Ex Parte Smith

Board of Patent Appeals and Interferences

Mar 28, 2007

10208928 (B.P.A.I. Mar. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JASON SMITH
____________

Appeal 2006-2405
Application 10/208,928
Technology Center 3700
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Decided: March 28, 2007
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Before TERRY J. OWENS, MURRIEL E. CRAWFORD, and LINDA E.
HORNER, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE C ASE
This appeal involves claims 1, 3-17, the only claims pending in this
application. Claim 2 has been canceled. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b) (2002).
Appeal 2006-2405
Application 10/208,928

2
The claims are directed to a flexible band for attachment across the
wrists, which includes a holder affixed to the flexible band for holding a
vacuum blood collection barrel. Claim 1 is illustrative:
1. An appliance fitted for facilitating the blood drawing
process by a phlebotomist comprising:

a flexible band for attachment across the wrist of the
phlebotomist,

a holder affixed and oriented generally perpendicularly to the
longitudinal axis of the flexible band for receiving and holding a
vacuum blood collection barrel during the blood drawing process; and

a vacuum blood collection barrel, positioned in the holder
generally parallel to the longitudinal axis of the band, for receiving
blood sampling tubes.

The Examiner relies on the following prior art references to show
unpatentability:
Schmitt US 5,259,392 Nov. 9, 1993
Shesol US 5,897,519 Apr. 27, 1999
Ekey US 6,461,319 B1 Oct. 8, 2002

The rejection as presented by the Examiner is as follows:
Claims 1 and 3-17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Shesol in view of Schmitt and Ekey.
The Examiner contends that a person of ordinary skill in the art would
have found it obvious to combine the teachings of Shesol, Schmitt, and Ekey
because it would have been obvious to adapt a preexisting medical appliance
to hold any preexisting medical device.
Appellants contend that there is no motivation to combine the
teachings of Shesol, Schmitt, and Ekey.
Appeal 2006-2405
Application 10/208,928

3
ISSUE
The issue is whether the Appellant has shown that the Examiner erred
in holding that there is a suggestion or motivation to combine the teachings
of Shesol, Schmitt, and Ekey.

FINDINGS OF FACT
Appellant invented a device which includes a flexible band for
attachment across the wrist and which includes a holder affixed to the
flexible band for receiving a vacuum blood collection barrel
(Specification 1).
Shesol discloses an intravenous securing device that may be attached
to the hand and includes a holder 26 for an intravenous tube (Shesol, Figure
5). Shesol does not disclose a holder for a vacuum blood collection barrel.
Schmitt discloses a barrel shaped blood collection device (Schmitt,
Figure 1).
Ekey discloses a medical device which includes adjustable shoulder
belt 14 and arm belt 16 which together hold a pouch 18 and a holder 44
attached to the pouch 18. Holder 44 is adapted to hold a barrel shaped
intravenous drip reservoir 46.
PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
Shesol, Schmitt, and Ekey. Appellant may sustain this burden by showing
that, where the Examiner relies on a combination of disclosures, the
Examiner failed to provide sufficient evidence to show that one having
ordinary skill in the art would have done what the Appellant did. In re
Appeal 2006-2405
Application 10/208,928

4
Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006);
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Partrick, Co.,
464 F.3d 1356, 1360-61, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). The
mere fact that all the claimed elements or steps appear in the prior art is not
per se sufficient to establish that it would have been obvious to combine
those elements. Smith Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d
1347, 1356, 51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999).
ANALYSIS
The Examiner correctly shows where all the claimed elements appear
in Shesol, Schmitt, and Ekey. However, Appellant correctly points out that
the Examiner premised the rejection on incorporating the blood collection
barrel of Ekey held in a holder as disclosed in Schmitt in the Shesol device.
The Examiner’s reasoning that it would have been obvious to adapt any
known medical device to hold any known medical device is not a sufficient
motivation to combine the teachings of Shesol and Ekey. Accordingly, we
determine that the Examiner has shown all claimed elements were known in
the prior art but has not given a persuasive reason why one skilled in the art
would have combined the prior art elements to make Appellant’s claimed
invention. On the record before us, it follows that the Examiner erred in
rejecting claims 1 and 3-17 under 35 U.S.C. § 103(a).
Appeal 2006-2405
Application 10/208,928

5
CONCLUSION OF LAW
On the record before us, Appellant has shown that the Examiner erred
in holding that there is a suggestion or motivation to combine the teachings
of Shesol, Schmitt, and Ekey.
ORDER
The Examiner’s rejection of claims 1 and 3-17 is reversed.
REVERSED

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