Ex Parte Dunkley et al

Patent Trial and Appeal Board

Sep 18, 2018

10821624 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/821,624 04/09/2004 Michael John Dunkley
1095 7590 09/20/2018
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.
PAT053315-US-NP 8935
EXAMINER
MATTER, KRISTEN
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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 MICHAEL JOHN DUNKLEY, JON DAVID TUCKWELL,
EDWARD WILLIAM VERNON-HARCOURT,
MARK GLUSKER, and STEVE P ABOOJIAN1
Appeal2017-000346
Application 10/821,624
Technology Center 3600
Before LINDA E. HORNER, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael John Dunkley et al. (Appellants) seek our review under
35 U.S.C. § 134(a) of the final rejection of claims 20, 28, 31, and 35--42.
Pending claims 27 and 32 are objected to as containing allowable subject
matter, but depend from rejected claims. Pending claims 21-26 are
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Novartis AG is identified as the real party in interest in this appeal. Appeal
Br. 2.
Appeal2017-000346
Application 10/821, 624
THE INVENTION
Appellant's invention is directed to an aerosolization apparatus.
Claim 20, reproduced below, is illustrative:
20. An aerosolization apparatus comprising:
a housing defining a chamber having one or more air inlets, the
chamber being sized to receive a capsule which contains an
aerosolizable pharmaceutical formulation, wherein the capsule
comprises a longitudinal axis and two opposing convex ends
spaced along the longitudinal axis;
a puncturing mechanism within the housing, the puncturing
mechanism comprising an alignment guide and a puncture
member, wherein the alignment guide comprises a surface that is
advanced within the housing to contact the capsule while the
puncture member is advanced into the capsule to create an
opening in the capsule in one of the convex ends of the capsule,
and wherein the surface comprises one or more protrusions for
contacting the capsule on the convex end of the capsule to be
punctured; and
an end section associated with the housing, the end section sized
and shaped to be received in a user's mouth or nose so that the
user may inhale through the end section to inhale aerosolized
pharmaceutical formulation that has exited the capsule through
the opening created in the capsule.
THE REJECTIONS
The Examiner rejects:
(i) claims 20, 28, and 31 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claim 1 of
Dunkley (US 8,069,851 B2, issued Dec. 6, 2011) (hereinafter "the '851
patent"), in view of Watt (US 3,888,253, issued June 10, 1975); and
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Appeal2017-000346
Application 10/821, 624
(ii) claims 35--42 under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claim 1 of the '851 patent,
in view of Watt and Weers (US 2002/0017295 Al, published Feb. 14, 2002).
ANALYSIS
Claim 1 of the '851 patent constitutes the starting point for both of the
rejections on appeal. Final Act. 4--5. The '851 patent is currently the
subject of reissue application 14/098,403, which was filed December 5,
2013. Appeal Br. 6. An amended version of claim I of the '851 patent,
reproduced in the Appeal Brief, remains pending in the reissue application.
Id. Appellant also notes that a statutory disclaimer has been filed,
disclaiming the subject matter of claim I of the '851 patent. Id. at 7-8. We
have independently confirmed, via the Image File Wrapper for Application
12/456,807, that a statutory disclaimer was filed on June 29, 2015,
disclaiming all of original claims 1-8 of the '851 patent. A notice of the
filing of the statutory disclaimer was published in the Official Gazette on
September 18, 2018, in accordance with the provisions of37 C.F.R.
§ 1.32I(a).
Notwithstanding the statutory disclaimer of claim 1 of the '851 patent,
the Examiner takes the position that, because the reissue application remains
pending, the '851 patent is still in effect, and that it is therefore appropriate
to rely on claim 1 of the '851 patent in maintaining the obviousness-type
patenting rejections in the present case. Ans. 6-7. The Examiner states,
with respect to the statutory disclaimer, that "[t]he disclaimer in no way
affects the double patenting rejection in the instant application," asserting
that the '851 patent has not been replaced with a reissue patent. Ans. 7.
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Appeal2017-000346
Application 10/821, 624
"A statutory disclaimer under 35 U.S.C. § 253 has the effect of
canceling the claims from the patent and the patent is viewed as though the
disclaimed claims had never existed in the patent." Guinn v. Kopf, 96 F.3d
1419, 1422 (Fed. Cir. 1996), citing Altoona Publix Theatres, Inc. v.
American Tri-Ergon Corp., 294 U.S. 477,492 (1935) (claims withdrawn
from patent protection upon filing of statutory disclaimers). Under this
precedent, claim 1 of the '851 patent is to be treated as though it never
existed in the patent. Therefore, regardless of the status of the reissue
application, the obviousness-type double patenting rejections founded on
that claim are in error, and are not sustained.
DECISION
The Examiner's rejections of claims 20, 28, 31, and 35--42 are
reversed.
REVERSED
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