Ex Parte Shemesh

Patent Trial and Appeal BoardApr 5, 2016

12706044 (P.T.A.B. Apr. 5, 2016)

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. 12/706,044 02/16/2010 Eli Shemesh 1587TEV-US 9907 7590 04/06/2016 David Klein DEKEL PATENT LTD. Beit HaRof'im 18 Menuha VeNahala Street, Room 27 REHOVOT, ISRAEL EXAMINER TREYGER, ILYA Y ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 04/06/2016 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 ELI SHEMESH __________ Appeal 2014-004531 Application 12/706,044 Technology Center 3700 __________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JACQUELINE T. HARLOW, Administrative Patent Judges. PER CURIAM DECISION ON APPEAL1 This Appeal under 35 U.S.C. § 134(a) involves claims 1–6 (App. Br. 2. Examiner entered rejections under 35 U.S.C. §103(a). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies the Real Party in Interest as Teva Medical Ltd. (see App. Br. 1). Appeal 2014-004531 Application 12/706,044 2 STATEMENT OF THE CASE Appellant’s “invention relates to drug mixing systems generally, and particularly to a vial adapter assembly for use with a drug mixing system, which has a double membrane that allows free passage of air into the main body of the vial adapter, but prevents passage therethrough of liquid and air- borne particles, microorganisms and aerosol” (Spec. 1:3–6). Independent claim 1 is representative and reproduced in the Claims Appendix of Appellant’s Appeal Brief. Claims 1–5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kraus.2 Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Kraus and LeMahieu.3 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? 2 Kraus et al., US 2007/0079894 A1, published Apr. 12, 2007. 3 LeMahieu et al., US 2008/0066739 A1, published Mar. 20, 2008. Appeal 2014-004531 Application 12/706,044 3 FACTUAL FINDINGS (FF) FF 1. Kraus’ Figure 4 is reproduced below: Kraus’ Figure 4 shows an apparatus for drug mixing that is “adapted to support a hydrophobic membrane 336 and prevent it from excessive inflation and from cracking. Membrane 336 is adapted to allow free passage of air into the main body element 302, but to prevent passage therethrough of liquid and air-borne particles, microorganisms and aerosol” (Kraus ¶ 171; see also Ans. 4–5). FF 2. Kraus teaches that [a] rim 338 surrounding support surface 332 is adapted to support an optional carbon cloth filter 340 and maintain it in a raised position above and spaced from membrane 336. Carbon cloth filter 340 is adapted to prevent toxic vapors from escaping from main body element 302, thus protecting users. A preferred carbon cloth filter 340 is Model No. Zorflex EMI, which is commercially available from Charcoal Cloth International Ltd. of Houghton-le-Spring, England. (Kraus ¶ 172; see also Ans. 4–5, App. Br. 6–7.) Appeal 2014-004531 Application 12/706,044 4 FF 3. Kraus teaches that a user injects the fluid contained in [a syringe into a vial] via a bore 350 of neck portion 344 and vial puncturing spike 322 by inwardly pushing [a plunger of the syringe]. A corresponding volume of air escapes from [the vial] via membrane 336 and optional carbon cloth filter 340. It is appreciated that any drug containing aerosol is blocked by the membrane and any non- aerosolized drug vapor is adsorbed by the charcoal filter, thus protecting users and the environment from contamination. (Kraus ¶ 252; see also Ans. 4–5, App. Br. 7.) ANALYSIS Obviousness over Kraus: Appellant’s independent claim 1 requires, inter alia, “wherein said first and second membranes are hydrophobic” (see Appellant’s claim 1). Claims 2–5 depend directly from claim 1. We recognize, but are not persuaded by, Examiner’s assertion that Zitzelsberger4 evidences that activated charcoal is a hydrophobic adsorbent and, therefore, Kraus’ charcoal cloth is also hydrophobic (Ans. 7; citing Zitzelsberger 4:41). Examiner failed to establish an evidentiary basis on this record to support a conclusion that all charcoal cloths are hydrophobic, because activated charcoal is a hydrophobic adsorbent. In this regard, we recognize Appellants’ contention, referencing the statements of Mr. Reynolds, an Inside Sales Engineer at Zorflex, the manufacture of Kraus’ charcoal cloth, that while the company may provide a treatment to render the 4 Zitzelsberger et al., US 5,645,725, issued July 8, 1997. Appeal 2014-004531 Application 12/706,044 5 Zorflex charcoal cloth hydrophobic, the untreated charcoal cloth is not water repellant (Reply Br. 4–65). Moreover, Kraus teaches that its drug mixing apparatus already has a separate hydrophobic membrane next to a carbon or charcoal cloth filter but does not teach that the carbon or charcoal cloth is hydrophobic (FF 1–3). Even if some forms of charcoal cloth, which fall within the genus of charcoal cloth disclosed by Kraus, are hydrophobic, Examiner failed to establish an evidentiary basis on this record to support a conclusion that Kraus suggests selecting a hydrophobic charcoal cloth from the genus disclosed by Kraus for use as a second hydrophobic membrane, as is required by Appellants’ claimed invention. Accordingly, the preponderance of evidence on this record fails to support Examiner’s conclusion that Kraus renders Appellant’s claims 1–5 obvious. The combination of Kraus and LeMahieu: Based on the combination of Kraus and LeMahieu, Examiner concludes that, at the time Appellant’s invention was made, it would have been obvious “to supply the apparatus of Kraus with the carbon filter, as taught by LeMahieu in order to avoid escaping of toxic elements, as motivated by LeMahieu” (Ans. 6). Examiner, however, failed to establish that LeMahieu, makes up for the deficiency in Kraus as discussed above. 5 The Reply Brief is not properly paginated. Therefore, all references to page numbers in the Reply Brief refer to page numbers as if the Reply Brief was numbered consecutively beginning with the first page. Appeal 2014-004531 Application 12/706,044 6 CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 1–5 under 35 U.S.C. § 103(a) as unpatentable over Kraus is reversed. The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Kraus and LeMahieu is reversed. REVERSED