Ex Parte PoulardDownload PDFPatent Trial and Appeal BoardFeb 27, 201310577850 (P.T.A.B. Feb. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FABIEN POULARD ____________________ Appeal 2011-002904 Application 10/577,850 Technology Center 3700 ____________________ Before: MICHAEL C. ASTORINO, REMY J. VANOPHEM, and NEIL T. POWELL, Administrative Patent Judges. POWELL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002904 Application 10/577,850 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1, 2, 4, 5, and 7-11. We have jurisdiction under 35 U.S.C. § 6(b). A hearing was held on February, 12, 2013. We AFFIRM-IN-PART. THE CLAIMED SUBJECT MATTER Independent claim 1, reproduced below, is illustrative of the appealed subject matter. 1. Fluid product spraying device comprising a fluid product dispensing pump (10) operating without propellant gas and without active spraying means and a spray head (20) to actuate said pump (10) manually, wherein said device comprises dispensing detection means (30) to detect that a product dose has been dispensed, said detection means (30) being adapted to output a signal to inform the user that a dose of product has actually been dispensed by said pump; and wherein said detection means comprises an expulsion detector adapted to detect the passage of the product in an expulsion channel of the spraying device. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tomaka 6,651,844 B2 Nov. 25, 2003 Rocci 6,138,669 Oct. 31, 2000 Appeal 2011-002904 Application 10/577,850 3 REJECTIONS1 Appellant seeks our review of the following rejections. 1. Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by Tomaka. 2. Claims 2, 4, 5, and 7-11 stand rejected under 35 U.S.C. § 103(a) as obvious over Tomaka and Rocci. 2 ANALYSIS Anticipation Rejection The Examiner finds that the thumb button 40 at the bottom of Tomaka’s counter 30 constitutes “an expulsion detector (40) that outputs a signal to inform the user that a dose has been dispensed through an expulsion channel of the spraying device (column 5, lines 8-12).” Ans. 3. Appellant argues that, contrary to the Examiner’s finding, Tomaka does not meet the claim limitation that “said detection means comprises an expulsion detector adapted to detect the passage of the product in an expulsion channel of the spraying device.” Reply Br. 5-6. In support of this argument, 1 The Final Rejection also rejected claims 1, 2, 4, 5, 7, and 8 under 35 U.S.C. § 112, second paragraph. Fin. Rej. 2. However, the Examiner has entered amendments that Appellants submitted subsequent to the Final Rejection for the purposes of overcoming this rejection, and the Answer does not list the rejection under § 112. See App. Br. 9; Ans. 2-7. Accordingly, we surmise that the Examiner has withdrawn the rejection under § 112. 2 The Final Rejection also rejected claim 1 under 35 U.S.C. § 103(a) as obvious over Tomaka and Rocci. Fin. Rej. 3. However, the Answer entered a new ground of rejection of claim 1 as anticipated by Tomaka, and the Answer omits claim 1 from the obviousness rejections. Accordingly, we surmise that the Examiner has withdrawn the obviousness rejection of claim 1. Ans. 2-4. Appeal 2011-002904 Application 10/577,850 4 Appellant’s correctly note that Tomaka discloses only that its counter 30 detects and indicates to a user when “thumb button 40 has been properly depressed.” Tomaka, col. 5, ll. 8-13; see also Reply Br. 5-6. Accordingly, we cannot sustain the rejection of claim 1 as anticipated by Tomaka. Obviousness Rejection Appellant argues claims 2, 4, 5, and 7-11 as a group. See App. Br. 10- 14. We select claim 2 as representative, and we treat claims 4, 5, and 7-11 as standing or falling with representative claim 2. See 37 C.F.R. § 41.37(c)(1)(vii). The Examiner finds Tomaka discloses a fluid product spraying device comprising a pump and a spray head to manually actuate the pump. Ans. 4. The Examiner also finds that Tomaka includes an electronic device 52 connected to the thumb button 40 for generating a signal indicating to a user that a dose of product has been delivered. Id. The Examiner finds, however, that Tomaka “does not disclose the detection means being provided in the expulsion channel.” Id. The Examiner finds that Rocci discloses a dose counter having a pressure sensor provided in an expulsion channel of a spraying device, the pressure sensor detecting passage of fluid product in the expulsion channel by detecting a pressure change occurring when a dose of fluid product is sprayed. Id. The Examiner concludes that it would have been obvious to modify Tomaka to include a pressure