Ex Parte Woolston et al

Patent Trial and Appeal BoardJan 14, 2013

10315165 (P.T.A.B. Jan. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROBERT WOOLSTON, SHANE ALISTAIR DAY, CHRISTOPHER NIGEL LANGLEY, and ROBERT FREDERICK VEASEY ____________________ Appeal 2011-000638 Application 10/315,165 Technology Center 3700 ____________________ Before: MICHAEL C. ASTORINO, LYNNE H. BROWNE, and SCOTT A. DANIELS, Administrative Patent Judges. DANIELS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000638 Application 10/315,165 2 STATEMENT OF CASE Robert Woolston, Shane A. Day, Christopher N. Langley, and Robert F. Veasey (Appellants) appeal under 35 U.S.C. § 134 from a rejection of claims 1, 2, 5-11 and 13. Claims 3, 4, 12, 14 and 15 are canceled. An oral hearing was held on January 7, 2013. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION The invention is directed to a medicament injection and timing device for delivering a desired dose of medication through a needle to a patient and measuring the time elapsed following an injection operation. See Spec. 1, ll. 11-25. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A medicament injection device suitable for the self- administration of a medicament, the device comprising: a sounder, wherein upon completion of an injection stroke, a predetermined period of time is allowed to lapse during which medicament is permitted to disperse, and wherein the sounder generates an audible signal indicating to the user when to remove the needle from the body after said dispersion of an injected medicament; a drive means; and a timer having a control means, wherein the timer measures the predetermined period from completion of operation of the drive means and the control means resets the timer upon completion of the predetermined period to measure a time elapsed following the injection operation. Appeal 2011-000638 Application 10/315,165 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Steck Jensen US 6,620,133 B1 WO 97/30742 Sep. 16, 2003 Aug. 28, 1997 REJECTION The Examiner made the following rejection: Claims 1, 2, 5-11 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Steck as modified by Jensen. Ans. 4. ANALYSIS The Examiner found that Steck discloses all the elements of claim 1 with the exception “of the control means resetting the timer upon completion of the predetermined period to measure a time elapsed following the injection operation.” Ans. 4. The Examiner turned to Jensen and determined that it was known in the art to reset the time following an initial predetermined time period in order “to measure a time elapsed following the injection operation and to display this information on the device.” Id. The Examiner found that it would have been obvious to one of skill in the art to modify Steck’s device with the teachings of Jensen “since such a modification would provide the user with information regarding how much time has passed between injections.” Id. Appellants argue that the Examiner’s findings misinterpret Jensen because Jenson does not reset the timer following completion of a predetermined time period as required by claim 1. App. Br. 8. Appellants assert that while Jenson switches on a timer, or stopwatch, “Jensen's Appeal 2011-000638 Application 10/315,165 4 stopwatch is never reset by a control means after a predetermined period.” Id. at 9. Emphasis Added. Consequently, Appellants’ position is that the modification of Steck by Jensen does not teach, disclose or render obvious Appellants’ claimed invention. Id. Jensen explains that following the completion of the injection of medication, it is important to provide a visual indication of seconds on an electronic display in order that: [t]his may guide the user to keep the injection needle inserted for some seconds after the button has been pressed home which is desirable to allow the injected liquid to be adopted in the tissue before the needle is drawn out, as the liquid may else leak out through the wound left by the needle so that a dose minor than the intended one is absorbed in the body, and is desirable to allow the full dose to be completely delivered by the syringe. A resting time of 4 to 10 and preferably 6 seconds has been shown to be appropriate. Jensen 2, ll. 26-31. As pointed out by Appellants, Jensen’s display initially indicates the number of seconds that have passed since the completion of the injection and thereafter “Jensen's display changes scale and displays hours.” App. Br. 9. In other words, Jensen merely changes the visually displayed segments from representing seconds to hours. Jensen is clear that after displaying the elapsed seconds by visually representative segments on the display, “all the segments are deactivated and are reactivated one by one for each hour passing after the switch was operated. Jensen 3, ll.13-14. Emphasis Added. The Examiner does not identify, nor do we discern any evidence which indicates that Jensen alters, changes or resets, the stopwatch and the underlying running time period measured by the stopwatch. The Examiner’s finding equating the activation/deactivation of visual display segments with Appeal 2011-000638 Application 10/315,165 5 resetting the stopwatch and time period is in error because the terms “deactivated” and “reactivated” in Jensen’s specification expressly relate to the changing of the visually displayed time scale units (segments) from seconds to hours, not to resetting, activation, or deactivation of a timer. See Jensen 5, ll. 15-19. Since the Examiner’s factual finding is not adequately supported the Examiner’s conclusion of obviousness lacks rational underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. (“rejections on obvious grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) Accordingly, we cannot sustain the rejection of claim 1 as unpatentable over Steck as modified by Jensen. As method claim 11 includes “the medicament injection device according to claim 1”, and where the remaining rejected claims are dependent either directly or indirectly upon independent claims 1 and 11, and no additional findings are presented by the Examiner with regards to these remaining claims, we also cannot sustain the rejection of remaining claims 2, 5-11 and 13 as unpatentable. DECISION For the above reasons, the Examiner’s rejection of claims 1, 2, 5-11 and 13 is REVERSED. REVERSED mls