ATERICA INC.Download PDFPatent Trials and Appeals BoardDec 22, 20212021000176 (P.T.A.B. Dec. 22, 2021) Copy Citation 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 Copy with citationCopy as parenthetical citation