Ex Parte Vaillancourt

Patent Trial and Appeal Board

Dec 18, 2014

11134012 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/134,012 05/20/2005 Michael J. Vaillancourt 9387
7590 12/18/2014
Francis C. Hand, Esq.
c/o Carella, Byrne, Bain, Gilfillan,
Cecchi, Stewart & Olstein
5 Becker Farm Road
Roseland, NJ 07068
EXAMINER
GRAY, PHILLIP A
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
12/18/2014 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 MICHAEL J. VAILLANCOURT
____________

Appeal 2012-004892
Application 11/134,012
Technology Center 3700
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims directed to
an introducer needle and valve combination, or an integrated valve and
needle assembly. The Examiner rejects the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellant identifies Michael J. Vaillancourt as the Real Party in Interest.
(App. Br. 2.)
Appeal 2012-004892
Application 11/134,012

2
STATEMENT OF THE CASE
Claims 1, 3, 6, 8, 15, 17, and 22 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief (App. Br. 14–16). Claim 17 is
illustrative and reproduced below:
17. An introducer needle comprising
a tubular forward piece having a first tapered passage
extending therethrough for guiding a guide wire therethrough, a
port extending radially of said first passage, and an eyespot for
viewing blood in said chamber,
a hollow needle secured to and extending from one end
of said forward piece;
an air filter in said port for passage of air from said first
housing piece
a rear piece permanently secured to said forward piece in
co-linear relation and having a second passage tapering radially
inwardly in a direction towards said needle and a luer
connection at an end thereof; and
a seal disposed between said forward piece and said rear
piece to seal said first passage from said second passage, said
seal having a slit in a center thereof for passage of a guide wire
therethrough in circumferentially sealed relation.
The following grounds of rejection are before us for review:
I. claims 1, 3, 8, and 17 under 35 U.S.C. § 103(a) over
Yamamoto2 in view of Suzuki;3 and
II. claims 6, 15, and 22 under 35 U.S.C. § 103(a) over Yamamoto
in view of Suzuki and in further view of Van Heugten.4

2 Yamamoto et al., US 5,290,246, issued Mar. 1, 1994.
3 Tatsuo Suzuki, US 4,682,980, issued July 28, 1987.
4 Anthony Y. Van Heugten, US 5,053,014, issued Oct. 1, 1991.
App
App

The I
claim
and l
Exam
with
Find

outer
need
and a
(Yam
need
Fig.
24–2
eal 2012-0
lication 11
ssue: Obv
The Exa
ed invent
ooks to Su
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iner’s con
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ings of Fa
1. Y
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2. Fi
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8 shows a
5.)
04892
/134,012
iousness o
miner take
ion except
zuki for s
preponde
clusion th
ent nose p
ct
amamoto d
ving a hub
ortion of w
c to close
stract.)
g. 8 of Ya
sectional v
ver Yama
s the posit
for the rad
upplying t
rance of th
at the com
ortion that
isclosed a
, an inner
hich is ad
the interna
mamoto, r
iew of the
3
moto and S
ion that “Y
ial extens
his limitat
e evidenc
bination o
fits into a
“piercing
needle to
apted to b
l cavity of
eproduced
piercing
uzuki
amamoto
ion of the
ion (Ans. 5
e of record
f referenc
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needle [th
be inserted
e fitted in
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needle (Ya
discloses
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.)
support t
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at] compr
into the o
the outer n
needle.”
ows a pier

mamoto,
the
ir filter”
he
a valve
ed?
ises an
uter
eedle hub
cing
col. 3, ll.
,
App
App

