Ex Parte Vaillancourt et al

Board of Patent Appeals and Interferences

Sep 17, 2008

10773538 (B.P.A.I. Sep. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VINCENT L. VAILLANCOURT (DECEASED)
and
PATRICIA VAILLANCOURT,
Appellants
____________________

Appeal 2008-1523
Application 10/773,5381
Technology Center 3700
____________________

Decided: September 17, 2008
____________________

Before CAROL A. SPIEGEL, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Appellants request rehearing of the
DECISION ON APPEAL entered May 9, 2008 ("Decision"). The Decision
affirmed the rejection of all pending claims, claims 2 and 3, as unpatentable
under 35 U.S.C. § 103(a) over Wemmert (U.S. Patent 6,234,999 B1).

1 Application 10/773,538 ("the 538 application"), Needle Guard, filed 6
February 2004 with a preliminary amendment, is said to be a divisional of
application 10/116,776, filed 4 April 2002, now U.S. Patent 6,761,706,
issued 13 July 2004, which claims benefit under 35 U.S.C. § 119 of
provisional application 60/280,991, filed 4 April 2001.
REQUEST FOR REHEARING
Appeal 2008-1523
Application 10/ 773,538

Having considered all the points that the Board is said to have
misapprehended and/or overlooked in its Decision, we DENY rehearing of
Appeal 2008-1523.
I. Discussion
According to Appellants, "The Decision Has Misapprehended Claim 2
in Light of the Findings of Fact [1-3 and 6]" (Request2 6).
A. Findings of fact 1 and 2
The subject matter of claim 2 relates to a needle assembly with a
protective needle guard to prevent accidental needle pricks. Appellants
submit that Findings of Fact ("FF") 1 and 2 in the Decision "are not in
accord with Appellants' specification" (Request 1). Specifically, FF 1 and 2
found that Appellants' specification describes needle guards mounted on a
needle cannula which can be moved from a first position where the sharp
end of a needle is substantially enclosed, as illustrated by Figure 24, to a
second position where the sharp end is exposed for use, as illustrated by
Figure 27 (Decision 3). Appellants submit "Fig 27 represents the position of
the housing 101 when the needle is in a patient, i.e. the 'first position', and
Fig. 24 represents the position of the housing 101 after the needle has been
withdrawn from the patient and the housing has been positioned over the end
of the needle, i.e., the 'second position'" (Request 3).
Appellants' criticism of the Board's findings is unwarranted.
Appellants apparently believe the Board was directly quoting the disclosure
in Appellants' specification. It was not. Moreover, claim 2 neither recites a
method claim nor moving a needle relative to a housing between a "first"

2 Request for Rehearing filed 12 June 2008 ("Request").
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REQUEST FOR REHEARING
Appeal 2008-1523
Application 10/ 773,538

and "second" position. Thus, the Board's findings that Figure 24 represents
a position where the sharp end of a needle is substantially enclosed in a
housing, while Figure 27 represents a position where the sharp end is
exposed for use is consistent with Appellants' explanation of what their
specification discloses and is not inconsistent with the language of claim 2.
Therefore, on this record, Appellants have not shown that FF 1 and 2 as set
forth in the Decision at page 3 misapprehend and/or overlook the subject
matter of claim 2 and/or the disclosure of 538 specification.
B. Finding of fact 3
Appellants submit "Fig. 24 represents the position of the safety needle
housing 101 after the needle has been withdrawn from a patient. The needle
cannot be reinserted through the lock 102 in the position illustrated"
(Request 4).
The preliminary amendment filed February 6, 2004 stated (emphasis
added):
Rewrite page 10, line 3 to page 11, line 11
as follows:
--Figs. 19, 20, 20A, 21, 22, 23, refer to the
components of the safety needle assembly depicted
in Figs. 24,25,26,27. The safety needle housing
101 shown in cross section consists of a generally
tubular construction with an aperture 105 at one
end and with the inner hollowed out portion 108
having two recesses 106 and 206. Into the first
recess 106 is positioned the stainless steel washer
102. The washer 102 outer diameter points 202
are slightly larger than the recess 106 diameter.
The points 202 bite into the plastic wall creating an
effective seal of the washer 102 to the housing
101.
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REQUEST FOR REHEARING
Appeal 2008-1523
Application 10/ 773,538

