ATERICA INC.

Patent Trials and Appeals Board

Dec 22, 2021

2021000176 (P.T.A.B. Dec. 22, 2021)

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.
15/377,083 12/13/2016 Michael FISHER 25485-P52067US00 9644
1059 7590 12/22/2021
BERESKIN & PARR LLP/S.E.N.C.R.L., s.r.l.
40 KING STREET WEST
40TH FLOOR
TORONTO, ONTARIO M5H 3Y2
CANADA
EXAMINER
YANG, JAMES J
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
12/22/2021 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):
ipprocessingcentre@bereskinparr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte MICHAEL FISHER, ALEXANDER LEYN,
RICHARD EDWARDS, STEVEN ORZEL, ERIK HELGE BORG,
PAUL MCINNIS, CRISTIAN CHERLER, HEINZ WOLTER,
JOHN CHINNICK, and JACOB STAHLBAUM

Appeal 2021-000176
Application 15/377,083
Technology Center 2600

Before MAHSHID D. SAADAT, JAMES W. DEJMEK, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 11, and 37, which are all of the
pending claims remaining in the application. Appeal Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2019). Appellant identifies the real party in interest as
Aterica Inc. Appeal Br. 3.
Appeal 2021-000176
Application 15/377,083

2
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter generally relates to managing and
monitoring the use of a medication delivery device. Spec ¶ 1. Appellant
cites a list of issues that need to be addressed for people carrying devices
with rescue medication, including “lost or forgotten medication delivery
device; expired medication; rescue medication that has been exposed to
temperatures and other environmental factors outside predetermined ranges;
reliable integration with the technology of new and existing support groups;
and] bystander notifications in case of medical emergency.” Id. ¶ 4.
Appellant claims a case for use with a medication delivery device having
sensors and notifications to meet such needs. Id. ¶ 4; 19–20 (Claims App.).
Independent claim 1 is illustrative:
1. A case for use with a medication delivery device, the
case comprising:
a housing having an opening bordering a cavity defined therein,
the cavity sized to receive the medication delivery device;
a cover disposed adjacent to the opening in the housing and
capable of moving between an open position and a closed
position where it covers the opening in the housing;
a sensor for detecting the presence and absence of the
medication delivery device in the cavity; and,
an electronic control system disposed in wireless
communication with a gateway device for connecting to a
communications network, wherein the electronic control system
is configured and arranged to provide a signal indicating that
the case is in proximity to the gateway device,
Appeal 2021-000176
Application 15/377,083

3
wherein the electronic control system sends a notification signal
to the gateway device in response to the sensor detecting that
the medication delivery device has been removed from the case.
Id. at 19 (Claims App.). Dependent claims 2–7, 11, and 37 incorporate the
limitations of independent claim 1. Id. at 19–20.
REFERENCES
Name Reference Date
Brue et al.
(“Brue”)
US 2010/0169111 A1 July 1, 2010
Ostrander et al.
(“Ostrander”)
US 2014/0155827 A1 June 5, 2014
Kondoh et al.
(“Kondoh”)
US 2014/0221925 A1 Aug. 7, 2014
Romans US 9,069,333 B1 June 30, 2015

REJECTIONS
Claims 1, 2, 4–6, and 11 are rejected under 35 U.S.C. § 103 as being
obvious over the combination of Ostrander and Kondoh. Final Act. 2–5.
Claims 3 and 7 are rejected under 35 U.S.C. § 103 as being obvious
over the combination of Ostrander, Kondoh, and Brue. Final Act. 5–8.
Claim 37 is rejected under 35 U.S.C. § 103 as being obvious over the
combination of Ostrander, Kondoh, and Romans. Final Act. 8–9.
OPINION
Appellant first argues that the combination of Ostrander and Kondoh
fails to teach “wherein the electronic control system sends a notification
signal to the gateway device in response to the sensor detecting that the
medication delivery device has been removed from the case.” Appeal Br. 7–
11.
Appeal 2021-000176
Application 15/377,083

4
Examiner’s Findings
The Examiner finds that Ostrander teaches a notification signal sent to
a gateway device in response to a sensor detecting that a medication delivery
device has been activated, through Ostrander’s description of a mobile
device 220 receiving information from a medication delivery device 100 that
it has been activated. Final Act. 3–4. The Examiner further explains that the
claimed “case” is taught by Ostrander’s physical device holding the delivery
device 100 (Fig. 1), and the claimed “delivery device” is taught by
Ostrander’s injector (medication delivery device) 100 in combination with
the injected medication, and the claimed “cavity” is taught by Ostrander’s
reservoir storing the medication and injector (¶ 30). Ans. 4–5. The
Examiner further points out that the medication and/or syringe needle can be
replaced, supporting the presence of an openable case holding these
components. Final Act. 4 (citing Ostrander ¶ 40). The Examiner further
finds that it would have been obvious to include the removal of the device as
part of such activation, because “the delivery device may be an auto-injector
or non-auto-injector.” Id.
However, the Examiner finds that Ostrander does not explicitly teach
a sensor for detecting the presence or absence of the medication delivery
device in a case, and that the notification signal is in response to the sensor
detecting the removal of the device from the case. Final Act. 4–5. The
Examiner finds those limitations taught by the combination of Ostrander and
Kondoh. Id. at 4–5. The Examiner points to Kondoh’s description of a
syringe cover detector switch that determines whether or not a
pharmaceutical syringe has been removed, and if removal has been
determined, shutting off the power to remove a display message. Id. at 5
Appeal 2021-000176
Application 15/377,083

5
(citing Kondoh ¶¶ 103–104). The Examiner finds that the combination of
Ostrander’s message indicating activation of a delivery device, and
Kondoh’s power-off indicating removal of a delivery device from a case,
teaches or suggests the claimed notification signal sent in response to the
removal of a delivery device from a case. Id.
Appellant’s Argument
Appellant argues that in Ostrander, the auto-injector delivery device is
never described as being “removed” from anything. Appeal Br. 8. Further,
that Ostrander does not describe any cover or openable compartment for the
auto-injector. Id. Appellant also argues that Kondoh does not describe a
notification of removal of a medication delivery device, but instead,
provides notifications of remaining dosages in a syringe so that a user will
be reminded to refrigerate a syringe that still contains viable medication. Id.
at 9–10 (citing Kondoh ¶¶ 8, 11, 111–113). Appellant argues that at best,
Kondoh teaches notifying a user that the syringe has not been removed from
the apparatus. Id. at 10. Appellant points out that the claim does not relate
to notifying the user of the use of a syringe or auto-injector, or the presence
of remaining dosages, but instead, to notifying the user of the removal of the
syringe or auto-injector from a case. Id. Appellant argues that this is not
fairly taught by the applied combination. Id.
Building upon that characterization of Ostrander and Kondoh,
Appellant argues that it would not have been obvious to modify Ostrander to
include “a sensor for detecting the presence and absence of the medication
delivery device in the cavity.” Appeal Br. 11–15. Appellant argues that
Ostrander does not teach this limitation, and we note that the Examiner
admits that Ostrander does not. Id. at 11–14; Final Act. 4. Because Kondoh
Appeal 2021-000176
Application 15/377,083

6
does not, in Appellant’s characterization, notify the user of the removal of
the syringe from a case, Appellant argues that it would not have been
obvious to combine Ostrander and Kondoh to teach the claimed notification
responsive to removal of the syringe from the case. Appeal Br. 11.
Analysis
We are persuaded by Appellant’s arguments that the Examiner errs in
finding claim 1 to be obvious over Ostrander and Kondoh. The Examiner
has provided teachings of numerous parts of the claimed invention, but has
not clearly explained how those parts, and the combined teachings of
Ostrander and Kondoh, would teach or suggest the claimed invention,
particularly, “an electronic control system [that] sends a notification signal
to the gateway device in response to the sensor detecting that the medication
delivery device has been removed from the case.”
The Examiner points to Kondoh’s description of a syringe cover
detector switch 30 that detects whether a syringe has been removed. Final
Act. 4 (citing Kondoh ¶¶ 103–104). However, the system of Kondoh
responds to the removal of the syringe by simply turning off the power,
because Kondoh is concerned with maintaining proper refrigeration of any
pharmaceutical remaining in the syringe. Kondoh ¶¶ 101, 104, 112.
Recognizing that turning off the power of the system is not a teaching
of sending a notification signal to a gateway device, the Examiner further
relies upon Kondoh’s display notification which would no longer display
“Please remove the pharmaceutical syringe.” Final Act. 4. However,
Kondoh’s cessation of a display does not teach sending a notification signal
to a gateway device.
Appeal 2021-000176
Application 15/377,083

