Ex Parte Burr et al

Patent Trial and Appeal Board

Jun 22, 2018

10298177 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/298,177 11/14/2002
1095 7590 06/26/2018
NOVARTIS PHARMACEUTICAL CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
ONE HEAL TH PLAZA 433/2
EAST HANOVER, NJ 07936-1080
John D. Burr
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P AT053292-US-CNT 2311
EXAMINER
MENDOZA, MICHAEL G
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/26/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
phip.patents@novartis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN D. BURR, JEFF R. WOOD, ADRIANE. SMITH,
JOHN A. HOW ARD, and FABRIZIO NICCOLAI
Appeal2016-004124
Application 10/298, 177
Technology Center 3700
Before BIBHU R. MOHANTY, MEREDITH C. PETRA VICK, and JAMES
A. TARTAL, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3, 5-8, 14-22, 28, 30, 31, 33-35 and 37-50 which are
all the claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
Appeal2016-004124
Application 10/298, 177
THE INVENTION
The Appellants' claimed invention is directed to an aerosolization
apparatus (Spec. 3). Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. An aerosolization apparatus comprising:
a body having an inlet;
an endpiece having an outlet, the endpiece being connectable to
the body to define a chamber, wherein the chamber is sized to receive
a capsule containing a pharmaceutical formulation in a manner which
allows the capsule to move within the chamber and wherein the inlet
is shaped to provide a swirling air flow in the chamber;
a connection mechanism comprising engageable threads to
provide selective connection of the endpiece to the body, wherein a
rotational force between the endpiece and the body is needed to
connect and to disconnect the endpiece from the body, the rotational
force being applied about an axis passing through the chamber,
wherein the endpiece may be disconnected from the body to allow for
insertion or removal of the capsule, and wherein the threads extend for
less than two complete turns around the body;
a cap insertable over the endpiece and which covers at least a
portion of the inlet when the endpiece is connected to the body,
wherein the cap is connectable to the body by a press fit arrangement;
and
a puncturing mechanism capable of providing an opening in the
capsule; whereby when a user inhales, air enters into the chamber
through the inlet so that the pharmaceutical formulation is aerosolized
within the chamber and the aerosolized pharmaceutical formulation is
delivered to the user through the outlet.
THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejections:
Cocozza
Valentini
Ohki
us 3,906,950
us 4,995,385
us 5,901,703
2
Sept. 23, 1975
Feb.26, 1991
May 11, 1999
Appeal2016-004124
Application 10/298, 177
Horlin
Edwards
us 6,4 70,884
us 6,766,799
The following rejection is before us for review:
Oct. 29, 2002
July 27, 2004
Claims 1, 3, 5-8, 14-22, 28, 30, 31, 33, 34, 35, and 37-49 1 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Edwards, Ohki, Valentini,
Cocozza, and Horlin.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.
ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the combination of references would not have been obvious (App. Br. 6-10,
Reply Br. 4-8). The Appellants argue that the cited combination of
references uses impermissible hindsight reasoning (App. Br. 9, Reply Br. 7).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Rej. 3-6, Ans. 2-4).
We agree with the Appellants. In combination with the other
elements, the claim requires that the connection mechanism threads "extend
1 The Final Rejection mailed November 19, 2014 does not indicate that claim
50 either is pending or rejected on the PTOL-326 form and at page 3. The
Answer at page 2 also does not list claim 50 as rejected.
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2016-004124
Application 10/298, 177
for less than two complete turns around the body" and further requires a
"press fit arrangement" for the cap.
In order to meet all the limitations of claim 1, the rejection of record
requires the combination of five references in Edwards, Ohki, Valentini,
Cocozza, and Horlin. Edwards does disclose an aerosolization device
having a body inlet (130) and endpiece (120). Edwards at column 7, lines
65 and 66, does disclose a "friction fit" between members as well. Ohki
does disclose a rotatable connection about an axis (Figure 2). Valentini does
disclose swirling air flow in a chamber surround a capsule (Figure 1 ).
Cocozza does show threads (39) that extend less than two turns. Horlin does
disclose a cap (2) that covers at least a part of the inlet.
However, in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007) the
Supreme Court at 418 noted that in an obviousness analysis that
"[R ]ejections on obviousness 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".
Here the cited combination of these five references simply lacks
articulated reasoning with rational underpinnings without impermissible
hindsight. For instance, the rejection requires using the cap of Horlin which
is modified to include the specific friction fit of Edwards, as well as further
being modified to have the connection mechanism extend for less than two
thread turns as taught by Cocozza, as well as using the rotatable connection
taught by Ohki, in combination with all other modifications. Here, we
determine that this cited combination simply would not have been obvious
without impermissible hindsight.
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Appeal2016-004124
Application 10/298, 177
For these reasons the rejection of claim 1 and its dependent claims is
sustained. The same rejection using these five references has been applied
to the remaining claims and the rejection of these claims is not sustained as
well.
CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1, 3, 5-8, 14-22, 28, 30, 31, 33, 34, 35, and 37-49 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Edwards, Ohki,
Valentini, Cocozza, and Horlin.
DECISION
The Examiner's rejection of claims 1, 3, 5-8, 14-22, 28, 30, 31, 33, 34,
35, and 37-49 is reversed.
REVERSED
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