Fig,
col.
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mate
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and h
inter
surfa
(Yam
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hole
(id. a
eal 2012-0
lication 11
3. Fi
2 shows, “
3, ll. 12–13
4. “T
le hub 20)
es 30 and
rial which
d flow.” (
5. “T
as a taper
nal cavity.
6. “A
ce, in whi
amoto, co
7. W
80 is prov
s 27.” (Ya
t l. 9.)
04892
/134,012
g. 2 of Ya
a partial s
.)
o visually
, it is desir
40 jointly
has such t
Yamamoto
he first ou
ed portion
” (Yamam
tapered s
ch a rod-li
l. 4, ll. 45
ith referen
ided at in
mamoto, c
mamoto, r
ectional vi
confirm f
able that t
constitutin
ransparen
, col. 5, ll
ter needle
31 for cau
oto, col. 4
urface 41,
ke membe
–47.)
ce to figu
ternal cavi
ol. 5, ll. 4
4
eproduced
ew of an o
lashback (
he first and
g the outer
cy as enab
. 60–65.)
hub body
lking and
, ll. 30–33
and more
r such as a
res 2 and 8
ty-side end
–5.) “[F]i
below:

uter needl
i.e., blood
second o
needle hu
les visual
30 is subs
fixing the
.)
preferably
connecto
above, “[
portions
lter 80 ma
e hub” Ya
flow into
uter needl
b 20 be fo
confirmati
tantially c
outer need
a lure-tap
r . . . is fitt
t]he ring-l
27a of the
y be 0.1 to
mamoto,
the outer
e hub
rmed of a
on of a
ylindrical
le 10 in it
ered
ed.”
ike vent
air vent
0.5 μm”

s
App
App

the o
col.
cont
repro
The
by th
rear
eal 2012-0
lication 11
8. V
uter needl
5, ll. 20–2
act with ea
9. Th
duced bel
marked up
e Examin
piece perm
10. Su
conventi
membra
order to
opening
catheter
hub or th
the punc
opening
04892
/134,012
alve disk 7
e hub 20 w
1.) “[T]he
ch other”
e Examin
ow:
version o
er to be the
anently af
zuki discl
onal punc
ne filter pe
prevent th
is formed
hub or an
e catheter
ture needl
, thus to pe
0 “has a fu
hen the in
inner need
(Yamamot
er’s marke
f Yamamo
forward p
fixed to th
osed that
ture needle
rmeable to
e blood fro
in a portio
end plug a
. . . . The
e hub is re
rmit smoo
5
nction of
ner needle
le 50 and
o, col. 6, l
d up versi
to’s figure
iece and e
e forward
assembly
air but im
m floodin
n of a pun
ttachable t
air in the p
lieved thro
th flush ba
preventing
is pulled
the valve
l. 26–28.)
on of Yam
shows ele
lement 40
piece. (An
incorpora
permeabl
g out. . . .
cture need
o the punc
uncture n
ugh the ai
ck of the
blood lea
out” (Yam
disk 70 ar
amoto’s F
ment 30 c
consistin
s. 7.)
tes a
e to blood
[A]n air re
le hub,
ture needl
eedle and
r relief
blood.
kage from
amoto,
e in tight
ig. 8 is

onsidered
g of the
, in
lief
e
in

Appeal 2012-004892
Application 11/134,012

6
(Suzuki Abstract) Specifically, “[t]he air is then discharged to the outside
through at least one opening 12 formed in the hub 3.” (Suzuki col. 5, ll. 54–
56.) “[O]pening 12 is forxed [sic] at the downstream side of the small
chamber 5 viewed in the direction of flow of air or blood during flushing
back.” (Suzuki, col. 6, ll. 10–13.) “[T]he opening 12 may be formed in at
least a portion of the outer peripheral wall of the proximal end portion of the
puncture hub 3.” (Suzuki, col. 6, ll. 42–44.)

Principle of Law
“In the prosecution of a patent, the initial burden falls on the PTO to
set forth the basis of any rejection, i.e., a prima facie case” Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007); see also In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability”).

