Ex Parte Wachtel et al

Patent Trial and Appeal Board

Aug 9, 2017

13020200 (P.T.A.B. Aug. 9, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/020,200 02/03/2011 Herbert WACHTEL 01-2036-US-2 1933
28518 7590
C/O VP, IP, LEGAL
BOEHRINGERINGELHEIM USA CORPORATION
900 RIDGEBURY ROAD
RIDGEFIELD, CT 06877-0368
EXAMINER
YOUNG, RACHEL T
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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):
US PTO.e-Office. rdg@ boehringer-ingelheim .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERBERT WACHTEL, HUBERT HOELZ, and
MARC ROHRSCHNEIDER
Appeal 2015-008202
Application 13/020,2001
Technology Center 3700
Before ANTON W. FETTING, BIBHU R. MOHANTY, and
MICHAEL C. ASTORINO, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 11—14 and 16—19. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, “the real party in interest is Boehringer
Ingelheim Pharma GmbH & Co. KG, assignee of record and the owner of
the entire interest in the instant application.” Appeal Br. 2.
Appeal 2015-008202
Application 13/020,200
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 11, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
11. A device for providing pharmaceutical active substances,
active substance mixtures, and formulations, comprising:
a container having a valve stem extending along an axis,
the container being filled with a pharmaceutical preparation,
containing an active substance, an active substance mixture or
formulation in pressure-liquefied 1.1.1.2-tetrafluoroethane
(HFC-134a) or 1.1.1.2.3.3.3-heptafluoropropane (HFC-227) ora
mixture of HFC-134a and HFC-227,
a shaft within which the container is disposed,
a valve stem receptacle receiving at least a portion of the
valve stem of the container and having a channel extending away
from the valve stem about the axis and tapering to a channel
opening at a terminus of the channel such that a volume of the
channel terminates at the channel opening and no volume of the
channel exists along the axis beyond the channel opening, where
the tapering is characterised by: (i) respective decreasing radial
distances taken perpendicularly from the axis to a surface of the
channel as the radial distances are taken along the axis at
positions farther from the valve stem, and (ii) respective
substantially constant radial distances taken perpendicularly
from the axis to the surface of the channel when the radial
distance is in a common plane with the axis and the channel
opening, and
a nozzle bore extending into the valve stem receptacle
transversely to the channel such that: (i) the nozzle bore impacts
upon the channel at an obtuse angle to the axis extending from
the valve stem, and (ii) the pharmaceutical composition, mixture
or formulation which is liquefied under pressure is directed at
greater than 90 degrees from a direction along the axis from the
valve stem and outwards through the nozzle bore, thereby
generating a spray cloud at a transition from the nozzle bore to a
nozzle opening.
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Appeal 2015-008202
Application 13/020,200
Rejections
Claims 11, 12, 14, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Davies et al. (US 2005/0061314 Al, published Mar. 24,
2005; hereinafter “Davies”) and Wharton et al. (US 2007/0119450 Al,
published May 31, 2007; hereinafter “Wharton”) and Shultz et al.
(US 5,899,201, issued May 4, 1999; hereinafter “Shultz”).
Claims 13 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Davies, Wharton, Shultz, and Fenn et al. (US
2008/0023000 Al, published Jan. 31, 2008; hereinafter “Fenn”).
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Davies, Wharton, Shultz, and Warby (US 2008/0224082 Al, published
Sept. 18,2008).
ANALYSIS
Independent claim 11 requires, among other things, a valve stem
receptacle having a channel “tapering to a channel opening at a terminus of
the channel such that a volume of the channel terminates at the channel
opening and no volume of the channel exists along the axis beyond the
channel opening.” Appeal Br., Claims App. A feature of the foregoing
limitation is a lack of space within the channel that projects beyond a nozzle
bore (i.e., a “dead volume”). See Spec. 3. Compare Spec. Fig. 5 with Spec.
Fig. 3a (Figure 5 depicts a “dead volume” by showing a space within
channel 8 that projects beyond nozzle bore 9 and does not lie in the direct
flow path, whereas Figure 3 has no or almost no “dead volume”).
Claim 11 further restricts the structure of the channel taper with two
limitations. The first limitation of the channel taper is set forth by the
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Appeal 2015-008202
Application 13/020,200
recitation, “(i) respective decreasing radial distances taken perpendicularly
