Ex Parte Seppala et al

Patent Trial and Appeal BoardNov 28, 2012

10481621 (P.T.A.B. Nov. 28, 2012)

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. 10/481,621 08/12/2004 Kari Seppala 06267.0114 8286 22852 7590 11/29/2012 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER OSTRUP, CLINTON T ART UNIT PAPER NUMBER 3771 MAIL DATE DELIVERY MODE 11/29/2012 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 KARI SEPPALA, TERHI MATTILA, KALLE PURMA, and MARKKU HARKONEN ____________________ Appeal 2010-008219 Application 10/481,621 Technology Center 3700 ____________________ Before KEN B. BARRETT, EDWARD A. BROWN, and PATRICK R. SCANLON, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008219 Application 10/481,621 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the rejection of claims 1, 2, 5, and 8-10. App. Br. 3. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). An oral hearing was conducted on November 16, 2012. We AFFIRM. THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter on appeal: 1. An inhaler for administering powder by inhalation, comprising an air conduit defined by a wall the air conduit including a mouthpiece; a dosing means adapted to provide a dose of powder to the air conduit; a primary air inlet for providing a stream of air adapted to disperse a dose of powder from the dosing means; wherein the wall of the air conduit, which is located downstream from the dosing means, is provided with a secondary air inlet which is positioned adjacent to the dosing means and extends towards the mouthpiece and covers at least 20% of the portion of the air conduit which is located downstream from the dosing means, whereby the powder dispersed form the dosing means is subjected to additional turbulence along the portion of the air conduit which is covered by the secondary air inlet. THE REJECTIONS 1. Claims 1, 2, 5, and 8-10 are rejected under U.S.C. Â§ 112, second paragraph, as being indefinite. Appeal 2010-008219 Application 10/481,621 3 2. Claims 1, 2, 5, and 8-10 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Koskela (WO 00/64520; pub. Nov. 2, 2000) and Priestly (US 2,587,215; iss. Feb. 26, 1952). ANALYSIS Claims 1, 2, 5, and 8-10 â€“ Indefiniteness Claim 1 recites: wherein the wall of the air conduit, which is located downstream from the dosing means, is provided with a secondary air inlet which is positioned adjacent to the dosing means and extends towards the mouthpiece and covers at least 20% of the portion of the air conduit which is located downstream from the dosing means. Emphasis added. The Examiner stated "it is unclear which portion of the air conduit is being referred to and if 'the portion' makes up the entire air conduit or some 'portion' of the conduit." Ans. 3. Appellants contend that the second recitation of "which is located downstream from the dosing means" in claim 1 indicates that the air conduit is located downstream from the dosing means. App. Br. 9. Appellants appear to contend that the term "portion" has the meaning of "length" and propose a claim amendment to make this change. App. Br. 9-10.1 Appellants also argue that "'the portion' refers to the portion of the air conduit that is located downstream from the dosing means." Reply Br. 2. Figure 2 of the Appellants' application appears to show that air conduit 13 is located entirely downstream from the "dosing means." See 1 We note that the Specification states "Suitably the secondary air inlet, e.g. a elongate slot, covers at least 10 %, preferably at least 20 %, more preferably at least 30 %, of the length of the air conduit downstream from the dosing means." Spec. 5, ll. 22-24 (emphasis added). Appeal 2010-008219 Application 10/481,621 4 also Spec. 8, ll. 4-5 ("The air conduit (13) is defined, downstream from the metering drum (2), by an air conduit wall (23).") In light of this disclosure, there appears to be no "portion" of the air conduit 13 that is not located downstream from the dosing means. We agree with the Examiner that the meaning of "portion" in claim 1 is unclear, and sustain the rejection of claim 1, and claims 2, 5, and 8-10, which depend from claim 1, under 35 U.S.C. Â§ 112, second paragraph. Claims 1, 2, 5, and 8-10 - Obviousness The Examiner found Koskela discloses an inhaler for administering powder by inhalation, comprising a primary air inlet 17, and a slot (secondary air inlet) between the opening 16 of the cylindrical body and a partition wall 19 of the mouthpiece, and positioned adjacent the dosing means, whereby "the powder dispersed from the dosing means is subjected to additional turbulence along the length of the secondary air inlet." Ans. 4 (citing Koskela, p. 5, ll. 30-34). The Examiner found Koskela does not teach that the secondary air inlet is downstream from the dosing means, and that it covers