Analysis
We will consider the rejections together because they rely upon the
teaching of Yamamoto and Suzuki regarding the needle and valve structure
assemblies.
Claims 1 and 8
Claim interpretation is at the heart of patent examination because a
claim cannot be compared to the prior art before its scope is properly
ascertained. In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1146 (Fed. Cir.
2012)). At issue for claims 1 and 8 is the limitation of a valve comprising a
Appeal 2012-004892
Application 11/134,012

7
“forward piece having a transparent nose portion fitting into” a hub of a
needle.
In Yamamoto, the flared portion of the needle sits up against the clear
material of the forward valve nose piece, and Yamamoto explains that this
tapered portion is for caulking and affixing the outer needle to the internal
cavity (FF 5). The Examiner looks to a dictionary to discern the meaning of
the word “into” and finds that one of the definitions explains the word means
“3. against; up against: he drove into a wall” (Ans. 8). Based on this
definition the Examiner concludes that the tapered portion of the hollow
needle (FF 3 (see element 31), FF 8), the portion that makes contact with the
transparent martial of the forward piece (FF 3, 5), meets the limitation of
“forward piece nose portion fitting into an opposite end of hub” as claimed
(Ans. 10).
“[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 construed in light of
Specification and drawings, they are “not construed in a lexicographic
vacuum.” Toro Co. v. White Consolidated Inds., 199 F.3d 1295, 1301 (Fed.
Cir. 1999); see also id. at 1299 (“[A] person would not rely solely on a
dictionary of general linguistic usage, but would understand the claims in
light of the specification and the prior art, guided by the prosecution history
and experience in the technologic field”).
We recognize, but are not persuaded by, the Examiner’s position that
Yamamoto’s element 31 (see FF 3, 5) lying against the transparent material
of the valve assembly element 30 (see FF 3, 5), meets the “fitting into”
limitation as required by the claims. The Specification provides that the
Appeal 2012-004892
Application 11/134,012

8
valve contains “[t]he forward piece 16 of the housing 15 has a cylindrical
nose portion 18 for fitting into a bore (not shown) of the hub 12 of the
introducer needle 11, for example, in a side-fit or friction-fit manner” (Spec.
5.) In addition, the Specification also discloses two different hub structures.
The first hub is associated with “an introducer needle 11 of conventional
structure includes a hub 12 and a hollow needle 13 that is secured to and that
extends from one end of the hub 12.” (Spec. 4, see also Fig. 1) The other is
an “integrated construction 32 [that] includes a hub 33 and a hollow needle
34 that is secured to and that extends from one end of the hub 33.” (Spec. 7,
see also Fig. 11.) In either case, the hubs are constructed in such a way that
they receive fittings (or valves) that press against the inside wall of the hub.
Thus, when read in light of the Specification the ordinary artisan would
understand that “fitting into” is akin to placing something in a container.
This is in line with another the definition of “into” as meaning “to the
interior or inner parts of: to look into a case” (Ans. 7.) Based on the
description of the valves and the examples of hubs disclosed in the
Specification, we find that the Examiner’s interpretation, based on the
present facts, is not tenable.
We conclude that the preponderance of the evidence of record does
not support the Examiner’s conclusion that the combination of Yamamoto
and Suzuki teaches the hub and valve structures as claimed. Even though,
Suzuki shows valves having “the Yamamoto type of port placement and the
‘radially extending’ type port placement [as] taught in Suzuki” (Ans. 11), the
combination as explained by the Examiner does not meet the limitation of a
valve “fitting into” a hub as claimed. Accordingly, the Examiner has not
Appeal 2012-004892
Application 11/134,012

9
met the burden of presenting a prima facie case, we reverse the rejection of
claims 1 and 8 as well as any dependents thereof.

