Ex Parte Simas

Patent Trial and Appeal Board

Feb 28, 2013

11029371 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/029,371 01/06/2005 Robert Simas JR. 0100/0183 3327
21395 7590 03/01/2013
LOUIS WOO
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
EXAMINER
GILBERT, ANDREW M
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
03/01/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT SIMAS, JR.
____________

Appeal 2011-003062
Application 11/029,371
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, JILL D. HILL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert Simas, Jr. (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-29. Claims 1, 9, 16, and 23
are the independent claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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THE INVENTION
Appellant’s claimed invention relates to needle protection devices and
more particularly to a needle assembly including mechanisms at the base and
the housing of the needle assembly that coact to non-removably retain the
housing and the base in a secured relationship. Spec. 1, para. [001]. Claim
1 is illustrative of the subject matter on appeal and is reproduced below with
the key disputed limitations emphasized.
1. A needle assembly, comprising:
a base having a needle extending therefrom along a
longitudinal axis thereof;
a housing pivotally connected to said base, said housing
having two sidewalls connected by a back wall, one catch
mechanism extending from said back wall; and
an other catch mechanism extending from said base
configured to mate with said one catch mechanism;
wherein when said housing is pivoted towards said base,
said catch mechanisms are interlocked to each other to fixedly
secure said housing and said base relative to each other and to
cover said needle.

THE EVIDENCE
The Examiner relies on the following evidence:
Feimer US 5,015,241 May 14, 1991
Ishikawa US 5,147,319 Sep. 15, 1992
Burns US 5,891,103 Apr. 6, 1999
Hollister US RE37,110 E Mar. 27, 2001
Bressler US 7,112,190 B2 Sep. 26, 2006

THE REJECTIONS
Appellant seeks review of the following rejections:
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Claims 1-3, 5, 7-11, 13-17, 19-251, 27, and 29 as rejected under 35
U.S.C. § 102(e) as anticipated by Bressler. Ans. 4.
Claims 1-5, 7-11, 13-17, 19-27, and 29 as rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hollister, Burns, and Ishikawa. Id.
Claims 6, 18, and 28 as rejected under 35 U.S.C. § 103(a) as
unpatentable over Bressler and Feimer. Ans. 5.
Claims 6, 12, 18, and 28 as rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hollister, Burns, Ishikawa, and
Feimer. Id.2
ANALYSIS
Claims 1-3, 5, 7-11, 13-17, 19-25, 27, and 29 as anticipated by Bressler
Independent claims 1, 9, 16, and 23 call for, among other things, a
housing pivotally connected to a base (from which a needle extends), a catch
mechanism extending from a back wall of the housing, and another catch
mechanism extending from the base. When the housing pivots toward the
base, the catch mechanisms interlock.

1 In the Grounds of Rejection to be Reviewed on Appeal Appellant
mistakenly omits claims 24 and 25, but correctly includes these claims in the
Argument. See App. Br. 9-10; see also Ans. 4.
2 In the Examiner’s Answer, the rejection of claims 4 and 26 under 35
U.S.C. § 102(e) as anticipated by Bressler was withdrawn, as was the
rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over Bressler
and Feimer. The Examiner rejected claims 6, 12, 18, and 28 under 35
U.S.C. § 103(a) as unpatentable over Hollister, Burns, Ishikawa, and Feimer
as a new ground of rejection. Because Appellant’s corrected Appeal Brief
was filed after the Examiner’s Answer, Appellant addressed the new
grounds of rejection.

