Ex Parte Vaillancourft et al

Patent Trial and Appeal Board

Apr 24, 2013

12321900 (P.T.A.B. Apr. 24, 2013)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
12/321,900 01/27/2009 Vincent L. Vaillancourt et al.

EXAMINER
FRANCIS C. HAND, ESQ.
C/O CARELLA, BYRNE, BAIN, GILFILLAN, CECCHI,
STEWART & OLSTEIN
6 BECKER FARM ROAD
ROSELAND NJ 07068
PATEL, SHEFALI
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE

04/24/2013 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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte VINCENT L. VAILLANCOURT
and PATRICIA VAILLANCOURT
__________

Appeal 2011-005098
Application 12/321,900
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation, obviousness and obviousness-type double
patenting.
1
We have jurisdiction under 35 U.S.C. § 6(b).

1
According to the Examiner, claims 5 and 6 are objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims, and overcoming obviousness-type double patenting
rejection with the filing of a proper terminal disclosure.
Appeal 2011-005098
Application 12/321,900

2
STATEMENT OF CASE
Claim 1. In combination,
a hub;
a needle secured to and extending from said hub and having a
sharpened end for insertion in a patient;
a needle housing removably mounted on said hub, said needle housing
having an aperture at one end with said needle passing therethrough; and
a polyester film strip secured to and between said hub and said
housing. said strip having a series of longitudinally spaced apart apertures
receiving said needle therein and being disposed in corrugated relation
between said hub and said housing whereby before said needle is withdrawn
from the patient said housing is movable from said hub over said needle
while said strip extends between said hub and said housing and as said
needle is withdrawn from the patient said housing is movable beyond said
sharpened end of said needle while said strip is stretched to an extended state
between said hub and said housing and upon release of said housing said
strip is retracted to return said housing towards said sharpened end of said
needle to retain said housing connected to said hub under a biasing force in
said strip directing said housing towards said hub.

Cited References

Wemmert et al. US 6,234,999 B1 May 22, 2001
Vaillancourt US 7,722,564 B2 May 25, 2010

Grounds of Rejection
Claims 1, 2 and 7 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Wemmert.
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wemmert as applied to claim 2.
Claims 1, 2, and 4-7 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 2 and 5-12 of copending Application No. 10/773,538, now U.S.
7,722,564.
Appeal 2011-005098
Application 12/321,900

3
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-
7. The following facts are highlighted.
1. Specification Figures 24 and 27 are reproduced below.

Figure 27 shows needle housing 101 attached to needle hub 19.
Figure 24 shows needle housing 101 tethered by film 110 and extended over
distal tip of needle 312, and disjoined from needle hub 19.

2. Figure 2 of Wemmert is reproduced below.

Appeal 2011-005098
Application 12/321,900

4

Figure 2 (bottom view) of Wemmert shows a needle assembly (Claim
10 of Wemmert) with needle hub 34, tether 44 and needle housing 40. The
needle assembly may be paired with a catheter assembly (top view; Claim 1
of Wemmert).

Discussion
Claims 1, 2 and 7 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Wemmert.
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wemmert as applied to claim 2.

ISSUE
The Examiner concludes that
Wemmert et al. disclose a combination of a hub 34, a
needle 31 secured to and extending from the hub and having a
sharpened end, a needle housing 40 removably mounted on the
hub and having an aperture at one end, and a polyester film
strip 44 (column 6 line 39) secured to and between the hub and
Appeal 2011-005098
Application 12/321,900

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the housing, the strip having a series of longitudinally spaced
apart apertures 45 receiving the needle and being disposed in
corrugated relation, as being corrugated 44a, between the hub
and housing, the combination is capable of performing (column
6 line 41 - column 7 line 6) the intended use of whereby before
the needle is withdrawn from the patient the housing is movable
from the hub over the needle while the strip extends between
the hub and housing and as the needle is withdrawn from the
patient the housing is movable beyond the sharpened end of
said needle while the strip is stretched to an extended state
between the hub and housing and upon release of the housing
the strip is retracted to return the housing towards the end of the
needle to retain the housing connected to the hub under a
biasing force in the strip, in the extended state the strip is
capable of extending to a length greater than the extent of the
needle from the hub to allow the housing to be moved beyond
the end of the needle before retraction of the strip.

