Ex Parte Desset-Brethes et al

Patent Trial and Appeal Board

Dec 21, 2018

14399991 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/399,991 11/10/2014 Sabine Desset-Brethes
1095 7590 12/26/2018
NOVARTIS PHARMACEUTICAL CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
ONE HEAL TH PLAZA 433/2
EAST HANOVER, NJ 07936-1080
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.
PAT055124-US-PCT 2856
EXAMINER
OJOFEITIMI, A YODEJI T
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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 SABINE DESSET-BRETHES, REGIS FRELON,
STEP AN HIRSCH, HANS JENSEN, ESBEN JOHANSEN,
PETER MATHIASEN, and JAN OLESEN
Appeal2018-005079
Application 14/399,991 1
Technology Center 3600
Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
LISA M. GUIJT, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sabine Desset-Brethes et al. ("Appellants") seek review under 35
U.S.C. § 134(a) of the Examiner's decision rejecting claims 1, 2, 4, 6-8, and
10-17.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Novartis AG is identified as the real party in interest. Appeal Br. 3.
2 Claims 3, 5, and 9 have been cancelled. Id. at 5.
Appeal2018-005079
Application 14/399,991
reads:
CLAIMED SUBJECT MATTER
Claims 1 and 1 7 are independent claims. Claim 1 is illustrative, and
1. A dispensing device for metering and dispensing a
predetermined number of multiparticulates from a container, the
dispensing device comprising a chamber, the chamber including
an inlet through which multiparticulates can enter the chamber,
an overflow through which multiparticulates can leave the
chamber and return to the container and an outlet through which
multiparticulates can be dispensed from the chamber, the
chamber comprising a metering surface, the metering surface
comprising a plurality of cavities therein forming a plurality of
retaining portions, each retaining portion configured and
dimensioned to retain a single multiparticulate, each retaining
portion configured to be able to releasably retain a single
multiparticulate, the device further characterized in that the inlet
and the overflow comprise separate openings into the chamber,
wherein the inlet includes an inlet wall that extends into the
chamber to hinder multiparticulates from returning to the
container through the inlet and wherein the overflow includes an
overflow tube that extends, in use, into the container and that
hinders multiparticulates entering the chamber via the overflow.
Appeal Br. 21 (Claims App.).
REJECTIONS
The Final Office Action includes the following rejections under 35
U.S.C. § I03(a):
Claims 1, 2, 4, 8, 11, 12, and 15-17 are rejected as unpatentable over
Daniello (US 5,601,213, issued Feb. 11, 1997), Lykes (US 4,526,305, issued
July 2, 1985), and Robinson (US 5,873,493, issued Feb. 23, 1999).
Claims 6, 7, 10, and 14 are rejected as unpatentable over Daniello,
Lykes, Robinson, and Coe (US 2006/0124658 Al, published June 15, 2006).
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Application 14/399,991
Claim 13 is rejected as unpatentable over Daniello, Lykes, Robinson,
and Weinstein (US 4,971,203, issued Nov. 20, 1990).
ANALYSIS
Claims 1, 2, 4, 8, 11, 12, and 15-17 over Daniello, Lykes, and Robinson
Claims 1, 2, 4, 8, 11, 12, 15, and 16
Claim 1 recites, in relevant part, "the chamber comprising a metering
surface, the metering surface comprising a plurality of cavities therein
forming a plurality of retaining portions, each retaining portion configured
and dimensioned to retain a single multiparticulate, each retaining portion
configured to be able to releasably retain a single multiparticulate." Appeal
Br. 21 (Claims App. (emphasis added)) (hereinafter, "metering surface
limitation").
The Examiner finds that Daniello discloses a dispensing device
comprising the metering surface limitation. Final Act. 3--4. Particularly, the
Examiner finds that Daniello discloses a dispensing device ( central body 12,
circular cover 16) comprising a chamber (first chambers 42, 44, 46; second
chambers 48, 50) comprising an inlet ( openings of first chambers 42, 44), an
outlet ( cover opening 3 6), and a metering surface ( surface of perforated
panel 70 above chamber 48). Id. at 3 ( citing Daniello, Fig. 5). As to the
limitation, "each retaining portion configured to be able to releasably retain
a single multiparticulate," the Examiner determines that, in Daniello, during
dispensing the depressions of perforated panel 70 are able to temporarily
retain multiparticulates to be dispensed through the outlet ( cover opening
36). Id. at 3--4 (citing Daniello, Fig. 2). The Examiner submits, "depending
upon the size of dispensed multiparticulate, when dispensed, it can be
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Application 14/399,991
retained within the cavities of [perforated panel] 70; a claim that only further
limits the material handled by the apparatus does not determine
patentability." Id. at 4 (citing MPEP §§ 2114, 2115).
Appellants contend that Daniello fails to disclose the metering surface
limitation. Appeal Br. 10-11. Appellants contend that Daniello does not
teach metering and dispensing a predetermined number of anything. Id. at
11. Appellants assert that Daniello does not teach "any form of metering
surface having discrete cavities for retaining a discrete number of solid
forms, and in particular for counting and dispensing a discrete
predetermined number thereof" Id. ( emphasis added).
Appellants contend that Examiner appears to make an unsupported
assumption that a through-hole as disclosed in Daniello is structurally
identical to a claimed "cavity." Appeal Br. 13. Appellants assert that
"cavities" "by definition [are] bounded on all sides but one," and they "hold
and quantify a discrete number of individual solid particles (whether they are
considered multi-particulates or solid dosage forms)." Reply Br. 5. In
contrast, Appellants assert, the pores in perforated panel 70 of Daniello
"function exactly like those of a salt shaker, and merely permit the passage
of a small volume of multi-particulates ( spice granules), but do not retain or
quantify the multi-particulates." Id.
The Examiner maintains that Daniello discloses a metering surface
having cavities for retaining a single multiparticulate. Ans. 3. According to
the Examiner, the cavities in Daniello's perforated panel 70 are identical to
