Ex Parte Ziman

Patent Trial and Appeal Board

Oct 23, 2013

12289264 (P.T.A.B. Oct. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/289,264 10/23/2008 Lynn A. Ziman 0100/0208 2890
21395 7590 10/24/2013
LOUIS WOO
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
EXAMINER
MEHTA, BHISMA
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
10/24/2013 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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LYNN A. ZIMAN
____________

Appeal 2011-002906
Application 12/289,264
Technology Center 3700
____________

Before: EDWARD A. BROWN, MICHELLE R. OSINSKI, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL
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Application 12/289,264

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STATEMENT OF THE CASE1
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 16-20, 24-27, and 31. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We reverse the decision of the Examiner.

CLAIMED SUBJECT MATTER
Claim 16, directed to a method of routing medication, and claim 24,
directed to a method of assembling an adapter for use with a medication
providing device, are independent claims. Claim 16 is illustrative of the
subject matter on appeal, and recites:
16. A method of routing a medication from a
medication providing device, comprising the steps of:
a) providing a given medication conveying
connector;
b) providing an adapter having a shroud with one
open end and an other open end;
c) non-removably fitting an inner shroud to the one
end of the shroud, the inner shroud having a connector end
for enabling the inner shroud to be mated to the given
medication conveying connector; and
d) non-removably fitting a core to the other end of
the shroud, the core having a through passage and a
connector end for enabling the core to be mated to a
connector of the medication providing device, the
medication providing device once mated to the core is not
removable from the core.

1 Appellant identifies this case as related to Appeal 2010-012141 for
Application 11/342,620, for which a Decision was issued September 25,
2013. App. Br. 4.
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Application 12/289,264

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REFERENCE
The Examiner relied on Appling, U.S. 5,651,776, issued July 29, 1977
to reject all the claims on appeal.
REJECTION
The rejection of claims 16-20, 24-27 and 31 under 35 U.S.C. § 102(b)
as being anticipated by Appling is before us for review.
ANALYSIS
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed.
Cir. 1987). “The identical invention must be shown in as complete detail as
is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Independent Claim 16
Independent claim 16 calls for an inner shroud “non-removably
fitting” to one end of an outer shroud; a core “non-removably fitting” to the
other end of the outer shroud; and a medication providing device mated to
and “not removable” from the core.
The Examiner found that Appling disclosed that the inner shroud (hub
12) and outer shroud (collar 16) “can be connected and disconnected at
will,” but that “at least while the adapter is being used” the inner shroud is
not removed from the outer shroud. Ans. 7. The Examiner also found that
even though the inner shroud in Appling can be removed from the outer
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shroud, Appling does not disclose that the inner shroud “ha[s] to be removed
from the [outer] shroud.” Id. at 8.
In contrast, Appellant contends that Appling’s inner shroud (hub 12)
is not non-removably fitted to Appling’s outer shroud (collar 16) because
they can be connected and disconnected at will through the use of
corresponding threads. App. Br. 12. Accordingly, the Examiner and
Appellant disagree about the meaning of the claim term “non-removably
fitting.”
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (citations omitted).
The Specification does not define the phrase “non-removably fitting.”
The Specification states that once inner shroud 36 is mated to housing
shroud 30 it “is no longer removable from housing shroud 30.” Spec., para.
[0026].
Based on the Specification, we determine that the phrase “non-
removably fitting” as used in independent claim 16 would be interpreted by
one of ordinary skill in the art to mean that the elements, once connected, are
prevented from being removed or separated from each other without any
limitation that this is only when the elements are in use.
Based on the Examiner’s findings and analysis of Appling, it is clear
that Appling does not disclose an inner shroud that is prevented from being
removed or separated from an outer shroud. Elements that can be connected
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and disconnected at will are not elements that are prevented from being
removed or separated from each other. Accordingly, Appling does not
disclose each and every element, or the identical invention, as set forth in the
claim 16. Thus, we cannot sustain the rejection under Section 102 based on
Appling of independent claim 16 or claims 17-20, which depend directly
from claim 16.
Independent Claim 24
Claim 24 does not call for the inner shroud “non-removably fitting” to
one end of the outer shroud as in claim 16. It merely calls for “fitting” these
components together. Claim 24 also recites that the inner shroud has an
opening for accepting an end of a connector and that the connector once
mated to the inner shroud “is freely rotatable in one direction and is
removable from the inner shroud” by rotating it relative to the inner shroud.
Appellant argues that catheter 52 is “fixedly connected to catheter hub
12.” App. Br. 12; see also Reply Br. 5. Appellant also argues that “all
Appling disclose[s] is that one end of a catheter is inserted into the opening
of hub 12.” Reply Br. 2 (citing Appling, col. 3, ll. 57-60, col. 4, ll. 61-62).
The Examiner found that “the connector (52) is considered to be capable of
being freely rotatable in one direction and being removable from the inner
shroud when rotated in a counter direction.” Ans. 10. As pointed out by
Appellant, Appling is silent regarding the specific connection between
catheter 52 and hub 12. Because Appling does not provide any indication
how catheter 52 is connected to hub 12, the Examiner’s finding that the
catheter 52 is capable of being freely rotatable in one direction and being
removable when rotated in a counter direction is not supported by a
preponderance of the evidence. “The Patent Office has the initial duty of
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supplying the factual basis for its rejection. It may not . . . resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies” in the cited references. In re Warner, 379 F.2d 1011, 1017
(CCPA 1967); see also, In re GPAC, Inc., 57 F.3d 1573, 1582 (Fed. Cir.
1995). Accordingly, we are persuaded of Examiner error in finding that
Appling discloses each and every element, or the identical invention, as set
forth in the claim 24. Thus, we cannot sustain the rejection under Section
102 based on Appling of independent claim 24 or claims 25, 26, 27, and 31,
which depend from claim 24.

DECISION
Upon consideration of the record as a whole in light of Appellant’s
contentions and the preponderance of relevant evidence, we reverse the
rejection of claims 16-20, 24-27, and 31 under Section 102 based on
Appling.

REVERSED

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