Ex Parte Simas et al

Board of Patent Appeals and Interferences

Jun 2, 2011

11138553 (B.P.A.I. Jun. 2, 2011)

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.
11/138,553 05/27/2005 Robert Simas JR. 0100/0188 1234
21395 7590 06/03/2011
LOUIS WOO
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
EXAMINER
PRICE, NATHAN R
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
06/03/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT SIMAS, JR. and
DAVID MACLEAN
____________________

Appeal 2010-002174
Application 11/138,553
Technology Center 3700
____________________

Before JAMESON LEE, KARL D. EASTHOM, and JOSIAH C. COCKS,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002174
Application 11/138,553

2
A. STATEMENT OF THE CASE
Smiths Medical ASD, Inc. (“Smiths Medical”), the real party in
interest, appeals under 35 U.S.C. § 134(a) from a final rejection of claims 8-
13, 25, and 26. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

References Relied on by the Examiner
Gibbs 5,085,640 Feb. 4, 1992
Odell et al. (“Odell”) 5,662,617 Sep. 2, 1997
Hollister (“Hollister ‘713”) 6,328,713 Dec. 11, 2001
Hollister (“Hollister ‘110”) RE37,110 Mar. 27, 2001
Nguyen 2004/0078007 Apr. 22, 2004

The Rejections on Appeal
The Examiner rejected claim 8 under 35 U.S.C. § 102(b) as
anticipated by Odell.
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Odell and Hollister ‘110.
The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Odell.
The Examiner rejected claims 11 and 26 under 35 U.S.C. § 103(a) as
unpatentable over Odell and Hollister ‘713.
The Examiner rejected claims 12 and 25 under 35 U.S.C. § 103(a) as
unpatentable over Odell and Nguyen.
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Odell and Gibbs.

App
App

syrin
Figu
and F
below
parti
persp
illus
Smit
As s
syrin
base
oper
arran
¶¶ 00

eal 2010-0
lication 11
The inve
ge. (Spec
re 20 (repr
igure 21
on left a
ally cut-aw
ective of
trate an em
hs Medica
hown in th
ge 50 incl
2 is housi
ate to inter
ged on ba
48-50.)
02174
/138,553
ntion relat
. 1:¶ 002.)
oduced rig
(reproduce
nd showin
ay
Figure 20)
bodiment
l’s inventi
e figures,
udes an at
ng 4. As a
lock with
se 2 and e
The
es to a dev

ht)
d
g a

of
on.
tached bas
part of ho
a pair of s
xtending fr
3
Invention
ice for pr
e 2 and ne
using 4, a
econd catc
om rib 50

otecting th
edle 8. P
pair of ad
me
54
ba
ex
sid
ho
ho
tow
fir
h mechan
a. (See Ge
e needle o
ivotally co
jacent firs
chanisms
b are posi
ck wall 24
tend betw
e walls of
using. Wh
using 4 is
ards base
st catch m
isms 52a a
nerally id
f a
nnected to
t catch
54a and
tioned on
and
een two
the
en
pivoted
2, the
echanisms
nd 52b
. at 10-11:

Appeal 2010-002174
Application 11/138,553

4
Claim 8 is representative and reproduced below (App. Br. 16 Claims
App’x.):
8. A one piece needle assembly adaptable to be used with a
syringe, comprising: a base having pivotally connected thereto a
housing, said housing having two side walls connected by a back wall
and a pair of adjacent first catch mechanisms that are not part of the
side walls extending from the back wall between the side walls that
meet with a pair of second catch mechanisms extending from a rib
extending from said base to face the back wall of said housing when
said housing is pivoted toward said base to cover a needle extending
longitudinally from said base, said first and second pairs of catch
mechanisms interlocked to each other to prevent said housing and said
base from moving away from each other when said needle is covered
by said housing.
B. ISSUES
1. Did the Examiner correctly determine that Odell discloses a
pair of adjacent first catch mechanism extending from the back wall and
between side walls of a housing of a needle assembly?
2. Did the Examiner correctly determine that Odell discloses a
pair of second catch mechanisms extending from a rib which extends from a
base of a needle assembly?
C. FINDINGS AND ANALYSIS
The Examiner rejected claim 8 as anticipated by Odell and claims 9-
13, 25, and 26 as unpatentable over Odell taken alone or together with one
of Hollister ‘110, Hollister ‘713, Nguyen, and Gibbs.
Claim 8
With respect to claim 8, the Examiner found that Odell discloses a
needle assembly for use with a syringe having all the features set forth in the
claim. Smiths Medical challenges that finding. Smiths Medical argues that
App
App

Odel
Med
catch
a hou
lacks
that
the “
Odel
spec
barri
for a
Abst
(repr
illus
of O
desc
112
shap
110.
110
(id. a
Even
we d
110
hous
eal 2010-0
lication 11
l lacks sev
ical first c
mechanis
sing. (Ap
disclosur
itself exten
We agre
pair of adj
l’s compo
ifically to
er or shiel
needle. (
ract.) Figu
oduced rig
trates an em
dell’s inve
ribes its co
as a “mush
ed head” o
(Id. at 11
is “formed
t 11:12-13
assuming
o not see,
and its mu
ing as is re
02174
/138,553
eral eleme
ontends th
ms which
p. Br. 11:
e of a pair
ds from a
e with eac
acent first
nent 112 c
Odell’s Fi
d assembly
Odell
re 14
ht)
bodimen
ntion. Od
mponent
room-
f locking
:9-10.) Pi
on” arm 1
) which is
that arm
and the Ex
shroom-sh
quired by
nts requir
at Odell do
extend fro
13-21.) Sm
of second
base of th
h of Smith
catch mec
onstitutes
gure 14. (

t
ell
pin
n
06
in turn att
106 forms
aminer do
aped head
claim 8. T
5
ed by claim
es not dis
m a back
iths Med
catch mec
e assembly
s Medical
hanisms,”
that requir
Ans. 4:2-5
ached to s
a back wa
es not me
112 exten
he Exam
8. In pa
close a pa
wall and b
ical also c
hanisms e
. (Id. at 12
’s contenti
the Exam
ed feature
.) Odell d
hield 38 (i
ll of shield
aningfully
d “betwee
iner urges
rticular, Sm
ir of adjace
etween sid
ontends th
xtending f
:1-8.)
ons. With
iner subm
, pointing
iscloses a
d. at 10:38
38 (i.e., a
explain, h
n side wal
that pin 1
iths
nt first
e walls of
at Odell
rom a rib
respect to
its that
protective
-40).
housing)
ow pin
ls” of the
10 is

,
Appeal 2010-002174
Application 11/138,553

6
“bounded by the plains [sic, planes] through which sidewalls” of shield 38
extend. (Ans. 9:2-4.) However, it is not sufficient that pin 110 may extend
through some imaginary planar extension of the side walls of shield 38.
Rather, the extension of the first catch mechanisms must be physically
located between the actual side walls of the housing. The Examiner does not
adequately explain how that required structural relationship is present in
Odell.
Moreover, claim 8 calls for “an adjacent pair” of first catch
mechanisms, i.e., a plurality of such mechanisms, extending from the back
wall of the housing. According to the Examiner, Odell anticipates the use of
multiple first catch mechanisms because it states that in place of a
mushroom-shape for the head 112 of pin 110, other shapes may be selected
including “barbs.” (Ans. 9:7-9 quoting Odell 11:17-20.) Because the term
“barbs” is plural, the Examiner urges that Odell describes multiple adjacent
first catch mechanisms. (Ans. 9:9.)
Here, the use of the term “barbs” conveys only that the shape of head
112 may be selected from the range of shapes commonly understood to
resemble a “barb.” Odell’s catch mechanism is collectively formed by head
112 and pin 110. That Odell provides for the shape of head 112 to be
selected from various types of “barbs” is not a disclosure that Odell
contemplates the use of an entire additional catch mechanism, i.e., another
head 112 and pin 110 assembly, positioned adjacent to the single disclosed
catch mechanism. On this record, we are not persuaded that Odell discloses
“a pair of adjacent first catch mechanisms” as required by claim 8.
Furthermore, with respect to the additional requirement of claim 8
pertaining to a pair of second catch mechanisms extending from a rib
App
App

posit
featu
113
catch
elem
(Ode
bene
11:2
seco
“exte
20 (n
“ribs
not p
alleg
that
that
eal 2010-0
lication 11
ioned on a
re is also
and 114 fo
mechanis
ent 20, as
Odell di
ll 10:65-1
ath the op
3-26.) Ev
nd catch m
nd from”
umbered
.” To the
hysically
ed pair of
the second
“extend fr
02174
/138,553
base, the
incorrect.
rm a pair o
ms “exten
allegedly
scloses a c
1:9.) Ode
ening, allo
en assumin
echanism
a rib of a b
in Figure 1
extent that
associated
second ca
catch mec
om” a stru
Examiner
According
f second
d away fro
shown in F
ollar moun
ll’s Figure
wing the c
g that ope
s, claim 8
ase. The
4 but not
compone
with eithe
tch mecha
hanisms m
cture nece
7
’s position
to the Ex
catch mech
m” unlab
igures 14
ting 48 w
14 (reprod
ompressed
ning 113 a
requires th
Examiner
in Figure 1
nt 20 does
r opening
nisms). Th
ust “exte
ssairly for
that Odel
aminer, O
anisms (A
eled ribs a
and 15 (id
hich inclu
uced supr
(reproduc
when shi
toward co
(not num
head 112
configure
113. Ope
head to b
channel 1
head to r
nd channe
at the catc
pointed to
5) as inclu
include “r
113 or cha
e claim, h
nd from” t
m a direct
l discloses
dell’s com
ns. 4:6-7)
ssociated w
. at 9:12-1
des an ope
a) and Fig
ed left) sh
eld 38 is p
llar moun
bered in F
of pin 110
d to enter
ning 113
e compres
14, positio
e-expand.
l 114 form
h mechan
Odell’s c
ding unla
ibs,” thos
nnel 114
owever, s
he rib. Co
connectio
that
ponents
and those
ith
7).
ning 113.
ure 15
ows that
ivoted
ting 48
igure 15)
is
opening
causes the
sed, with
ned
(Id. at
a pair of
isms
omponent
beled
e ribs are
(i.e., the
pecifies
mponents
n, and

Appeal 2010-002174
Application 11/138,553

8
physically associated extension, with the structure. That is not the
relationship that is present as between any “ribs” of Odell’s component 20
and opening 113 or channel 114. We reject the Examiner’s position that
Odell discloses a pair of second catch mechanisms that extend from a rib of
a base.
Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990). As discussed above, Odell lacks disclosure of
elements required by Smiths Medical’s claim 8. We, therefore, do not
sustain the rejection of claim 8 as anticipated by Odell.
Claims 9-13, 25, and 26
Claim 10 is dependent on claim 8 and was rejected as unpatentable
over Odell taken alone. The Examiner does not offer any obviousness
rationale to account for the deficiencies of Odell discussed above in
connection with the anticipation rejection of claim 8. We do not sustain the
rejection of claim 10 over Odell.
Claim 9, 11-13, 25, and 26 are ultimately dependent on claim 8 and
were rejected over Odell along with one of Hollister ‘110, Hollister ‘713,
Nguyen, and Gibbs. The Examiner does not rely on any of those additional
references to make up for the deficiencies in Odell noted above in
connection with claim 8. We do not sustain the rejections of claims 9, 11-
13, 25, and 26.
Appeal 2010-002174
Application 11/138,553

9
D. CONCLUSION
1. The Examiner incorrectly determined that Odell discloses a pair
of adjacent first catch mechanism extending from the back wall and between
side walls of a housing of a needle assembly.
2. The Examiner incorrectly determined that Odell discloses a pair
of second catch mechanisms extending from a rib which extends from a base
of a needle assembly.
E. ORDER
The rejection of claim 8 under 35 U.S.C. § 102(b) as anticipated by
Odell is reversed.
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over Odell and Hollister ‘110 is reversed.
The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable
over Odell is reversed.
The rejection of claims 11 and 26 under 35 U.S.C. § 103(a) as
unpatentable over Odell and Hollister ‘713 is reversed.
The rejection of claims 12 and 25 under 35 U.S.C. § 103(a) as
unpatentable over Odell and Nguyen is reversed.
The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable
over Odell and Gibbs is reversed.

REVERSED