The Mylar (polyester film) strip 110 is
corrugated as shown in Fig. 27 and has a series of
longitudinally spaced apart apertures 111 (Fig. 23).
The end or first corrugation 221 is placed behind
the washer 102, that is, between the face wall 104
of the housing 101 prior to locking the washer 102
in place. The compressed corrugated Mylar strip
110 is placed within the housing 101. Just in front
of the last corrugation is placed the hub locking
washer 103. This washer 103 is placed in the rear
recess 206 with the four cutouts of the washer 103
positioned over the four splines 107 of the safety
needle housing 101. This washer 103 is pushed or
otherwise positioned over the needle hub 20
splines 210 to form an interference fit between the
washer 103 and the needle hub 20.
The filament of the washer 103 over the
safety needle housing splines 107 is sufficient that
the housing 101 may be gripped and used to
wrench the needle hub 20 onto a male luer
connector (not shown). The clearance between the
washer 103 outer ring is such that when the safety
needle housing 101 is moved forward, the housing
101 will readily separate from the washer 103
leaving the Mylar strip 110 connected to the needle
hub 20.
As the safety needle housing 101 moves
down the needle 12 axis, the Mylar strip 110
unfolds about the needle 12 until it reaches it's [sic,
its] maximum extension. The Mylar strip's 110
length is such that the housing 101 will enclose the
sharpened end of the needle 12 before full
extension is obtained. When full extension of the
Mylar strip 110 is obtained and the needle 12 is
totally within the safety needle housing 101, the
user releases the housing 101. At that time there is
some retraction of the Mylar strip 110 pushing the
needle 12 sharpened point against the "H"shaped
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REQUEST FOR REHEARING
Appeal 2008-1523
Application 10/ 773,538

lock 102. This lock 102 is initially flexed 204
inwardly by the movement of the needle 12 in the
proximal direction through the housing 101.
When the needle 12 is retracted into the
housing 101 the washer flaps 241 close and regain
their initial shape. The "H" section 102 is
prevented from moving in the opposite direction
(outward) by the front wall of the housing 101
which interferes with any potential movement of
the flaps 241.--

Initially, we note that the 538 specification defines element 102 as a
generic stainless steel washer, then as an H-shaped lock, and finally as an H-
shaped lock with flaps.
Appellants' criticism of FF 3 is not commensurate with the claimed
invention. Claim 2 does not require a washer, let alone a particular type of
washer, e.g., H-shaped with flaps. It is improper to read limitations from the
specification into the claims. Constant v. Advanced Micro-Devices, Inc.,
848 F.2d 1560, 1571 (Fed. Cir. 1988) ("particular embodiments and
examples appearing in the specification will not generally be read into the
claims); In re Hiniker Co., 150 F.3d 1362, 1368 (Fed. Cir. 1998) ("Although
operational characteristics of an apparatus may be apparent from the
specification, we will not read such characteristics into the claims when they
cannot be fairly connected to the structure recited in the claims.").
Therefore, on this record, Appellants have not shown that FF 3 as set forth in
the Decision at page 3 misapprehends and/or overlooks the subject matter of
claim 2 and/or the disclosure of the 538 application.

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REQUEST FOR REHEARING
Appeal 2008-1523
Application 10/ 773,538

C. Finding of fact 6
Appellants submit "[t]he term 'stretched' is not used in Wemmert"
(Request 4). Appellants further submit "[t]here is no description in
Wemmert that the tether 44 is 'stretched' between the hub 34 and the shield
40" (Request 5).
The fact that Wemmert does not explicitly use the word "stretched" in
its disclosure does not mean that Wemmert does not disclose "stretched" as
the term is recited in claim 2. Indeed, Appellants do not contend that the
Board overlooked, misapprehended or failed to appreciate an expressly
narrowing definition of the term "stretched" in the 538 specification. As
noted in the Decision at page 6, claims in an application are to be given their
broadest reasonable interpretation consistent with the underlying
specification. In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). The
ordinary meaning of "stretch" encompasses "extend." For example,
according to WEBSTER'S NINTH NEW COLLEGIATE DICTIONARY
(1984) at page 1166, "stretch" is defined, in part, as
1: to extend . . . in a reclining position 2: to reach
out: EXTEND . . . 3: to extend in length . . . 7:
to pull taut . . . 8 a: to enlarge or distend esp. by
force . . . b to extend or expand as if by physical
force . . . 9: to cause to reach or continue (as from
one point to another or across a space) . . .

