Ex Parte Hyde et al

Patent Trials and Appeals BoardMar 23, 2017

12455672 - (D) (P.T.A.B. Mar. 23, 2017)

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. 12/455,672 06/04/2009 Roderick A. Hyde 0705-004-007-000000 (IV 0 2869 71484 7590 03/27/2017 IV - SUITER SWANTZ PC LLO 14301 FNB PARKWAY , SUITE 220 OMAHA, NE 68154 EXAMINER MATTER, KRISTEN CLARETTE ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 03/27/2017 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): file@suiter.com srs@suiter.com ISFDocketInbox@intven.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RODERICK A. HYDE, MURIEL Y. ISHIKAWA, JORDIN T. KARE, ROBERT LANGER, ERIC C. LEUTHARDT, ELIZABETH A. SWEENEY, CLARENCE T. TEGREENE, LOWELL L. WOOD JR., and VICTORIA Y.H. WOOD Appeal 2015-0018621 Application 12/455,6722 Technology Center 3600 Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and CYNTHIA L. MURPHY, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1—21. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, US Patent Applications 12/455,666 (Notice of Abandonment, mailed Nov. 10, 2014) and 12/455,667 (Appeal 2015- GO 1478) are “related to the instant application,” and “are currently, or were previously, on appeal to the Patent Trial and Appeal Board.” Appeal Br. 3. 2 According to the Appellants, “[t]he real party in interest... is Searete LLC.” Id. Appeal 2015-001862 Application 12/455,672 STATEMENT OF THE CASE Claimed Subject Matter Claims 1 and 21 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for administering an inhalable compound, comprising: detecting a medical condition parameter of a user with a sensor on a hands-free article for dispensing an inhalable compound according to a medical condition parameter request received from a source external to the hands-free article; maintaining in physical association with the user the hands-free article in an operable dispensing position, the operable dispensing position excluding physical contact between an outlet of the hands-free article and a face of the user; and dispensing for inhalation by the user a dose of the inhalable compound according to a dosing instruction set. Rejections Claims 1—17 and 21 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Garon (US 6,223,744 Bl, iss. May 1, 2001) and Weaver et al. (US 2008/0142010 Al, pub. June 19, 2008) (“Weaver”). Claims 18—20 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Garon, Weaver, and Trueba (US 2004/0107961 Al, pub. June 10, 2004). ANALYSIS Independent claim 1 is directed to “[a] method for administering an inhalable compound” and includes a step of “maintaining in physical 2 Appeal 2015-001862 Application 12/455,672 association with the user the hands-free article in an operable dispensing position, the operable dispensing position excluding physical contact between an outlet of the hands-free article and a face of the user.” Appeal Br., Claims App. (emphasis added). Independent claim 21 includes a similar step as the aforementioned step in claim 1. See id. The Examiner finds that Garon’s valve outlet 56 corresponds to the “outlet of the hands-free article,” as recited in claims 1 and 23. Final Act. 4, 6. The Examiner does not rely on Weaver to teach the claimed “outlet of the hands-free article.” The Appellants argue that in light of the Specification and the plain meaning of the phrase “an outlet of the hands-free article” one of ordinary skill in the art would not understand the phrase to refer to Garon’s valve outlet 56. See Appeal Br. 11—12, 14—16; Reply Br. 5—7. We agree with Appellants’ argument. Some of the persuasive points supporting the Appellants’ argument, include the following statements: Garon’s “hands-free article” corresponds to wearable aerosol delivery apparatus 10, which comprises a housing 14 (see Appeal Br. 14); “[ljooking at Garon as a whole, it is clear that the ‘valve outlet’ [56] is not an outlet of the article"1 (id. at 12); “‘valve outlet’ [56] is just that—an outlet for the internal valve” (id.); and ‘Ttlhe second end 80 of the conduit 74 acts as an outlet for the aerosol released from the reservoir 36” (id. at 15 (alteration in original) (citing Garon, col. 8,11. 13—14)). Thus, we do not sustain the Examiner’s rejection of independent claims 1 and 21, and dependent claims 2—17 as unpatentable over Garon and Weaver. 3 Appeal 2015-001862 Application 12/455,672 The remaining rejection based on Garon and Weaver in combination with Trueba relies on the same errant finding as discussed above. As such, we do not sustain the rejection of claims 18—20 as unpatentable over Garon, and Trueba. DECISION We REVERSE the Examiner’s decision rejecting claims 1—21. REVERSED 4