Ex Parte Marshall et al

Patent Trial and Appeal Board

Nov 30, 2012

10547127 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEREMY MARSHALL, and ADAM JOHN MUMFORD
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Appeal 2010-008564
Application 10/547,127
Technology Center 3700
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Before KEN B. BARRETT, EDWARD A. BROWN, and
PATRICK R. SCANLON, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jeremy Marshall et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 13-22, which are all of the
pending claims, claims 1-12 having been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing was conducted on November 16,
2012.
We REVERSE.
Appeal 2010-008564
Application 10/547,127

2
THE INVENTION
The claimed subject matter relates to skin prickers. Spec. 1, l. 2.
Claim 13, the sole independent claim, reproduced below, is illustrative of the
subject matter on appeal.
1. A disposable skin pricker, comprising:
an elongate housing having a forward end
and a rearward and;
a longitudinally movable lancet carried in
said housing and having a body and a lancet tip at
a forward end, the lancet tip normally being within
the housing;
a spring spring-loading said lancet;
a trigger mechanism to retain the lancet in a
fully retracted position in which it energizes the
spring, the trigger mechanism being actuable to
release or fire the lancet to cause the lancet tip to
have a momentary position projecting from the
forward end of the housing; and
an arrangement for preventing re-use
comprising a spring finger extending rearwardly
from the lancet alongside but spaced from the body
thereof, an abutment on the inside of the housing
projecting inwardly [sic] past which a tip of the
finger will snap during forward motion of the
lancet, and an aperture disposed in the side wall of
the housing such that any attempt to push the
lancet back with a greater than a predetermined
force after firing results in the abutment deflecting
the tip of the finger out through said aperture to an
exterior of the housing thereby to prevent return of
said lancet to its fully retracted position.

Appeal 2010-008564
Application 10/547,127

3
REFERENCES
The Examiner relies upon the following prior art references:
Morita
Marshall
US 5,755,733
WO 02/43591 A2
May 26, 1998
Jun. 6, 2002
THE REJECTIONS
Appellants seek review of the following rejections:
The rejection of claims 13-15 and 17-21 under 35 U.S.C. § 102(b) as
being anticipated by Morita.
The rejection of claims 16 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Morita and Marshall.
ANALYSIS
Rejection of claims 13-15 and 17-21 based on Morita
The Examiner takes the position that Morita discloses a skin pricker
as recited in independent claim 13 including an arrangement for preventing
re-use comprising a spring finger 64, an abutment (the upper edge of channel
30) on the inside of the housing, and an aperture 30 disposed in the side wall
of the housing. Ans. 3-4.
The Examiner’s position requires that the lips 64 of Morita are
considered to be “spring fingers.” Appellants argue that the lips 64 are not
“spring fingers,” but instead are triangular shaped protrusions formed
integrally with the actuator 56. App. Br. 6. Appellants further assert that the
lips 64 are not disclosed as being deformable relative to actuator 56 and thus
have no “spring” characteristic. Id. In response, the Examiner states that
Appellants’ claims do not require the spring finger to be deformable relative
to the actuator. Ans. 6-7.
Appeal 2010-008564
Application 10/547,127

4
The Examiner’s finding that the lips 64 of Morita are spring fingers as
claimed rests on an unreasonably broad interpretation of “spring finger.”
Even though claim 13 does not expressly require that the spring finger be
deformable relative to its supporting structure, we agree with Appellants
contention that a “spring finger” must have a spring characteristic. There is
no teaching or suggestion in Morita that the lips 64 have a spring
characteristic or function in any way as a spring. Furthermore, we disagree
with the Examiner’s contention that the lip 64 would be a “spring finger”
because “it is attached to spring 54” and “cooperates with spring 54 to make
the device work in its intended manner.” Ans. 7. An element cannot be
considered to be a “spring finger,” within the meaning of Appellants’ claim,
merely because it is attached to, and cooperates with, a spring. Accordingly,
the lip 64 is not a spring finger as recited in claim 13.
We also agree with Appellants’ argument that the lips 64 are not
deflected out through the openings 30 to an exterior of the holder 16 of
Morita. App. Br. 7. The Examiner contends that the upper edges of the
openings 30 “deflect” the lips 64 because the edges change the course of the
lips by stopping movement thereof. Ans. 10-11. We are not convinced that
stopping an element necessarily is the same as deflecting the element, but
even if the upper edges of the openings 30 can be said to deflect the lips 64,
Morita fails to disclose that the lips 64 are deflected out through the
openings to an exterior of the housing as required by claim 13.
For the reasons discussed above, we determine that Morita does not
anticipate independent claim 13. We thus cannot sustain the rejection of
claim 13—and of claims 14, 15 and 17-21 depending therefrom—under 35
U.S.C. § 102(b) as being anticipated by Morita.
Appeal 2010-008564
Application 10/547,127

5
Rejection of claims 16 and 22 based on Morita and Marshall
The Examiner relies on Marshall to disclose a skin pricker having
abutments that are “shaped as barbs pointing inwards and forwards” as
required by claim 16. Ans. 5. As such, the Examiner does not rely on
Marshall to cure the above-noted deficiencies of Morita with regard to
independent claim 13. Accordingly, we cannot sustain the Examiner’s
rejection of dependent claims 16 and 22 (which depends from claim 16)
under 35 U.S.C. § 103(a).
DECISION
We reverse the decision of the Examiner rejecting claims 13-22.

REVERSED

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