Ex Parte Marshall et al

Patent Trial and Appeal BoardOct 25, 2012

10506472 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEREMY MARSHALL and DAVID DANVERS CROSSMAN ____________ Appeal 2010-007347 Application 10/506,472 Technology Center 3700 ____________ Before JENNIFER D. BAHR, STEFAN STAICOVICI, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007347 Application 10/506,472 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision twice rejecting claims 9-13 under 35 U.S.C. § 102(b) as anticipated by Bergens (US 6,270,479 B1, iss. Aug. 7, 2001).1 Oral Hearing was scheduled for the instant appeal in this case for October 10, 2012. After submitting confirmation in writing on May 31, 2012 that Appellants’ representative would attend, Appellants’ representative failed to attend the Oral Hearing. Accordingly, the Oral Hearing in this case has been waived, and the case has been decided on brief. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claim 9 is the sole independent claim on appeal, reproduced below, and representative of the subject matter on appeal. 9. An injection device comprising: a housing having a forward end and a rearward end; a syringe having a needle and containing a dose for being ejected through said needle by means of a piston slideable within the syringe, said syringe being moveable within the housing to a forward position to project its needle from the forward end of the housing; a spring drive operable firstly to urge the syringe to its forward position and then to press said piston to eject said dose, said drive including: 1 The rejection of claims 9-13 under 35 U.S.C. § 112, second paragraph for indefiniteness has been withdrawn by the Examiner. Ans. 2. Appeal 2010-007347 Application 10/506,472 3 a first spring acting between the housing and a plunger aligned to cooperate with the piston to urge the piston forwardly, and a second spring acting in compression between said plunger and the syringe and in opposition to said first spring when the plunger presses said piston forwards to eject the dose, the second spring being weaker than the first spring but being sufficiently stiff to be in an expanded state when the syringe reaches its forward position with its needle penetrating the flesh of a patient, whereupon the first spring, as it fully expands, will then compress the second spring to urge the plunger forward and thereby move the piston and expel a dose from the syringe, the second spring meanwhile serving to retain the syringe seated at its forward position, whereby said piston is not acted upon until the needle has penetrated. OPINION The Examiner finds that Bergens’s injection device includes a spring drive with an autopenetration and an autoinjection mechanism. See Ans. 3, see also Bergens, Abstract. The Examiner also finds that Bergens’s spring drive corresponds to “a spring drive operable firstly to urge the syringe to its forward position and then to press said piston to eject said dose (Figs[.] 1A- D),” as recited in claim 9. Id. It is not clear, however, if Bergens includes a second spring that can be read to fulfill the following recitation of claim 9, “whereupon the first spring, as it fully expands, will then compress the second spring to urge the plunger forward and thereby move the piston and expel a dose from the syringe.” App. Br., Claims Appendix (emphasis added), see App. Br. 9, 10, Reply Br. 5-8, 12-13. The Examiner finds Bergens’s spring 141, compression damper spring 156, and plunger 126, correspond to the first spring, second spring, and Appeal 2010-007347 Application 10/506,472 4 plunger, respectively, as called for by claim 9. Ans. 3-4. Bergens discloses a common drive system includes a spring 141 acting as both a penetration drive and an injection drive. Col. 12, ll. 14-16 and figs. 1A-1D. In other words, spring 141 expands through its penetration movement and injection movement. Bergens also discloses that at the end of the penetration movement, element 151 (sleeve-like syringe plunger part) stops but element 153 (rear plunger guide) continues forward movement against the weaker force of spring 156 causing compression of legs 143. Col. 11, 58-60, 65-66, col. 12, l. 64 – col. 13. l. 9. In other words, Bergens discloses that “[t]he tapering surfaces [161] become active for compression of the legs [143] when the plunger guide [153] moves forward relative the syringe plunger [126] against the force of the damper spring [156], which is weaker than the drive spring 141.” Col. 12, ll. 47-50 (emphasis omitted). At this stage in the operation spring 156 is compressed between elements 151 and 153 (fig. 1B) and legs 143 are in contact with the tapering surfaces 161 of element 151. The next step of the operation occurs when legs 143 are freed to land on plunger 126 and maintained compressed by channel 162 provided by the plunger guide 153. Col. 12, ll. 29-31, 38-46, fig. 1C. It is unclear if at this stage, when legs 143 land on the plunger 126 to then urge plunger 126 forward, damper spring 156 is fully compressed. Additionally, although Figure 1C depicts the operation of the autoinjector during some operational stage of the injection movement, spring 156 is not depicted in the Figure. As such, it is not known whether or not spring 156 is further compressed when plunger 126 is urged forward by the force of spring 141 applied through the legs 143 of the injection head 142. See fig. Appeal 2010-007347 Application 10/506,472 5 1C. Accordingly, the Examiner’s finding that spring 156 corresponds to the second spring in the following recitation of claim 9 “whereupon the first spring, as it fully expands, will then compress the second spring to urge the plunger forward and thereby move the piston and expel a dose from the syringe” (emphasis added), is not supported by a preponderance of the evidence. See Reply Br. 8. Contra Ans. 4; see Ans. 9-10. Thus, for the reasons provided above we are constrained to reverse the Examiner’s rejection of claim 9 as anticipated by Bergens and its dependent claims 10-13. DECISION We REVERSE the Examiner’s rejection of claims 9-13. REVERSED hh