7
The Examiner further points to Ostrander and Kondoh for descriptions
of performing actions, including notifications, in response to an activation or
use of the medication delivery device. Final Act. 5. Ostrander teaches
notifying emergency services to indicate that the medication has been
activated to treat a condition of a patient. Ostrander ¶ 47. Kondoh teaches
an encoder 26 that measures the position of the syringe piston to determine if
medication remains in the syringe, and if so, displays a warning message on
the display of the syringe apparatus. Kondoh ¶¶ 99–102. However, these
teachings relate to detection of the status of the medication, not to whether
the syringe has been removed.
As for how the teachings would be combined, the Examiner states,
“modify the system in Ostrander by integrating the teaching of a syringe
cover detector as taught by Kondoh.” Final Act. 5. Such a modification
would appear to take Kondoh’s cover detector switch 30 and place it into
Ostrander’s packaging 160 so that it is proximate Ostrander’s electronic
medicament device 100. However, the Examiner does not indicate that the
modification would also integrate the warning message related to the amount
of medicament dispersed. Such a warning message, purposed in Kondoh to
remind a user to “Put in refrigerator for storage,” has not been shown to be
desirable in Ostrander, which does not address refrigerated pharmaceuticals.
Moreover, the warning message in Kondoh is responsive to the encoder 26,
which tracks the amount of dispensed medication, not the cover detector
switch 30 that the Examiner proposes to add to Ostrander’s system.
In another characterization of the resulting combination, the Examiner
finds the combination to provide a system that would “provide a user
reminder to remove the syringe after use.” Final Act. 5. However, neither a
Appeal 2021-000176
Application 15/377,083

8
refrigeration warning message, nor a “remove syringe after use” message
would result in the claimed notification signal that is “in response to the
sensor detecting that the medication delivery device has been removed from
the case.” A message warning a user to remove a syringe is quite different
than a message to a user that the syringe has been removed. That is, a
message to remove a syringe presupposes that the syringe has not been
removed, and cannot be a message responsive to a sensor detecting that the
syringe has been removed. Thus, even if Kondoh’s sensor is integrated into
Ostrander’s medication delivery device system to determine the presence of
a syringe, and even though Ostrander and Kondoh teach providing a
notification in response to activation or amount of a medication or
pharmaceutical, the Examiner has not shown how the combination results in
a notification in response to a sensor detecting removal of the device.
The Examiner further explains the combination as teaching “a
notification in response to the medication delivery device being activated or
used [citing Ostrander ¶ 47] which includes the removal of the medication
delivery device from the case [citing Kondoh ¶¶103–104].” Final Act. 5.
Here again, however, the Examiner is conflating the activation of the device
with the removal of the device. In doing so, the Examiner fails to account
for the contrary teaching of Kondoh that after activation, the notification
indicates either a need for storage or a need for new pharmaceutical.
Kondoh, Fig. 10, steps S36, S43. Even assuming that one would remove the
medical delivery device from the case following activation, the claim is
specific in that the notification must be “in response to a sensor detecting
that the medical delivery device has been removed from the case.” The
Examiner’s proposed combination resulting in a notification in response to
Appeal 2021-000176
Application 15/377,083

9
activation of a device, in which the device may be removed subsequent to
activation, is not a notification in response to a sensor detecting removal of
the device. Claim 1 requires a specific configuration of sensor, control
system, and notification signal, and the Examiner has not shown how the
prior art teachings would be combined in such a configuration.
For the foregoing reasons, we are persuaded by Appellant’s
arguments, in light of the record, that the Examiner has not shown the
combination of Ostrander and Kondoh to teach or suggest an electronic
control system that sends a notification signal in response to a sensor
detecting that a medication delivery device has been removed from the case,
as set forth in claim 1. Claims 2–7, 11, and 37 each depend from claim 1,
and the Examiner has applied the same reasoning in the rejections of those
claims. The Examiner does not provide any indication that Brue or Romans,
applied to teach the further limitations of claims 3, 7, and 37, supply the
teachings we have determined to be missing from the rejection of claim 1.
Consequently, we are also persuaded of error in the Examiner’s rejections of
claims 2–7, 11, and 37. Thus, we do not sustain the Examiner’s obviousness
rejections of claims 1–7, 11, and 37.
CONCLUSION
For the above-described reasons, we reverse the Examiner’s
obviousness rejections, as summarized below.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4–6, 103 Ostrander, Kondoh 1, 2, 4–6,
Appeal 2021-000176
Application 15/377,083

10
11 11
3, 7 103 Ostrander, Kondoh,
Brue
3, 7
37 103 Ostrander, Kondoh,
Romans
37
Overall
Outcome
1–7, 11,
37

REVERSED