Ex Parte Belcastro et al

Patent Trial and Appeal Board

May 29, 2014

12002773 (P.T.A.B. May. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARC D. BELCASTRO and JEFFREY A. SWEPSTON
____________

Appeal 2012-004593
Application 12/002,773
Technology Center 3700
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Before STEFAN STAICOVICI, JILL D. HILL and
THOMAS F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Marc D. Belcastro and Jeffrey A. Swepston (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1, 2 and
4-23, the only claims pending on appeal. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

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CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced below.
1. An aerosol generator in the form of a capillary tube, the
capillary tube comprising at least one bend, fluid inlets, regions
of reduced wall thickness located between the fluid inlets and
the bend, and an outlet along the bend, wherein volatilized fluid
discharges from the outlet to form an aerosol, and wherein the
fluid inlets are located at ends of the capillary tube.

REJECTIONS ON APPEAL
The following Examiner’s rejections are before us for review:
1. Claims 1, 2, 4, 6 and 10-22 were rejected under 35 U.S.C. §
103(a) over Nichols (US 6,568,390 B2, iss. May 27, 2003),
Baran (US 2004/0084050 A1, pub. May 6, 2004) and Zhu (US
5,400,665, iss. Mar. 28, 1995).
2. Claim 5 was rejected under 35 U.S.C. § 103(a) over Nichols,
Baran, Zhu and further in view of Fukunaga (US 2004/0194781
A1, pub. Oct. 7, 2004).
3. Claim 7 was rejected under 35 U.S.C. § 103(a) over Nichols,
Baran, Zhu and Pöhler (US 5,706,389, iss. Jan. 6, 1998).
4. Claims 8 and 9 were rejected under 35 U.S.C. § 103(a) over
Nichols, Baran, Zhu and further in view of Byron (US
2004/0016427 A1, pub. Jan. 29, 2004).
5. Claim 23 was rejected under 35 U.S.C. § 103(a) over Baran and
Zhu.

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ANALYSIS
Claims 1, 2, 4, 6 and 10-22 as unpatentable over Nichols, Baran and
Zhu.
Claims 1, 4, 10, 11, 13-15, 17, 18 and 20-22
Appellants argue claims 1, 4, 10, 11, 13-15, 17, 18 and 20-22 as a
group (App. Br. 5-8 and 11-13). We select claim 1 as the representative
claim for this group such that the remaining claims stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants first argue that “none of the references teaches or
suggests a capillary tube comprising at least one bend, fluid inlets,
regions of reduced wall thickness located between the fluid inlets and
the bend and an outlet along the bend, wherein the fluid inlets are
located at ends of the capillary tube.” App. Br. 5. In particular, Appellants
contend that Baran “does not teach or suggest a capillary tube comprising
among other elements, at least one bend, an outlet along the bend, regions of
reduced wall thickness located between the fluid inlets and the bend and
wherein the fluid inlets are located at ends of the capillary tube.” Id. at 7.
The Examiner found that Nichols
discloses an aerosol generator 22 (fig. 2) in the form of a
capillary tube 20/30 (fig. 2), the capillary tube comprising fluid
inlets 20a/30a (fig. 2) (col.5, lines 6 - col. 6, lines 5); a heating
mechanism 21 (fig. 1) which heats the capillary tube to a
temperature sufficient to volatilize fluid in the capillary tube
(col. 4, lines 40-60); and wherein the fluid inlets 20a/30a (fig.
2) are located at ends of the capillary tube 20/30 (fig. 2) (col. 2,
lines 25-27).
Ans. 5.

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While the Examiner acknowledged at page 6 of the Answer that
Nichols didn’t disclose “at least one bend; regions of reduced wall thickness
located between the fluid inlets and the bend, and an outlet along the bend,
wherein volatilized fluid discharges from the outlet to form an aerosol,” the
Examiner found that Baran “teaches at least one bend 363 (fig. 23) (para.
0138) . . . and an outlet . . . 367 (fig. 23) along the bend, wherein volatilized
fluid discharges from the outlet to form an aerosol.” Id. at 12.
Appellants also argue that
nothing in Zhu directs a person of ordinary skill to produce a
capillary tube having regions of reduced wall thickness located
between the fluid inlets and the bend to increase[] the amount
of heat energy transferred from the capillary tube to the fluid
and [reduce] the amount of energy needed to raise the
temperature of the capillary tube.
App. Br. 8.
However this argument is misplaced as Appellants are arguing
the references individually when the rejection is directed to a
combination. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one
cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of
references”) (citation omitted).
Thus the Examiner has cited Nichols for disclosing capillary
tubes, while Zhu is cited for teaching “regions of reduced wall
thickness (see figure 15, where ends of the enclosed filter tube (8) are
smaller than the coil section).” Ans. 12-13. The Examiner had also
pointed out in the Final Rejection that Zhu “further teaches such a
configuration [of wall thickness] provides a means to maintain a

