Ex Parte Burr et al

Patent Trial and Appeal Board

Apr 29, 2013

10298177 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN D. BURR, JEFF R. WOOD,
ADRIAN E. SMITH, JOHN A. HOWARD,
and FABRIZIO NICCOLAI
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Appeal 2011-000840
Application 10/298,177
Technology Center 3700
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Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and JAMES
A. TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL

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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).
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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
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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
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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.
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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.
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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

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