Ex Parte Utterberg et al

Board of Patent Appeals and Interferences

Apr 16, 2012

10423484 (B.P.A.I. Apr. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID S. UTTERBERG, WILLIAM J. SCHNELL, and
DAVID BELL
____________

Appeal 2010-001161
Application 10/423,484
Technology Center 3700
____________

Before LINDA E. HORNER, KEN B. BARRET, and
EDWARD A. BROWN, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David S. Utterberg et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-31, 40, 42-58,
67-90, 95-98, 100, and 103-112. Claims 32-39, 41, 59-66, 91-94, 99, 101,
Appeal 2010-001161
Application 10/423,484

2
102, and 113-115 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellants’ claimed invention relates to “an injection site [that] is
provided as part of a medical device which has an interior for containment of
a fluid (liquid or gas).” Spec. 2, ll. 11-12. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A medical device having an interior for containment of
fluids; an opening into the interior; an elastomeric wall
comprising a fixedly placed, flexible barrier across said opening
and having at least one closed perforation centrally positioned;
and a retention wall positioned adjacent to a peripheral portion
of said elastomeric wall, said retention wall defining a central
opening, said retention wall having a retention zone
surrounding said central opening, to engage and retain a
connector tube having a length and having a leading end which
is advanced into said central opening to press against and
partially displace said elastomeric wall, and to open said
centrally positioned perforation through said elastomeric wall,
for direct flow through said perforation into said connector
tube, said retention zone being made of a material of sufficient
hardness that material of a minor portion of the length of an
engaged and retained connector tube is deformed by
engagement with the retention zone, to increase strength of
retention between the retention wall and the connector tube,
said retention zone being sized to engage and hold said
connector tube before said leading end fully penetrates said
elastomeric wall.
Appeal 2010-001161
Application 10/423,484

3
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1-3, 6, 7, 9-11, 17-20, 26, 27, 29, 31, 40, 42-46, 50-56, 67-74,
77-79, and 103-112 are rejected under 35 U.S.C. § 102(b) as
anticipated by Wallace (US 5,342,316; iss. Aug. 30, 1994). Ans. 3.
2. Claims 80, 81, 84, 87-90, 95-971, and 100 are rejected under
35 U.S.C. § 102(b) as anticipated by Tauschinski (US 4,387,879; iss.
Jun. 14, 1983). Ans. 4.
3. Claim 83 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Tauschinski and Larkin (US 5,215,538; iss. Jun. 1, 1993). Ans. 5.
4. Claims 4, 5, 8, 12-16, 21-25, 28, 30, 47-49, 57, 58, 75, 76, 82, 85, 86,
and 98 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Wallace or “the modified Tauschinski.” Ans. 6.
ISSUES
Appellants argue that Wallace does not anticipate the claimed
invention because it does not disclose: (1) an elastomeric wall having a
“closed perforation” (independent claims 1 and 18); (2) a retention zone
sized to engage and hold a connector tube without the connector tube fully
penetrating the elastomeric wall (independent claims 1, 18, 42, 50, 67, 68);
and (3) a retention zone made of a material of sufficient hardness that

1 Claims 95 and 96 depend from claim 1. The Examiner does not include
claim 1 in the anticipation rejection based on Tauschinski and thus has not
shown that Tauschinski discloses each and every element of claims 95 and
96. Ans. 4. As such, we cannot sustain the rejection of claims 95 and 96 as
anticipated by Tauschinski.
Appeal 2010-001161
Application 10/423,484

4
material of a minor portion of the length of an engaged and retained
connector tube is deformed by engagement with the retention zone
(independent claims 1 and 42). Br. 11-17.
Appellants argue that Tauschinski does not anticipate the claimed
invention because it does not disclose a socket tube portion being
proportioned to receive a connector tube and to engage the retention zone by
physical contact and physical deformation between the connector tube and at
least part of the inner bore portion, as called for in claim 80, and it does not
disclose a connector tube having a conically tapered outer wall that engages
the frustoconical bore portion of the socket tube to retain the connector tube,
as called for in claim 97. Br. 17-19.
Appellants argue that the rejections of the dependent claims are in
error based on the errors asserted in the rejection of the independent claims.
Br. 19-20.
The issues presented by this appeal are:
Does Wallace disclose an elastomeric wall having at least one closed
perforation, as called for in claims 1 and 18?
Does Wallace disclose a retention wall having a retention zone being
made of a material of greater hardness than a connector tube so that the
retention wall is capable of deforming the connector tube at the retention
zone, as called for in claim 42?
Does Wallace disclose a retention wall having a retention zone being
sized to engage and hold a connector tube before the leading end fully
penetrates the elastomeric wall, as called for in claims 42, 50, 67, and 68?
Appeal 2010-001161
Application 10/423,484

