Ex Parte Steube

Patent Trial and Appeal BoardMar 18, 2013

11070314 (P.T.A.B. Mar. 18, 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. 11/070,314 03/02/2005 INV001Gregory A. Steube H-KN-00210US (1502-86) 3790 55825 7590 03/19/2013 Tyco Healthcare Group LP d/b/a Covidien 15 Hampshire Street Mansfield, MA 02048 EXAMINER GRAY, PHILLIP A ART UNIT PAPER NUMBER 3767 MAIL DATE DELIVERY MODE 03/19/2013 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 GREGORY A. STEUBE __________ Appeal 2011-006872 Application 11/070,314 Technology Center 3700 __________ Before STEPHEN WALSH, JACQUELINE WRIGHT BONILLA, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a vial access cannula. The Examiner has rejected the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-006872 Application 11/070,314 2 STATEMENT OF THE CASE Appellant‟s invention relates to “a non-coring vial access cannula which has sufficient structural strength that it may be made from a thermoplastic resin instead of metal, thus reducing the likelihood and severity of operator injury by an accidental needle stick” (Specification, Abstract). Claims 1-4, 6-15, and 17-24 are on appeal. Claims 1 and 13 are representative and read as follows (emphasis added): 1. A vial access cannula comprising: a needle hub; a cannula portion connected to the needle hub and having a centrally disposed lumen, wherein said centrally disposed lumen terminates in at least one distal opening and is in fluid communication with said needle hub; a solid tip member disposed distal to said at least one distal opening, wherein said solid tip member includes at least one blade having at least one beveled face that extends to a cutting edge, and wherein a blunt distal-most tip of the solid tip member is defined by the union of a plurality of edges, at least one of the plurality of edges disposed at an angle of less than about 45° from a vertical plane perpendicular to a longitudinal axis of the cannula; and at least one planar lateral facet defining an outwardly facing exterior surface of the vial access cannula, the at least one planar lateral facet spanning an exterior distal region of said cannula portion and an exterior proximal region of said solid tip member, and the at least one lateral facet includes a medial groove running distally from said at least one distal opening and terminates proximal to said at least one blade. 13. A vial access cannula comprising: a needle hub, wherein said needle hub includes the female portion of a Luer lock; Appeal 2011-006872 Application 11/070,314 3 a cannula portion connected to the needle hub and having a centrally disposed lumen, wherein said centrally disposed lumen terminates in two laterally disposed distal openings and is in fluid communication with said needle hub; a solid tip member distal to said distal openings, wherein said solid tip member comprises at least one blade, the at least one blade having at least one beveled face that extends to a cutting edge disposed at an angle of about 5-45° from an axis perpendicular to a longitudinal axis of said cannula, and wherein the vertical length of said cutting edge is about 50-95% of the diameter of said cannula portion; and at least one planar lateral facet spanning an exterior distal region of said cannula portion and an exterior proximal region of said solid tip member, and the at least one lateral facet includes a medial groove running distally from at least one of the distal openings and terminates proximal to said at least one blade. The claims stand rejected as follows: I. Claims 1-4, 6, and 10-12 under 35 U.S.C. § 102(b) as being anticipated by Hamilton. 1 II. Claims 7-9, 13-15, and 17-24 under 35 U.S.C. § 103(a) as being unpatentable over Hamilton. The same issue is dispositive of all rejections on appeal. Issue The Examiner finds that Hamilton discloses “a blunt distal most tip of the solid tip member ... defined by the union of a plurality of edges” (Ans. 6). “Although some edges are rounded examiner is still considering them 1 Hamilton, US 2,954,768, issued Oct. 4, 1960. Appeal 2011-006872 Application 11/070,314 4 cutting edges and blades” (Ans. 10). In reaching this conclusion, the Examiner contends that “a simple cylinder has a plurality edges and is formed by the union of a plurality of edges” (id. at 8). Appellant contends that Hamilton does not include a “beveled face that extends to a cutting edge” where a “cutting edge[”] is properly defined as “the union of one or more bevels.” The conical pointed section (I) of Hamilton is depicted as terminating in a 1ongitudinally oriented, cylindrical feature. None of the faces of the cylindrical feature may properly be considered beveled, and none of the edges of the cylindrical feature may properly be considered a cutting edge. (App. Br. 10-11.) Appellant contends that The definition for the term “edge” that is proffered by the Examiner is also inconsistent with the specification. Appellant‟s specification defines the term “edge” by stating “the term „cutting