Waldron, Michel Simon.

Patent Trials and Appeals Board

Apr 30, 2020

13500947 - (D) (P.T.A.B. Apr. 30, 2020)

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.
13/500,947 07/02/2012 Michel Simon Waldron Q130245 1684
23373 7590 04/30/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
BOWMAN, ANDREW J
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
04/30/2020 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHEL SIMON WALDRON
__________

Appeal 2018-008768
Application 13/500,947
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 23–33, 42, and 43. We have jurisdiction under
35 U.S.C. § 6(b). A hearing was held on December 17, 2019.
We REVERSE.
The claims on appeal are directed to a method for coating tablets comprising
the steps of, inter alia, (1) providing a substantially cylindrical drum; (2) feeding

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as GEA PHARMA
SYSTEMS LIMITED. Appeal Brief dated February 14, 2018 (“App. Br.”), at 2.
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tablets into the drum; (3) spinning the drum at a rotational speed which produces a
substantially annular bed of tablets extending around the axis of rotation of the
drum, and (4) providing means for creating a cascade of tablets.2 The Appellant’s
Figure 4, reproduced below, depicts a substantially annular bed of tablets
extending around the drum’s axis of rotation.

Appellant’s Figure 4 is a front view of a
drum coater according to the Appellant’s invention.
The top section and the bottom section of drum 11 are defined above and
below, respectively, a substantially horizontal axis of rotation. Spec. 8, ll. 4–6, 17–
19. As indicated schematically in the Appellant’s Figure 4, “the tablets form a bed
18 in the bottom section 21 of the drum, whereas in the top section 20 [of the
drum], the tablets form a cascade 19.” Spec. 11, ll. 9–12.

2 The Appellant discloses that the means for creating a cascade of tablets includes a
speed controlling means and/or a loosening means, such as a deflecting nozzle or a
mechanical deflection element. Spec. 3, l. 17–4, l. 13; see also App. Br. 5.
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The Appellant’s Figure 2, reproduced below, illustrates a prior art drum
coater.

Appellant’s Figure 2 is a front view
of a prior art apparatus.
When the drum of the prior art apparatus rotates clockwise, the Appellant
discloses that “the bulk of the tablets take up a position (B) in the lower left hand
quadrant of the drum.” Spec. 8, ll. 29–31.
The Appellant discloses that exemplary cycle times in the prior art apparatus
are at least two hours and the slow rotation of the drum causes tablets to degrade
by attrition. Spec. 2, ll. 9–18. The Appellant’s method, on the other hand, is said
to “very significantly” accelerate the coating process, “significantly” reduce the in-
process quantity of materials, and improve the overall manufacturing efficiency
and quality. Spec. 2, ll. 21–25.
Independent claim 23 is reproduced below from the Claims Appendix to the
Appeal Brief. The limitation at issue is emphasized.
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23. A method for coating tablets, comprising the steps of:
providing a substantially cylindrical drum (11) having a
peripheral drum wall (12) and a predefined diameter, said drum
having a substantially horizontal axis of rotation (17), a top section
(20) and a bottom section (21) being defined above and below,
respectively, the axis of rotation, and a coating zone which is provided
in the top section (20),
feeding the tablets into said drum (11),
spinning the drum containing the tablets at a rotational speed
such that the tablets are pressed towards, held against, and carried
with the peripheral drum wall (12) utilizing primarily the centrifugal
force of the rotating drum, hereby producing a substantially annular
bed of tablets extending around the axis of rotation,
providing means for creating a cascade (19) of tablets at least in
a part of said coating zone,
spraying the tablets in said coating zone, and
discharging the tablets from said drum (11).
App. Br. 23 (italics and bold added).
The Examiner maintains the following grounds of rejection on appeal:
(1) claims 23–30 and 43 under 35 U.S.C. § 103(a) as unpatentable over
Casey3;
(2) claims 31 and 32 under 35 U.S.C. § 103(a) as unpatentable over
Casey in view of Ehayes4; and
(3) claims 33 and 42 under 35 U.S.C. § 103(a) as unpatentable over
Casey in view of Begleiter.5
B. DISCUSSION

3 US 4,639,383, issued January 27, 1987 (“Casey”).
4 Raffle Drum & Raffle Supplies, http://www.ehayes.com/raffle-drum-raffle-
supplies.cfm (last visited Sept. 21, 2014) (“Ehayes”).
5 US 2006/0068006 A1, published March 30, 2006 (“Begleiter”).
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The Examiner finds Casey teaches coating tablets with a coating solution,
wherein the tablets are pressed against the exterior of a rotating drum by
centrifugal force and cascade down in a substantially annular bed around a coating
nozzle. Final Act. 3.6 The Examiner directs our attention to Casey Figure 8,
reproduced below.

