Ex Parte Thibault et al

Patent Trial and Appeal Board

Nov 23, 2018

14604911 (P.T.A.B. Nov. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/604,911 01/26/2015 Jean-Claude Thibault
32182 7590 11/27/2018
Becton, Dickinson and Company/fhe Webb Law Firm
One Gateway Center
420 Ft. Duquesne Blvd., Suite 1200
Pittsburgh, PA 15222
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4684-150445 (P-7761Cl) 9738
EXAMINER
SNYDER, MELISSA A
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
11/27/2018 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):
patents@webblaw.com
ip.docket@bd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-CLAUDE THIBAULT and
JULIEN BERNARD
Appeal2018-000688
Application 14/604,911 1
Technology Center 3700
Before: LINDA E. HORNER, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's final
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 Becton Dickinson France is the Appellant and is identified in the Appeal
Brief as the real party in interest. Appeal Br. 3.
Appeal2018-000688
Application 14/604,911
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 4I.50(b).
CLAIMED SUBJECT MATTER
The claims are directed to a needle shield. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A shield for covering at least part of a distal extremity of
an administration device, the administration device comprising a
hub on which the shield may be removably engaged, the shield
compnsmg:
an open proximal end, a closed distal end, and a
longitudinal wall formed of an elastomeric material extending
from the proximal end to the distal end, an internal face of the
longitudinal wall defining an interior cavity for receiving at least
a portion of the distal extremity of the administration device
therein, the internal face defining a securement portion which
contacts the hub when the shield is secured on the administration
device,
wherein the securement portion has distributed thereover
a surface feature that defines a contact ratio between the
securement portion and the hub ofless than 90%, when the shield
is secured on the hub.
Appeal Br. 19 (Claims App.).
REFERENCES RELIED ON BY THE EXAMINER
Odell
Huang
US 2001/0044608 Al
US 2005/0197595 Al
Nov. 22, 2001
Sept. 8, 2005
THE REJECTION ON APPEAL
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Odell and Huang.
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Application 14/604,911
OPINION
The Examiner finds that Odell discloses many of the limitations of the
shield recited in claim 1, but does not disclose that a contact ratio between a
securement portion and a hub is less than 90% when the shield is in position
on the hub. Final Act. 2-3. Nonetheless, the Examiner finds that Huang
discloses texturing surfaces that interface each other in order to obtain a
desired level of friction between these surfaces. Id. at 3 ( citing Huang ,r 15).
The Examiner determines it would have been obvious to modify the
structure disclosed by Odell to have a contact ratio of less than 90% "in
order to achieve a desired amount of friction to secure the securement
portion to the hub as claimed" and to provide "such a contact ratio would
have been considered an optimization within the prior art conditions through
routine experimentation, since Huang teaches varying the amount of surface
texture to achieve a desired amount of friction." Id.
Appellant concedes that Huang teaches manipulating friction between
two surfaces, but asserts that this is not the same as manipulating a contact
ratio, and, thus, "Huang does not provide any motivation for modifying the
contact ratio of Odell." Appeal Br. 15.
In response, the Examiner finds Appellant's Specification explains
that the contact ratio of a surface may be changed by changing the roughness
(texture) of the surface. See Ans. 7-8. Again focusing on providing a
particular amount of friction in Odell, the Examiner states, "[ o ]ne would be
motivated to find the optimal amount of sealing force versus friction
provided by the grooves to allow for optimal sealing and sterilization at the
same time, which also finds the optimal friction." Id. at 7.
Appellant has the better position because the Examiner has not
adequately established that a contact ratio equates to, or directly correlates
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Appeal2018-000688
Application 14/604,911
to, an amount of friction. We find Appellant's contention that a variety of
factors affect friction which may not affect a contact area ( or contact ratio)
to be reasonable. Appeal Br. 16 ("Huang discloses several variations of
texture (i.e. fish-scales, dimples, and popcorn), each of which effect friction
differently. For example, a fish-scale texture having a contact ratio of 60%
may have a higher relative friction with an opposing surface than a dimpled
texture having a contact ratio of 60%."). In light of the apparent disconnect
between providing a desired level of friction and a desired contact ratio, the
Examiner has not explained persuasively how providing a desired amount of
friction would result in providing a contact ratio within the range recited in
claim 1. Thus, the Examiner's reasoning for modifying the structure of
Odell to optimize the contact ratio, via a change in the surface texture, "to
achieve a desired amount of friction" (Final Act. 3) is not supported by
rational underpinning, and we do not sustain the rejection of claim 1 and
claims 2-20 depending therefrom as unpatentable over Odell and Huang.
NEW GROUND OF REJECTION
For the reasons discussed below, we determine that claim 1 is
indefinite.
Claim 1 recites "[a] shield for covering at least part of a distal
extremity of an administration device, the administration device comprising
a hub." Appeal Br. 19 (Claims App.). Claim 1 defines the shield in terms of
a contact ratio between a securement portion of the shield and the hub.
Specifically, claim 1 recites, "wherein the securement portion has distributed
thereover a surface feature that defines a contact ratio between the
securement portion and the hub of less than 90%, when the shield is secured
on the hub." Id. The contact ratio is the percentage of the securement
portion that contacts the hub. See id. at 11. Without knowing the size and
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Application 14/604,911
shape of the hub, a person of ordinary skill in the art would not be able to
determine the recited contact ratio for a given shield ( and securement
portion). Claim 1 does not define or require the hub. Thus, claim 1 limits
the shield in terms of an un-defined, un-recited element. Accordingly, a
person of ordinary skill in the art would not be put on notice as to the metes
and bounds of claim 1. 2 None of claims 2-20 remedies this deficiency in
claim 1. Accordingly, we enter a new ground of rejection of claim 1 and
claims 2-20 depending therefrom under 35 U.S.C. § 112, second paragraph,
as indefinite.
DECISION
(I) The Examiner's rejection of claims 1-20 is reversed.
(II) We conclude that claims 1-20 are indefinite and enter a new
ground of rejection of these claims under 35 U.S.C. § 112, second
paragraph.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
2 Appellant appears to make a similar point in arguing that Odell fails to
disclose the recited contact ratio. Appeal Br. 12 ("Even if Fig. 3 was drawn
to scale, the contact ratio could not be determined exclusively from the
drawing. Fig. 3 only illustrates the needle sheath (24) (i.e., does not
illustrate the hub (48)).").
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Appeal2018-000688
Application 14/604,911
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).
REVERSED; 37 C.F.R. § 4I.50(b)
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