ALMOND, Judge.
Melott appeals from the decision of the Board of Appeals affirming the examiner’s rejection of claims 2 to 11, inclusive, in appellant’s application1 for “Aspirating Syringe.” The board reversed the examiner’s rejection of claims 12, 13 and 14.
Claim 2 is reproduced as illustrative:
“An aspirating syringe for use with a cartridge having a piston cork, said syringe comprising a barrel for reception of the ampoule or [888]*888cartridge, a needle at one end of the barrel, means for puncturing the cartridge for leading the contents thereof to the needle, a retractible syringe plunger rod, a head at the other end of the barrel and slidably containing the plunger rod, the rod extending into the barrel, and piercing means on the plunger rod at its inner end for connection thereof with the cartridge plunger cork, said piercing means being relatively sharp and capablé of piercing the cartridge plunger cork by a straight in-line push on the plunger rod.”
The drawing portrays the following:
The claimed invention relates to a cartridge-type syringe having a plunger rod 32 with a retractible spearpoint head 38 at the inner end thereof for piercing the piston cork 22 of the cartridge or ampoule affixing the plunger rod to the cork, thus converting the syringe into an aspirating as well as an inspirating [889]*889means. In use of the device the locking sleeve 24 is backed off; the head 26, attached by hinge means, is pivoted to one side and the cartridge is inserted in the barrel. The head is then repositioned, the rod 20 is moved forwardly so as to engage the flange 36 with the exterior surface of the cartridge cork. Forward pressure on the plunger rod 20 results in piercing cork 22 by spear-point 38 until it becomes completely ■embedded therein as shown in Fig. 2. Disposal of the cartridge is accomplished by retraction of rod 32 by pull-on finger piece 58 thus bringing the spearhead hack in housed position in the sleeve as .shown in Fig. 6. This action dislodges the spearpoint from the cork 22, allowing the entire cartridge to be disposed of, and readies the barrel for insertion of new ■cartridges. It is asserted that the spear-point is more easily withdrawn from the cork due to the sharp edges 44 on the barbs 42. The spearpoint may be made integral with rod 32 or separable and replaceable by means of screw-threads such as shown at 40 in Fig. 2. The outer end of rod 32 is provided with an enlargement 54 serving as a guide and abutment for a coil spring 56 which functions to maintain the spearpoint in retracted housed position when not in use.
The references relied on by the board are:
Effenberger 773,857 Nov. 1, 1904
Pontius 2,693,804 Nov. 9, 1954
Breitenbach 2,789,559 Apr. 23, 1957
Hein 2,833,280 May 6, 1958
Effenberger shows a pointed spear-like barb for straight-line piercing engagement with a bottle cork for removal of the cork from the bottle.
Pontius shows a syringe plunger rod comprising an inner rod slidable in an ■outer sleeve and having three pointed barblike prongs for locking engagement with a syringe piston cork. The outer :sleeve is designed to abut the cork to facilitate removal of same from the prongs.
Breitenbach shows an aspirating and injecting syringe with a plunger rod comprising an inner rod slidable in an outer sleeve having prongs horn-shaped with the points curved inwardly for engaging a syringe piston cork. The prongs engage the cork by simultaneous forward pressure and twisting motion of the inner rod.
Hein shows a spring between an inner rod and outer sleeve of a plunger rod. The spring functions to hold the inner rod and outer sleeve in engagement with a syringe piston.
Claims 2-14 were rejected by the examiner as unpatentable over either Pontius or Breitenbach “in view of the well known use of barb prong connecting means for engaging stoppers as typified by Effenberger,” stating that the claims differed from the references “only in the particular type of plunger-piston connector employed on the end of the inner plunger rod.” With respect to claims 10-11 the examiner regarded' as conventional the resilient means of Hein normally retracting the inner rod and piston cork connector within the outer sleeve.
The board held that claims 2 to 9 do not patentably distinguish over Pontius. It interpreted Effenberger as cumulative, pointing to it, however, as an example of a barbed rod. It held that claim 5 was anticipated by Breitenbach since the claws of that reference are integral with the plunger rod and the claim does not preclude the rotary motion of the rod of the reference; that claim 7, absent its use provisions, recited a mere plunger rod not distinguishable from that shown in Effenberger and that recitation in claims 10 and 11 of resilient means to retract the piercing means within the plunger rod avoids Breitenbach in this respect only but Hein discloses and clearly teaches the addition of such means to Breitenbach for the same purpose in. the same kind of device.