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certain range of temperature during the evaporation process (col. 27,
lines 55-57).” Id. at 7.
Furthermore Appellants’ argument is not commensurate with
the scope of claim 1 which is not limited to a capillary tube having
regions of reduced wall thickness “to increase[] the amount of heat
energy transferred from the capillary tube to the fluid and [reduce] the
amount of energy needed to raise the temperature of the capillary
tube.”
Appellants also contend for the first time at page 6 of the Reply
Brief that “none of the prior art references teaches or suggests a
capillary tube comprising at least one bend and an outlet along the
bend as recited in Claims 1, 11 . . . .” However, we agree with the
Examiner that “Figure 23 of Baran shows disconnected tubular
extensions 360/363 with the distal orifices 364/367, respectively, a
long [sic] the bend as seen in figure 23.” Ans. 17.
Appellants raise a hindsight argument for the first time at page
2 of the Reply Brief, asserting that “the rejections are based on
impermissible hindsight using the claims as a template and picking
and choosing prior art to meet the claims.” Appellants’ argument
regarding hindsight is conclusory and therefore not persuasive,
particularly given that “any obviousness inquiry necessarily involves
some hindsight.” Radix Corp. v. Samuels, 13 USPQ2d 1689, 1693
(D.D.C. 1989).

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Claim 2
While acknowledging that “Nichols discloses that ‘the electrical
resistance of the connection between the capillary tube tips is
controlled by geometry and material selection to regulate exit
temperature,’” Appellants contend for the first time in the Reply Brief
that “Nichols, however, does not teach or suggest a reduced wall
thickness.” Reply Br. 8. Here again, Appellants are arguing the
references individually, when the rejection is directed to a
combination. Keller, 642 F.2d at 426 (“one cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references”) (citation
omitted). As the Examiner found in rejecting claim 1, Zhu “teaches
regions of reduced wall thickness (see figure 15, where ends of the
enclosed filter tube (8) are smaller than the coil section).” Ans. 12-13.
Claim 12
Appellants also argue for the first time in the Reply Brief at
page 7 that Zhu “does not teach or suggest a tube of electrically
resistive material as recited in claim 12.” Here again, Appellants are
arguing the references individually, when the rejection is directed to a
combination. Keller, 642 F.2d at 426. As the Examiner found in
rejecting claim 1, it is Nichols who teaches a tube of electrically
resistive heating material. Ans. 5.
Again arguing for the first time in the Reply Brief at page 9,
Appellants contend that
Nichols, however, does not teach or suggest replacing the tubes
20, 30 with outlets 20b, 30b and electrical connection 54 with a

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single capillary tube having a bend therein and an outlet along
the bend wherein the bent tube is made of electrically resistive
heating material with leads arranged such that the current
passes along the bend as recited in Claim 12.
Here again, Appellants are arguing the references individually,
when the rejection is directed to a combination. Keller, 642 F.2d at
426. As the Examiner found in rejecting claim 1, Baran and Zhu are
combined for disclosing the limitations not disclosed by Nichols.
Ans. 6-7. Appellants have not persuasively argued that the
Examiner’s finding regarding the teachings of Baran and Zhu are
erroneous.
Claim 16
In the Appeal Brief at page 12, Appellants made no specific
argument in response to the rejection of claim 16, relying on the
reasons asserted for the patentability of claim 15 that we previously
rejected in sustaining the rejection of claim 1. Appellants now argue
for the first time in the Reply Brief at page 9 that claim 16 is
patentable over the combination of Nichols, Baran and Zhu because
“Nichols includes two outlets rather than a single outlet, which is
equidistant from the inlets as recited in Claim 16.” However, we
agree with the Examiner that Nichols “discloses wherein the outlet
20b/30b (fig. 2) is equidistant from the first 20a (fig. 2) and second
30a (fig. 2) fluid inlets (See figure 2, the outlet is equidistant from the
inlets).” Ans. 5.
Claim 19
Appellants acknowledge that Nichols discloses that “while the
purpose of the dual capillary tube aerosol generator [of Nichols] is to

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at least partially vaporize fluid, ‘other liquids such as fuel’ can also be
vaporized (see col. 3, lines 1-5).” Rep. Br. 10. However, for the first
time in the Reply Brief (id.), Appellants assert “the Examiner’s
contention that Nichols teaches or suggests a liquid and a gas is in
error.”
At page 6 of the Answer, the Examiner found that
Nichols
discloses wherein a liquid is supplied to the first
fluid inlet and a gas is supplied to the second fluid inlet
(col. 1, lines 47-54; col. 4, lines 61 - col. 5, lines 10)”.
Nichols also discloses that inhalers containing
compressed propellants such as compressed gas for
entraining a medicament are often operated by depressing
a button to release a short charge of the compressed
propellant. The propellant entrains the medicament as the
propellant flows over a reservoir of the medicament so
that the propellant and the medicament can be inhaled by
the user.
Col. 1, ll. 48-54.

