Ex Parte Fenn et alDownload PDFPatent Trial and Appeal BoardJul 8, 201611720490 (P.T.A.B. Jul. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111720,490 0513012007 32692 7590 07112/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Percy T. Fenn 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. 59700US005 9128 EXAMINER YOUNG, RACHEL T ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 07/12/2016 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PERCY T. FENN, THEODORE A. WINKER, and ERIC W. ADAIR Appeal2014-007188 Application 11/720,490 Technology Center 3700 Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal2014-007188 Application 11/720,490 CLAIMED SUBJECT MATTER The claims are directed to elastomer seals for use in medicinal aerosol devices. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A medicinal aerosol device compnsmg a medicinal composition within a container equipped with a valve wherein the device comprises at least one sealing member comprising a crosslinked perfluorinated elastomer. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Lag ow Kwon Marecki Grootaert Kaulbach Lewis us 4,621,107 us 5,836,299 us 6,006,745 US 6, 794,457 B2 US 2003/0004291 Al US 2004/0126325 Al REJECTIONS Nov. 4, 1986 Nov. 17, 1998 Dec. 28, 1999 Sept. 21, 2004 Jan.2,2003 July 1, 2004 Claims 1-8, 12-16, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Marecki and Lagow. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Marecki, Lagow, and Kaulbach. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Marecki, Lag ow, and Grootaert. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Marecki, Lagow, and Kwon. 2 Appeal2014-007188 Application 11/720,490 Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Marecki, Lagow, and Lewis. OPINION Appellants argue all independent claims together, as well as all dependent claims with the exception of claims 2, 3, and 19. Claims 2, 3, and 19 are also argued together. Thus, claims 4--18 and 20 stand or fall with the analysis of the arguments over claim 1, as no additional substantive arguments are presented. See 37 C.F.R. § 41.37(c)(iv). Similarly, claims 3 and 19 stand or fall with the arguments over claim 2. We affirm the Examiner's rejections of claims 1-20. Claim 1 The Examiner finds that Marecki teaches all of the features of claim 1 (including, inter alia, a medicinal aerosol device comprising elastomeric sealing members), except for the sealing member comprising a crosslinked perfluorinated elastomer. Final Act. 3. Lagow is relied on to teach this feature of claim 1. Id. The Examiner states: Id. Lagow teaches a crosslinked perfluorinated elastomer (see column 12, lines 60-63) and notes that elastomers are useful in sealing applications (see column 1, lines 25-26). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to form the seal of Marecki using a crosslinked perfluorinated elastomer, as taught by Lagow, in order to optimize the seal of the aerosol device having predictable sealing results. 3 Appeal2014-007188 Application 11/720,490 Appellants respond that "the Examiner fails to provide a clear articulation of reasons why the subject matter of Appellants' claims would have been obvious to one skilled in the art from the combined teachings of Marecki and Lagow." Appeal Br. 6. Appeal Br. 6-7. In support of this contention, Appellants argue that the combination does not provide predictable sealing results because when Lagow discusses "sealing applications," it only mentions "elastomers" but does not make specific reference to "crosslinked perfluorinated elastomers." Id. at 6-7. A specific sentence in Lagow tying "sealing applications" and "crosslinked perfluorinated elastomers" is not required. As stated by the Examiner: "Lagow teaches that elastomers provide good seals," thus, "crosslinked perfluorinated elastomers would in tum be beneficial as well at providing a good seal." Answer 8. Thus, the Examiner has established that the simple substitution of one known elastomer for another obtains a predictable result and that the combination of the teachings of Lagow (at least one sealing member comprising a crosslinked perfluorinated elastomer) with the medicinal aerosol device of Marecki yields a predictable result. Based on the current record, Appellants have not shown otherwise. Appellants also argue that a predictable result cannot be obtained as "[ n ]othing in the cited excerpt of Lagow teaches that crosslinked perfluorinated elastomers would 'optimize the seal' of the aerosol device of Marecki." Appeal Br. 7. Appellants have not shown why this additional step is required. MPEP § 2141 (III) cited by Appellants to emphasize the importance of predictability offers non-exclusive rationales to support a conclusion of obviousness to combine two or more references. Id. at 5---6. As shown above, the Examiner has satisfied her burden to show that the 4 Appeal2014-007188 Application 11/720,490 combination yields predictable results which supports the underlying determination of obviousness. Appellants further argue that "a person of ordinary skill in the art seeking to seal a canister filled with a highly fluorinated propellant (e.g., HFA-134a or HFA-227) at the time the invention was made would avoid fluorinated elastomers-including perfluorinated elastomers-in order to avoid problems of excessive swelling." Appeal Br. 8. This argument is addressed in more detail with regard to claim 2 as it does not apply to claim 1. As best stated by Appellants: "[m]any, but not all, aerosol medicines use fluorinated propellants" and "Appellants' independent claims [] do not specify the propellant." Id. As the type of propellant is not specified in claim 1 these arguments simply do not apply. For these reasons, we sustain the Examiner's decision rejecting independent claim 1. As noted above, claims 4--18 and 20 stand or fall with claim 1. Therefore, we likewise sustain the rejections of claims 4--18 and 20. Claim 2 Claim 2 depends from claim 1 and adds that "the medicinal composition comprises a hydrofluoroalkane propellant." The use of hydrofluoroalkane propellants in medicinal aerosol devices is taught by Marecki, as pointed out by the Examiner. Final Act. 3 (citing Marecki, col. 2, 11. 33-37). Appellants do not dispute this point, but reiterate their arguments mentioned above concerning the type of propellant. Specifically, Appellants state: "a person of ordinary skill in the art would have expected that the use 5 Appeal2014-007188 Application 11/720,490 of a highly fluorinated propellant in a medicinal formulation would cause excessive swelling in seals constructed from a fluorinated elastomer." Appeal Br. 11. Appellants rely on their Specification for support. Id. Appellants' Specification states: "conventional fluoroelastomers ... , which are not perfluorinated, can have excessive swelling in HFA propellants." Spec. 2, 11. 9-11. The Examiner correctly disagrees: "this argument is not taken well because Lagow specifically discusses that a highly crosslinked elastomer will not swell as much as a lightly crosslinked elastomer (Col. 16, 11. 48-50) and thus Lagow does contemplate swellability and teaches the ability to modify perfluorinated elastomeric swellability properties." Answer 9. Appellants dispute this stating that "[n]othing in Lagow overcomes this bias against using a fluorinated polymer in a medicinal aerosol device." Reply Br. 2. But Appellants' only evidence in support is the single sentence in Appellants' Specification mentioned above. This sentence from Appellants' Specification does not support the concept of a "bias" in the industry against using all "fluoroelastomers" with "HF A propellants." At most the statement "can have excessive swelling" shows only a potential issue. 1 Therefore, we sustain the Examiner's decision rejecting claim 2. As noted above, claims 3 and 19 stand or fall with claim 2. Therefore, we likewise sustain the rejections of claims 3 and 19. 1 For the same reasons, we are not persuaded of error by the Examiner to the extent Appellants may be suggesting that one of ordinary skill in the art would have avoided fluorinated elastomers in order to avoid problems with excessive swelling, even if using non-fluorinated propellants. See Appeal Br. 9. 6 Appeal2014-007188 Application 11/720,490 DECISION The Examiner's rejection of claims 1-20 is affirmed. 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)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation