Ex Parte Clark

Patent Trial and Appeal Board

Aug 29, 2017

13567122 (P.T.A.B. Aug. 29, 2017)

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.
0100/0223 6081
EXAMINER
SCHMIDT, EMILY LOUISE
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
13/567,122 08/06/2012
135866 7590 08/29/2017
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
Geoff Clark
08/29/2017 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 GEOFF CLARK
Appeal 2016-002515
Application 13/567,122
Technology Center 3700
Before MICHELLE R. OSINSKI, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Geoff Clark (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1—14. 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 Smith Medical ASD,
Inc. Appeal Br. 3.
Appeal 2016-002515
Application 13/567,122
THE CLAIMED SUBJECT MATTER
Claims 1 and 8 are independent. Claim 1 is reproduced below and is
illustrative of the claimed subject matter on appeal.
1. Needle assembly, comprising:
a needle hub having a main body along a longitudinal axis
having a distal portion and a proximal portion, a needle
extending from the distal portion; two plates secured to opposite
sides of the distal portion along the longitudinal axis in parallel
to each other, the respective top edges and the respective bottom
edges of the two plates along the longitudinal axis of the needle
hub being in substantial corresponding eoplanar alignment so
that the respective top edges and the respective bottom edges of
the two plates provide corresponding top and bottom supports for
the needle hub on a flat surface, the needle hub further having a
partition positioned orthogonal to the longitudinal axis of the
needle hub proximate to the two plates, the top edge of the
partition being in substantial eoplanar relationship with the
respective top edges of the two plates and the bottom edge of the
partition being in eoplanar relationship with the respective
bottom edges of the two plates so that the top and bottom edges
of the partition provide respective additional top and bottom
supports for the needle hub on the flat surface; wherein a user
can readily and firmly grasp the needle assembly by grasping the
respective outer surfaces of the two plates; and wherein the
partition provides a stop for the fingers of the user and prevents
the fingers from inadvertently making contact with the needle.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Davis
Velez-Rivera
Racz
US 5,571,091
US 2012/0004625 A1
WO 2008/157376 A1
Nov. 5, 1996
Jan. 5, 2012
Dec. 24, 2008
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Appeal 2016-002515
Application 13/567,122
REJECTIONS
I. Claims 1, 2, 4, 6—9, and 12—14 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Racz. Final Act. 3—5.
II. Claims 3 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Racz and Davis. Id. at 6.
III. Claims 5 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Racz and Velez-Rivera. Id. at 6—7.
OPINION
Rejection I
The Examiner finds that Racz discloses, inter alia, two plates secured
to opposite sides of a distal portion of a needle hub along a longitudinal axis
of the needl e hub in parallel to each other, and a partition positioned
orthogonal to the longitudinal axis of the needle hub. Final Act. 3. The
Examiner finds that the top and bottom edges of the two plates are “in
substantial corresponding coplanar alignment so that the respective top
edges and the respective bottom edges of the two plates provide
corresponding top and bottom supports for the needle hub on a flat surface.”
Id. The Examiner includes an annotated reproduction of Figure 1 of Racz to
illustrate what the Examiner considers to be the plates (along with their top
edges) and the partition (along with its top edge), as set forth in the claims.
Id. at 4. A relevant portion of Figure 1 of Racz, and the Examiner’s
annotated version of Racz’s Figure 1 is reproduced below.
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Application 13/567,122
Portion of Figure 1 ofRacz
Annotated Version of Portion of Figure 1 ofRacz
The reproduced portion of Racz’s Figure 1 depicts “an embodiment of
a safety neural injection system [] with a cannula 10 (viewed in both top and
side perspectives).” Racz | 59. The annotated figure removes the reference
numerals, but includes notations with arrows extending to those elements the
Examiner considers to be the “plate[s]” with two “top edge[s]” and the
“partition” with a “top edge.” Final Act. 4. The Examiner finds that “Racz