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The Examiner finds that Bressler teaches, as shown in Figure 1, a
needle assembly comprising a base (needle assembly 16, needle hub 36) for
a needle (needle cannula 34) and having a catch mechanism (locking
apertures 57, 58 on flexible wings 54, 55) that extends from the base, and a
housing (shield 20) having side walls (channel 63) and a back wall (tabs 64,
65) on which a catch mechanism (locking fingers 67, 68) is located. Ans. 4;
see also Bressler, col. 4, l. 56 - col. 6, l. 15.
Appellant argues that the tabs 64, 65 of Bressler are not part of a back
wall that connects its side walls. App. Br. 11. The claims, however, do not
limit the “back wall” to the area between the side walls (nor is the housing
recited to be “defined” by the two side walls), and we therefore are not
persuaded by Appellant’s argument that Bressler does not disclose that the
tabs 64 and 65 are part of the back wall.
Appellant also argues that Bressler’s wings 54, 55 are not catch
mechanisms that extend from the base and are not part of the needle hub 36.
Rather, wings 54, 55 are part of a tubular mount that fits over the needle hub
36. Appellant argues that apertures 57, 58 are not catch mechanisms that
extend from the base because they are holes and extend “into” rather than
“from.” Appellant’s argument does not address the rejection as articulated
by the Examiner. The Examiner’s finding, stated in a different way, is that
the aperture 57 and at least a portion of the wing 54 that extends from the
base 36 to the aperture 57 define a first catch mechanism that engages catch
mechanism 67 of the housing, and aperture 58 and at least a portion of the
wing 55 that extends from the base 36 to the aperture 57 define a second
catch mechanism that engages catch mechanism 68 of the housing. See Ans.
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4, 6. We agree with the Examiner that Bressler discloses the claimed other
catch mechanism extending from the base.
Regarding claims 2, 10, 19, and 24, which recite that one catch
mechanism comprises a pair of fingers and the other catch mechanism
comprises a projection that is adaptable to move between and be held by the
fingers, the Examiner finds that Bressler teaches such claimed subject matter
with “rib 36” (Ans. 4) and then more specifically states that “[t]he examiner
considers the wings 54 and 55 to be equivalent to the ‘fingers’ as claimed
and the locking fingers 67 and 68 to be the projections which are held by the
fingers.” Ans. 7. Appellant argues that Bressler’s wings 54, 55 are not
equivalent to the claimed fingers, and that the Examiner erred in finding that
Bressler’s fingers 67, 68 are projections rather than fingers, and that
Bressler’s wings are the claimed fingers. We agree with Appellant that the
Examiner has not met the burden of establishing that Bressler discloses the
claimed catch mechanism comprising a pair of fingers for holding a
projection. A pair of “fingers” implies that there are two parts, and the claim
sets forth that the pair of fingers hold a projection. A pair of fingers holding
a projection implies cooperation of the fingers to accomplish holding the
projection. The Examiner has not explained how Bressler’s wings 54, 55
comprise two parts that hold a projection, or two parts that cooperate to hold
a projection.
Regarding claims 5, 13, and 27, which recite that the housing
sidewalls prevent access to the catch mechanisms when the housing is
fixedly secured to the base, the Examiner finds that Bressler teaches
“sidewalls [that are] are designed to completely cover the needle and allow
the catch mechanisms to fully engage without interference from the
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sidewalls. This prevents the user from accessing the catch mechanisms
because once fully engaged they are not removable.” Ans. 7. Appellant
argues that the sidewalls 63 of Bressler “do not prevent access to anything
other than the needle.” App. Br. 15-16. We agree with Appellant. The
Examiner has not explained how any side wall of Bressler prevents access to
the catch mechanism.
Regarding claims 7, 14, 21, and 29, each calls for a catch mechanism
comprising a hook and another catch mechanism comprising a rib formed at
the base and having an opening through which the hook latches when the
housing and the base are pivoted toward each other, the Examiner finds “Fig
5 showing a rib (58) and hook (68).” Ans. 7. Appellant argues that Bressler
teaches no such hook and rib catch mechanisms, and that rib 58 is actually a
locking aperture through which locking fingers 68b project. App. Br. 23
(citing Bressler, col. 6, ll. 32-35). We are not persuaded by Appellant’s
arguments. While Bressler’s element 58 may be an aperture, it is an aperture
in the wing 55, fingers 68a are hooked fingers, and the elements cooperate to
accomplish a hooked engagement of the base and the housing when they are
pivoted toward each other.
Appellant does not advance any separate argument suggesting that
claims 3, 8, 11, 15, 17, 20, 22, and 25 might be patentable over Bressler if
claims 1, 9, 16, and 23 are anticipated by Bressler.
We therefore sustain the rejection under 35 U.S.C. § 102(e) with
respect to claims 1, 3, 7-9, 11, 14-17, 20-23, 25, and 29. We do not sustain
the rejection under 35 U.S.C. § 102(e) with respect to claims 2, 5, 10, 13, 19,
24, and 27.

