Ex Parte Reid

Patent Trial and Appeal Board

Aug 10, 2017

13966315 (P.T.A.B. Aug. 10, 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.
13/966,315 08/14/2013 Alan Reid MMED-003 AT JS 9745
22494 7590 08/14/2017
DALY, CROWLEY, MOFFORD & DITRKEE, LLP
SUITE 301A
354A TURNPIKE STREET
CANTON, MA 02021-2714
EXAMINER
MEDWAY, SCOTT J
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
08/14/2017 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):
docketing@dc-m.com
amk@dc-m.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN REID
Appeal 2015-007639
Application 13/966,315
Technology Center 3700
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—8 under 35 U.S.C. § 102(b) as anticipated by Bonaldo
(US 6,287,282 Bl, issued Sept. 11, 2001). We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appeal 2015-007639
Application 13/966,315
THE INVENTION
Appellant’s invention relates to an adapter for a medical syringe.
Spec. 13. Claim 1, reproduced below with language at issue highlighted in
italics, is illustrative of the subject matter on appeal.
1. An assembly, comprising:
an adapter having a first end and a second end and a cap
engagement mechanism, the first end having a uni-directional
mating mechanism to permanently engage a syringe; and
a cap having an adapter engagement mechanism engageable
with the cap engagement mechanism of the adapter to form a
cap/adapter assembly, and to rotate the adapter in a first
direction when the cap is rotated in the first direction and to
disengage the cap from the adapter when the cap is rotated in a
second direction opposite the first direction; and
a syringe having a fluid dispensing end engaged with the
uni-directional mating mechanism of the adapter by rotation of
the cap in the first direction, wherein the syringe cannot be non-
destructively removed from the adapter.
OPINION
Claim 1
The Examiner finds that Bonaldo discloses all of the elements of
claim 1. Final Action 2—3. In particular, the Examiner finds that the
limitation directed to disengaging the cap ‘ from the adapter when the cap is
rotated in a second direction” is a functional limitation and that Bonaldo’s
structure is capable of performing this function within the meaning of In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Id. at 3.
Appellant argues that Bonaldo cannot disengage the cap from the
adapter when the cap is rotated in a second direction within the meaning of
claim 1. Appeal Br. 7. Appellant argues that, once Bonaldo’s rib 60 is
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Application 13/966,315
seated in the adapter recesses 77, the sleeve 50 cannot be rotated or
removed. Id.
As stated by Bonaldo, “the syringe and the protective sleeve are
locked together with the used and therefore contaminated
needle 46 completely enclosed and retained in the protective
sleeve 50.” (col. 3, line 54-55).
Appeal Br. 7 (emphasis supplied by Appellant).
In response, the Examiner states that Bonaldo discloses a cap 50
having a uni-directional adapter engagement mechanism and that the adapter
mating mechanism is fully capable of engaging the syringe by rotation and
“to resist” rotation of the adapter in a second direction opposite the first
direction. Ans. 7.
Bonaldo discloses that the adapter remains on the syringe due
to a mechanism preventing reverse movement of the adapter
relative to the syringe. See col. 3, lines 33-60; col. 5, line 30 to
col. 6, line 9. Therefore, the adapter has a unidirectional mating
mechanism to permanently engage the syringe.
Id.
Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims of the patent at issue. Id.
“During examination, ‘claims ... are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.”’ Id. (quoting In re Am. Acad, of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation
analysis involves comparing the claims to the prior art. Id. A prior art
reference anticipates a patent claim under 35 U.S.C. § 102 if it discloses
every claim limitation. Id.
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Application 13/966,315
Bonaldo discloses a “protective sleeve and adaptor hub combination
for retrofitting conventional medical syringes so that the syringe needle may
be completely enclosed in the protective sleeve following use of the
syringe.” Bonaldo, Abstract. Bonaldo has an adaptor hub 70 that features
external projections 74 and a sleeve 50 that features spiral internal tracks 54.
Id. Figs. 1—5. In operation, the external projections 74 of hub 70 follow the
spiral internal tracks 54 of sleeve 50 until annular recesses 77 of adapter
hub 70 engage internal annular rib 60 of sleeve 50. Id. at col. 2,1. 66-col. 3,
1. 60.
During movement of the syringe and attached needle and
adaptor hub 70 relative to the protective sleeve 50, the external
follower projections 74 on the adaptor hub 70 follow the spaced
internal spiral tracks 54 on the interior surface of the sleeve 50
until such time as the annularly extending adaptor recesses 77
engage the rib 60 following which the syringe and protective