5
Does Tauschinski disclose a socket tube portion having a retention
zone that is capable of engaging a connector tube for retention of the
connector tube, as called for in claim 80?
Does Tauschinski disclose a connector tube having a conically tapered
outer wall that engages the frustoconical bore portion of the socket tube to
retain the connector tube, as called for in claim 97?
ANALYSIS
Anticipation and obviousness based on Wallace
“closed perforation” 2
We agree with Appellants that Wallace does not disclose by a
preponderance of the evidence an elastomeric wall with a closed perforation.
The Examiner found that Wallace discloses an elastomeric wall (a) with a
centrally located closed perforation (near 7). Ans. 3. The Examiner
explained that “the valve seal (6, 7) although depicted as open is in fact a
closed seal as disclosed in Wallace (col 4, ln 60-65) when in its rest

2 Appellants generally assert that “[e]ach independent claim rejected under
Wallace requires an elastomeric wall having a ‘closed perforation’ in an
elastomeric wall.” Br. 11. Independent claims 1 and 18 contain such a
“closed perforation” limitation; however, independent claims 42, 50, 67, and
68 merely recite a centrally located or positioned perforation and do not
recite a “closed perforation.” While claims 42, 50, 67, and 68 recite that
advancement of the leading end of the connector tube opens the perforation
in the elastomeric wall, this does not necessarily imply that the perforation
was closed prior to engagement with the leading end of the connector tube.
We further note that Appellants present arguments directed to the “closed
perforation” limitation for claims 1 and 18, but do not refer to the “closed
perforation” limitation in the arguments presented under the subheadings for
claims 42, 50, 67, and 68. Br. 15-17.
Appeal 2010-001161
Application 10/423,484

6
configuration.” Ans. 9-10. The cited portion of Wallace states,
“Withdrawal of the cone from the pre-slit channel 8 allows the assembly to
return to its at-rest condition as shown in FIG. 1 without allowing any
leakage and without any collateral damage to the diaphragm 7 itself.”
Wallace, col. 4, ll. 60-63.
Figure 1 of Wallace depicts an open pre-slit channel 8 in the at-rest
condition. Wallace, fig. 1 (showing a gap between the side edges of pre-slit
channel 8 at the endpoint of lead line for reference numeral 8). We decline
to speculate as to how Wallace’s assembly does not allow leakage in the at-
rest condition. Because Wallace does not explicitly disclose that the pre-slit
channel 8 is closed in the at-rest condition and depicts an open pre-slit
channel 8 in the at-rest condition, we cannot find by a preponderance of the
evidence that Wallace discloses an elastomeric wall with a closed
perforation. As such, we cannot sustain the rejection of claims 1 and 18 and
their dependent claims 2, 3, 6, 7, 9-11, 17, 19, 20, 26, 27, 29, 31, 40, 104,
105, and 108-112, as anticipated by Wallace. The Examiner’s rejection of
dependent claims 4, 5, 8, 12-16, 21-25, 28, and 30 is also based on the
finding that Wallace discloses an elastomeric wall with a closed perforation.
Thus, we likewise cannot sustain the rejection of these claims under
35 U.S.C. § 103(a) as unpatentable over Wallace.
retention zone sized to engage and hold a connector tube without the
tube fully penetrating the elastomeric wall and material hardness of
retention zone sufficient to deform connector tube by engagement
The Examiner found that “Wallace et al. discloses a retention zone (6)
being capable and sized to engage and hold a connector tube before said
Appeal 2010-001161
Application 10/423,484