sensor disposed in its expulsion channel as disclosed in Rocci. Id. Citing column 2, lines 44-47 of Rocci, the Examiner determines that a person of ordinary skill in the art would have had reason to do so “in order to provide the advantage of fewer miscounts, as taught by Rocci.” Id. Appeal 2011-002904 Application 10/577,850 5 Appellant argues that the Examiner’s rationale for combining the references does not make sense because “Tomaka already includes a mechanism for ensuring no miscounts.” App. Br. 13. Appellant further states that “[n]owhere in the prior art is there an indication that the mechanism in Tomaka is deficient or inadequate in any way.” Id. In response, the Examiner maintains that modifying Tomaka’s spraying device to include Rocci’s approach for dose-counting would improve the accuracy of the count, noting as an example that the resulting system would not incorrectly count a dose delivery if a user activates the spraying device with an empty medicament reservoir. Ans. 5. Tomaka’s system counts a dose in response to mechanical actuation of a switch when a user presses the thumb button 40. Tomaka, col. 3, l. 58-col. 4, l. 11; col. 4, ll. 21-53; col. 5, ll. 8-16 and 34-45. Column 3, lines 40-47 of Rocci discloses that counting the number of doses delivered based on the mechanical actuation of a switch “is deficient because the requirement for a mechanical actuation of a switch presents the greater possibility of false actuations or failed actuations, thereby providing erroneous readings.” Contrary to Appellant’s arguments, this would have suggested to a person of ordinary skill in the art that Tomaka’s dose-counting system could generate counting errors. And Rocci suggests that its approach of using a pressure sensor in an expulsion channel would reduce such errors by more directly detecting the delivery of doses. Rocci, Abstr.; col. 3, ll. 1-15 and 51-58. Thus, consistent with the Examiner’s finding, Rocci would have suggested to a person of ordinary skill in the art that replacing a switch-actuation system like Tomaka’s with Rocci’s pressure-sensing system could reduce Appeal 2011-002904 Application 10/577,850 6 counting errors. Accordingly, the Examiner has established a prima facie case of obviousness. In addition to the foregoing argument, Appellant argues that it would not have been obvious to combine Tomaka and Rocci in the manner suggested by the Examiner because of differences between manual-pump sprayers like Tomaka’s and MDI (metered dose inhaler) systems like Rocci’s. Appellant argues that it would not appear that Rocci’s pressure- sensing dose counter would work with Tomaka’s manual-pump sprayer. App. Br. 12. And even if the combination would work, Appellant argues, a person of ordinary skill in the art would not have had reason to believe that it would. Reply Br. 8. Appellant derives these arguments from an understanding that “MDI devices contain propellant in a pressurized canister and used with metered dose valve to deliver a burst to dispense medicant, while pump actuated spray devices rely on a vacuum created by the release of an actuation of the main body and nozzle towards one another to dispense product.” Reply Br. 9 (emphasis added). In concert with this, Appellant asserts that “[w]ith a pump device as disclosed in Tomaka, there is no pressure burst like that measured in Rocci.” Reply Br. 8. Although Tomaka’s system uses vacuum to draw a charge of fluid into its pump in preparation for discharging fluid (Tomaka, col. 3, ll. 32-35; col. 1, ll. 26-29), Tomaka’s system discloses that increased fluid pressure occurs when pumping fluid through its expulsion channel (Id. at col. 3, ll. 28-32; col. 1, ll. 22-26). As such, a person of ordinary skill in the art would have recognized that Rocci’s basic principle of sensing a pressure rise to detect fluid passage would lend itself to detecting passage of fluid through Appeal 2011-002904 Application 10/577,850 7 Tomaka’s expulsion channel. Accordingly, Appellant’s argument is not persuasive. Appellant also argues that the specific sensor disclosed by Rocci would not work with Tomaka’s device and/or that a person of ordinary skill in the art would not think that it would. App. Br. 12; Reply Br. 8. Appellant emphasizes that “the sensor of Rocci is specifically designed for a MDI device- that use an aerosol propellant with a metered dose valve to deliver the dose.” App. Br. 12. This argument is also unpersuasive. The rejection indicates that it would have been obvious to a person of ordinary skill in the art to apply Rocci’s dose-counting concept to Tomaka by adding a pressure