Ex Parte Desset-Brethes et alDownload PDFPatent Trial and Appeal BoardDec 21, 201814399991 (P.T.A.B. Dec. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/399,991 11/10/2014 Sabine Desset-Brethes 1095 7590 12/26/2018 NOVARTIS PHARMACEUTICAL CORPORATION INTELLECTUAL PROPERTY DEPARTMENT ONE HEAL TH PLAZA 433/2 EAST HANOVER, NJ 07936-1080 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. PAT055124-US-PCT 2856 EXAMINER OJOFEITIMI, A YODEJI T ART UNIT PAPER NUMBER 3651 NOTIFICATION DATE DELIVERY MODE 12/26/2018 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): phip.patents@novartis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SABINE DESSET-BRETHES, REGIS FRELON, STEP AN HIRSCH, HANS JENSEN, ESBEN JOHANSEN, PETER MATHIASEN, and JAN OLESEN Appeal2018-005079 Application 14/399,991 1 Technology Center 3600 Before EDWARD A. BROWN, CHARLES N. GREENHUT, and LISA M. GUIJT, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Sabine Desset-Brethes et al. ("Appellants") seek review under 35 U.S.C. § 134(a) of the Examiner's decision rejecting claims 1, 2, 4, 6-8, and 10-17.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Novartis AG is identified as the real party in interest. Appeal Br. 3. 2 Claims 3, 5, and 9 have been cancelled. Id. at 5. Appeal2018-005079 Application 14/399,991 reads: CLAIMED SUBJECT MATTER Claims 1 and 1 7 are independent claims. Claim 1 is illustrative, and 1. A dispensing device for metering and dispensing a predetermined number of multiparticulates from a container, the dispensing device comprising a chamber, the chamber including an inlet through which multiparticulates can enter the chamber, an overflow through which multiparticulates can leave the chamber and return to the container and an outlet through which multiparticulates can be dispensed from the chamber, the chamber comprising a metering surface, the metering surface comprising a plurality of cavities therein forming a plurality of retaining portions, each retaining portion configured and dimensioned to retain a single multiparticulate, each retaining portion configured to be able to releasably retain a single multiparticulate, the device further characterized in that the inlet and the overflow comprise separate openings into the chamber, wherein the inlet includes an inlet wall that extends into the chamber to hinder multiparticulates from returning to the container through the inlet and wherein the overflow includes an overflow tube that extends, in use, into the container and that hinders multiparticulates entering the chamber via the overflow. Appeal Br. 21 (Claims App.). REJECTIONS The Final Office Action includes the following rejections under 35 U.S.C. § I03(a): Claims 1, 2, 4, 8, 11, 12, and 15-17 are rejected as unpatentable over Daniello (US 5,601,213, issued Feb. 11, 1997), Lykes (US 4,526,305, issued July 2, 1985), and Robinson (US 5,873,493, issued Feb. 23, 1999). Claims 6, 7, 10, and 14 are rejected as unpatentable over Daniello, Lykes, Robinson, and Coe (US 2006/0124658 Al, published June 15, 2006). 2 Appeal2018-005079 Application 14/399,991 Claim 13 is rejected as unpatentable over Daniello, Lykes, Robinson, and Weinstein (US 4,971,203, issued Nov. 20, 1990). ANALYSIS Claims 1, 2, 4, 8, 11, 12, and 15-17 over Daniello, Lykes, and Robinson Claims 1, 2, 4, 8, 11, 12, 15, and 16 Claim 1 recites, in relevant part, "the chamber comprising a metering surface, the metering surface comprising a plurality of cavities therein forming a plurality of retaining portions, each retaining portion configured and dimensioned to retain a single multiparticulate, each retaining portion configured to be able to releasably retain a single multiparticulate." Appeal Br. 21 (Claims App. (emphasis added)) (hereinafter, "metering surface limitation"). The Examiner finds that Daniello discloses a dispensing device comprising the metering surface limitation. Final Act. 3--4. Particularly, the Examiner finds that Daniello discloses a dispensing device ( central body 12, circular cover 16) comprising a chamber (first chambers 42, 44, 46; second chambers 48, 50) comprising an inlet ( openings of first chambers 42, 44), an outlet ( cover opening 3 6), and a metering surface ( surface of perforated panel 70 above chamber 48). Id. at 3 ( citing Daniello, Fig. 5). As to the limitation, "each retaining portion configured to be able to releasably retain a single multiparticulate," the Examiner determines that, in Daniello, during dispensing the depressions of perforated panel 70 are able to temporarily retain multiparticulates to be dispensed through the outlet ( cover opening 36). Id. at 3--4 (citing Daniello, Fig. 2). The Examiner submits, "depending upon the size of dispensed multiparticulate, when dispensed, it can be 3 Appeal2018-005079 Application 14/399,991 retained within the cavities of [perforated panel] 70; a claim that only further limits the material handled by the apparatus does not determine patentability." Id. at 4 (citing MPEP §§ 2114, 2115). Appellants contend that Daniello fails to disclose the metering surface limitation. Appeal Br. 10-11. Appellants contend that Daniello does not teach metering and dispensing a predetermined number of anything. Id. at 11. Appellants assert that Daniello does not teach "any form of metering surface having discrete cavities for retaining a discrete number of solid forms, and in particular for counting and dispensing a discrete predetermined number thereof" Id. ( emphasis added). Appellants contend that Examiner appears to make an unsupported assumption that a through-hole as disclosed in Daniello is structurally identical to a claimed "cavity." Appeal Br. 13. Appellants assert that "cavities" "by definition [are] bounded on all sides but one," and they "hold and quantify a discrete number of individual solid particles (whether they are considered multi-particulates or solid dosage forms)." Reply Br. 5. In contrast, Appellants assert, the pores in perforated panel 70 of Daniello "function exactly like those of a salt shaker, and merely permit the passage of a small volume of multi-particulates ( spice granules), but do not retain or quantify the multi-particulates." Id. The Examiner maintains that Daniello discloses a metering surface having cavities for retaining a single multiparticulate. Ans. 3. According to the Examiner, the cavities in Daniello's perforated panel 70 are identical to those disclosed by Appellants in Figure 7. Id. Thus, the Examiner submits, "depending upon the size and shape of the granulated material (granulated 4 Appeal2018-005079 Application 14/399,991 also means particulate), the metering surface with the discrete cavities [in Daniello] functions in an identical manner to ... [Appellants']." Id. Accordingly, Appellants and the Examiner disagree about the meaning of the claim term "cavities." During examination of a patent application, claims are to be given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The broadest reasonable interpretation in view of the specification is "an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is 'consistent with the specification."' In re Smith Intl., Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The Specification describes the term "cavity" in the following passage: Retaining portions can be achieved in a number of ways, for example a depression or cavity in the metering surface sized and configured to accept the predetermined number of multiparticulates. A bottom of such a cavity may be coloured to assist in visual checking to verify that the correct number of multiparticulates have been retained. It should be understood that the depression or cavity could be formed in many different ways, for example a hole through a first layer which is closed with a backing layer. The cavity or depression could take any suitable form, for example round or square cross section and may be tapered towards the open end or away from the open end. Spec. 4, 11. 15-24 ( emphasis added). And, the drawings, for example, Figure 2, depict retaining portions 32 that have an open end and a bottom. The Specification describes retaining portions 32 as "depressions in the metering surface." See id. at 11, 11. 