Ex Parte Woehr et al

Patent Trial and Appeal BoardNov 27, 2012

11707846 (P.T.A.B. Nov. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEVIN WOEHR and JUERGEN FUCHS ____________ Appeal 2010-008293 Application 11/707,846 Technology Center 3700 ____________ Before STEVEN D.A. McCARTHY, GAY ANN SPAHN, and JOHN W. MORRISION, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kevin Woehr and Juergen Fuchs (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-27. Appellants cancelled claims 28-34 and 40-46. The Examiner withdrew claims 35-39 from consideration pursuant to a restriction requirement. An oral hearing was held on November 6, 2012. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-008293 Application 11/707,846 2 The Claimed Subject Matter The claimed subject matter relates to “[s]afety syringes for minimizing accidental contact with users,” and “having manual and automatic retractable carriages.” Spec. 1, para. [0001]. Claim 1 (the sole independent claim), reproduced below, is representative of the subject matter on appeal. 1. A syringe comprising: a barrel comprising a gripping flange at a proximal end, an opening at a distal end for receiving a needle hub, a wall structure comprising an exterior surface and an interior surface defining an interior cavity and having a shoulder, and two female detents on the interior surface positioned closer to the distal end than the proximal end; a plunger disposed in the interior cavity of the barrel, the plunger comprising a push flange at a proximal end, and a tip holder comprising a perimeter defining an opening for receiving, at least in part, a carriage and a plunger tip mounted thereon; wherein said plunger tip comprises a plunger tip distal end surface spaced apart from the push flange by a first distance; wherein the carriage comprises a Luer tip, a passage, two legs extending away from the Luer tip and proximally of the shoulder, each leg comprising a male detent; wherein the carriage is removably secured to the barrel by engaging the male detents on the carriage with the female detents on the barrel; and wherein the plunger comprises three plunger positions including a first plunger position in which the plunger tip positioned on the plunger is spaced apart from the carriage; a second plunger position in which the plunger tip or tip holder holding the plunger tip contacts the carriage and the two legs move into the opening of the tip Appeal 2010-008293 Application 11/707,846 3 holder but the male detents do not separate from the female detents; and a third plunger position in which the push flange on the plunger moves a distal direction relative to the plunger tip distal end surface such that the push flange is now spaced apart from the plunger tip distal end surface by a second distance, which is less than the first distance, and the male detents separate from the female detents. The Rejections The following Examiner’s rejections are before us for review: (1). claims 1-9, 11-20, and 23-37 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ranford (US 4,950,241, issued Aug. 21, 1990) and Maggioni (US 5,395,346, issued Mar. 7, 1995); and (2). claims 10, 21, and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ranford, Maggioni, and Curie (US 5,997,511, issued Dec. 7, 1999). OPINION Rejection (1) – Obviousness based on Ranford and Maggioni The Examiner finds that Ranford substantially discloses the subject matter of independent claim 1; however, “Ranford teaches that the carriage has an annular surface with detents that engages the shroud to retract the needle rather than a pair of legs.” Ans. 4. To cure the deficiency of Ranford, the Examiner turns to Maggioni for its teaching of “a retractable needle syringe having a carriage (11) with a pair of legs (12, 13) that are engaged by a shroud (30) to retract the needle.” Ans. 5 (citing Maggioni, Figs. 5 and 8). The Examiner concludes that it would have been obvious to Appeal 2010-008293 Application 11/707,846 4 one of ordinary skill in the art “to use the plural legs as taught by Maggioni instead of the annular detent of Ranford because the two structures are functionally equivalent and it has been held that improving similar devices in the same way is within the skill of an ordinary worker in the art.” Id. The Examiner also concludes that modifying Ranford by the teachings of Maggioni “has the added benefit of reducing the volume of materials needed in construction of the syringe which would save costs and make the