Ex Parte Wayman et al

Patent Trial and Appeal BoardMar 31, 2017

12313661 (P.T.A.B. Mar. 31, 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. 12/313,661 11/21/2008 Annica Wayman 4133-083604 (P-7974) 4590 32182 7590 04/04/2017 David W. Highet, VP & Chief IP Counsel Becton, Dickinson and Company (The Webb Firm) 1 Becton Drive, MC 110 Franklin Lakes, NJ 07414-1880 EXAMINER ALEMAN, SARAH WEBB ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 04/04/2017 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): lorraine_kow alchuk @ bd .com ip_docket @bd.com patents @ webblaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANNICA WAYMAN, MICHAEL MEEHAN, CHRISTINA D’ARRIGO, and DOUGLAS TYUKODY Appeal 2015-005252 Application 12/313,661 Technology Center 3700 Before ANNETTE R. REIMERS, JILL D. HILL, and GORDON D. KINDER, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Annica Wayman et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 102(b) claims 1, 3— 9, 32, and 34—39 as anticipated by Matsutani (US 6,837,896 B2; iss. Jan. 4, 2005). Claims 2, 33, and 40 have been cancelled. Claims 10-31 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2015-005252 Application 12/313,661 CLAIMED SUBJECT MATTER The claimed subject matter “relates to stylets for use with medical needles and, more particularly, to stylets having enhanced safety features.” Spec. 11, Figs. 3, 4. Claims 1 and 32 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A safety stylet for insertion within a cannula of a needle, comprising a solid elongated stylet shaft having a proximal end adapted for engagement with a needle hub, and a distal end comprising a dull planar contact surface, wherein the contact surface has a surface modified profile, wherein the surface modified profile comprises a roughened surface. ANALYSIS Independent claim 1 is directed to a safety stylet including “a distal end comprising a dull planar contact surface.” Br. 17, Claims App. The Examiner finds that Matsutani discloses “the claimed safety feature of a roughened planar surface 4c (column 10, lines 60-67), which meets the structural claim requirement of a ‘dull planar contact surface’.” Final Act. 4; see also id. at 2. The Examiner further finds that “[t]he planar surface (4C) [of Matsutani] also meets the structural functional requirements of the claimed ‘contact surface’, since it is capable of contacting tissue.” Final Act. 4; see also id. at 2. Appellants contend that “surface 4c [of Matsutani] does not meet the features of a dull planar contact surface as recited in claim 1 or claim 32.” Br. 14. In particular, Appellants contend that 2 Appeal 2015-005252 Application 12/313,661 [e]ither surface 4c of Matsutani is part of the back of the blade (4d), and has “no function of incising a targeted living body tissue” (i.e. surface 4c is not a contact surface), or surface 4c is part of cutting blade 4e and has “a function of cutting open the targeted living body tissue” (i.e. surface 4c is not dull). The final Office Action’s citation to the portion of Matsutani disclosing sand blasting of surface 4c does not change the preceding analysis. One of skill in the art would not expect that a cutting, contact surface of a knife would be dulled by sandblasting, thus only in an interpretation whereby surface 4c is not a contact surface would that portion be sandblasted. Br. 14. At the outset, we note that the Examiner does not address Appellants’ contention. See Ans. 4—5; see also Br. 14 (“the final Office Action fails to address this inconsistency in the final Office Action, despite Appellants’] introduction of the same in prior responses.”). Appellants’ Specification discloses that Figures 16 and 17 illustrate a stylet “having a surface modified profile obtained by sandblasting the distal end of the stylet” and that Figures 16 and 17 “each show a highly textured surface of the stylet.” Spec. 1 69 (emphasis added). The Specification fails to describe that “the process of sand blasting results in the claimed dull [surface],” as the Examiner suggests. See Final Act. 2; see also id. at 4.1 1 We note that claim 1 recites that the distal end of the stylet includes a dull planar contact surface, wherein the dull planar contact surface has “<2 surface modified profile, wherein the surface modified profile comprises a roughened surface.” Br. 17, Claims App. (emphasis added). In other words, the dull planar contact surface of the distal end of the stylet includes a roughened surface. 3 Appeal 2015-005252 Application 12/313,661 Matsutani discloses that [t]he back 4d formed by the faces 4b and 4c has no function of incising a targeted living body tissue, but functions to widen the living body tissue incised by the cutting blades 4e and 4f. Therefore the back 4d does not require being shaped as a sharp edge. The cutting blade 4e formed by the faces 4b and 4c and the cutting blade 4f formed by the faces 4c and 4a have a function of cutting open the targeted living body tissue and forming an incision, and are therefore formed with an optimum angle for cutting open the living body tissue, respectively. Matsutani, 6:42—52 (emphasis omitted); see also Br. 14. Matsutani further discloses that the fifth face 4c, which is formed to allow the cutting blade portion 3 to diagonally incise from a front face 2B to a back face 2A, is formed into a quadrangular shaped face by connecting intersecting points A, B, C and D, in which the tip 1 (A) is the intersecting point with respect to the ridgeline 5e of the back face 2A, numeral B and numeral C are the intersecting points with respect to the pair of primary cutting blades 5g, 5h, and numeral D is the intersecting point with respect to the ridgeline 5f of the front face 2B. Matsutani, 8:18—27 (emphasis omitted). In other words, planar surface/face 4c of Matsutani serves a number of “faces” that form “the tip-side cutting blade portion 4,” of tip 1. See id.', see also id. at 6:23—52, Figs. 2(a)-2(d). Even assuming arguendo that the “faces” of planar surface/face 4c are “contact surfaces,” as the Examiner suggests, the Examiner fails to direct us to any discussion in Matsutani that any of the “faces” of planar surface/face 4c, which form “the tip-side cutting blade portion 4,” of tip 1, are “dull” contact surfaces. See Final Act. 2, 4; see also Ans. 4—5; Matsutani, 6:23—52, Figs. 2(a)—2(d). Additionally, we acknowledge that “a non-glare finish” 4 Appeal 2015-005252 Application 12/313,661 may be applied to the “fifth face 4c” of Matsutani by “sandblasting, so that the surface is roughened to provide a lacquered-like finish,” but a “roughened surface” is not a “dull surface.” See Final Act. 2, 4; see also Ans. 4—5; Br. 14; Matsutani, 10:59-67 (emphasis added).2 Independent claim 32 calls for a safety stylet including language directed to the distal end of the stylet having “a dull contact surface.” See Br. 21, Claims App. The Examiner relies on the same unsupported findings in Matsutani. See Final Act. 2—3. Thus, the Examiner’s findings are deficient for claim 32 as well. Accordingly, for the foregoing reasons, we do not sustain the Examiner’s rejection of claims 1, 3—9, 32, and 34—39 as anticipated by Matsutani. DECISION We REVERSE the decision of the Examiner to reject claims 1, 3—9, 32, and 34—39 as anticipated by Matsutani. REVERSED 2 An ordinary and customary meaning of the term “dull” is “lacking sharpness of edge or point.” See https://www.merriam-webster.com/dictionary/dull (last visited Mar. 22, 2017). 5