Ex Parte Vaillancourt

Patent Trial and Appeal Board

Oct 23, 2012

11788542 (P.T.A.B. Oct. 23, 2012)

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.
11/788,542 04/20/2007 Michael J. Vaillancourt 101672.0146P 6260
34284 7590 10/24/2012
Rutan & Tucker, LLP.
611 ANTON BLVD
SUITE 1400
COSTA MESA, CA 92626
EXAMINER
OSINSKI, BRADLEY JAMES
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
10/24/2012 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 MICHAEL J. VAILLANCOURT
____________________

Appeal 2010-010022
Application 11/788,542
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, LYNNE H. BROWNE, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010022
Application 11/788,542

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STATEMENT OF THE CASE
Michael J. Vaillancourt (Appellant) appeals under 35 U.S.C. § 134
from a rejection of claims 1-4 and 7-21.1 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to a Huber needle with a safety
sheath. Spec. 1:2. Claims 1 and 10, reproduced below with emphasis
added, are illustrative of the claimed subject matter:
1. A safety needle assembly comprising
a housing;
a hollow needle secured in and extending
from said housing;
a cap having a bore receiving said needle
and being movable relative to said housing from a
first position on said housing to an extended
second position spaced from said housing;
a collapsible sheath of frusto-conical shape
concentrically disposed about said needle in a
collapsed state with said cap in said first position,
said sheath being secured to and between said
housing and said cap and being longitudinally
extendable from said collapsed state to an
extended state in response to movement of said cap
from said first position to said extended position.

1 The Examiner withdraws the rejection of claims 5 and 6 under 35 U.S.C. §
103(a). Ans. 3 and 10.
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10. A safety needle assembly comprising
a housing;
a hollow needle extending from said housing
in depending manner and having a bent distal end;
a cap disposed over said needle and having a
bore for passage of said needle therethrough, said
cap being movable relative to said needle from a
first position with said needle extending
therethrough to a second position with said end of
said needle disposed therein;
a sheath secured to and between said
housing and said cap concentrically of said needle,
said sheath being extendable from a collapsed state
to an extended state in response to movement of
said cap from said first position to said second
position thereof; and
a torsion spring disposed in said cap, said
spring having a leg biased against said needle with
said cap in said first position and disposed to move
between said bore in said cap and said end of said
needle with said cap in said second position.

EVIDENCE RELIED UPON
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dalton
Vaillancourt
McLees
US 4,632,671
US 4,645,495
US 5,334,158
Dec. 30, 1986
Feb. 24, 1987
Aug. 2, 1994
Barrus
Fangrow
US 2004/0049159 A1
US 2005/0107743 A1
Mar. 11, 2004
May 19, 2005

Appeal 2010-010022
Application 11/788,542

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THE REJECTIONS
Appellant seeks our review of the following rejections:
Claims 1-3 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barrus and Dalton. Ans. 3-5.
Claims 4, 7, 8, 10-12, 15, 16, 18, and 19 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Barrus, Dalton, and McLees.2 Id. at
5-6.
Claims 9, 13, 14, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barrus, Dalton, McLees, and Fangrow.3 Id. at 6-7.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Barrus, Dalton, and Vaillancourt. Id. at 8.

ANALYSIS
Obviousness based on Barrus and Dalton
The Examiner finds that Barrus discloses the subject matter of claim 1
with the exception of a sheath being a frusto-conical shape. Ans. 3-4 (citing
figs. 20 and 21 of Barrus). In particular, the Examiner finds that the
hingedly connected segments 612' and 614' of Barrus disclose a collapsible
sheath concentric with a needle. Id. at 4. The Examiner states that Dalton
discloses a collapsible sheath of frusto-conical shape (protective boot 62)
and concludes it would have been obvious to modify the sheath of Barrus to
enclose a needle in a concentric frusto-conical sheath as taught by Dalton.

2 The Examiner withdraws the rejection of claims 5 and 6 under 35 U.S.C.
§ 103(a) as unpatentable over Barrus, Dalton, and McLees. Ans. 3 and 10.
3 Appellant does not list claims 9 and 17 in the grounds of rejection to be
reviewed on appeal; however, these claims are addressed in the Appeal
Brief. App. Br. 6, 17, and 18.
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Application 11/788,542