syringe lighter in weight and reduces fatigue in the user.” Id. Appellants argue that the Examiner’s proposed modification of Ranford’s syringe by changing the bottom portion of the carriage (needle connector 36) below the connector flange 56 from its current cylindrical cross-section to two legs as taught by Maggioni (see Ans. 6, l. 17 through Ans. 7, l. 1) would cause Ranford to “NO longer operate as intended.” App. Br. 15. In particular, Appellants note that “Ranford discloses a plug 84 mounted at a distal end of the plunger rod 20,” and that [d]uring the actuating movement of the plunger . . . the plug 84 seals the proximal end of the passage 40 in the connector 36 so that any residual fluid or liquid remaining in the bore 14 cannot be forced into passage 40 and needle 28 by the fluid displacing distal movement of the plunger rod 20 thereby preventing the squirting of fluid out of the needle during movement of the piston rod from the position shown in FIG. 1 to that shown in FIG. 4. App. Br. 10 (citing Ranford, col. 5, l. 60 to col. 6, l. 6). Emphasis omitted. Appellants conclude that since Ranford’s “plug 84 is required to prevent squirting and dripping of fluids from the syringe during use of the syringe” (id.), “changing the carriage 36 from the current cylinder into two proximally extending legs creates two gaps and would not allow the plug 84 Appeal 2010-008293 Application 11/707,846 5 to seal the passage 40” (App. Br. 15), such that “the function of the plug 84 and the ability to seal the syringe from squirting are destroyed” (App. Br. 16). The Examiner responds that “[f]irst, . . . further down along the needle carriage, detents 56-54 engage to seal the carriage and would not be modified,” and “[s]econd, some space around the edge of the needle carriage is not sealed in the unmodified syringe of Ranford--see Fig[.] 2 at 66 and Fig[.] 6” so that “[c]learly, the plug 84 is only meant to seal the needle passage, not the entire needle carriage.” Ans. 8. The Examiner’s response does not adequately explain how Ranford’s plug 84 would still be able to perform the sealing function of the passage 40 so as to prevent squirting of fluid out of the needle 28 if the bottom portion of Ranford’s carriage (needle connector 36) is modified below the connector flange 56 from its current cylindrical cross-section to two legs as taught by Maggioni. With respect to the first comment in the Examiner’s response, we note that while the Examiner correctly states that the connector flange 56 of Ranford’s needle connector 36 mates with the annular groove 54 of the anchor member 38, the mating of the connector flange 56 with the annular groove 54 is on the outside of the needle connector 36 and would not act to seal passage 40 which is internal of the needle connector 36. With respect to the second comment in the Examiner’s response, while we agree that the plug 84 is only meant to seal that needle passage 40, not the entire carriage (needle connector 36), we note that once the carriage (needle connector 36) is modified from being annular to being two legs as taught by Maggioni, the Examiner has not explained how the plug 84 will continue to be able to seal the passage 40. Thus, we agree with Appellants that one of ordinary skill in Appeal 2010-008293 Application 11/707,846 6 the art would not modify Ranford in the manner proposed by the Examiner because the plug 84’s ability to seal the syringe so as to prevent squirting and dripping of fluids from the needle 28 would be destroyed and the syringe would no longer operate as intended. Accordingly, we do not sustain the Examiner’s rejection of independent claim 1, and claims 2-9, 11-20, and 23-37 dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Ranford and Maggioni. Rejection (2) – Obviousness based on Ranford, Maggioni, and Curie The Examiner’s rejection of claims 10, 21, and 22 is predicated on the same combination of Ranford and Maggioni which we found to be lacking supra since the function of Ranford’s plug 84 would be compromised. Ans. 5-6. Appellants argue that “since Curie is relied on to only disclose an anti- rotation means, it does not make up for the deficiencies of Ranford and Maggioni.” App. Br. 17. Emphasis omitted. We agree. Thus, for the same reasons as discussed supra, we do not sustain the Examiner’s rejection of claims 10, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over Ranford, Maggioni, and Curie. DECISION We reverse the Examiner’s rejections of claims 1-27. REVERSED Klh