sleeve are locked together with the used and therefore
contaminated needle 46 completely enclosed and retained in the
protective sleeve 50.
Id. at col. 3,11. 48—56. Considering Figures 1—5 of Bonaldo together, it
appears to us that external projections 74 of adapter 70 are confined within
spiral tracks 54 so that any rotational moment imparted to sleeve 50 in either
direction will be translated to adapter hub 70. See id.
Given the structure and configuration disclosed by Bonaldo, we agree
with the Examiner that Bonaldo has a cap with an engagement mechanism
that engages an adapter to form a cap/adapter assembly. We also agree that
when the cap (sleeve 50) is rotated in a first direction, rotation is imparted to
adapter hub 70 by virtue of external projections 74 disposed within spiral
tracks 54. However, the Examiner errs in finding that, when the cap is
rotated in the opposite direction, the cap and adapter “disengage” from each
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Application 13/966,315
other (or are “capable of’ disengaging from each other). This follows from
the fact that projections 74 remain confined in spiral tracks 54 so that a
rotational moment (i.e., “engagement”) is imparted to the adapter no matter
which direction the cap (sleeve 50) is rotated.
The Examiner admits that Bonaldo resists rotation of the adapter in
the opposite direction. See Ans. 7.
Bonaldo discloses a cap (50) having a uni-directional adapter
engagement mechanism (54, 60, 62), wherein the adapter
mating mechanism is fully capable of engaging the syringe by
rotation of the adapter in a first direction and to resist rotation
of the adapter in a second direction opposite the first direction
(col. 3, lines 27-32).
Id. (emphasis added). The Examiner does not provide a construction of the
term “disengage.” However, in light of Appellant’s disclosure, there is no
reasonable construction of “disengage” that would allow the components of
the cap/adapter assembly to resist rotation relative to each other and yet
satisfy the claim language.1 In our opinion, the resistance to rotation
admitted by the Examiner is evidence of engagement, not disengagement,
between the adapter and the cap and, for this reason, we do not sustain the
anticipation rejection of claim 1.
Claims 2—7
Claims 2—7 depend, directly or indirectly, from claim 1. Claims App.
The rejection of these claims suffers from the same infirmity that we have
identified above with respect to claim 1. Consequently, we do not sustain
the rejection of claims 2—7.
1 Unlike Bonaldo, Appellant uses a typical and well-known ratchet
mechanism that engages when rotated in one direction, but does not engage
when rotated in the opposite direction.
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Application 13/966,315
Claim 8
Claim 8 is an independent claim that is substantially similar in scope
to claim 1. Claims App. More particularly, claim 8 contains the following
limitation:
rotation of the cap in a first direction rotates the adapter in the
first direction so that the mating mechanism of the adapter is
threaded onto the syringe so that the adapter cannot be non-
destructively removed from the syringe, and rotation of the cap
in a second direction opposite the first direction does not rotate
the adapter and removes the cap from the adapter to enable use
of the syringe.
Id. (emphasis added). The Examiner, in the final rejection, finds that
Bonaldo discloses the limitation highlighted above in italics.
[Bonaldo’s cap is capable of moving in a second direction
opposite the first direction, removing the cap from the syringe,
while the adapter remains on the syringe due to a mechanism
preventing reverse movement of the adapter relative to the
syringe. See col. 3, lines 33-60; col. 5, line 30 to col. 6, line 9.
Thus, the cap may be disengaged (i.e., loosened, according to
the dictionary definition of the term “disengaged”) from the
adapter when the cap is rotated in a second direction opposite
the first direction, so as to allow the cap to slide freely up and
down the adapter as necessary.
Final Action 4. The passage of Bonaldo from columns 5 and 6 cited above
by the Examiner is taken from claim 10 of Bonaldo. The effective language
from claim 10 for purposes of our decision here states:
said sleeve and said hub having an engageable mating rib and
recess for restraining axial movement of said hub and attached
syringe in said sleeve.
Bonaldo, col. 6,11. 6—9 (claim 10). Contrary to the Examiner’s finding that
Bonaldo’s cap is free to slide up and down the adapter, Bonaldo expressly
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Application 13/966,315
states that the cap (sleeve) is restrained from axial movement relative to the
adapter (hub) and syringe.
The Examiner’s factual findings are, thus, shown to be in error and we
do not sustain the rejection of claim 8.
DECISION
The decision of the Examiner to reject claims 1—8 is reversed.
REVERSED
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