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Id. at 4. Appellant argues that the hingedly connected segments 612' and
614' of the shield 750 of Barrus are not concentric to the needle 746. App.
Br. 10-11.
The Examiner clarifies that the rejection of claim 1 is not a
substitution rejection. Ans. 8-9. In particular, the Examiner states that a
boot 62 of Dalton is added to Barrus so that the Examiner’s proposed sheath
is comprised of the boot 62 of Dalton, as well as Barrus’s segments 612' and
614'. Id.
The Examiner’s rejection of claim 1 relies on the segments 612' and
614' of Barrus as teaching a concentric sheath. See Ans. 4. The Examiner’s
proposed modification of enclosing the segments 612' and 614' of Barrus
with the boot 62 of Dalton does not change or modify the finding that the
segments 612' and 614' of Barrus are concentric with a needle 746. See id.
at 8-9.
Barrus states that Figures 19-30 show an embodiment with a shield
750 of hingedly connected segments 612' and 614'. Barrus, para. [0103].
Figures 19 and 20 show the embodiment in a retracted position. Id. at paras.
[0042]-[0043] and figs. 19 and 20. Barrus describes that segments 612' and
614' may be configured for a low profile such that the segments 612' and
614' may be folded into each other in a pre-use state because one of the
segments 612' or 614' has a smaller dimension than the other segment 614'
or 612'. Id. at para. [0103]. Figures 19 and 20 show segment 614' folded
into segment 612' and both segments 612' and 614' disposed to one side of
needle 746 in the retracted state. The segments 612' and 614' are not
described or shown as having any center that is concentric with needle 746
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when the segments 612' and 614' are in the retracted state. Thus, we agree
with Appellant that segments 612' and 614' of Barrus are not concentric to
the needle 746. Therefore, a sheath comprised of the segments 612' and 614'
of Barrus and the boot 62 of Dalton cannot be concentric with a needle in a
collapsed state, as required by claim 1.
Accordingly, we cannot sustain the Examiner’s rejection of claim 1 or
its dependent claims 2, 3, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Barrus and Dalton.
Obviousness based on Barrus, Dalton, and McLees
For the reasons described supra, Barrus and Dalton fail to disclose the
sheath of claim 1. For the rejection of claims 4, 7, 8, 10-12, 15, 16, 18, and
19, the Examiner additionally cites McLees as disclosing a torsion spring.
Ans. 5. The Examiner does not rely on McLees for any teaching that would
remedy the deficiency in the underlying rejection of independent claim 1.
Thus, we cannot sustain the rejection of claims 4, 7, and 8 which depend
directly or indirectly from claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Barrus, Dalton, and McLees.
Independent claims 10 and 18 recite a safety needle assembly that
comprises “a sheath secured to and between said housing and said cap
concentrically of said needle.” App. Br., Clms. App’x. The Examiner relies
on the findings for claim 1 in the rejection of claims 10 and 18. See Ans. 5.
As described supra, we agree with Appellant that segments 612' and 614' of
Barrus are not concentric to a needle. See App. Br. 17. The Examiner has
not relied on Dalton and McLees for any teaching that would remedy the
deficiency of Barrus. See Ans. 5 and 8-9. Claims 11, 12, 15, and 16 depend
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from claim 10, and claim 19 depends from claim 18. Therefore, we cannot
sustain the rejection of claims 10-12, 15, 16, 18, and 19 under 35 U.S.C. §
103(a) as unpatentable over Barrus, Dalton, and McLees.
Obviousness based on Barrus, Dalton, McLees, and Fangrow
For the rejection of claims 9, 13, 14, and 17, in addition to Barrus,
Dalton, and McLees, the Examiner cites Fangrow as disclosing a needle
guard. Ans. 6-7. For the reasons described supra, Barrus, Dalton, and
McLees fail to disclose the sheath of claim 1, and the Examiner does not rely
on Fangrow for any teaching that would remedy the deficiency in the
underlying rejection of independent claim 1, upon which claim 9 depends,
and independent claim 10, upon which claims 13, 14, and 17 depend.
Accordingly, we cannot sustain the rejection of claims 9, 13, 14, and 17
under 35 U.S.C. § 103(a) as unpatentable over Barrus, Dalton, McLees, and
Fangrow.
Obviousness based on Barrus, Dalton, and Vaillancourt
The Examiner states that Vaillancourt discloses utilizing transparent
material. Ans. 8. The Examiner does not rely on Vaillancourt for any
teaching that would remedy the deficiency in the underlying rejection of
claim 1 based on Barrus and Dalton as set forth supra. Accordingly, we
cannot sustain the rejection of claim 21 under 35 U.S.C §103(a) as being
unpatentable over Barrus, Dalton, and Vaillancourt.

Appeal 2010-010022
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DECISION
We reverse the Examiner’s rejections of claims 1-4 and 7-21

REVERSED

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