from the axis to a surface of the channel as the radial distances are taken
along the axis at positions farther from the valve stem.” Appeal Br., Claims
App. This first limitation, taken in light of the previous claimed feature,
essentially requires a channel with no dead volume, where the channel
narrows towards the terminus of the channel (i.e., the channel opening).
The second structural limitation of the channel taper is set forth by the
recitation, “(ii) respective substantially constant radial distances taken
perpendicularly from the axis to the surface of the channel when the radial
distance is in a common plane with the axis and the channel opening.”
Appeal Br., Claims App. This feature essentially requires a channel, in a
longitudinal section side view, to have a constant distance between the
longitudinal axis of a valve stem and the surface of the channel that
terminates in channel opening. See, e.g., Spec. Fig. 3a.
The Examiner finds Davies’s Figure 1 depicts a channel that
corresponds with the foregoing features of claim 11, except for the second
structural limitation of the channel taper. Final Act. 3. More specifically,
the Examiner finds Davies’s actuator insert 5 includes a channel that
narrows to an opening and lacks a dead volume. See Final Act. 3. As for
the second structural limitation of the channel taper, the Examiner finds that
Wharton’s Figure 7 teaches this second limitation of the taper. Final Act. 4.
The Examiner concludes that:
it would have been obvious to one of ordinary skill in the
art. . . to modify Davies’[s] tapering with respective
substantially constant radial distances taken perpendicularly
from the axis to the surface of the channel when the radial
distance is in a common plane with the axis and the channel
opening, as taught by Wharton, for the purpose of providing an
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Appeal 2015-008202
Application 13/020,200
alternate tapering funnel structure having the predictable results
of providing a cloud spray to a user for inhalation.
Final Act. 4.
The Appellants argue that the foregoing modification results in “the
claimed taper with the omission of dead space below the channel opening”
only by arbitrarily choosing features of Davies’s and Wharton’s channels
and relying on knowledge found in the Appellants’ Specification. See
Appeal Br. 7—8; Reply Br. 4—6. The Appellants’ argument is persuasive.
At the outset, we note that the Examiner’s rejection relies solely on
the channels as depicted in Davies’s Figure 1 and Wharton’s Figure 7. See
Final Act. 3^4; see also Ans. 8—9. In as much as Davies’s Figure 1 teaches a
channel having features that correspond to some of the features of the
claimed channel, the figure effectively depicts the exact opposite of the
second structural limitation, i.e., “tapering front wall surface (the surface
near the nozzle 20).” See Appeal Br. 7; Reply Br. 4. And, although
Wharton teaches the second structural limitation, Wharton does not teach
many of the other features of the claimed channel. For example, Wharton’s
fails to teach a channel that terminates at a channel opening and has no dead
volume. See Appeal Br. 8; Reply Br. 5.
The reason for the Examiner’s combination is to provide an
alternative channel taper structure, however the Examiner does not use a
wholesale replacement of one known channel taper structure for another
known channel taper structure. See Final Act. 4. In this case, we determine
that the Examiner’s reasoning has support only by picking and choosing,
arbitrarily, features of Davies’s and Wharton’s channels. See Appeal Br. 8;
Reply Br. 5—6. For similar reasons, we determine that the Examiner’s
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Appeal 2015-008202
Application 13/020,200
reasoning hones in on the features of the claimed channel taper by relying
improperly on knowledge found in the Appellants’ Specification.
Thus, we do not sustain the Examiner’s rejection of independent claim
11 and dependent claims 12, 14, 18, and 19 as unpatentable over Davies,
Wharton, and Shultz.
The remaining rejections based on Davies, Wharton, and Shultz, in
combination with Fenn or Warby rely on the same reasoning discussed
above. The additional findings and reasoning provided for each of the
remaining rejections does not remedy the errant reasoning. As such, we do
not sustain the Examiner’s rejections under 35 U.S.C. § 103(a) of: claims 13
and 16 as unpatentable over Davies, Wharton, Shultz, and Fenn; and, claim
17 as unpatentable over Davies, Wharton, Shultz, and Warby.
DECISION
We REVERSE the Examiner’s decision rejecting claims 11—14 and
16-19.
REVERSED
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