edge‟ refers to the union of one or more bevels.” (Reply Br. 6.) The issue presented is: Does the evidence of record support the Examiner‟s finding that Hamilton discloses a device having a “cutting edge” as required by claim 1? Findings of Fact The following findings of fact (“FF”) are supported by a preponderance of the evidence of record. FF1. Figure 3 of the Specification is reproduced below. Appeal 2011-006872 Application 11/070,314 5 Figure 3 provides “a plan view of a distal portion of the cannula” (Specification 4, l. 4). “The solid tip member 26 contains a slanted blade 30 containing a cutting edge 32 which is formed at the junction of the bevels 22” (id. at 6, ll. 20-21) (see Fig. 2 for “slanted blade 30” designation, not shown in Fig. 3 above). “The purpose of the bevels 36 and 37 are to reduce the length of the cutting edge 32, thereby reducing the force required to urge the cannula 10 through an elastomeric stopper” (id. at 8, ll. 7-9). FF2. The Specification discloses that “the term „cutting edge‟ refers to the union of one or more bevels and is located at the distal end of the cannula” (id. at 5, ll. 3-4). FF3. Figure 3 of Hamilton is reproduced below. Appeal 2011-006872 Application 11/070,314 6 Figure 3 is a “fragmentary perspective view” of the device in Hamilton (Hamilton col. 1, l. 60). FF4. Hamilton “relates to a puncture point for puncturing skin, rubber, plastic or other materials” (id. at col. 1, ll. 15-16). “It is also useful as a point of a hypodermic needle” (id. at col. 1, l. 19). FF5. Hamilton discloses that “[t]he devices of the present invention are readily produced from plastic material, are easy to insert and will not cut, core or abrade material in the insertion operations” (id. at col. 2, ll. 45-48) (emphasis added). Principles of Law “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson- Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“[p]roper claim construction … demands interpretation of the entire claim in context, not a single element in isolation.”); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“While certain terms may be at the center of the claim construction debate, the context of the surrounding words of the claim also must be considered.…”). Furthermore, a claim element cannot be interpreted so broadly so as to read the limitation out of the claim. See Texas Instr. Inc. v. United States Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (Claim language cannot be mere surplusage. An express limitation cannot be read out of the claim). Appeal 2011-006872 Application 11/070,314 7 “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). When determining whether a claim is obvious, an examiner must make “a searching comparison of the claimed invention — including all its limitations — with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). As the Supreme Court pointed out in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Rather, the Court stated: [I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does … because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known. Id. at 418-419 (emphasis added); see also id. at 418 (requiring a determination of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”) (emphasis added). Similarly, as our reviewing court has stated, “obviousness requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003). Appeal 2011-006872 Application 11/070,314 8 Analysis The claims are directed to a cannula having a blade with at least one beveled face that extends to a cutting edge. The Specification defines the term “cutting edge” as “the union of one or more bevels and is located at the distal end of the cannula” (FF2; see also, FF1). We agree with Appellant that the Examiner‟s finding that Hamilton‟s device reads on the claims requires an unreasonable claim interpretation. Specifically, the Examiner‟s interpretation of the “edge” and finding that Hamilton‟s device contains such an “edge” ignores the term “cutting” that precedes “edge” in the claims and also ignores the context in which these terms are used to describe the recited structure of a blade. Hamilton does not teach a blade (see, e.g., FF3). Rather, Hamilton teaches a device that is able to puncture (FF4), but does not cut (FF5). According, we agree with Appellant that the Examiner has not adequately explained how Hamilton anticipates claim 1. The rejections for obviousness rely on the Examiner‟s finding that Hamilton identically discloses a cannula having a blade with at least one beveled face that extends to a cutting edge as recited in claim 1, and therefore suffer from the same deficiency. The Examiner does not adequately explain how Hamilton suggests such a blade. Conclusion of Law The preponderance of evidence on this record fails to support the Examiner‟s finding that Hamilton discloses a device having at least one blade having at least one beveled face that extends to a cutting edge. Appeal 2011-006872 Application 11/070,314 9 SUMMARY We reverse all rejections on appeal. REVERSED cdc