Ex Parte Clarke et al

Patent Trial and Appeal Board

Apr 7, 2016

11149022 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111149,022 0610912005 Allan J. Clarke
56457 7590 04/08/2016
OHLANDT, GREELEY, RUGGIERO & PERLE, L.L.P.
(GLAXOSMITH KLINE)
ONE LANDMARK SQUARE
IOTHFLOOR
STAMFORD, CT 06901
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0001534USU5/2241 9726
EXAMINER
PORTA, DAVID P
ART UNIT PAPER NUMBER
2884
MAILDATE DELIVERY MODE
04/08/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLAN J. CLARKE, DAVID GEORGE DOUGHTY,
FREDERICK H. FIES SER, and DAVID S. WAGNER
Appeal2014-008048
Application 11/149,022
Technology Center 2800
Before GEORGE C. BEST, CHRISTOPHER L. OGDEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal 1 under 35 U.S.C. § 134 from the Examiner's
decision2 finally rejecting claims 1, 3-7, 9-11, 47, 48, 50-53, 55-57, and 99.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
The claims are directed to a pharmaceutical machine for producing a
pharmaceutical product (independent claims 1 and 7, and dependent
claims 3---6 and 9-11 ), and a method of providing quality control for a
pharmaceutical machine (independent claims 47 and 53, and dependent
1 Appellants identify the real party in interest as GlaxoSmithKline LLC.
Appeal Brief filed April 7, 2014 ("App. Br."), 2.
2 Final Office Action mailed September 18, 2013 ("Final Act.").
Appeal2014-008048
Application 11/149,022
claims 48, 50-52, 55-57, and 99). Claim 1, reproduced below, is illustrative
of the claims on appeal.
1. A pharmaceutical machine for producing one or more
pharmaceutical products, each pharmaceutical product having a
carrier substrate and a dosage of active agent, the machine
compnsmg:
a dose confirmation system comprising a probe;
a dispensing module that dispenses the dosage of active
agent onto each carrier substrate, wherein the dosage of active
agent comprises a liquid droplet;
a transport, said transport comprising a sample table for
holding each of the carrier substrates, a position table, and a
base, wherein said sample table is slidably connected to said
position table along a first axis, and said position table is
slidably connected to said base along a second axis that is
traverse to said first axis; a first control system in
communication with said dose confirmation system and said
dispensing module; and
a second control system in communication with said first
control system and said transport,
wherein said first control system controls said dose
confirmation system to perform spectroscopy on each carrier
substrate to determine an amount of the dosage of active agent
that has been added to each carrier substrate by said dispensing
module, and
wherein said second control system controls said sample
table and said position table to move along said first axis and
said second axis, respectively, as said first control system
controls said dose confirmation system to perform said
spectroscopy.
App. Br. 11 (Claims Appendix).
Claims 1, 3-7, 9-11, 47, 48, 50-53, 55-57, and 99 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Lewis et al. ("Lewis")
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Appeal2014-008048
Application 11/149,022
(US 7,399,968 B2, issued July 15, 2008) in view of Childers (US 6,623,785
B2, issued September 23, 2003), Sheaff et al. ("Sheaff') (US 4,055,470,
issued October 25, 1976), Ridley et al. ("Ridley") (EP 0 887 638 Al,
published December 30, 1998), Pleva et al. ("Pleva") (US 6,538,252 Bl,
issued March 25, 2003), and Toms (US 2002/0084172 Al, published July 4,
2002). Final Act. 3.
Appellants argue for patentability of claims 1, 3-7, 9-11, 4 7, 48, 50-
53, 55-57, and 99 as a group. See App. Br. 5-8. Appellants have not
presented substantive arguments for patentability of any of the dependent
claims. We focus our discussion on independent claim 1 because it contains
the argued limitations that are also present in the remaining independent
claims 7, 47, and 53.
Appellants argue the Examiner reversibly erred in finding that Sheaff
teaches or suggests a transport as recited in claim 1. See App. Br. 6.
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Appeal2014-008048
Application 11/149,022
Sheaff describes a device for recording the antibiotic sensitivity and
identity of a series of bacterial specimens. See Sheaff 1 :5-7. Figure 1 of
Sheaff is reproduced below:
Figure 1, above, illustrates the principal parts of Sheaff s device. Id. at
1 :57-58. Sheaff discloses a transport comprising a mount 12 (a sample
table) for holding test plates 16, a sub-frame 34 (a position table) and a
frame 10 (a base). Id. at 2:42--48. Sheaff discloses that mount 12 (a sample
table) is attached to support blocks 36 which are slidable on rods 48
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Appeal2014-008048
Application 11/149,022
(attached to sub-frame 34 (a position table)) in the direction of the X axis.
Id. at 2:53-54. Sheaff further discloses a sub-frame 44 is secured to
frame 10 and sub-frame 34. Id. at 2:49-50. According to Sheaff, the sub-
frame 34 (a position table) is slidably mounted on rods 42 for sliding
movement in the Y axis direction with respect to sub-frame 44 and main
frame 10 (a base). Id. at 2:50-53. Based on this disclosure, we are not
convinced that the Examiner reversibly erred in finding Sheaff discloses a
sample table slidably connected to the position table along a first axis, and a
position table slidably connected to a base along a second axis that is
tranverse to the first axis.
Appellants argue that Sheaff' s sample table is slidably connected to
intermediate components (support blocks 36 or rods 48) rather than to the
position table (sub-frame 34). See Reply Brief filed July 7, 2014 ("Reply
Br."), 2. Similarly, Appellants argue sub-frame 34 is slidably connected to
sub-frame 44, not frame 10 (a base). See id. We do not find Appellants'
arguments to be persuasive, because giving the term slidably connected its
broadest reasonable interpretation, consistent with Appellants' Specification,
does not require that the sample table and position table be directly
connected to the position table and base, respectively.
Appellants argue that the Examiner has reversibly erred in combining
the teachings of Sheaff with those of Childers and Lewis. App. Br. 6-8.
Specifically, Appellants argue that substituting Sheaff's transport to
"perform the role" of the media carrier (element 28) in Childers' dispensing
module, and the role of the web (element 16) in Lewis's machine would
either change Childers' and Lewis's principle of operation or render Lewis
inoperable for its intended purpose. Id. at 7. Appellants argue that "the
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Appeal2014-008048
Application 11/149,022
devices of each of Childers and Lewis require one-dimensional transport,
and one of ordinary skill in the art would have no reason to simply use the
two-dimensional table of Sheaff to 'perform the role' of transport devices in
either of Childers and Lewis." Reply Br. 3. We find this argument
unpersuasive. Appellants' argument presumes that the skilled artisan lacks
any creativity and would simply replace Lewis's web 16 or sensing
element 28 in Childers' dispensing module with Sheaff s transport without
any consideration of further consequences. A person of ordinary skill in the
art, however, "is also a person of ordinary creativity, not an automaton."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
For the above reasons, the Examiner's rejection of claims 1, 3-7, 9-
11, 47, 48, 50-53, 55-57, and 99 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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