Ex Parte Colburn et al

Patent Trial and Appeal Board

Oct 30, 2018

14350178 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/350,178 04/07/2014
32692 7590 11/01/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
David J. Colburn
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.
65817US004 4010
EXAMINER
DARB, HAMZA A.
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. COLBURN, ERIK J. JOHNSON,
DAVID H. BRANDWEIN, JEROME E. GYSBERS, PATRICK J. YOUNG,
and ADAM S. CANTOR
Appeal2018-003695 1
Application 14/350, 1782
Technology Center 3700
Before ANTON W. PETTING, BRUCE T. WIEDER,and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20 and 38. We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed
Aug. 22, 2017) and Reply Brief ("Reply Br.," filed Feb. 21, 2018), and the
Examiner's Answer ("Ans.," mailed Dec. 22, 2017) and Final Office Action
("Final Act.," mailed Feb. 23, 2017).
2 Appellants identify 3M Innovative Properties Company as the real party in
interest. App. Br. 2.
Appeal2018-003695
Application 14/350, 178
We AFFIRM.
CLAIMED INVENTION
Claim 1, reproduced below, is the sole independent claim on appeal,
and is representative of the claimed subject matter:
1. A system for delivering a microneedle array, the system
compnsmg:
a housing having a cavity therein and an attachment
surface at least partially surrounding the cavity, wherein the
attachment surface comprises an adhesive for attachment of the
housing to a patient's skin surface;
a carrier assembly including a microneedle array received
in the cavity, the microneedle array comprising microneedles
that do not have an exposed bore therethrough;
a stored energy device coupled to a portion of the interior
of the housing and in contact with a portion of the carrier
assembly; and
an actuator that supplies an activation energy to the
stored energy device in a direction orthogonal to the major
plane of the array, wherein the stored energy device transfers an
application energy orthogonal to the major plane of the array
that is greater than the activation energy.
REJECTIONS 3
Claims 1-5, 11, 13, 15, 16, and 20 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Mir (US 2010/0100005 Al, pub. Apr. 22,
2010) and Haider (US 7,252,651 B2, iss. Aug. 7, 2007).
3 The Final Office Action Summary identifies claim 19 among the claims
subject to rejection. See Final Act. 1. However, the Final Action does not
identify claim 19 in the heading or analysis section of any pending rejection.
Therefore, we treat the inclusion of claim 19 in the Summary as a
typographical error.
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Appeal2018-003695
Application 14/350, 178
Claims 6-10 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Mir, Haider, and Trautmann '144 (US 2008/0183144 Al, pub. July 31,
2008).
Claim 12 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Mir, Haider, and Trautmann '357 (US 2002/0091357 Al, pub. July 11,
2002).
Claims 14, 17, 18, and 38 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Mir, Haider, and Clarke (US 2005/0261631 Al, pub.
Nov. 24, 2005).
ANALYSIS
Independent Claim 1, and Dependent Claims 2-5, 11, 13, 15, 16, and 20
In rejecting claim 1 under 35 U.S.C. § 103, the Examiner finds that
Mir discloses a housing 30 having a cavity therein and an attachment surface
(i.e., the bottom surface of 30) at least partially surrounding the cavity. Final
Act. 2. The Examiner acknowledges that Mir does not disclose that the
attachment surface comprises an adhesive for attachment of the housing to a
patient's skin surface. Id. at 3. And the Examiner relies on Haider for this
limitation. Id. Specifically, the Examiner determines that Haider teaches
the bottom (plunger 22) having attachment surface 24, which comprises an
adhesive for attachment of the housing to a patient's skin surface. Id. The
Examiner determines that it would have been obvious to one of ordinary
skill to modify Mir's attachment surface to include adhesive "for the purpose
of allowing the device to be fixed to [the patient's] skin." Final Act. 3
( citing Haider col. 4, 11. 25-33).
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Appeal2018-003695
Application 14/350, 178