Casey Figure 8 illustrates a dispensing system
inside a discrete cascade of granules.
The Examiner finds the spray device (or dispensing nozzle 86) “is not
located such that the tablets rotate around the central axis of rotation of the drum.”
Final Act. 3. Nonetheless, the Examiner finds that “[o]ne would have been
motivated to move the nozzle to the central location of the drum for multiple
reasons including convenience of cleaning without having to reach to the sides of
the drum.” Final Act. 3.
The Appellant argues that Casey Figure 7, reproduced below, and Casey
Figure 9 show embodiments that include a centralized coating nozzle 86. App. Br.
14.

6 Final Office Action dated May 8, 2017.
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Casey Figure 7 illustrates a preferred location of
dispensing nozzle 86 in an embodiment
of Casey’s invention.
The Appellant argues that modifying the embodiment illustrated in Casey
Figure 8, as proposed by the Examiner, would result in the configuration illustrated
in Casey Figure 7, wherein the granules do not rotate around the central axis. App.
Br. 14.
The Examiner, however, finds that drum speed causes the cascade to fall
around the spray device (or dispensing nozzle 86). Final Act. 4. The Examiner
finds that it would have been within the skill of the ordinary artisan “to modify the
speed of the rotation of the drum such that the device would continue to operation
[sic, operate] in the same fashion.” Final Act. 4.
The Appellant argues that “[t]he prior art must provide a motivation or
reason for the worker in the art, without the benefit of appellant’s specification, to
make the necessary changes in the reference device.” App. Br. 16 (quoting Ex
parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (BPAI 1984)). In this case,
the Appellant argues that the Examiner’s motivation “is purely based on improper
hindsight using the present specification as the only guidance.” App. Br. 16. More
specifically, the Appellant argues that Casey’s “‘product bed is fluidized and
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remains substantially in the bottom of the coating pan.’” App. Br. 9 (quoting
Waldron Decl. ¶ 11).7 “‘If the wheel speed [of Casey] were substantially
increased, as proposed by the Examiner,’” the Appellant argues that “‘the
developing centrifugal forces would act against the fluidizing forces of the inlet
air’” and “‘flatten the bed and diminish the fluidizing action necessary to dry the
sprayed solvent from the cascade.’”8 App. Br. 9 (quoting Waldron Decl. ¶ 18).
The Appellant’s argument is persuasive of reversible error. In Casey’s
method, “movement of air through the agitated bed 84 results in substantial drying
of the coated granules before they contact the inner surface of the pan 10. Hence,
very little coating material contacts and is transferred to the inner surface of the
pan 10.” Casey, col. 8, ll. 61–66 (emphasis omitted). There is no dispute on this
record that increasing the rotational speed of Casey’s drum, as proposed by the
Examiner, would flatten agitated or fluidized bed 84. See Ans. 3 (agreeing that
increasing the speed of the drum “would necessarily have a tendency to flatten the
bed of Casey as it rotates”).9 Thus, on this record, there would have been no
reason to increase the rotational speed of Casey’s drum, thereby flattening bed 84

7 Declaration of Michel Waldron dated November 23, 2016 (“Waldron Decl.”).
8 In contrast to Casey’s method, Mr. Waldron states:
The invention of the subject application . . . does not attempt to
fluidize . . . . The entire load is held in a “substantially annular bed”
by action of the elevated wheel speed. As a consequence, the entire
load is presented to the spray system at the frequency of wheel
rotation, and the tablets in-flight allow the solvent to dry in the
exhaust air stream before the tablets come into contact with each other
again.”
Waldron Decl. ¶ 13.
9 Examiner’s Answer dated July 3, 2018.
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and diminishing the fluidizing action in the bed, absent the Appellant’s disclosure.
For that reason, the obviousness rejection of claims 23–30 and 43 is not sustained.
The Examiner’s reliance on Ehayes and/or Begleiter does not cure the
deficiency in Casey identified above. Therefore, the obviousness rejections of
claims 31–33 and 42 also are not sustained.
C. CONCLUSION
The Examiner’s decision is reversed.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23–30, 43 103(a) Casey 23–30, 43
31, 32 103(a) Casey, Ehayes 31, 32
33, 42 103(a) Casey, Begleiter 33, 42
Overall
Outcome
23–33, 42, 43

REVERSED