sensor to Tomaka, but not necessarily Rocci’s specific pressure sensor. And Appellant provides no evidence that a person of ordinary skill in the art would lack the ability to apply Rocci’s concept of pressure-based counting to the pressures that occur in Tomaka’s system. Moreover, contrary to Appellant’s arguments, Rocci does not disclose a sensor designed only for use with MDI technology. Rocci discloses that one embodiment of its counting system uses an NPC-109 sensor (Rocci, col. 5, ll. 19-26), and that “[a]lternative embodiments” could use a sensor specifically tailored for the pressures expected in MDI systems (id. at col. 7, ll. 62-65 (emphasis added)). This indicates that the NPC-109 sensor is not specifically designed for use with MDI. Appellant also argues that a person of ordinary skill in the art would not have modified Tomaka’s system to use Rocci’s pressure-sensing dose counter without also modifying Tomaka to employ an MDI spraying system. App. Br. 12; Reply Br. 9. Aside from erroneously suggesting that a person of ordinary skill in the art would have thought that Rocci’s pressure-sensing Appeal 2011-002904 Application 10/577,850 8 system would only work with and/or is designed specifically for MDI, Appellant has not pointed to any basis for this assertion. While Rocci suggests that its pressure-sensing counting system may solve problems with switch-based counting systems like Tomaka’s, Appellant does not point to any portion of Rocci or Tomaka that suggests any deficiencies with pump- style delivery systems. Accordingly, we cannot agree with Appellant’s contention that a person of ordinary skill in the art modifying Tomaka to improve its counting system based on Rocci’s disclosure would have thought it necessary to simultaneously modify Tomaka’s delivery system. In response to an assertion by the Examiner that Rocci constitutes analogous art (Ans. 6), Appellant also argues that Rocci constitutes non- analogous art. Reply Br. 8-9; see also Ans. 5-6. Appellant rests this assertion on the vague generalizations that “Tomaka and Rocci have completely different structural requirements for dispensing a product, with the MDI device of Rocci being much more complex than the pump actuated device of Tomaka.” Reply Br. 9. Appellant bases these general arguments on the specific assertion that “pump actuated spray devices rely on a vacuum . . . to dispense product” (Id.), which fails to fully and accurately capture the basic operating principles of Tomaka for the reasons discussed above. Thus, Appellant does not identify any specific, viable reason that Rocci constitutes non-analogous art. On the other hand, the Examiner accurately identifies multiple specific similarities in the basic design and operation of manual- pump spraying devices and the MDI system disclosed by Rocci: “The methods and outcomes of both pumps and MDIs are that a user depresses an actuator which initiates the release of a medicament in a nebulized form to Appeal 2011-002904 Application 10/577,850 9 be inhaled.” Ans. 6. Accordingly, we agree with the Examiner’s finding that Rocci constitutes analogous art. Appellant further argues that it would not have been obvious to a person of ordinary skill in the art to modify Tomaka to include Rocci’s dose- counting system because doing so would increase the complexity and expense. App. Br. 13. Even if accurate, Appellants’ assertion about increased complexity and expense does not negate the Examiner’s correct determination that a person of ordinary skill in the art would have had reason to implement the modification to reduce counting errors. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”); In re Farrenkopf, 713 F.2d 714, 718 (“That a given combination would not be made by businessmen for economic reasons does not mean that persons skilled in the art would not make the combination because of some technological incompatibility.”). Appellant also argues that the Examiner has resorted to improper hindsight reasoning. Reply Br. 8. Because the Examiner’s conclusion of obviousness rests on rational underpinnings supported by the disclosures of the references, we disagree with Appellant’s assertion that the Examiner has resorted to improper hindsight reasoning. For the foregoing reasons, Appellant has not established error in the Examiner’s rejection of claim 2 as obvious over Tomaka and Rocci. DECISION We reverse the Examiner’s decision regarding claim 1. Appeal 2011-002904 Application 10/577,850 10 We affirm the Examiner’s decision regarding claims 2, 4, 5, and 7-11. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation