Ex Parte Steube

Patent Trial and Appeal Board

Mar 18, 2013

11070314 (P.T.A.B. Mar. 18, 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.
11/070,314 03/02/2005 INV001Gregory A. Steube H-KN-00210US
(1502-86)
3790
55825 7590 03/19/2013
Tyco Healthcare Group LP
d/b/a Covidien
15 Hampshire Street
Mansfield, MA 02048
EXAMINER
GRAY, PHILLIP A
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
03/19/2013 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 GREGORY A. STEUBE
__________

Appeal 2011-006872
Application 11/070,314
Technology Center 3700
__________

Before STEPHEN WALSH, JACQUELINE WRIGHT BONILLA, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a vial
access cannula. The Examiner has rejected the claims as anticipated and
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2011-006872
Application 11/070,314

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STATEMENT OF THE CASE
Appellant‟s invention relates to “a non-coring vial access cannula
which has sufficient structural strength that it may be made from a
thermoplastic resin instead of metal, thus reducing the likelihood and
severity of operator injury by an accidental needle stick” (Specification,
Abstract).
Claims 1-4, 6-15, and 17-24 are on appeal. Claims 1 and 13 are
representative and read as follows (emphasis added):
1. A vial access cannula comprising:
a needle hub;
a cannula portion connected to the needle hub and having
a centrally disposed lumen,
wherein said centrally disposed lumen terminates in at
least one distal opening and is in fluid communication with
said needle hub;
a solid tip member disposed distal to said at least one
distal opening, wherein said solid tip member includes at
least one blade having at least one beveled face that extends
to a cutting edge, and wherein a blunt distal-most tip of the
solid tip member is defined by the union of a plurality of
edges, at least one of the plurality of edges disposed at an
angle of less than about 45° from a vertical plane
perpendicular to a longitudinal axis of the cannula; and
at least one planar lateral facet defining an outwardly
facing exterior surface of the vial access cannula, the at least
one planar lateral facet spanning an exterior distal region of
said cannula portion and an exterior proximal region of said
solid tip member, and the at least one lateral facet includes a
medial groove running distally from said at least one distal
opening and terminates proximal to said at least one blade.

13. A vial access cannula comprising:
a needle hub, wherein said needle hub includes the
female portion of a Luer lock;
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a cannula portion connected to the needle hub and having
a centrally disposed lumen,
wherein said centrally disposed lumen terminates in two
laterally disposed distal openings and is in fluid
communication with said needle hub;
a solid tip member distal to said distal openings, wherein
said solid tip member comprises at least one blade, the at
least one blade having at least one beveled face that extends
to a cutting edge disposed at an angle of about 5-45° from
an axis perpendicular to a longitudinal axis of said cannula,
and wherein the vertical length of said cutting edge is about
50-95% of the diameter of said cannula portion; and
at least one planar lateral facet spanning an exterior distal
region of said cannula portion and an exterior proximal
region of said solid tip member, and the at least one lateral
facet includes a medial groove running distally from at least
one of the distal openings and terminates proximal to said at
least one blade.

The claims stand rejected as follows:
I. Claims 1-4, 6, and 10-12 under 35 U.S.C. § 102(b) as being
anticipated by Hamilton.
1

II. Claims 7-9, 13-15, and 17-24 under 35 U.S.C. § 103(a) as being
unpatentable over Hamilton.
The same issue is dispositive of all rejections on appeal.

Issue
The Examiner finds that Hamilton discloses “a blunt distal most tip of
the solid tip member ... defined by the union of a plurality of edges” (Ans.
6). “Although some edges are rounded examiner is still considering them

1
Hamilton, US 2,954,768, issued Oct. 4, 1960.
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cutting edges and blades” (Ans. 10). In reaching this conclusion, the
Examiner contends that “a simple cylinder has a plurality edges and is
formed by the union of a plurality of edges” (id. at 8).
Appellant contends that
Hamilton does not include a “beveled face that extends to a
cutting edge” where a “cutting edge[”] is properly defined as
“the union of one or more bevels.” The conical pointed section
(I) of Hamilton is depicted as terminating in a 1ongitudinally
oriented, cylindrical feature. None of the faces of the cylindrical
feature may properly be considered beveled, and none of the
edges of the cylindrical feature may properly be considered a
cutting edge.

(App. Br. 10-11.)
Appellant contends that
The definition for the term “edge” that is proffered by the
Examiner is also inconsistent with the specification.
Appellant‟s specification defines the term “edge” by stating
“the term „cutting edge‟ refers to the union of one or more
bevels.”

(Reply Br. 6.)
The issue presented is:
Does the evidence of record support the Examiner‟s finding that
Hamilton discloses a device having a “cutting edge” as required by claim 1?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. Figure 3 of the Specification is reproduced below.
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Figure 3 provides “a plan view of a distal portion of the cannula”
(Specification 4, l. 4). “The solid tip member 26 contains a slanted blade 30
containing a cutting edge 32 which is formed at the junction of the bevels
22” (id. at 6, ll. 20-21) (see Fig. 2 for “slanted blade 30” designation, not
shown in Fig. 3 above). “The purpose of the bevels 36 and 37 are to reduce
the length of the cutting edge 32, thereby reducing the force required to urge
the cannula 10 through an elastomeric stopper” (id. at 8, ll. 7-9).
FF2. The Specification discloses that “the term „cutting edge‟ refers
to the union of one or more bevels and is located at the distal end of the
cannula” (id. at 5, ll. 3-4).
FF3. Figure 3 of Hamilton is reproduced below.

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Figure 3 is a “fragmentary perspective view” of the device in
Hamilton (Hamilton col. 1, l. 60).
FF4. Hamilton “relates to a puncture point for puncturing skin,
rubber, plastic or other materials” (id. at col. 1, ll. 15-16). “It is also useful
as a point of a hypodermic needle” (id. at col. 1, l. 19).
FF5. Hamilton discloses that “[t]he devices of the present invention
are readily produced from plastic material, are easy to insert and will not cut,
core or abrade material in the insertion operations” (id. at col. 2, ll. 45-48)
(emphasis added).
Principles of Law
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). Claim terms are not interpreted in a
vacuum, devoid of the context of the claim as a whole. See Hockerson-
Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999)
(“[p]roper claim construction … demands interpretation of the entire claim
in context, not a single element in isolation.”); ACTV, Inc. v. Walt Disney
Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“While certain terms may be at
the center of the claim construction debate, the context of the surrounding
words of the claim also must be considered.…”). Furthermore, a claim
element cannot be interpreted so broadly so as to read the limitation out of
the claim. See Texas Instr. Inc. v. United States Int’l Trade Comm’n, 988
F.2d 1165, 1171 (Fed. Cir. 1993) (Claim language cannot be mere
surplusage. An express limitation cannot be read out of the claim).
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“[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. Verisign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008).
When determining whether a claim is obvious, an examiner must
make “a searching comparison of the claimed invention — including all its
limitations — with the teachings of the prior art.” In re Ochiai, 71 F.3d
1565, 1572 (Fed. Cir. 1995). As the Supreme Court pointed out in KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), “a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” Rather, the Court
stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does … because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.
Id. at 418-419 (emphasis added); see also id. at 418 (requiring a
determination of “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue”) (emphasis
added). Similarly, as our reviewing court has stated, “obviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).

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Analysis
The claims are directed to a cannula having a blade with at least one
beveled face that extends to a cutting edge. The Specification defines the
term “cutting edge” as “the union of one or more bevels and is located at the
distal end of the cannula” (FF2; see also, FF1).
We agree with Appellant that the Examiner‟s finding that Hamilton‟s
device reads on the claims requires an unreasonable claim interpretation.
Specifically, the Examiner‟s interpretation of the “edge” and finding that
Hamilton‟s device contains such an “edge” ignores the term “cutting” that
precedes “edge” in the claims and also ignores the context in which these
terms are used to describe the recited structure of a blade. Hamilton does
not teach a blade (see, e.g., FF3). Rather, Hamilton teaches a device that is
able to puncture (FF4), but does not cut (FF5). According, we agree with
Appellant that the Examiner has not adequately explained how Hamilton
anticipates claim 1.
The rejections for obviousness rely on the Examiner‟s finding that
Hamilton identically discloses a cannula having a blade with at least one
beveled face that extends to a cutting edge as recited in claim 1, and
therefore suffer from the same deficiency. The Examiner does not
adequately explain how Hamilton suggests such a blade.

Conclusion of Law
The preponderance of evidence on this record fails to support the
Examiner‟s finding that Hamilton discloses a device having at least one
blade having at least one beveled face that extends to a cutting edge.
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SUMMARY
We reverse all rejections on appeal.

REVERSED

cdc