7
leading end of said connector fully penetrates said elastomeric wall, said
retention zone (6) being made of a material of sufficient hardness that the
material of a minor portion of its length is capable of retaining and engaging
a retained connector tube [which] is deformed by engagement with the
retention zone.” Ans. 8-9. The Examiner stated that “the connector tube is
functionally recited and therefore the actual valve (6, 7) member need only
be capable of meeting the claim limitations with any feasible connector bore
that can be used.” Ans. 9. We agree that this claim language defines the
size and hardness of the material of the retention zone by reference to use of
the claimed device with an undefined connector tube, which does not form
part of the claimed device.
The connector tube is not recited as a claim element in any of
independent claims 42, 50, 67, and 68 and no dimensions or materials of the
connector tube, with which the retention zone interacts, are recited in these
claims. The structure disclosed in Wallace is capable of performing the
functional limitations recited in the claims depending on the size, shape, and
material of the unclaimed connector tube. As such, the Examiner’s finding
that Wallace’s structure is capable of performing the functions recited in the
claims is reasonable and presents a prima facie case of anticipation.
This finding shifts the burden to Appellants to show that Wallace’s
structure does not possess these characteristics. In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) and In re Swinehart, 128 F.3d 1473, 1478 (Fed. Cir.
1997). Appellants argue that the cone (connector tube) shown in Wallace
penetrates the elastomeric wall and that Wallace “teaches away” from a
Appeal 2010-001161
Application 10/423,484

8
structure that would hold the cone prior to penetration of the elastomeric
wall. Br. 12. Appellants further argue that Wallace fails to disclose any
structure that has sufficient hardness to deform the cone. Br. 13.
First, whether a prior art reference teaches away from a claimed
invention is not relevant to a finding of anticipation. Celeritas Techs., Ltd.
v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“[T]he
question whether a reference ‘teaches away’ from the invention is
inapplicable to an anticipation analysis.”).
Second, Appellants’ arguments are based on the use of the cone
disclosed in Wallace. In light of the Examiner’s claim interpretation, which
determined that the connector tube is not a limitation of the claims and that
the specific dimensions and materials of the connector tube with which the
retention zone is to interact are not claimed, Appellants fail to show why the
structure of Wallace is not inherently capable of meeting the claimed
functional limitations when used with a connector tube of a size and material
different from the cone disclosed in Wallace. See Ans. 9 (“For example, a
larger connector (than shown in Figure 3a, element 16) will enable operation
of the valve before the bore passes through the opening, and a connector
tube made of a material softer than the valve seal (6, 7) will deform in its
presence.”). As such, we sustain the Examiner’s rejection of independent
claims 42, 50, 67, and 68, and their dependent claims 43-46, 51-56, 69-74,
77-79, 103, 106, and 107.
Appellants rely on these same arguments as the basis for reversing the
rejection of dependent claims 47-49, 57, 58, 75, and 76 under 35 U.S.C.
Appeal 2010-001161
Application 10/423,484

9
§ 103(a) as unpatentable over Wallace. Br. 20. We find these arguments
unavailing to overcome the obviousness rejection for the reasons provided
supra. As such, we also sustain the Examiner’s rejection of these claims.

Anticipation and obviousness based on Tauschinski
Appellants admit that Figure 2 of Tauschinski “show[s] a bore portion
having angles as described in [claim 80].” Br. 18. Appellants argue that
Tauschinski does not disclose that the connector tube engages the retention
zone. Id. (arguing that Tauschinski’s slidable member 10 does not engage
the retention zone with “physical contact and with physical deformation”
between the slidable member 10 and part of the inner bore portion in the
area of the axial guide grooves 9 and that the non-illustrated tube advanced
into portion 2 to advance the slidable member 10 would not come into
physical contact and physical deformation with part of the inner bore
portion). The Examiner found that Tauschinski’s socket tube portion is
“proportioned and capable of receiving a connector tube and to engage said
retention zone by physical contact and physical deformation between the
connector tube and at least part of the inner bore portion, and to form an
annular seal.” Ans. 13. The Examiner stated that “the connector bore [sic,
tube] is not a positively recited element, the connector bore [sic, tube] is
functionally recited and therefore the actual valve body (8) and socket tube
(near 2) member need only be capable of meeting the claim limitations with
any feasible connector bore that can be used.” Id. We agree with the
Examiner’s interpretation of claim 80.
Appeal 2010-001161
Application 10/423,484