20-22. The depicted retaining portions 32 are bounded on all sides except the open end. Accordingly, Appellants' 5 Appeal2018-005079 Application 14/399,991 definition of a "cavity" as being "bounded on all sides but one" (Reply Br. 5) is consistent with the Specification and Figure 2. Figure 2 of Daniello shows that perforated panel 70 includes perforations. As shown in Figure 5 of Daniello, the perforations extend completely through perforated panel 70. That is, the perforations are open at both their bottom and top ends. Daniello describes, "one chamber 48 including a perforated panel 70 at the first end 24 of the central body 12, to provide for the continuous flow of material from an attached container C by shaking the container C, in the manner of a salt or pepper shaker or the like." See Daniello, col. 6, 11. 28-32 (emphasis added; boldface omitted). Accordingly, the perforations have open bottom and top ends to provide for continuous flow of material from container C through perforated panel 70, for dispensing the material through cover opening 36. As to the Examiner's assertion that the cavities disclosed by Appellants have the same structure as the perforations in Daniello' s perforated panel 70 (Ans. 3, referencing Appellants' Fig. 7), first, we are unable to find any description in Appellants' Specification that retaining portions 32 shown in Figure 7 are through holes having open bottom and top ends, like the perforations shown in Daniello's perforated panel 70. Second, Appellants do not contend, and the Examiner does establish, that claim 1 is limited to the embodiment shown in Figure 7. Third, we agree with Appellants' definition of a "cavity" as being "bounded on all sides but one." Accordingly, the Examiner's finding that Daniello discloses the "metering surface limitation" is based on an improper construction of the term "cavities." The Examiner's reliance on Lykes and Robinson fails to cure the deficiencies of Daniello as to claim 1. Final Act. 4--5. Thus, we do 6 Appeal2018-005079 Application 14/399,991 not sustain the rejection of claim 1, or of claims 2, 4, 8, 11, 12, 15, and 16 depending therefrom, as unpatentable over Daniello, Lykes, and Robinson. Claim 17 Claim 1 7 is directed to a dispensing device comprising, among other things, "a metering surface formed about said lower wall, the metering surface comprising a plurality of cavities therein, each cavity configured and dimensioned to releasably retain a single multiparticulate of having a maximum size dimension of between 1 and six mm." Appeal Br. 23-24 ( emphasis added). The Examiner finds that Daniello discloses each of these limitations except the recited maximum size dimension. Final Act. 6. The Examiner determines that the maximum size dimension "is generally recognized as being within the level of ordinary skill in the art." Id. For the reasons discussed above for the rejection of claim 1, the Examiner's finding that Daniello discloses the metering surface limitations in claim 17 quoted above is likewise based on an improper construction of the term "cavities." The Examiner's reliance on Lykes and Robinson fails to cure the deficiencies of Daniello as to claim 17. Final Act. 4--5. Thus, we do not sustain the rejection of claim 17 as unpatentable over Daniello, Lykes, and Robinson. Claims 6, 7, 10, and 14 over Daniello, Lykes, Robinson, and Coe In rejecting claims 6, 7, 10, and 14, which depend directly or ultimately from claim 1, the Examiner relies on Coe for disclosing a dispensing device including a movable baffle. Final Act. 8-9. The Examiner's reliance on Coe fails to cure the deficiencies of Daniello, Lykes, and Robinson as to claim 1. Thus, we do not sustain the rejection of claims 6, 7, 10, and 14 as unpatentable over Daniello, Lykes, Robinson, and Coe. 7 Appeal2018-005079 Application 14/399,991 Claim 13 over Daniello, Lykes, Robinson, and Weinstein In rejecting claim 13, which depends ultimately from claim 1, the Examiner relies on Weinstein for disclosing a medicament storage device including a child resistant cap. Final Act. 9-10. The Examiner's reliance on Weinstein fails to cure the deficiencies of Daniello, Lykes, and Robinson as to claim 1. Thus, we do not sustain the rejection of claim 13 as unpatentable over Daniello, Lykes, Robinson, and Weinstein. DECISION We reverse the rejections of claims 1, 2, 4, 6-8, and 10-17. REVERSED 8 Copy with citationCopy as parenthetical citation