Appellant relies strongly on the board’s evaluation of the Effenberger reference in its reversal of the examiner as to claims 12, 13 and 14. In this connection the board said:
“Effenberger relates to a bottle cork having a permanently embed[890]*890ded, barbed rod with a handle for extraction of the cork from a bottle. The patentee explains in line 24 of page 1 that the “extractor ‘when applied cannot be pulled from its connected and operative relation with the body of the cork.’ He thus teaches a connection and operation directly opposed to that of appellant, Pontius or Breitenbach. In combining references patentability cannot be negatived merely by selecting from the prior art those features which can be synthesized into an anticipation once it is known what features should be selected. The Effenberger device thus fails to supply the necessary feature which Pontius or Breitenbach alone does not possess, that is, the teaching of the deficiency and how to solve it.”
From this premise, counsel for appellant argues that the board has thus rendered the Effenberger patent of no effect as a combining reference and restricted the references depended upon to: Pon-tius alone as to claims 2 to 9; Breiten-bach alone as to claim 5; Effenberger alone as to claim 7; and Breitenbach in view of Hein as to claims 10 and 11.
As we have above noted, the board in sustaining the examiner’s rejection of claims 2 to 9 on Pontius interpreted the Effenberger reference as cumulative “as an example of a barbed rod.” We take it, therefore, that the Effenberger reference is before us for whatever it may be worth in relation to the issue of obviousness. In In re Wright, 256 F.2d 583, 45 CCPA 1005, appellant asserted a position similar to that advanced here. This court stated that the board’s reasons for allowing other claims before it are irrelevant and that the court’s only concern was “whether the appealed rejected claims have been properly acted upon by the board * *
Appellant contends that the entire theory and operation of Pontius differ completely from his disclosure in that the reference shows claws in a grasping action on the cartridge cork as distinguished from appellant’s spearpoint, sharp on its forward edges, with a piercing function that will not tear the cork as in claw-like means.
Free access — add to your briefcase to read the full text and ask questions with AI
ALMOND, Judge.
Melott appeals from the decision of the Board of Appeals affirming the examiner’s rejection of claims 2 to 11, inclusive, in appellant’s application1 for “Aspirating Syringe.” The board reversed the examiner’s rejection of claims 12, 13 and 14.
Claim 2 is reproduced as illustrative:
“An aspirating syringe for use with a cartridge having a piston cork, said syringe comprising a barrel for reception of the ampoule or [888]*888cartridge, a needle at one end of the barrel, means for puncturing the cartridge for leading the contents thereof to the needle, a retractible syringe plunger rod, a head at the other end of the barrel and slidably containing the plunger rod, the rod extending into the barrel, and piercing means on the plunger rod at its inner end for connection thereof with the cartridge plunger cork, said piercing means being relatively sharp and capablé of piercing the cartridge plunger cork by a straight in-line push on the plunger rod.”
The drawing portrays the following:
The claimed invention relates to a cartridge-type syringe having a plunger rod 32 with a retractible spearpoint head 38 at the inner end thereof for piercing the piston cork 22 of the cartridge or ampoule affixing the plunger rod to the cork, thus converting the syringe into an aspirating as well as an inspirating [889]*889means. In use of the device the locking sleeve 24 is backed off; the head 26, attached by hinge means, is pivoted to one side and the cartridge is inserted in the barrel. The head is then repositioned, the rod 20 is moved forwardly so as to engage the flange 36 with the exterior surface of the cartridge cork. Forward pressure on the plunger rod 20 results in piercing cork 22 by spear-point 38 until it becomes completely ■embedded therein as shown in Fig. 2. Disposal of the cartridge is accomplished by retraction of rod 32 by pull-on finger piece 58 thus bringing the spearhead hack in housed position in the sleeve as .shown in Fig. 6. This action dislodges the spearpoint from the cork 22, allowing the entire cartridge to be disposed of, and readies the barrel for insertion of new ■cartridges. It is asserted that the spear-point is more easily withdrawn from the cork due to the sharp edges 44 on the barbs 42. The spearpoint may be made integral with rod 32 or separable and replaceable by means of screw-threads such as shown at 40 in Fig. 2. The outer end of rod 32 is provided with an enlargement 54 serving as a guide and abutment for a coil spring 56 which functions to maintain the spearpoint in retracted housed position when not in use.
The references relied on by the board are:
Effenberger 773,857 Nov. 1, 1904
Pontius 2,693,804 Nov. 9, 1954
Breitenbach 2,789,559 Apr. 23, 1957
Hein 2,833,280 May 6, 1958
Effenberger shows a pointed spear-like barb for straight-line piercing engagement with a bottle cork for removal of the cork from the bottle.