By way of background, Haider teaches a drug delivery device that
includes housing 12. Haider col. 4, 11. 19-23. Plunger 22 is slidably
received into a first opening of housing 12 to move into and out of
housing 12 between first and second positions. Id. at col. 6, 11. 9-11.
Plunger 22 has a "generally cylindrically shaped body that is hollow and
open at both ends." Id. at col. 6, 11. 13-15. A bottom surface 24 of plunger
22 is flat and carries a layer of pressure sensitive adhesive, allowing the
device to be affixed to the skin of the patient. Id. at col. 4, 11. 27-30. Needle
carrier 32 is received within the hollow body of plunger 22. Id. at col. 6, 11.
15-18. When plunger 22 is pressed against the skin, a delivery needle is
inserted into the skin of the patient, initiating drug flow. Id. at col. 4, 11. 39-
42.
Appellants argue that the Examiner erred in rejecting claim 1 under 35
U.S.C. § 103 by interpreting Raider's plunger as a housing. See App. Br. 4--
7. Specifically, Appellants contend that Haider' s plunger 22 "cannot
correspond to the housing in Appellant's [sic] claim 1" unless "one ignore[s]
the express teaching of Haider with respect to the housing 12 and then
imagine that another structure of the device-the plunger 22----corresponds
to the structure that has just been ignored." App. Br. 6. "Simply renaming
the plunger 22 to be 'a house to the needle' does not transform the plunger 2
of Haider into a housing, especially in light of Haider' s express teaching of a
housing 12 as a wholly separate component of the device." Id.
Yet, claim 1 recites "a housing having a cavity therein and an
attachment surface at least partially surrounding the cavity, wherein the
attachment surface comprises an adhesive for attachment of the housing to a
patient's skin surface." And Haider describes a plunger 22 having a cavity
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Appeal2018-003695
Application 14/350, 178
therein and an attachment surface 24 at least partially surrounding the cavity,
wherein the attachment surface 24 comprises an adhesive for attachment to a
patient's skin surface. See Haider, col. 4, 11. 24--30, col. 6, 11. 13-15.
Appellants argue that Raider's plunger 22 corresponds to the claimed
carrier assembly, which includes a microneedle array and is received into the
cavity of the housing. App. Br. 6. However, Mir is relied on for teaching a
carrier assembly. "[T]he structure/plunger (22) of Haider is used to
correspond to a lower housing portion that is attached to the skin of the
patient and only the adhesive (not the plunger or housing) is added to the
device of Mir .... " Ans. 3. Stated differently, "the modification of Mir in
view of Haider is only to provide an adhesive to the attachment surface of
the housing (30) of Mir to allow for attachment of the housing to a skin
surface." Id.
Appellants argue that the Examiner improperly relies on hindsight to
combine Mir and Haider to result in a housing that has an attachment surface
that includes an adhesive. App. Br. 4--5. Yet, Appellants do not identify,
and we do not find, error in the rationale articulated by the Examiner for
combining the references (i.e., allowing the device to be fixed to skin).
Accordingly, we sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claim 1, and claims 2-5, 11, 13, 15, 16, and 20,
which depend therefrom.
Dependent Claims 6-10, 12, 14, 17, 18, and 38
Claims 6-10, 12, 14, 17, 18, and 38 directly or ultimately depend
from claim 1. Appellants argue that none of the Examiner's rejections of
claims 6-10, 12, 14, 17, 18, and 38 under 35 U.S.C. § 103(a) cures the
deficiencies in the Examiner's rejection of claim 1. App. Br. 7-8. However,
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Application 14/350, 178
we are not persuaded of error in the Examiner's rejection of claim 1.
Therefore, we sustain the Examiner's rejections under 35 U.S.C. § 103(a) of
claims 6-10, 12, 14, 17, 18, and 38 for the same reasons set forth above with
respect to independent claim 1.
DECISION
The Examiner's rejections of claims 1-18, 20, and 38 under 35 U.S.C.
§ 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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