Ex Parte Zhong

Patent Trial and Appeal Board

Aug 12, 2016

12545067 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/545,067 08/20/2009
22031 7590 08/16/2016
NICK A NICHOLS, JR
NICHOLS IP PC
P 0 BOX 340518
AUSTIN, TX 78734
FIRST NAMED INVENTOR
BING-TANG ZHONG
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ZHON/502US 1581
EXAMINER
HAYMAN, !MANIN
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
08/16/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
nick@nicholsip.com
nick4958@hotmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BING-TANG ZHONG1
Appeal2014-004887
Application 12/545,067
Technology Center 3700
Before JOHN C. KERINS, AMANDA F. WIEKER, and
FREDERICK C. LANEY, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bing-Tang Zhong ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's final rejection of claims 1-13. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellant, the Real Party in Interest is the named inventor,
Bing-Tang Zhong. Br. 2.
Appeal2014-004887
Application 12/545,067
CLAIMED SUBJECT MATTER
The invention concerns a "needle shield assembly for enclosing a
needle cannula." Spec., Abstract. Claim 1, the sole independent claim, is
illustrative of the subject matter on appeal, and recites:
1. A needle shield assembly, comprising:
a) a needle cannula, wherein said needle cannula includes
a needle hub secured at a proximal end thereof and a sharp end
at an opposite distal end thereof;
b) an adapter assembly removeably securing said needle
cannula to a syringe, said adapter assembly including an adapter
housing and a needle hub connector mounted within said adapter
housing;
c) said adapter assembly further including a needle shield
moveably connected to said adapter housing and rotatable
between a first position wherein said needle cannula is enclosed
by said needle shield and a second position wherein said needle
cannula is exposed for use; and
d) a tendon member having a distal end secured to said
needle shield and a proximal end secured to said needle hub
connector.
Br. 8, Claims App. (emphases added).
REJECTIONS
The claims stand rejected as follows: 2
I. Claims 1-3 and 6-13 under 35 U.S.C. § 102(b) as anticipated
by Bosel (US 2006/0224122 Al, pub. Oct. 5, 2006).
II. Claims 4--5 under 35 U.S.C. § 103(a) as unpatentable over
Bosel and Szabo (US 5,913,846, iss. June 22, 1999).
2 The Examiner withdraws the rejection of claim 1 under 35 U.S.C. § 112,
second paragraph, in the Examiner's Answer. See Ans. 5; Final Act. 2.
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Appeal2014-004887
Application 12/545,067
ANALYSIS
Regarding independent claim 1, the Examiner finds that Bosel
discloses a needle shield assembly including:
a) a needle cannula (18) ... includ[ing] a needle hub (20) ... ;
b) an adapter assembly (40) removeably securing said needle
cannula to a syringe (12), said adapter assembly including an
adapter housing and the needle hub connector mounted within
said adapter housing; c) said adapter assembly further including
a needle shield (5 0) moveably connected to said adapter
housing and rotatable between a first position wherein said
needle cannula is enclosed by said needle shield and a second
position wherein said needle cannula is exposed for use; and d)
a tendon member ( 46, living hinge) having a distal end secured
to said needle shield and a proximal end secured to said needle
hub connector (figure 6 - note hub 20 together with a distal end
portion of the syringe barrel 12 form a cannula holding member
16).
Final Act. 2-3 (citations omitted; emphasis added).
Appellant contends, inter alia, that Bosel fails to disclose, first, "an
adapter assembly" that "removeably secures" the needle cannula to the
syringe and, second, a needle shield that "rotat[ es] between" the two claimed
positions. Br. 3--4. We agree with Appellant.
First, we agree with Appellant's contention that Bosel's safety device
40 is not "an adapter assembly removeably securing said needle cannula to a
syringe." Br. 3--4. Bosel discloses:
A hub 20 is provided at the distal end of the syringe barrel 12
and a cannula 18 is fixed in place at the hub 20 ... in a typical
manner such as through the use of an epoxy .... The hub 20
together with a distal end portion of the syringe barrel 12 form
a cannula holding member 16. In the illustrated embodiment, a
safety device 40 is adapted to be mounted on the cannula
holding member 16.
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Appeal2014-004887
Application 12/545,067
Bosel i-fi-146-47; see also id., Fig. 1. Clearly, Bosel's safety device 40 does
not "removably secur[e]" needle cannula 18 to syringe 12; rather, those
elements are connected, for example, by epoxy, and safety device 40 is
mounted thereon. Id.
Furthermore, in the alternate embodiment cited in the Examiner's
Answer, (see Ans. 6), cannula holding member 116 is provided with flange
117, which is adapted to removably connect with the syringe. Bosel i1 96,
Fig. 28. Even in that embodiment, however, safety device 40 does not
secure needle cannula 118 to the syringe; flange 117 performs that function.
Id. Safety device 40 is "mounted on the cannula holding member 116" in
the same manner discussed above. Id. at i-fi-1 96-97 (disclosing that cannula
holding member 116 includes "a radially outwardly directed flange 117 ...
to connect the cannula holding member 116 to the syringe barrel. ... The
safety device 40, comprised of the collar 42 and the sheath 50, is mounted
on the cannula holding member 116. ").
Second, we agree with Appellant's contention that Bosel's sheath 50
is not rotatable between a first enclosed position and a second exposed
position as claimed, because Bosel' s sheath 50 permanently locks in the
enclosed position, preventing movement to a second exposed position for
use. Br. 4; see Bosel i-fi-165---66 ("[A]s the sheath 50 is pivoted towards the
cannula 18, the sheath is automatically locked in the closed cannula covering
position .... [A ]utomatic locking of the sheath 50 in the cannula covering
position ... is permanent in that there is no structure to effect unlocking.").
The Examiner's Answer states that "[t]he Examiner considers the first
position to be equivalent to the protector (80) covering the cannula ( 18), and
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Appeal2014-004887
Application 12/545,067
the second position to be equivalent to the protector (80) removed, thus
exposing the cannula (18)." Ans. 7. The Examiner fails to explain,
however, how protector 80 is "rotatable" between these positions. Bosel
discloses that "a protector 80 can optionally be provided for being positioned
over the cannula 18 in covering relation thereto, with the proximal end
portion of the protector 80 frictionally engaging the hub 20 to removably
retain the protector in place on the cannula holding member 16." Bosel
i-f 47; see also id. i-f 55 ("[T]he protector 80 is formed as an elongated
cylindrical hollow member ... open at the proximal end 84 and preferably
closed at the distal end 82. The exterior surface of the protector 80 can be
provided with longitudinal ribs to facilitate gripping by the user."). Bosel
does not disclose protector 80 as rotating in any manner. See id. i-fi-147, 55,
66, 97, Figs. 1-2.
For these reasons, we reverse the Examiner's rejection of claim 1 as
anticipated by Bosel. Because claims 2, 3, and 6-13 depend directly or
indirect! y from claim 1, the rejection of those claims incorporates the same
deficiencies discussed with respect to claim 1. Therefore, we reverse the
rejection of claims 2, 3, and 6-13.
The Examiner rejects claims 4 and 5, which depend from claim 1,
under 35 U.S.C. § 103(a) as unpatentable over Bosel and Szabo. Final Act.
5. The Examiner does not rely on Szabo in any manner that cures the
deficiencies discussed above with respect to claim 1. Id. Accordingly, we
also reverse the Examiner's rejection of claims 4 and 5.
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Appeal2014-004887
Application 12/545,067
DECISION
The Examiner's rejections of claims 1-13 are REVERSED.
REVERSED
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