Pontius shows a syringe plunger rod comprising an inner rod slidable in an ■outer sleeve and having three pointed barblike prongs for locking engagement with a syringe piston cork. The outer :sleeve is designed to abut the cork to facilitate removal of same from the prongs.
Breitenbach shows an aspirating and injecting syringe with a plunger rod comprising an inner rod slidable in an outer sleeve having prongs horn-shaped with the points curved inwardly for engaging a syringe piston cork. The prongs engage the cork by simultaneous forward pressure and twisting motion of the inner rod.
Hein shows a spring between an inner rod and outer sleeve of a plunger rod. The spring functions to hold the inner rod and outer sleeve in engagement with a syringe piston.
Claims 2-14 were rejected by the examiner as unpatentable over either Pontius or Breitenbach “in view of the well known use of barb prong connecting means for engaging stoppers as typified by Effenberger,” stating that the claims differed from the references “only in the particular type of plunger-piston connector employed on the end of the inner plunger rod.” With respect to claims 10-11 the examiner regarded' as conventional the resilient means of Hein normally retracting the inner rod and piston cork connector within the outer sleeve.
The board held that claims 2 to 9 do not patentably distinguish over Pontius. It interpreted Effenberger as cumulative, pointing to it, however, as an example of a barbed rod. It held that claim 5 was anticipated by Breitenbach since the claws of that reference are integral with the plunger rod and the claim does not preclude the rotary motion of the rod of the reference; that claim 7, absent its use provisions, recited a mere plunger rod not distinguishable from that shown in Effenberger and that recitation in claims 10 and 11 of resilient means to retract the piercing means within the plunger rod avoids Breitenbach in this respect only but Hein discloses and clearly teaches the addition of such means to Breitenbach for the same purpose in. the same kind of device.
Appellant relies strongly on the board’s evaluation of the Effenberger reference in its reversal of the examiner as to claims 12, 13 and 14. In this connection the board said:
“Effenberger relates to a bottle cork having a permanently embed[890]*890ded, barbed rod with a handle for extraction of the cork from a bottle. The patentee explains in line 24 of page 1 that the “extractor ‘when applied cannot be pulled from its connected and operative relation with the body of the cork.’ He thus teaches a connection and operation directly opposed to that of appellant, Pontius or Breitenbach. In combining references patentability cannot be negatived merely by selecting from the prior art those features which can be synthesized into an anticipation once it is known what features should be selected. The Effenberger device thus fails to supply the necessary feature which Pontius or Breitenbach alone does not possess, that is, the teaching of the deficiency and how to solve it.”
From this premise, counsel for appellant argues that the board has thus rendered the Effenberger patent of no effect as a combining reference and restricted the references depended upon to: Pon-tius alone as to claims 2 to 9; Breiten-bach alone as to claim 5; Effenberger alone as to claim 7; and Breitenbach in view of Hein as to claims 10 and 11.
As we have above noted, the board in sustaining the examiner’s rejection of claims 2 to 9 on Pontius interpreted the Effenberger reference as cumulative “as an example of a barbed rod.” We take it, therefore, that the Effenberger reference is before us for whatever it may be worth in relation to the issue of obviousness. In In re Wright, 256 F.2d 583, 45 CCPA 1005, appellant asserted a position similar to that advanced here. This court stated that the board’s reasons for allowing other claims before it are irrelevant and that the court’s only concern was “whether the appealed rejected claims have been properly acted upon by the board * *
Appellant contends that the entire theory and operation of Pontius differ completely from his disclosure in that the reference shows claws in a grasping action on the cartridge cork as distinguished from appellant’s spearpoint, sharp on its forward edges, with a piercing function that will not tear the cork as in claw-like means.
Appellant’s claims present his “piercing means” in varying ways. In claim 3 it includes “a shoulder to be embedded in” the cork. In claim 5 it is a “fixed pointed barb.” In claim 9 the-piercing means is extractable from the-cork by “an element associated with the plunger rod.” Claims 7 and 8 specifically claim the plunger rod.
It is clearly obvious that Effenberger discloses one example of a commonly known spearpointed barb or rod with a forward end point of penetrating sharpness, with opposite shoulders designed to resist rearward pull. It is equally obvious that it would be but a simple-expedient to sharpen and condition the points of the oppositely facing shoulders to reduce to a desired degree the resistance to rearward pull.