at least 20% of the portion of the air conduit downstream from the dosing means. Ans. 4. The Examiner found Priestly discloses an inhaler for delivering powders having a downstream secondary air inlet 36 that causes further mixing of the powders through the tube (33). Ans. 4 (citing Priestly col. 4, ll. 39-51; fig. 4). The Examiner concluded that it would have been obvious to one of ordinary skill in the art to modify Koskela's secondary air inlet by placing it downstream of the dosing means as taught by Priestly, to provide further mixing of the powder formulation prior to inhalation by a patient. Ans. 5. The Examiner also determined, regarding the size of the secondary Appeal 2010-008219 Application 10/481,621 5 air inlet, that discovering optimum or workable ranges involves only routine experimentation and skill, and that choosing a secondary air inlet that covers at least 20% of the portion of the air conduit is an obvious design choice. Ans. 5. Appellants contend that Koskela does not disclose or suggest "a secondary air inlet that provides 'additional turbulence along the portion of the air conduit which is covered by the secondary air inlet,'" as claimed. App. Br. 10. Appellants contend that Koskela's slot is the primary air inlet that empties the dosing means, and is analogous to Appellants' primary air inlet. App. Br. 11. Appellants also contend that the absence of any secondary air inlet in Koskela is shown by the absence of an air inlet or break in the air conduit wall 19. App. Br. 11 (referring to Koskela fig. 2 reproduced at App. Br. 10). Claim 1 recites "the wall of the air conduit . . . is provided with a secondary air inlet." Emphasis added. We agree with Appellants that Koskela does not show an air inlet provided in wall 19 of air channel 12, and that the Examiner did not identify any description in Koskela that pertains to a secondary air inlet provided in wall 19. App. Br. 12. Appellants further contend that, even if the slot between opening 16 and partition wall 19 in Koskela were considered a secondary air inlet, moving this secondary air inlet downstream according to Priestly would completely disable Koskela's device, because the slot is designed to provide a strong aligned stream of air to the dosing recess to empty it, that is, the slot is a primary air inlet. App. Br. 13 (citing Koskela, p. 5, ll. 31-34). Appeal 2010-008219 Application 10/481,621 6 Koskela discloses: The intaken air is led to a slot between the opening (16) of the cylindrical body and a partition wall (19) of the mouthpiece. The slot, which is preferably moulded as a nozzle, provides strongly aligned stream of air to the dosing recess blowing the powder out from the dosing recess into the air channel without leaving any residue. Koskela, p. 5, ll. 30-34 (emphasis added). Appellants contend that placing Koskela's slot away from the dosing means as taught by Priestly (citing Priestly, fig. 4) would result in the failure of Koskela's device to empty the dosing means. App. Br. 13. Appellants' contentions are persuasive. Koskela's slot is located between opening 16 and partition wall 19 for "blowing the powder out from the dosing recess into the air channel." Emphasis added. This powder would appear to be blown into the upstream end of the air channel once blown from the dosing recess. The Examiner did not provide a basis in fact that placing Koskela's slot downstream of the dosing means would allow the slot to still provide its above-noted function in the inhaler. The Examiner also stated "the area between 16 and 19 of Koskela is merely enlarged and elongated by the modification of the instant invention[]" (Ans. 9 (emphasis added)), and that "the examiner has merely suggested modifying the opening formed between 16 & 19 of Koskela with the opening of Priestly" (Ans. 10). However, claim 1 requires the wall of the air conduit to be provided with the secondary air inlet. Koskela does not disclose that the slot is provided in partition wall 19. As such, the Examiner has not shown that modifying the "opening" between the opening 16 and Appeal 2010-008219 Application 10/481,621 7 partition wall 19 would result in Koskela's inhaler including the claimed secondary air inlet provided in the wall of the air conduit. In view of the above, we determine that the Examiner did not articulate an adequate reason with a rational underpinning as to why one of ordinary skill in the art would have modified Koskela in view of Priestly to result in the claimed inhaler. Therefore, we do not sustain the rejection of claim 1, and claims 2, 5, and 8-10, under 35 U.S.C. Â§ 103(a). DECISION The rejection of claims 1, 2, 5, and 8-10 under 35 U.S.C. Â§ 112, second paragraph, is AFFIRMED, and under 35 U.S.C. Â§ 103(a) is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED mls