Ex Parte Woehr

Patent Trial and Appeal Board

Dec 13, 2012

11496769 (P.T.A.B. Dec. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEVIN WOEHR
____________________

Appeal 2010-010078
Application 11/496,769
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
JOHN W. MORRISON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-010078
Application 11/496,769
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-6 and 18-38. We have jurisdiction under 35
U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.

1. A tip protector assembly for blocking a
needle tip comprising:
a tip protector housing positioned inside a
hub having an interior surface;
a needle comprising a needle shaft passing
through a tip protector and the tip protector
housing;
a first arm extending from a proximal wall
of the tip protector and biased against a side of the
needle;
a second arm extending from the proximal
wall of the tip protector and biased against the
interior surface;
a third arm extending from a distal wall of
the tip protector housing and biased against the
interior surface of the hub; and
wherein the first arm, the second arm, and
the third arm each has an end spaced from another
arm and each arm is independently movable in a
radial direction relative to the needle shaft.

References
The Examiner relies upon the following prior art references:
Bialecki

US 6,652,486 B2

Nov. 25, 2003

Appeal 2010-010078
Application 11/496,769
3
Howell
Woehr
US 2004/0236288 A1
US 7,264,613 B2
Nov. 25, 2004
Sep. 4, 2007

Rejections
I. Claims 1, 3-6, and 18-38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Howell and Woehr.
II. Claim 2 is rejected under § 103(a) as unpatentable over Howell,
Woehr, and Bialecki.

SUMMARY OF DECISION
We REVERSE.

OPINION
In Howell, a needle is retained in place when a retention arm 16
releases a canting plate 40 when the assembly is removed from the shield
housing 6. See, e.g., Howell, paras. [0086], [0098], figs. 6A, 6B. When the
canting plate 40 is released from the retention arm 16, axial motion of the
needle is halted because feature 35 is trapped between canting plate 40 and
retention washer 15. Id., fig. 6B.
In one embodiment of Woehr, a needle is retained when elements 162
and 176 lock onto circular groove 178 (see Woehr, fig. 13B), as well as
when wall 152 and curved lip 154 block the needle (see id., figs. 12, 13B).
See also id., col. 10, ll. 22 to col. 11, l. 14.
The Examiner’s proposed combination of Howell and Woehr is
largely premised on the purported benefits of swapping the “single-action”
securement structure of Howell with the “dual-action” securement structure
of Woehr. Ans. 6.
Appeal 2010-010078
Application 11/496,769
4
Appellant argues that the Examiner “does not appear to factor the
context of each reference relative to another” and notes that “Howell’s tip
protector works differently from the Woehr FIG. 13B tip protector.” Reply
Br. 5. There is nothing necessarily wrong with substituting one known type
of tip protector for another (e.g., in this case, “single-action” for a “dual-
action”). See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 415-16 (2007) (a
“patent for a combination which only unites old elements with no change in
their respective functions ... obviously withdraws what already is known into
the field of its monopoly and diminishes the resources available to skillful
men.”) (quoting Great Atlantic & Pacific Tea Co. v. Supermarket Equip.
Corp., 340 U.S. 147, 152-153 (1950)). However, the context of what is
being substituted, as Appellant points out, must be considered.
In this case, when one of ordinary skill substitutes the canting plate 40
of Howell for the figure 12 spring clip of Woehr, the purpose of retaining
retention arm 16 of Howell in the combination is called into question. The
retention arm 16 is necessary for canting plate 40 to function; the
components operate together to form a retention structure. See, e.g., Howell,
figs. 6A, 6B. The Examiner proposes to replace Howell’s “single-action”
retention for Woehr’s “dual-action” retention, to seek the dual-action
benefits of Woehr’s retention structure. See Ans. 6. Accordingly, if the
Howell retention structure is to be replaced, it would seem natural that the
components of the retention structure in Howell would be replaced in the
process. The Examiner proposes to keep one of the components of that
structure, retention arm 16, notwithstanding.
While the Examiner need not explain or justify why each feature of a
prior art device is not modified, in this particular circumstance, retaining the
retention arm 16 seems inconsistent with the reasoning for the proposed
Appeal 2010-010078
Application 11/496,769
5
modification. In other words, the Examiner is proposing to replace the
retention structure of Howell but leaves one of the key components of that
structure, no longer serving any apparent purpose, without explanation.
Certainly, it may be the case that one of ordinary skill in the art would have
considered it obvious to keep retention arm 16, perhaps for another purpose.
The deficiency in the Examiner’s rejection, however, is not explaining such
a reason. Accordingly, we are left with a proposed modification that appears
inconsistent with (or at least unexplained by) the purpose of the
modification. For this reason, we do not sustain the Examiner’s rejection of
claims 1, 3-6, and 18-38 as unpatentable over Howell and Woehr, or of
claim 2 as unpatentable over Howell, Woehr, and Bialecki.

DECISION
We REVERSE the Examiner’s decision regarding claims 1-6 and 18-
38.

REVERSED

hh