We find that the Examiner has the better argument and sustain the
Examiner’s rejection of claim 19 as being obvious over Nichols, Baran and
Zhu.
Claim 6
While reincorporating the prior arguments for patentability of claim 1
in asserting the patentability of claim 6 at pages 9-10 of the Appeal Brief,
Appellants further contend that “rather than the source of liquid being in
fluid communication with the fluid inlets (i.e., both inlets of a capillary tube)
as recited in Claim 6, the source of fluid in Nichols is in fluid
communication with only one inlet of each capillary tube (i.e., inlet 20a and

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30a).” However, we agree with the Examiner that Nichols “discloses a
source of liquid 60 (fig. 2) in fluid communication with the fluid inlets
20a/30a (fig. 2) (col. 5, lines 62-63).” Ans. 15. Thus Nichols teaches “a
source of liquid in fluid communication with the fluid inlets” as recited by
claim 6.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1, 2, 4, 6 and 10-22 as being obvious over the combination of
Nichols, Baran and Zhu.
Claim 5 as unpatentable over Nichols, Baran, Zhu and Fukunaga.
Appellants made no specific argument in response to this rejection in
the Appeal Brief, including failing to rebut the Examiner’s reliance on
Fukunaga. However, for the first time at page 5 of the Reply Brief, and
without identifying claim 5, Appellants observe that “Fukunaga does not
teach or suggest a capillary tube.” Here again, Appellants are arguing the
references individually, when the rejection is directed to a combination.
Keller, 642 F.2d at 426 (“one cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references”) (citation omitted). As the Examiner found in
rejecting claim 1, it is Nichols that teaches capillary tubes. Ans. 5.
We agree with the Examiner’s fact finding.
For the foregoing reasons, we sustain the Examiner’s rejection of
dependent claim 5 as being unpatentable over the combined teachings of
Nichols, Baran, Zhu and Fukunaga, for the same reasons stated above with
respect to independent claim 1.

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Claim 7 as unpatentable over Nichols, Baran, Zhu and Pöhler.
Appellants have made no specific argument in response to this
rejection, including failing to rebut the Examiner’s reliance on Pöhler. Thus,
we sustain the Examiner’s rejection of dependent claim 7 as being
unpatentable over the combined teachings of Nichols, Baran, Zhu and
Pöhler, for the same reasons stated above with respect to independent claim
1.
Claims 8 and 9 as unpatentable over Nichols, Baran, Zhu and Byron.
Appellants have made no specific argument in response to this
rejection, including failing to rebut the Examiner’s reliance on Bryon. Thus,
we sustain the Examiner’s rejection of dependent claims 8 and 9 as being
unpatentable over the combined teachings of Nichols, Baran, Zhu and
Byron, for the same reasons stated above with respect to independent claim
1.
Claim 23 as unpatentable over Baran and Zhu.
Appellants argue that Baran “does not teach or suggest a capillary
tube comprising . . . one single bend, a single, common outlet along the
bend, and wherein the fluid inlets are located at ends of the capillary tube.
Rather, . . . as shown in Fig. 23 of Baran, the outlets are located at the ends
of each capillary tube, rather than along the bend as recited in Claim 23,”
and that Zhu “does not teach or suggest regions of reduced wall thickness
located between the fluid inlets and the bend. Instead, as shown in FIG. 15,
the region of reduced wall thickness is at outlet port 8(b).” App. Br. 15.
We agree with the Examiner that “Figure 23 of Baran shows
disconnected tubular extensions 360/363 with the distal orifices 364/367,

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respectively, a long [sic] the bend as seen in figure 23” and that Zhu
“teaches regions of reduced wall thickness (see figure 15, where ends of the
enclosed filter tube (8) are smaller than the coil section).” Ans. 17. Thus,
we also agree with the Examiner that “the combination of Baran in view of
Zhu et al. fully meets all of the claimed limitations.” Id.
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 23 as being obvious over Baran and Zhu.

DECISION
We AFFIRM each of the Examiner’s rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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