shows a rectangular portion surrounding the hub to which 50 is attached”
and that “the way the notch[] [50] [is] drawn indicates to the Examiner the[]
portion[] [to which 50 is attached] [is] rectangular as opposed to cylindrical
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Appeal 2016-002515
Application 13/567,122
as there is no indication of curvature in relation to the notch[].” Ans. 2. The
Examiner, thus, finds the “two sides” of the portion to which 50 is attached
are “considered plates.” Id.
Appellant argues that “in a two dimensional drawing, a
circumferential portion . . . may well be confused as being rectangular, as a
circumferential shape in a two dimensional drawing would show up as per
shown in the top and middle drawings of Fig. 1.” Reply Br. 1—2. Appellant
argues that the portion to which 50 is attached is a circumferential flange and
cannot be construed to be two parallel plates. Appeal Br. 9.
An Examiner’s factual finding regarding what a reference discloses
must be supported by a preponderance of the evidence. See In re Caveney,
761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the
standard that must be met by the PTO in making rejections”). In order to
satisfy this standard, the evidence must demonstrate that it is more likely
than not that the alleged facts are actually true. See Bosies v. Benedict, 27
F.3d 539, 542 (Fed. Cir. 1994) (the preponderance of the evidence standard
requires the finder of fact to believe that the existence of a fact is more
probable than its nonexistence).
The depictions of Racz’s cannula are limited to side and top views,
which fail to provide sufficient certainty regarding the shape of hub 42,
stylet mating hub 44, or the portion to which notch 50 is attached.
Moreover, Racz is silent as to the shape of hub 42, stylet mating hub 44, or
the portion to which notch 50 is attached. After viewing Figure 1 of Racz,
we find that the portion to which notch 50 is attached may be rectangular, as
the Examiner proposes, but it instead may be cylindrical as proposed by
Appellant. As far as we can tell, both scenarios are equally probable. In
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Appeal 2016-002515
Application 13/567,122
particular, we do not agree with the Examiner’s finding (Ans. 2) that the way
the notch is drawn indicates that the portion to which 50 is attached is
rectangular. “The Patent Office has the initial duty of 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 In re
GPAC, Inc., 57 F.3d 1573, 1582 (Fed. Cir. 1995). On these facts, one of
ordinary skill in the art can only speculate as to whether the portion to which
notch 50 is attached may be rectangular, as the Examiner proposes.
If the portion to which 50 is attached is a cylindrical flange, the
Examiner has not explained how a cylindrical flange would meet the
limitations of the claim directed to “two plates.” The Examiner has only
explained how a rectangular element would meet the limitations of the claim
directed to “two plates.” Ans. 2. Thus, the Examiner relies on a speculative
finding that the portion to which 50 is attached is rectangular, and such
speculation is insufficient to support the rejection.
Accordingly, we find that the Examiner erred in finding that Racz
discloses two plates secured to opposite sides of a needle hub by improperly
relying on a speculative finding that the portion to which 50 is attached is
rectangular. We do not sustain the rejection of independent claims 1 and 8,
or claims 2, 4, 6, 7, 9, and 12—14, which depend therefrom, under 35 U.S.C.
§ 102(b) as anticipated by Racz.
Rejection II
The Examiner rejects, under 35 U.S.C. § 103(a), claims 3 and 10 as
unpatentable over Racz and Davis and claims 5 and 11 as unpatentable over
Racz and Velez-Rivera. Final Act. 6—7. The rejection of these claims relies
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Application 13/567,122
on the Examiner’s speculative finding that the portion to which 50 is
attached is rectangular in connection with finding that Racz discloses two
plates secured to opposite sides of a needle hub. Id. at 6. The Examiner
does not explain how Davis or Velez-Rivera might cure this underlying
deficiency. Accordingly, we do not sustain the rejection under 35 U.S.C.
§ 103(a) of claims 3 and 10 as unpatentable over Racz and Davis; and claims
5 and 11 as unpatentable over Racz and Velez-Rivera.
DECISION
The Examiner’s decision to reject claims 1—14 is reversed.
REVERSED
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