Claim 17
Appellant contends that claim 17 is directed to an integrated valve
needle assembly (App. Br. 12). According to Appellant, “there is no
disclosure in Yamamoto that the internal cavity 25 of the outer needle hub
20 guides a guide wire (or any other element) therethrough” (id. at 11–12.).
Yamamoto disclosed an integral valve and needle structure (FF 1–8).
The Examiner has interpreted that the transparent nose portion functions as
an eyespot (Ans. 14–15; FF 4). Yamamoto’s disclosed structure shows a
first tapered passage (see FF 2 (element 30), FF 3 (element 30 and 31), FF 5
(element 31)). Yamamoto also disclosed a rear piece that also includes a
tapered surface (FF 6, see also FF 2, 3) containing a luer connection (FF 8).
According to the Examiner, Yamamoto disclosed “the claimed invention
except for the radial extension of the port and air filter” (Ans. 5; see also FF
1–8). “Suzuki which show[s] the Yamamoto type of port placement and the
‘radially extending’ type port placement taught in Suzuki.” (Ans. 11; FF 10;
see also Suzuki Fig. 2A and 3a). We agree with the Examiner’s conclusion
that it would have been obvious to “modify the [port] system as taught by
Yamamoto with radial extension of the port and air filter as taught by
Suzuki, since such a modification would provide the system with a radial
extension of the port and air filter for providing direct and shortest/thinnest
direction or outlet to the outside of the downstream housing” (Ans. 5).
We recognize, but are not persuaded by, Appellants contention that
Yamamoto does not provide a disclosure “that the internal cavity 25 of the
Appeal 2012-004892
Application 11/134,012

10
outer needle hub 20 guides a guidewire (or any other element) therethrough”
(App. Br. 12). The Examiner has interpreted the limitation of “guiding a
guidewire therethrough” as an intended use limitation (see Ans. 15).
Although statements of intended use often “appear in the claim’s preamble,”
a statement of intended use or purpose can appear elsewhere in a claim. In
re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987). We note that “[a]n intended
use or purpose usually will not limit the scope of the claim because such
statements usually do no more than define a context in which the invention
operates.” See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough
Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). “[T]he patentability of
apparatus or composition claims depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Here, both
Yamamoto’s forward and rear valve pieces have tapered sides (FF 5 & 6),
thereby meeting the claimed structural limitations. Accordingly, we agree
with the Examiner’s conclusion that “the elements disclosed in the prior art
of record are fully capable of satisfying all structural, functional, spatial, and
operational limitations” (Ans. 15).
We are also not persuaded by Appellant’s contention that and “[t]here
is no disclosure of a ‘luer connection’ on the end of the hub part 40 as
required by claim 17” (App. Br. 12). Yamamoto disclosed that the rear
portion of the valve assembly contains a tapered surface, specifically, “a
lure-tapered surface” (FF 6). Accordingly, we agree with the Examiner’s
conclusion that “[a] Luer connection or ‘Luer taper’ is a standardized system
of small-scale fluid fittings used for making leak-free connections between a
male-taper fitting and its mating female part on medical and laboratory
Appeal 2012-004892
Application 11/134,012

11
instruments, including hypodermic syringe tips and needles or stopcocks and
needles.” (Ans. 15.)
On the record before us, we conclude the Examiner did not err in
rejecting claim 17 under 35 U.S.C. § 103(a) as being unpatentable over
Yamamoto and Suzuki. Appellant does not present arguments for the
separate patentability of claim 22 other than those arguments presented for
claim 17 (App. Br. 13). We, thus, affirm the rejection of claim 22 under
35 U.S.C. § 103(a) for the reason set out above for claim 17.

SUMMARY
We reverse the rejection of claims 1, 3, and 8 under 35 U.S.C.
§ 103(a) over Yamamoto in view of Suzuki.
We affirm the rejection of claim 17 under 35 U.S.C. § 103(a) over
Yamamoto in view of Suzuki.
We reverse the rejection of claims 6 and 15 under 35 U.S.C. § 103(a)
over Yamamoto in view of Suzuki and in further view of Van Heugten.
We affirm the rejection of claim 22 under 35 U.S.C. § 103(a) over
Yamamoto in view of Suzuki and in further view of Van Heugten.

TIME PERIOD FOR RESPONSE
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-IN-PART

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