KING SAUD UNIVERSITY

Patent Trials and Appeals Board

Feb 1, 2021

2020004514 (P.T.A.B. Feb. 1, 2021)

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.
15/878,371 01/23/2018 MASHAEL ABDULAZIZ ALHADLAQ 32903.51 8801
37833 7590 02/01/2021
Richard C. Litman
Nath, Goldberg & Meyer
112 S. West Street
Alexandria, VA 22314
EXAMINER
TRINH, HONG-VAN N
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
02/01/2021 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):
litman@4patent.com
tharkins@nathlaw.com
uspto_nva@nathlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASHAEL ABDULAZIZ ALHADLAQ

Appeal 2020-004514
Application 15/878,371
Technology Center 3700
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 6, 7, 9, and 10. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “KING
SAUD UNIVERSITY, RIYADH, SAUDI ARABIA.” Appeal Br. 3.
Appeal 2020-004514
Application 15/878,371

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BACKGROUND
The Specification states “[t]he disclosure of the present patent
application relates to medical syringes, and particularly to a syringe with a
sliding needle shield, allowing an exposed length of the needle to be
selectively adjusted.” Spec. ¶ 1.
REPRESENTATIVE CLAIM
Claim 6 is the only independent claim on appeal and recites:
6. A syringe with an adjustable needle shield, comprising:
an elongated hollow barrel having opposed open and
closed ends, the elongated hollow barrel having a longitudinal
axis;
a medicament cartridge removably received within the
elongated hollow barrel;
a hypodermic needle extending through the closed end of
the elongated hollow barrel, the hypodermic needle having
opposed first and seconds ends, the first end thereof being free
and the second end thereof being positioned within the elongated
hollow barrel and being adapted for piercing a seal end of the
medicament cartridge;
a plunger rod having opposed first and second ends, the
first end thereof being slidably received within the elongated
hollow barrel and being adapted for selectively compressing a
sliding plunger end of the medicament cartridge, the plunger rod
at least partially projecting through the open end of the elongated
hollow barrel, the second end of the plunger rod being adapted
for manual pushing by a user's finger;
the adjustable needle shield consisting of a cylindrical
tubular body having opposed first and second open ends, wherein
the cylindrical tubular body has an outer peripheral surface
extending continuously from the first to the second open ends,
the closed end of the elongated hollow barrel being slidably
received within the shield through the second open end such that
the shield adjustably covers a desired portion of the hypodermic
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Application 15/878,371

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needle and the first open end being free, the shield having three
axially aligned locking openings formed through the outer
peripheral surface;
wherein the three axially aligned locking openings
comprises a proximal locking opening, a distal locking opening,
and an intermediate locking opening between the proximal
locking opening and the distal locking opening;
further wherein the cylindrical tubular body has a first
inner diameter between the second end and the proximal locking
opening and a second inner diameter between the proximal
locking opening and the intermediate locking opening, wherein
the first inner diameter and the second inner diameter are the
same;
a hollow cylindrical mount having opposed first and
second open ends, the first open end being free and the second
open end being secured to the closed end of the elongated hollow
barrel, the hypodermic needle partially extending through the
hollow cylindrical mount;
a single engaging member; and
a single elastic element securing the single engaging
member to an exterior face of the hollow cylindrical mount,
wherein the engaging member is selectively and releasably
received through a selected one of the three locking openings
formed through the shield to releasably lock an axial position of
the shield with respect to the elongated hollow barrel, wherein at
a first locking position the shield covers the entirety of the
hypodermic needle, at a second locking position the shield
partially covers the hypodermic needle, and at a third locking
position the shield is fully retracted so as to fully expose the
hypodermic needle.
Appeal Br. 18–19.
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Application 15/878,371

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REJECTION
The Examiner rejects claims 6, 7, 9, and 10 under 35 U.S.C. § 103 as
unpatentable over Just2 in view of McWethy,3 DeMarco,4 and Kovacs.5
DISCUSSION
With respect to the rejection at issue, Appellant raises arguments only
with respect to claim 6, and thus, Appellant effectively groups all claims
together. See Appeal Br. 11–16. Accordingly, we discuss claim 6 below as
representative of the claims on appeal, and claims 7, 9, and 10 will stand or
fall with claim 6. See 37 C.F.R. 41.37(c)(1)(iv).
With respect to claim 6, the Examiner relies on Just as teaching a
syringe with a needle shield; the Examiner relies on McWethy as teaching
certain aspects of a syringe; the Examiner relies on DeMarco as teaching the
use of an adjustable needle shield with certain characteristics claimed; and
the Examiner relies on Kovacs as teaching an elastic element as required by
the claim. Final Act. 5–10. Appellant raises arguments only with respect to
the Examiner’s proposed modification of Just’s needle shield to include an
adjustable locking mechanism as taught by DeMarco. Appeal Br. 11–16.
We agree with and adopt the Examiner’s findings and determinations with
respect to claim 6 and are not persuaded of error by Appellant’s arguments,
as discussed below. See Final Act. 3–10; see also Ans. 3–6.
Appellant argues that “[t]he use of DeMarco’s complex slideable
protective sheath to also prevent accidental needle sticks instead of Just’s