10
The connector tube is not recited as an element in claim 80 and no
dimensions or materials of the connector tube, with which the retention zone
interacts, are recited in the claim. The structure disclosed in Tauschinski is
capable of engaging a connector tube by physical contact and physical
deformation depending on the size, shape, and material of the unclaimed
connector tube. As such, the Examiner’s finding that Tauschinski’s
structure is capable of performing the function recited in claim 80 is
reasonable and presents a prima facie case of anticipation.
This finding shifts the burden to Appellants to show that
Tauschinski’s structure does not possess these characteristics. Spada, 911
F.2d at 708 and Swinehart, 128 F.3d at 1478. Appellants’ arguments that
neither the slidable member 10 nor the cone used to advance the slidable
member actually engages the retention zone by physical contact and physical
deformation does not show error in the Examiner’s finding that
Tauschinski’s structure is capable of such engagement when used with a
connector tube of a different size, shape, and material. Ans. 14 (“any sized,
shaped connector tube can be used with the socket connection tube of
Tauschinski to connect and deform and retain the tube to form an annular
seal between the socket tube and functional connector tube.”) As such, we
sustain the rejection of claim 80 and its dependent claims 81, 84, and 87-90
as anticipated by Tauschinski. Appellants rely on this same argument as the
basis for reversing the rejection of dependent claim 83 under 35 U.S.C.
§ 103(a) as unpatentable over Tauschinski and Larkin and of dependent
claims 82, 85, and 86 under 35 U.S.C. § 103(a) as unpatentable over
Appeal 2010-001161
Application 10/423,484

11
Tauschinski. Br. 19-20. We find this argument unavailing to overcome the
obviousness rejections for the reasons provided supra. As such, we also
sustain the Examiner’s rejections of claims 82, 83, 85, and 86.
The Examiner also interpreted independent claim 97 as not positively
reciting the connector tube. Ans. 14 (“[W]ith all of Appellant’s claims the
connector tube is never recited as a claim element.”) Claim 97 is directed to
a “tubular connector system” that comprises “a connector tube having a
conically tapered outer wall having an angle, and a socket tube having a
tubular, frustoconical bore portion for receiving the connector tube and
retaining said connector tube by engagement with said bore portion.” As
such, the Examiner erred in determining that claim 97 does not recite the
connector tube as a claim element. The Examiner has failed to show a
connector tube in Tauschinski having a conically tapered outer wall that
engages the frustoconical bore portion of the socket tube for retaining the
connector tube by engagement with the bore portion, as called for in claim
97. As such, we cannot sustain the rejection of claim 97 and its dependent
claim 100 as anticipated by Tauschinski. The Examiner’s rejection of
dependent claim 98 is also based on the determination that claim 97 does not
positively recite the connector tube. Thus, we likewise cannot sustain the
rejection of claim 98 under 35 U.S.C. § 103(a) as unpatentable over
Tauschinski.
CONCLUSIONS
Wallace does not disclose an elastomeric wall having at least one
closed perforation, as called for in claims 1 and 18.
Appeal 2010-001161
Application 10/423,484

12
Wallace discloses a retention wall having a retention zone being made
of a material of greater hardness than a connector tube so that the retention
wall is capable of deforming the connector tube at the retention zone, as
called for in claim 42.
Wallace discloses a retention wall having a retention zone being sized
to engage and hold a connector tube before the leading end fully penetrates
the elastomeric wall, as called for in claims 42, 50, 67, and 68.
Tauschinski discloses a socket tube portion having a retention zone
that is capable of engaging a connector tube for retention of the connector
tube, as called for in claim 80.
The Examiner has failed to show a connector tube in Tauschinski
having a conically tapered outer wall that engages the frustoconical bore
portion of the socket tube for retaining the connector tube by engagement
with the bore portion, as called for in claim 97.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-31, 40,
95-98, 100, 104, 105, and 108-112.
We AFFIRM the decision of the Examiner to reject claims 42-58, 67-
90, 103, 106, and 107.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

Appeal 2010-001161
Application 10/423,484

13
AFFIRMED-IN-PART

MP