those disclosed by Appellants in Figure 7. Id. Thus, the Examiner submits,
"depending upon the size and shape of the granulated material (granulated
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Application 14/399,991
also means particulate), the metering surface with the discrete cavities [in
Daniello] functions in an identical manner to ... [Appellants']." Id.
Accordingly, Appellants and the Examiner disagree about the
meaning of the claim term "cavities." During examination of a patent
application, claims are to be given their broadest reasonable interpretation
consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). The broadest reasonable interpretation in view
of the specification is "an interpretation that corresponds with what and how
the inventor describes his invention in the specification, i.e., an
interpretation that is 'consistent with the specification."' In re Smith Intl.,
Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017).
The Specification describes the term "cavity" in the following
passage:
Retaining portions can be achieved in a number of ways, for
example a depression or cavity in the metering surface sized and
configured to accept the predetermined number of
multiparticulates. A bottom of such a cavity may be coloured to
assist in visual checking to verify that the correct number of
multiparticulates have been retained. It should be understood
that the depression or cavity could be formed in many different
ways, for example a hole through a first layer which is closed
with a backing layer. The cavity or depression could take any
suitable form, for example round or square cross section and may
be tapered towards the open end or away from the open end.
Spec. 4, 11. 15-24 ( emphasis added). And, the drawings, for example, Figure
2, depict retaining portions 32 that have an open end and a bottom. The
Specification describes retaining portions 32 as "depressions in the metering
surface." See id. at 11, 11. 20-22. The depicted retaining portions 32 are
bounded on all sides except the open end. Accordingly, Appellants'
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definition of a "cavity" as being "bounded on all sides but one" (Reply Br.
5) is consistent with the Specification and Figure 2.
Figure 2 of Daniello shows that perforated panel 70 includes
perforations. As shown in Figure 5 of Daniello, the perforations extend
completely through perforated panel 70. That is, the perforations are open at
both their bottom and top ends. Daniello describes, "one chamber 48
including a perforated panel 70 at the first end 24 of the central body 12, to
provide for the continuous flow of material from an attached container C by
shaking the container C, in the manner of a salt or pepper shaker or the like."
See Daniello, col. 6, 11. 28-32 (emphasis added; boldface omitted).
Accordingly, the perforations have open bottom and top ends to provide for
continuous flow of material from container C through perforated panel 70,
for dispensing the material through cover opening 36.
As to the Examiner's assertion that the cavities disclosed by
Appellants have the same structure as the perforations in Daniello' s
perforated panel 70 (Ans. 3, referencing Appellants' Fig. 7), first, we are
unable to find any description in Appellants' Specification that retaining
portions 32 shown in Figure 7 are through holes having open bottom and top
ends, like the perforations shown in Daniello's perforated panel 70. Second,
Appellants do not contend, and the Examiner does establish, that claim 1 is
limited to the embodiment shown in Figure 7. Third, we agree with
Appellants' definition of a "cavity" as being "bounded on all sides but one."
Accordingly, the Examiner's finding that Daniello discloses the
"metering surface limitation" is based on an improper construction of the
term "cavities." The Examiner's reliance on Lykes and Robinson fails to
cure the deficiencies of Daniello as to claim 1. Final Act. 4--5. Thus, we do
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not sustain the rejection of claim 1, or of claims 2, 4, 8, 11, 12, 15, and 16
depending therefrom, as unpatentable over Daniello, Lykes, and Robinson.
Claim 17
Claim 1 7 is directed to a dispensing device comprising, among other
things, "a metering surface formed about said lower wall, the metering
surface comprising a plurality of cavities therein, each cavity configured and
dimensioned to releasably retain a single multiparticulate of having a
maximum size dimension of between 1 and six mm." Appeal Br. 23-24
( emphasis added). The Examiner finds that Daniello discloses each of these
limitations except the recited maximum size dimension. Final Act. 6. The
Examiner determines that the maximum size dimension "is generally
recognized as being within the level of ordinary skill in the art." Id.
For the reasons discussed above for the rejection of claim 1, the
Examiner's finding that Daniello discloses the metering surface limitations
in claim 17 quoted above is likewise based on an improper construction of
the term "cavities." The Examiner's reliance on Lykes and Robinson fails to
cure the deficiencies of Daniello as to claim 17. Final Act. 4--5. Thus, we
do not sustain the rejection of claim 17 as unpatentable over Daniello,
Lykes, and Robinson.
Claims 6, 7, 10, and 14 over Daniello, Lykes, Robinson, and Coe
In rejecting claims 6, 7, 10, and 14, which depend directly or
ultimately from claim 1, the Examiner relies on Coe for disclosing a
dispensing device including a movable baffle. Final Act. 8-9. The
Examiner's reliance on Coe fails to cure the deficiencies of Daniello, Lykes,
and Robinson as to claim 1. Thus, we do not sustain the rejection of claims
6, 7, 10, and 14 as unpatentable over Daniello, Lykes, Robinson, and Coe.
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Claim 13 over Daniello, Lykes, Robinson, and Weinstein
In rejecting claim 13, which depends ultimately from claim 1, the
Examiner relies on Weinstein for disclosing a medicament storage device
including a child resistant cap. Final Act. 9-10. The Examiner's reliance on
Weinstein fails to cure the deficiencies of Daniello, Lykes, and Robinson as
to claim 1. Thus, we do not sustain the rejection of claim 13 as unpatentable
over Daniello, Lykes, Robinson, and Weinstein.
DECISION
We reverse the rejections of claims 1, 2, 4, 6-8, and 10-17.
REVERSED
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