Effenberger discloses a spearpoint for engaging a cork which is not intended to be easily extracted from the cork. When the spearpoint is extracted, relatively great effort is required and the-cork is likely to be damaged. So, too, appellant’s spearpoint will probably damage the cork when removed. The Pon-tius device permits easier removal of the-barbs or claws from the cork because they do not penetrate the cork to the extent that they resist removal. Breitenbach discloses a corkscrew type of engagement which would destroy the cork if pulled straight back, but which can be relatively easily removed by a twisting motion, the reverse of the twist for engaging the cork. Whether one uses the relatively complex cammed claw arrangement of Pontius or the corkscrew-like means of Breitenbach, on the one hand, or the simpler spearpoint cork engaging device of Effenberger, on the other, is simply an obvious matter of choice in view of the references.
We are inclined to agree with the board that the “Pontius rectilinear movement of the plunger rod moving forwardly and rearwardly the attached pointed member which has a rearward surface or [891]*891.shoulder resisting withdrawal anticipates the recitations in the claims of these features.” Pontius further discloses that the claw is fixedly attached in the sense that it is not separated from the plunger rod, thus corresponding to the fixed barb recitation of claim 5.
We are unable, in the light of the reference with the well known example •of the function and adaptability of a spearpoint barb as depicted in Effen-berger, to ascribe error to the conclusion of the board, with reference to claims 2 to 9, that:
“Since barbs are commonly used on such elements as spears, harpoons and nails to resist withdrawal, it would be obvious to a person having ordinary skill in the art to place a barb on the Pontius pointed elements for the conventional purpose.”
With further reference to appellant’s •argument relating to the alleged distinctive characteristics and function of the sharpness of his piercing means, it is noted that claim 2 embraces such means broadly and as being “relatively sharp.” We do not see that such piercing means so alleged excludes the claws of Pontius. We agree with the board that in the absence of a particularly defined structure these characteristics so generally stated merely express a relative condition. It is noted that Pontius uses the word “penetrate”; Breitenbach uses the expression “penetrate into the piston ■stopper,” while Effenberger refers to “piercing end * * * with barbs in the manner of an arrowhead.” Certainly these references disclose “piercing means” sharp enough to pierce or penetrate.
Appellant argues that the board should have allowed claims 4 to 9, inclusive, along with allowed claims 12, 13 and 14 since the former are substantially the equivalents of the latter.
Aside from the fact that the allowed claims are not before us, the relevancy of appellant’s argument as to our taking cognizance of the asserted equivalency of the claims is fully answered by this court in In re Margaroli et al., 318 F.2d 348, 50 CCPA 1400, where the same argument was made:
“In their brief, appellants seem to place particular emphasis on a comparison of the appealed claims with the allowed claims, * * *. We think the decisions of this court clearly show that any argument for patentability of the appealed claims on the basis of similarities to the allowed claims are lacking in any significance to the issue here.”
We find not persuasive appellant’s argument predicated on the basis that all of the claims were at one time or another held allowable by the examiner over Pontius and Breitenbach thus reflecting doubt as to allowability which should be resolved in appellant’s favor.
We find no inference of doubt in the decision of the board affirming the examiner’s rejection of the appealed claims. It is that decision which is before us for review. Our jurisdiction extends to and embraces none other than the adverse decision from which appellant has prosecuted this appeal'. In re Fischer, 47 F.2d 794, 18 CCPA 1076; In re Boileau, 168 F.2d 753, 35 CCPA 1248; In re Atwood, 267 F.2d 954, 46 CCPA 901.
As we have noted, claims 10 and 11 recite resilient means to normally retract the piercing means and plunger rod within the outer sleeve. The board found that only in this respect did the recitation avoid the Breitenbach reference. The board noted that Hein discloses a spring for the “same purpose in the same kind of device” and thus “clearly teaches the addition of such means to Breitenbach.”
Appellant contends that since Hein has no piercing means and the claws of Breitenbach “are believed not to be piercing means,” the references are not properly combinable to anticipate claims 10 and 11. As we have pointed out, the claws of Breitenbach function to “penetrate into the piston stopper.” It would therefore seem obvious to one of ordinary skill to provide Breitenbach with a [892]*892spring, such as disclosed by Hein, for the purpose recited in the claims.
A thorough review of the claims on appeal in the light of the cited references and with due consideration of the arguments of counsel, fails to convince us of reversible error on the part of the board in holding that it would be obvious to one skilled in the art having the references before him to produce the subject matter of the claimed invention.
The decision of the Board of Appeals is affirmed. ■
Affirmed.