(Ans. 4.)

Appellants argue that the tether of Wemmert is not stretchable, the
tether 44 of Wemmert does not have a biasing force to direct the needle
shield 40 towards the hub 34, and that there is no evidence that Wemmert is
capable of performing the intended use as claimed. (App. Br. 6-7.)
Appellants further argue that “[b]efore the needle 31 of Wemmert is
withdrawn from the patient, the housing [40] is not movable from the
hub [34] over the needle [31].” (Reply Br. 3.) Appellants argue that “[a]s
the needle 31 of Wemmert is withdrawn from the patient, the housing
[40] is not movable,” and that “[t]he housing [40] of Wemmert is not
released from the catheter hub 24 until after the needle 31 is in the
housing [40].” (Id. at 4.) Appellants also argue that “[i]n the extended
state, the strip [44] of Wemmert is not capable of extending to a length
Appeal 2011-005098
Application 12/321,900

6
greater than the extent of the needle [31].” [Emphasis original.] (Reply
Br. 5.)
The issue is: Does the cited prior art teach each element of the
invention as claimed?

PRINCIPLES OF LAW FOR ALL REJECTIONS
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Appeal 2011-005098
Application 12/321,900

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Obviousness-type double patenting entails a two-step analysis. First,
the allegedly conflicting claims are construed and, second, the difference(s)
between the claims are considered to determine whether the claims are
patentably distinct. See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955,
968 (Fed. Cir. 2001). “A later patent claim is not patentably distinct from an
earlier patent claim if the later claim is obvious over, or anticipated by, the
earlier claim.” Id.
Obviousness-type double patenting is a judge-made
doctrine that prevents an extension of the patent right beyond
the statutory time limit. It requires rejection of an application
claim when the claimed subject matter is not patentably distinct
from the subject matter claimed in a commonly owned patent.
Its purpose is to prevent an unjustified extension of the term of
the right to exclude granted by a patent by allowing a second
patent claiming an obvious variant of the same invention to
issue to the same owner later.

In re Berg, 140 F.3d 1428, 1431 (Fed. Cir. 1998) (citation omitted).

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
anticipation and obviousness. We provide the following additional
comment.

Appeal 2011-005098
Application 12/321,900

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Claims 1, 2 and 7
With respect to Appellants’ arguments that the tether of Wemmert is
not stretchable,
2
that the tether 44 of Wemmert does not have a biasing force
to direct the needle shield 40 towards the hub 34, and that in the extended
state, the strip of Wemmert is not capable of extending to a length greater
than the extent of the needle, we adopt the Examiner’s responses as set forth
in the Answer as our own.
Appellants argue that there is no evidence that Wemmert is capable of
performing the intended use as claimed; that before the needle of Wemmert
is withdrawn from the patient, the housing is not movable from the hub over
the needle; and that as the needle of Wemmert is withdrawn from the
patient, the housing is not movable, and that the housing of Wemmert is not
released from the catheter hub until after the needle is in the housing.
(Reply Br. 4.)
We are not persuaded by these arguments. Wemmert discloses two
embodiments, a catheter and needle assembly (claim 1 of Wemmert) and a
separate needle assembly with a needle shield with no catheter (claim 10 of
Wemmert). The Examiner refers to this at page 9 of the Answer where the
Examiner indicates that the needle housing can be removed from the catheter
hub. Therefore, when the needle assembly is operated without or separate
from the catheter assembly, and as the needle of Wemmert is withdrawn
from the patient, the housing is movable, and because the catheter assembly
is not present, the housing of Wemmert is not required to be released from

2
This argument was also addressed in Appeal No. 2008-1523, Serial No.
10/773,538, with which we concur.
Appeal 2011-005098
Application 12/321,900

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the catheter hub. Thus,Wemmert is capable of performing the intended use
with the needle shield extending to a length greater than the extent of the
needle, as claimed.
The anticipation rejection of claims 1, 2 and 7 is affirmed.