Thus, while Wemmert may not have expressly used the term "stretch" in its
disclosure, the disclosure describes "stretching" as that term is commonly
understood. Furthermore, as noted in the Decision at pages 4-6, Appellants'
specification exemplifies a Mylar plastic strip (FF 5). Mylar is a biaxially-
oriented polyethylene terephthalate film (Decision 4, n. 5), and Wemmert
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REQUEST FOR REHEARING
Appeal 2008-1523
Application 10/ 773,538

discloses a tether preferably made of a polyethylene terephthalate (FF 7).
Therefore, on this record, Appellants have not shown that FF 6 as set forth in
the Decision at page 5 misapprehends and/or overlooks the subject matter of
claim 2 and/or the disclosure of Wemmert and/or the 538 application
D. Claim 2
Claim 2 recites a combination comprising, in relevant part (emphasis
added),
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 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.
Figure 6 of Wemmert was relied on in the Decision at page 5 and is
reproduced below.

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REQUEST FOR REHEARING
Appeal 2008-1523
Application 10/ 773,538

{Fig. 6 of Wemmert shows a needle assembly comprising a
needle extending at one end from a hub with its other, sharp end
enclosed inside a movable housing which is connected to the
hub by a corrugated plastic strip.}

Appellants submit "there is no teaching in Wemmert that the shield 40
is connected to the needle hub 34 under a biasing force or that the tether 44
is stretched to retain the shield 40 connected to the hub 34 under a biasing
force while the needle 31 is in abutment with the shield 40" (Request 7).
As seen in Wemmert Figure 6, "[t]he tether 44 is a relatively stiff but
flexible material, preferably polyethylene terephthalate, a polyester, which
'provides a slight biasing force to help maintain tether 44 in the completely
extended position . . . [which] aids in maintaining needle shield 40 in
position over the sharp distal tip of . . . [the] needle 31' (Wemmert 6:37-45)"
(Decision FF 7). The 538 specification does not define "a biasing force."
Claim 2 does not require "a biasing force" in any particular direction. Claim
2 requires that the polyester film is capable of being stretched, i.e., extended
in length. Wemmert states "tether 44 has a length that maintains the sharp
distal tip of introducer needle 31 in main body portion 41 of needle shield
when tether 44 is fully extended" (Wemmert 5:65-6:1); and "[a]gain, tether
44 maintains main body portion 41 in the proper location so that the sharp
distal tip of introducer needle 31 is safely located within main body portion
41 of needle shield 40" (Wemmert 6:20-24). In other words, tether 44 aids
in maintaining shield 40 in abutment, i.e., contact, with needle 31 (sharp
distal tip) while stretched, i.e., extended, between hub 34 and housing 40
with a slight biasing force. Thus, giving claim 2 its broadest reasonable
interpretation consistent with its supporting disclosure, we find no structural
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REQUEST FOR REHEARING
Appeal 2008-1523
Application 10/ 773,538

distinction between a combination within the scope of appealed claim 2 and
the needle assembly combination fairly described by Wemmert.
E. Summary
In summary, Appellants have not shown that we misapprehended or
overlooked any points in the Decision. The request for rehearing is denied.
II. Order
Having considered Appellants' Request for Rehearing, filed June 12,
2008, and all the points Appellants allege the Board has overlooked and/or
misapprehended in its original decision in Appeal 2008-1523, mailed May 9,
2008, and for the reasons stated herein, it is
ORDERED that the request for rehearing of Appeal 2008-1523 is
DENIED.
REHEARING DENIED

MAT

Francis C. Hand, Esq.
CARELLA, BYRNE, BAIN, GILFILLAN,
CECCHI, STEWART & OLSTEIN
5 Becker Farm Road
Roseland, NJ 07068
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