52, 54, and 55 as
obvious in view of Altschuler, Haber and Paris,3 and claim 53 as obvious in
view of Altschuler, Haber, Paris and Jansen.4 Since the same issue is
dispositive for all of these rejections, we will consider them together.
The Examiner finds that Altschuler discloses a safety apparatus
meeting the limitations of claim 1, including a first member including “a
distal portion including an elongated post (Fig. 1 … post generally indicated
at 21 and 19)” (Answer 5). With respect to the cylindrical race required by
claim 1, the Examiner finds that the “distal portion of the first member
further includes a cylindrical race positioned about the elongated post … [to]
define a second annular cavity … (see cylindrical race formed between
member 23 and the post in Fig. 4 …)” (id.). The Examiner finds that Haber
discloses “a flange and tang locking system” (id.) as required by claim 1,
and concludes that it would have been obvious to combine Haber’s lock with
Altschuler’s apparatus (id. at 6).
Appellants contend that Altschuler does not disclose a cylindrical race
positioned about the elongated post, as recited in claim 1: “Altschuler’s
syringe and needle assembly 12 does not include any structure about conical
end portion 19 and as such does not define a second annular cavity with the
elongated post” (Appeal Br. 12).
We agree with Appellants that the Examiner has not shown that the
cited references would have made obvious a safety apparatus having a distal

3 Paris, US 4,911, 693, Mar. 27, 1990.
4 Jansen et al., US 6,193,696 B1, Feb. 27, 2001.
App
App

porti
the p
Figu
syrin
(Alts
gene
desig
havin
end o
adap
need
assem
tubu
recip
… an
gene
mem
show
eal 2011-0
lication 11
on includi
ost. Figur
re 3 shows
ge “showi
chuler, co
Altschul
rally desig
nated 12”
g a cylind
f body 14
ter 21 hav
le 23” (id.
bly 11 co
lar sheath
rocal slidi
d an exten
The Exa
rally indic
ber 23 and
a cylindr
04920
/452,643
ng an elon
e 3 of Alts
a longitu
ng the inn
l. 2, ll. 43-
er disclose
nated 11,
(id. at 3, l
rical body
“terminat
ing a moun
at col. 3, l
mprises a
member 3
ng movem
ded posit
miner’s st
ated at 21
the post”
ical race b
gated post
chuler is s
dinal sectio
er sheath m
50).
s that the
and a syrin
l. 1-5). Th
14” (id. a
es in a con
ting mem
l. 16-19).
n outer tub
1 telescopi
ent relativ
ion coverin
atement of
and 19” an
(Answer
etween ne
5
and a cyli
hown belo
nal view
ember in
device com
ge and ne
e “assemb
t 3, ll. 7-5
ical end p
ber 22 for
Altschule
ular sheat
cally rece
e thereto b
g the nee
the reject
d to a “cy
5). Howev
edle 23 an
ndrical rac
w:
of a sheath
its retract
prises “a
edle assem
ly 12 com
). Altschu
ortion 19 p
receiving
r discloses
h member
ived within
etween th
dle 23” (id
ion points
lindrical r
er, Altsch
d post 19/2
e position
ed hypode
ed position
sheath ass
bly, gene
prises a sy
ler disclos
rovided w
an elonga
that the “
29 and an
member
e retracted
. at col. 3,
to the “po
ace formed
uler’s figu
1; the onl
ed about
rmic
”
embly,
rally
ringe 13
es that one
ith an
ted, hollow
sheath
inner
29 for
position
ll. 35-40)
st
between
res do not
y element

.

Appeal 2011-004920
Application 11/452,643

6
between the needle and the post is mounting member 22, which does not
define an annular cavity with the post, as required by claim 1.
The Examiner also reasons that “portion 14 is part of the body of 19
extending into member 29. As member 19 is surrounded by member 29 as it
extends into member 29[,] the Examiner finds a cavity to be formed between
the outside of 19 and the inside of 29” (Answer 15-16). As we understand it,
the Examiner’s reasoning is that outer tubular sheath member 29
corresponds to the cylindrical race because it forms a cavity with cylindrical
body 14 of syringe 13, which corresponds to the post of claim 1 because it is
“part of” end portion 19 of the syringe.
We disagree with the Examiner’s claim interpretation, because it
requires Altschuler’s syringe body 14 to be two discrete elements of the
claimed device: (1) the first member’s “proximal portion defining a cavity”
and (2) the first member’s elongated post. Although claims are given their
broadest reasonable interpretation during examination, In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000), “claims are interpreted with an eye toward
giving effect to all terms in the claim.” Bicon, Inc. v. Straumann Co., 441
F.3d 945, 950 (Fed. Cir. 2006). To do otherwise would “requir[e] the public
to look past the plain language of the claims and guess whether a detailed
description of a structural feature in a claim is superfluous to the scope of
the claimed invention and unnecessary to establish infringement.” Id. at
951. The Examiner’s rejection relies on a single structural element in the
prior art to meet two discrete structural elements in the claims, and is
therefore unreasonably broad. We therefore reverse the rejection of
Appeal 2011-004920
Application 11/452,643

7
independent claim 1 and dependent claims 2, 3, 5-10, 12-14, 16, 18, and 19
as being obvious in view of Altschuler and Haber.
The Examiner has also rejected claims 1-3, 5-14, 16, 18-26, 46-52, 54
and 55 as obvious in view of Altschuler, Haber and Paris. Like claim 1,
independent claims 20, 26, and 46 require a barrel that comprises (1) a
proximal portion defining a cavity and (2) a distal portion including an
elongated post and a cylindrical race positioned about the post so as to
define an annular cavity. The rejection based on Altschuler, Haber, and
Paris is therefore reversed for the reasons discussed above.
Finally, in rejecting claim 53 as obvious in view of Altschuler, Haber,
Paris and Jansen, the Examiner relies on Jansen only to show dependent
claim limitations (Answer 15). We therefore reverse the rejection of claim
53 for the same reasons.
SUMMARY
We reverse the rejection of claims 1-3, 5-14, 16, 18-26 and 46-55
under 35 U.S.C. § 103(a).

REVERSED

lp