2 Just, US 2013/0110039 A1, pub. May 2, 2013.
3 McWethy et al., US 7,458,962 B2, iss. Dec. 2, 2008.
4 DeMarco et al., US 5,817,064, iss. Oct. 6, 1998.
5 Kovacs, US 5,255,993, iss. Oct. 26, 1993.
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Application 15/878,371

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simple and elegant removable shield is a clear example of hindsight
reconstruction.” Appeal Br. 14. In support, Appellant asserts “there is a
lack of rational underpinning to support the legal conclusion of obviousness”
and that the Examiner “never makes clear why Just would replace his non-
adjustable needle cover with an adjustable cover that permits usage in two
positions and a cover in another position after the syringe has been used.” Id.
We are not persuaded by this argument. The Examiner’s obviousness
rejection must be based on
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In the rejection, the Examiner
states that the proposed combination would be made “in order to allow for
the adjustable needle shield to be slideably moveable between three different
positions as well as maintain a desired position of one of the three different
positions.” Final Act. 9. The Examiner further explains although Just
includes a needle guard that can minimize accidental needle sticks, “Just
provides no means for maintaining the position of the needle guard 62,
therefore a user could accidentally move the needle guard 62 proximally,”
which may result in accidental contact with the needle. Ans. 5. The
Examiner further explains “[t]he collar 22 and pockets 30, 34 of DeMarco
would allow the needle guard 62 to maintain a first, intermediate, or second
position without the possibility of a user accidently sticking themselves due
an engagement between the collar 22 with the pockets 30, 34 of the sheath
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Application 15/878,371

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24 of DeMarco.” Id. Thus, the Examiner determines that the combination
would have been obvious because it would allow for greater protection from
accidental needle sticks.
We find that the Examiner’s reasoning is adequately supported on the
record before us. Just discloses a syringe with “a removable needle guard 62
that can minimize accident ‘sticking’ incidents.” Just ¶ 11. DeMarco
discloses a syringe with an adjustable sheath that is slideably moveable in
relation to a needle and includes locking means to lock the sheath with
respect to the needle. See, e.g., DeMarco col. 2, ll. 9–20. We agree with the
Examiner that one of ordinary skill in the art would recognize the benefit of
using a locking and adjustable sheath over a needle based on DeMarco’s
disclosure, and thus, the combination with Just would have been obvious for
the reasons provided by the Examiner. Without further explanation from
Appellant, we are not persuaded of error in the Examiner’s reasoning.
Appellant also argues that the proposed combination would not result
in a first inner diameter of the cylindrical tubular body that is the same as a
second inner diameter of the cylindrical tubular body as required by claim 6.
Appeal Br. 14. Appellant explains:
It is not apparent why Just would retain the claimed cylindrical
tubular body with first inner diameter and the second inner
diameter are the same at the same time utilize DeMarco’s
slidable protective sheath requiring disparate structure as noted
above. Appellant is aware of the axiom that the teaching is not
meant to bodily incorporate the secondary reference. However,
when the teaching requires certain structure to function it cannot
be dismissed as the Examiner suggests. The Examiner has
“cherry-picked” certain structure from DeMarco regardless of its
destructive effect on DeMarco’s overall teaching.
Id. at 15.
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In response, the Examiner explains:
the Examiner is not replacing the needle guard of Just with the
sheath of DeMarco, but rather incorporating features from
DeMarco that would improve and benefit the use of the needle
guard of Just by allowing for a locking mechanism to maintain a
first, intermediate, and second position without the possibility of
needle pricking of the user. The cylindrical tubular body of Just
has a constant inner diameter throughout the needle guard 62 and
modifying the needle guard 62 with the DeMarco reference
would only be adding pockets/openings to allow for a locking
mechanism to maintain a desired positon.
Ans. 6.
Without further explanation, we are not persuaded of error. As the
Examiner explains, the rejection relies on a constant inner diameter of the
sheath as taught by Just and only seeks to modify Just to incorporate the
sheath locking mechanism of DeMarco. We also note that DeMarco does
not appear to disclose any reason why the inner diameters of the sheath 24
might be different, and in fact, DeMarco appears to show a sheath with a
constant inner diameter along its length in Figure 2. Thus, we are not
persuaded that the Examiner erred in relying on Just’s disclosure of a
constant inner diameter of the sheath in the proposed combination.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 6. Accordingly, we sustain the rejection of claim 6. We also
sustain the rejection of claims 7, 9, and 10, which fall with claim 6.

CONCLUSION
We AFFIRM the rejection of claims 6, 7, 9, and 10.

Appeal 2020-004514
Application 15/878,371

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In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
6, 7, 9, 10 103 Just, McWethy,
DeMarco,
Kovacs
6, 7, 9, 10
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R. §
1.136 (a)(l)(iv).

AFFIRMED