Claim 4
We adopt the Examiner’s response to Appellants’ arguments with
respect to the obviousness rejection of claim 4, as our own. The obviousness
rejection of claim 4 is affirmed.

Obviousness-type Double Patenting
ISSUE
The Examiner contends that
Although the conflicting claims are not identical, they are not
patentably distinct from each other because claims 5 and 6 of
this application include the same elements in combination from
claims 2 and 9 of the copending application with minor
difference in wording as to functionality; claims 1, 2, and 7 of
this application are broader than the claims of the copending
application with respect to the first and/or second washer not
being claimed; therefore, anticipated by the copending claims.
As to claim 4 of this application, it would have been obvious to
one of ordinary skill in the art as to the specific dimension of
the film strip.

(Ans. 6.)
Appellants argue that
Claims 1 to 9 of US 7,722,564 each require “a washer”,
i.e. a structure not found in any of claims 1, 2 and 7 of the
instant application. The Examiner has noted that claims 1, 2 and
7 of this application are broader than the claims of US
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Application 12/321,900

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7,722,564 and are “therefore, anticipated by the copending
claims”. However, this is not a basis for a rejection on the
ground of nonstatutory obviousness-type double patenting.
Under MPEP 806.04(i), if a generic claim is presented
after the issuance of a patent claiming one or more species
within the scope of the generic claim, the Office may reject the
generic claim on the grounds of obviousness-type double
patenting. In the present case, claims 1 to 3 and 7 were not
presented after the issuance of US 7,722,564 but are original
claims presented before the issuance of the patent. Hence,
MPEP 806.04(i) is not applicable.

(App. Br. 9.)

The issue is: Is the subject matter of the pending claims patentably
distinct or an obvious variant of claims 1-9 of US 7,722,564?

Discussion
Claim 1 of US 7,722,564 is reproduced below:
1. In combination,
a hub;
a needle secured to and extending from said hub;
a needle housing removably mounted on said hub, said
needle housing having an aperture at one end with said
needle passing therethrough;
a washer mounted in said housing and having flaps to
define an aperture for passage of said needle therethrough
whereby in response to withdrawal of said
needle through said aperture said flaps flex inwardly to
block a return passage of said needle through said aperture;
and
a polyester film strip secured to and between said hub and
said housing, said strip having a foremost end thereof
secured between said washer and said housing, a series
of longitudinally spaced apart apertures receiving said
needle therein and being disposed in corrugated relation
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Application 12/321,900

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between said hub and said housing whereby in response
to a withdrawal movement of said needle relative to said
housing, said needle moves into said housing and into
abutment with said housing while said strip is stretched
between said hub and said housing to retain said housing
connected to said hub under a biasing force.

We agree with the Examiner that the claims of the present application
are generic to claims 1-9 of US 7,722,564. Thus, under MPEP 806.04(i),
“[i]f a generic claim is presented after the issuance of a patent claiming one
or more species within the scope of the generic claim, the Office may reject
the generic claim on the grounds of obviousness-type double patenting.”
Here, the pending claims have been presented for examination and
prosecuted after the issuance of US 7,722,564. Therefore MPEP 806.04(i)
applies and the pending claims have been properly rejected. See Eli Lilly &
Co. v. Barr Labs., Inc., 251 F.3d at 968 (“A later patent claim is not
patentably distinct from an earlier patent claim if the later claim is obvious
over, or anticipated by, the earlier claim.”). The rejection is affirmed.
Arguments not made are waived.

CONCLUSION OF LAW
The cited references and rejections support the Examiner’s
anticipation, obviousness, and obviousness-type double patenting rejections.
The rejections are affirmed for the reasons of record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
Appeal 2011-005098
Application 12/321,900

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