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Claims 1-5, 7-11, 13-17, 19-27, and 29 over Hollister, Burns, and Ishikawa
As stated above, independent claims 1, 9, 16, and 23 call for, among
other things, a housing pivotally connected to a base (from which a needle
extends), a catch mechanism extending from a back wall of the housing, and
another catch mechanism extending from the base. When the housing pivots
toward the base, the catch mechanisms interlock.
The Examiner finds that Hollister teaches a needle assembly
comprising a base 18 with a needle 14, a housing 6 having side walls and a
back wall (Figure 6), and a catch mechanism 60 on the base 62. Ans. 4. The
Examiner also finds that Burns’ Figure 4 teaches a hook 58 extending from a
needle housing 38 that engages a rib 48 on a needle base. Ans. 5. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time the invention was made to use the hook and rib lock of
Burns as an alternate latching means to the assembly of Hollister. Id.
Appellant argues that Hollister’s hole does not “extend from” its back
wall, and that Burns does not teach a catch mechanism extending from the
back wall of the housing. App. Br. 16-17. The Examiner responds that
Hollister’s hole 60 (Figure 6) is a catch mechanism on the back wall of a
pivotable needle shield, and Burns’ Figure 6 teaches that a needle shield
catch can include a rib 30 disposed longitudinally about the base and a hook
58 to engage the base. Ans. 7. The Examiner states that the rib 48 and hook
58 arrangement of Burns can be substituted for the opening 60 and anchor
62 arrangement of Hollister, resulting in a projection extending from the
back wall of Hollister to engage a rib on the base of Hollister. Id. We agree
with the Examiner and adopt these findings as our own.
With respect to claims 2, 10, 19, and 24, the Examiner finds that
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Ishikawa’s Figure 2 teaches a pair of fingers 10a extending from one side of
a needle guard and a projection 10b which engages the fingers. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time the invention was made to use the finger and projection
lock of Ishikawa as an alternate latching means to the assembly of Hollister.
Ans. 5. The Examiner also states that, in combining Hollister with Ishikawa,
one catch mechanism of Hollister can be replaced with Ishikawa’s projection
10b and Hollister’s other catch mechanism can include the fingers 10a. Ans.
7. One catch would be on the back wall and the other on the base, as shown
in Hollister. Id. The Examiner states that both Burns and Ishikawa are used
to teach alternate catch mechanisms, not the placement of the catch
mechanisms, which is already taught by Hollister to be on the base and the
housing back wall. Ans. 7-8.
We agree with the Examiner that it would have been obvious to
substitute the catch mechanism of either Burns or Ishikawa for the catch
mechanism 60, 62 of Hollister. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 416 (2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)
(“[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”)
Appellant does not advance any separate argument suggesting that
claims 3, 5, 8, 11, 13, 15, 17, 20, 22, and 25 might be patentable over
Hollister, Burns, and Ishikawa if claims 1, 9, 16, and 23 are obvious over
Hollister, Burns, and Ishikawa. We therefore sustain the rejection of claims
1-5, 7-11, 13-17, 19-27, and 29 under 35 U.S.C. § 103(a) as unpatentable
over Hollister, Burns, and Ishikawa.
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Claims 6, 18, and 28 over Bressler and Feimer
The Examiner finds that Bressler teaches the limitations of the needle
guard with respect to claims 1, 16, and 23, but does not teach a needle cover
that is color-coded to signify the needle gauge. Ans. 5. The Examiner finds
that Feimer teaches a needle cover that is color-coded to signify the needle
gauge. Id. (citing Feimer, col. 7, l. 55). The Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to combine the needle guard of Bressler with the color
coding of Feimer to easily distinguish needles of different gauges. Id.
Appellant argues that Feimer teaches color coding a container at
column 7, lines 44-56, and that combining Hollister with Feimer would
provide the device of Hollister housed in a color coded container, which
differs from the claimed “housing and base . . . molded as a one piece unit
that has a predetermined color that signifies the gauge of said needle.” App.
Br. 19. Appellant argues that color coding the base and housing as claimed,
rather than a container for the base and the housing, advantageously allows a
user to know the gauge of the needle even after he has discarded the
container. Id.
The Examiner responds that Feimer teaches that a plastic cover 10,
10a may be color coded to signify the needle gauge, and the teaching of a
color-coded syringe cover could be readily applied to a plastic needle cover
by one of ordinary skill in the art. Ans. 8. We agree with the Examiner that
Feimer teaches color coding a plastic needle cover, and that it would be
obvious to one skilled in the art at the time of the invention to apply
Feimer’s color-coding to Hollister’s base and housing. We therefore sustain
the rejection of claims 6, 18 and 28 under 35 U.S.C. § 103(a) as
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unpatentable over Bressler and Feimer.
Claims 6, 12, 18, and 28 over Hollister, Burns, Ishikawa, and Feimer
As explained above, the Examiner finds that Hollister, Burns, and
Ishikawa teach the limitations of the needle guard as recited in claims 1, 16,
and 23. The Examiner finds that Hollister, Burns, and Ishikawa do not teach
a needle cover that is color-coded to signify the needle gauge. Ans. 5-6.
The Examiner finds that Feimer teaches a needle cover that is color-coded to
signify the needle gauge. Ans. 6 (citing Feimer, col. 7, l. 55). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
at the time the invention was made to combine the needle guard of Hollister,
Burns, and Ishikawa with the color coding of Feimer to easily distinguish
needles of different gauges. Id.
Appellant again argues that “Feimer fails to disclose any integral base
housing device that is color coded to reflect the gauge of a needle of the
device.” App. Br. 20. We agree with the Examiner that Feimer teaches
color coding a plastic needle cover, and that it would be obvious to one
skilled in the art at the time of the invention to apply Feimer’s color-coding
to the base and housing taught by the combination of Hollister, Burns, and
Ishikawa. We therefore sustain the rejection of claims 6, 12, 18, and 28
under 35 U.S.C. 103(a) as unpatentable over Hollister, Burns, Ishikawa, and
Feimer.
DECISION
We affirm the rejection of claims 1, 3, 7-9, 11, 14-17, 20-23, 25, and
29 under 35 U.S.C. § 102(e) as anticipated by Bressler.
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We reverse the rejection of claims 2, 5, 10, 13, 19, 24, and 27 under
35 U.S.C. § 102(e) as anticipated by Bressler.
We affirm the rejection of claims 1-5, 7-11, 13-17, 19-27, and 29
under 35 U.S.C. § 103(a) as unpatentable over Hollister, Burns, and
Ishikawa.
We affirm the rejection of claims 6, 18, and 28 under 35 U.S.C. §
103(a) as unpatentable over Bressler and Feimer.
We affirm the rejection of claims 6, 12, 18, and 28 under 35 U.S.C. §
103(a) as unpatentable over the combination of Hollister, Burns, Ishikawa,
and Feimer.

AFFIRMED

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