Ex Parte Burr et alDownload PDFPatent Trial and Appeal BoardApr 29, 201310298177 (P.T.A.B. Apr. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JOHN D. BURR, JEFF R. WOOD, ADRIAN E. SMITH, JOHN A. HOWARD, and FABRIZIO NICCOLAI ________________ Appeal 2011-000840 Application 10/298,177 Technology Center 3700 ________________ Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and JAMES A. TARTAL, Administrative Patent Judges. TARTAL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000840 Application 10/298,177 2 STATEMENT OF THE CASE1 John D. Burr, et al.(Appellants) seek our review under 35 U.S.C § 134 of the Examiner’s final decision rejecting claims 1, 3-35, and 37. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Appellants’ claimed invention relates to an aerosolization apparatus. Spec. 3. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An aerosolization apparatus comprising: a body having an inlet; an endpiece having an outlet, the endpiece being connectable to the body to define a chamber, wherein the chamber is sized to receive a capsule containing a pharmaceutical formulation in a manner which allows the capsule to move within the chamber and wherein the inlet is shaped to provide a swirling air flow in the chamber; a connection mechanism to provide selective connection of the end piece to the body, wherein a rotational force between the endpiece and the body is needed to connect and to disconnect the endpiece from the body, the rotational force being applied about an axis passing through the chamber, and wherein the endpiece may be disconnected from the body to allow for insertion or removal of the capsule; and a puncturing mechanism capable of providing an opening in the capsule; whereby when a user inhales, air enters into the chamber through the inlet so that the pharmaceutical formulation is 1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,” filed Jan. 7, 2010) and Reply Brief (“Reply Br.,” filed Aug. 10, 2010), and the Examiner’s Answer (“Ans.,” mailed Jun. 10, 2010). Appeal 2011-000840 Application 10/298,177 3 aerosolized within the chamber and the aerosolized pharmaceutical formulation is delivered to the user through the outlet. The Examiner relies upon the following evidence: Valentini US 4,995,385 Feb. 26, 1991 Ohki US 5,901,703 May 11, 1999 Edwards US 6,766,799 B2 Jul. 27, 2004 Claims 1, 3-35, and 37 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Edwards, Ohki, and Valentini. FINDINGS OF FACT We find that the findings of fact which appear in the Analysis below are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). ANALYSIS Claims 1, 3-17, 28-35, and 37 We find not persuasive Appellants’ argument that one of ordinary skill in the art would not have found it obvious to alter Edwards with the rotatable connection of Ohki. Appellants contend that Edwards discloses a friction fit connection mechanism that allows for connection of the endpiece and puncture of a capsule within the device in a single-step. App. Br. 7. From this, Appellants assert that modifying Edwards with a rotatable connection is not obvious because it would result in the need for a user to employ a multi-step process to connect the endpiece and then puncture the capsule. In support of their argument, Appellants’ provide a declaration Appeal 2011-000840 Application 10/298,177 4 from an employee of the assignee of the patent referencing a publication not authored by the Edwards inventors. The Declaration states that although Edwards “does not explicitly describe the steps used to puncture the capsule,” if the connection employed by Edwards were replaced with a rotational type connection mechanism, the device “would lose its single- user-step feature.” Decl. 2-3. Edwards (col. 2, ll. 43-45) discloses a device with a first casing portion and a second casing portion “removably coupled” to the first casing portion. Edwards (col. 7, ll. 65-66) further states that the first and second casings are preferably coupled with a friction-fit engagement. Edwards does not, however, disavow other means for removably coupling the casings as claimed. Similarly, Edwards (col. 7, ll. 37-46) states that a means for puncturing is preferably configured to be movable between a non-puncturing position and a puncturing position, and further discloses a means for puncturing that utilizes a spring for biasing, but Edwards doses not disavow other means for puncturing, including means that may require more than a single-step. Indeed, Edwards does not identify a “single-step process” as a feature or advantage. See Edwards col. 3, l. 49 – col. 4, l. 32. Appellants have not addressed the combination of prior art references as a whole but simply improperly argues the merits of Edwards and Ohki individually. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not . . . that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art”). Edwards discloses the elements of the claimed aerosolization apparatus other than requiring a rotational force between the Appeal 2011-000840 Application 10/298,177 5 endpiece and the body to connect and to disconnect the endpiece from the body. See Ans. 3-4. Ohki discloses a rotatable connection. See Ans. 4. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). While Appellants contend that benefits of the claimed connection mechanism includes lessening the likelihood of choking, Appellants have not shown that the claimed combination of known elements yields anything but predictable results. We likewise disagree with Appellants’ contention that Edwards teaches away from an alternative connection mechanism where Appellants merely assert that such an alternative would be more complicated, but have not convincingly shown that the prior art reference criticizes, discredits, or otherwise discourages the solution claimed in the application. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed in the ... application.”). The Examiner’s reasoning to combine the teachings of Ohki and Edwards as an alternative means for connecting the endpiece and body articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Ans. 4, see also KSR at 418 (2007). Claims 18-22 Claims 18-22 require that “the connection mechanism comprises engageable threads.” Appellants raise essentially the same arguments with respect to claims 18-22 that Appellants raised with regard to claim 1. App. Appeal 2011-000840 Application 10/298,177 6 Br. 9-10. Accordingly, we find that Appellants have not overcome the Examiner’s rejection of claims 18-22 for the same reasons discussed above with respect to claim 1. Claims 23-27 Claims 23-27 require that the “connection mechanism comprises a protrusion that is receivable within a slot.” The Examiner determined that: it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the connection mechanism as recited in the claims because the particulars of the connection mechanism are a mere design choice and that any form of connection mechanism would perform equally well. Furthermore, the appellant has not disclosed why the particulars of the connection mechanism solves any stated problem or provide an advantage over the prior art. Ans. 5; see also In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (“design choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function). Appellants have not shown any reasons why the differences between the claimed “protrusion that is receivable within a slot” connection mechanism and the rotatable connection mechanism of Ohki would result in a different function. Accordingly, we conclude that Appellants have not overcome the Examiner’s determination that claims 23-27 are unpatentable over Edwards, Ohki, and Valentini. Appeal 2011-000840 Application 10/298,177 7 CONCLUSIONS OF LAW We conclude that Appellants have not overcome the Examiner’s rejection of claims 1, 3-35, and 37 under 35 U.S.C. § 103(a) as being unpatentable over Edwards, Ohki, and Valentini. DECISION We AFFIRM the decision of the Examiner to reject claims 1, 3-35, and 37. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED lp Copy with citationCopy as parenthetical citation