Ex Parte Sarstedt

Board of Patent Appeals and Interferences

Aug 8, 2012

11587836 (B.P.A.I. Aug. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WALTER SARSTEDT
__________

Appeal 2011-007486
Application 11/587,836
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a blood
drawing device. The Examiner rejected the claims as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

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Statement of the Case
Background
“The invention relates to a blood-drawing device, in particular for
infants and small children or small animals, comprising a blood-holding
receptacle provided on its front end with a needle having a sharpened tip”
(Spec. 1, ll. 3-6).
The Claims
Claims 3-5 are on appeal. Claim 3 is representative and reads as
follows:
3. A blood-drawing device comprising:
a blood-holding receptacle having a front end;
a frustoconically tapered tube of smaller diameter
than the receptacle, extending from the front end, and
opening rearwardly into the receptacle;
a tubular needle fixed on and projecting forwardly
from the tube and having a sharpened front tip;
a porous, air-permeable limiting element engaged
in the tube rearward of the needle, the element being of
such a porosity that blood cannot flow through the
element;
a stop fixing the element in the tube against
forward and rearward movement therein; and
a ventable plunger shiftable in the receptacle
rearward of the element for pressurizing the receptacle,
forcing air therethrough, and expelling blood in the tube
through the needle, whereby when the plunger is vented
blood can flow through the needle into the tube forward
of the element by displacing air rearwardly out of the
tube through the element into the receptacle and from the
receptacle through the plunger.

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The issue
The Examiner rejected claims 3-5 under 35 U.S.C. § 102(b) as
anticipated by McAlister
1
(Ans. 3-4).
The Examiner finds that McAlister teaches a blood sampling syringe
which comprises all of the claimed elements including “a stop (22) fixing
the element in the tube against forward and rearward movement therein”
(Ans. 4).
Appellant contends that “it is clear that there is nothing in McAlister
that, in the words of claim 1 constitutes a „stop fixing the element in the tube
against forward and rearward movement therein‟” (App. Br. 6). Appellant
contends that since the “claims describe a system excluding movement in
either direction, and McAlister clearly permits movement, as freely admitted
by the examiner, in one direction, the claims describe a system different
from that of McAlister” (App. Br. 7).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that McAlister teaches a “stop fixing the
element in the tube against forward and rearward movement therein” as
required by claim 3?
Findings of Fact
1. The Specification teaches the “the limiting element maintains a
defined and unchanged position in the blood-holding receptacle, preferably
as the result of an internal stop against which the limiting element is inserted
and pressed in during manufacture” (Spec. 5, ll. 1-4).

1
McAlister et al., US 4,703,763, issued Nov. 3, 1987.
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2. Figure 1 of McAlister is reproduced below:

“The FIGURE is a longitudinal sectioned view of a syringe” (McAlister, col.
2, ll. 6-7).
3. McAlister teaches that the “syringe assembly uses a
conventional cylindrical syringe barrel 10 which has a first open end 16 and
a second end 12 adapted to receive either a hyperdermic needle or a cap”
(McAlister, col. 2, ll. 14-17).
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4. McAlister teaches that “[p]lug element 20 has an exterior
member 22 made of Kraton. Member 22 is formed to resiliently engage the
interior of barrel 10 to form a seal between barrel 10 and member 22” (Spec.
McAlister, col. 2, ll. 26-30).
5. McAlister teaches that “[s]ealing member 24 is held firmly
within an enlarged section of longitudinal passage 26 of member 22”
(McAlister, col. 2, ll. 32-33).
6. McAlister teaches that “[s]ealing member 24 is arranged to pass
air through the center of plug 20 but to seal and prevent passage of fluid
such as blood” (McAlister, col. 2, ll. 34-36).
7. McAlister teaches that having “obtained a blood sample, the
technician may remove the needle from the patient‟s artery and can
thereafter use plunger 28 to move plug element 20 toward neck 14 to expel
the blood sample” (McAlister, col. 3, ll. 41-44).
Principles of Law
“It is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
with the specification.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987).
Analysis
We begin with claim interpretation. The blood-drawing device of
Claim 3 requires “a stop fixing the element in the tube against forward and
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rearward movement therein” (Claim 3). The Specification teaches that “the
limiting element maintains a defined and unchanged position in the blood-
holding receptacle, preferably as the result of an internal stop against which
the limiting element is inserted and pressed in during manufacture” (Spec. 5,
ll. 1-4; FF 1).
The reasonable interpretation of the stop element of claim 3, in light
of the Specification, is that the element does not move. That is, claim 3
requires a stop element which prevents movement of the air-permeable
limiting element either forward or backward.
McAlister clearly teaches a stop element which prevents rearward
movement of the air-permeable limiting element (see, e.g., FF 2, 5, 6).
However, McAlister equally clearly teaches that having “obtained a blood
sample, the technician may remove the needle from the patient‟s artery and
can thereafter use plunger 28 to move plug element 20 toward neck 14 to
expel the blood sample” (McAlister, col. 3, ll. 41-44; FF 7). Thus, the stop
element does not prevent forward motion of the plug element 20, which is
the air-permeable limiting element (FF 6).
The Examiner finds that the “friction fit of the element (22) acts as
the claimed stop due to the friction fit preventing the forward or rearward
movement of the stop during the collection of the blood sample. The element
(22) of McAlister et al only moves through the application of pressure by the
distal end of the plunger assembly” (Ans. 5).
We are not persuaded. The Examiner does not provide any reason
why the stop fixing element is reasonably interpreted, in light of the
Specification, as only fixing the tube while collecting blood, but may
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suddenly be permitted to move when the blood is expelled. This is not
consistent with either the plain language of claim 3 nor the teachings of the
Specification (FF 1). The plain language of claim 3 requires that the blood
is expelled by pressure of the air, not the physical movement of the stop and
the air-permeable limiting element themselves (see Claim 3).
We also do not find persuasive the Examiner‟s argument that the
“current claim language does not explicitly limit the stop to being
permanently located or fixed within the tube” (Ans. 5). Claim 3 requires “a
stop fixing the element in the tube against forward and rearward movement
therein”. The Examiner provides no reason, based on the Specification or
the ordinary understanding of the ordinary artisan, to presume that the stop is
intended to be anything other than permanent. The Specification uses the
phrase “defined and unchanged position” (Spec. 5, l. 1; FF 1), which is most
reasonably interpreted as permanent. We conclude that the proper
interpretation of claim 3 requires that the stop is permanent and prevents
movement in both the forward and rearward directions.
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that McAlister teaches a “stop fixing the element in the tube against forward
and rearward movement therein” as required by claim 3.
SUMMARY
In summary, we reverse the rejection of claims 3-5 under 35 U.S.C. §
102(b) as anticipated by McAlister.

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REVERSED

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