11037473 (B.P.A.I. Oct. 15, 2009)

Ex Parte Feriani et al

Board of Patent Appeals and InterferencesOct 15, 2009

11037473 (B.P.A.I. Oct. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte AMIR FERIANI, JOSEPH HESS, PHILIPPE LUGINBUHL, RAPHAEL WEBER, JACQUES BLANIE and REIKER CANFIELD ____________________ Appeal 2009-004138 Application 11/037,473 Technology Center 3700 ____________________ Decided: October 15, 2009 ____________________ Before WILLIAM F. PATE III, STEVEN D.A. McCARTHY and STEFAN STAICOVICI, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 (2002) from the Examiner’s 1 decision finally rejecting claims 1-20 under 35 U.S.C. § 112, para. 1 (2002) 2 as failing to comply with the written description requirement; finally 3 rejecting claims 1-20 under § 112, para. 2 as being indefinite; and finally4 Appeal 2009-004138 Application 11/037,473 2 rejecting claim 1 under 35 U.S.C. § 102(b) (2002) as being anticipated by 1 Hess (US 6,196,219 B1, issued Mar. 6, 2001). An oral hearing was held on 2 October 6, 2009. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3 We REVERSE. 4 Claim 1 is the sole independent claim on appeal: 5 1. Liquid droplet spray system for 6 atomizing a liquid substance, the liquid droplet 7 spray system comprising: 8 a liquid droplet spray device including a 9 housing in which a space is provided, said space 10 being arranged to receive said liquid substance, the 11 housing including a perforated membrane having 12 one or more perforations and covering said space 13 such that said liquid substance may exit the space 14 and the device by traversing the one or more 15 perforations of said perforated membrane, 16 a reservoir for containing said liquid 17 substance, 18 a fluidic interface comprising a fluid channel 19 arranged to connect said reservoir to said space in 20 said housing thereby conveying liquid substance 21 contained in said reservoir to said space by way of 22 capillary action, 23 a valve arranged between said reservoir and 24 said fluidic interface comprising said fluid channel 25 for controlling access of said liquid substance from 26 said reservoir to said fluid channel, 27 an electromechanical actuation means 28 arranged to actuate liquid substance in said space 29 such that the liquid substance undergoes a 30 vibration and contacts the perforated membrane 31 thereby traversing the one or more perforations as 32 a liquid droplet spray, and 33 Appeal 2009-004138 Application 11/037,473 3 electronic control means arranged to at least 1 control said electromechanical actuation means, 2 wherein said reservoir and said valve are 3 arranged in a first, disposable part, and said liquid 4 droplet spray device, said electromechanical 5 actuation means, said electronic control means 6 and said fluidic interface are arranged in a 7 second, non-disposable part such that said 8 reservoir does not directly contact said fluid 9 channel, said valve ensuring that said first, 10 disposable part is liquid tight when not in use. 11 [emphasis added.] 12 The Examiner rejects claim 1 under § 112, para. 2, concluding that the 13 terms “first, disposable part” and “second, non-disposable part” are 14 indefinite. (Ans. 4.) More specifically, the Examiner concludes that claim 1 15 is susceptible to two plausible but distinct interpretations. The Examiner 16 concludes that it is uncertain whether the term “first, disposable part” is 17 sufficiently broad to encompass the combination of the reservoir and the 18 valve; or if the term is limited to a separate element which encloses the 19 reservoir and the valve. (See Ans. 3.) The Examiner further concludes that 20 it is uncertain whether the term “second, non-disposable part” is sufficiently 21 broad to encompass the combination of the liquid droplet spray device, the 22 electromechanical actuation means and the electronic control means; or if 23 the term is limited to a separate element which encloses the liquid droplet 24 spray device, the electromechanical actuation means and the electronic 25 control means. (Id.) 26 The language of a claim satisfies § 112, para. 2 if “one skilled in the 27 art would understand the bounds of the claim when read in light of the 28 specification.” Exxon Research & Eng’g Co. v. United States, 265 F.3d 29 Appeal 2009-004138 Application 11/037,473 4 1371, 1375 (Fed. Cir. 2001). The ordinary usage of the word “in” is 1 sufficiently broad to indicate inclusion. See Merriam-Webster OnLine, 2 http://www.merriam-webster.com/dictionary/in (last visited Oct. 5, 3 2009)(“in,” entry 1, def. 1a). In view of this ordinary usage, one of ordinary 4 skill in the art would understand the bounds of claim 1. According to a 5 reasonable interpretation based on that ordinary usage, the “first, disposable 6 part” encompasses the combination of the reservoir and the valve, with or 7 without other structure. The “second, non-disposable part” encompasses the 8 combination of the liquid droplet spray device, the electromechanical 9 actuation means and the electronic control means, with or without other 10 structure. This interpretation most closely corresponds to the description in 11 the Specification. (See Spec. 5, ll. 4-6 and 25-27; see also id. at 6, ll. 6-9). 12 Appellants have shown that the Examiner erred in rejecting claim 1 13 under § 112, para. 2 as being indefinite. Since claims 2-20 are rejected 14 under § 112, para. 2 only on the basis of their dependence from claim 1, the 15 Appellants have shown that the Examiner erred in rejecting claims 2-20 16 under § 112, para. 2. 17 The Examiner’s findings in support of the rejection of claim 1 under 18 § 112, para. 1 resemble the conclusions which underlie the Examiner’s 19 rejection of claim 1 under § 112, para. 2. (See Ans. 3). Claim 1 has been 20 amended only once since the claim was originally filed. The rejection of 21 claim 1 under § 112, para. 1 is based on two findings: The first of these 22 findings is that the Appellants’ Specification, as originally filed, did not 23 reasonably convey possession of a liquid droplet spray system including a 24 first, disposable part separate from, but enclosing, the recited reservoir and 25 valve. The second of these findings is that the originally-filed Specification 26 Appeal 2009-004138 Application 11/037,473 5 did not convey possession of a system including a second, non-disposable 1 part” separate from, but enclosing the liquid droplet spray device, the 2 electromechanical actuation means and the electronic control means. (Id.) 3 This rejection is based on an erroneous interpretation of the final clause of 4 claim 1, as discussed earlier in connection with the rejection of claim 1 5 under § 112, para. 2. 6 “[O]riginal claims constitute their own description. Later added 7 claims of similar scope and wording are described thereby.” In re Koller, 8 613 F.2d 819, 823-24 (CCPA 1980). The sole amendment to claim 1 9 changed the language of the claim italicized above as follows, with additions 10 indicated by underlining and deletions indicated by strikethroughs: 11 wherein said liquid droplet spray system 12 consists of two parts, a first disposable part in 13 which said reservoir and said valve are arranged in 14 a first, disposable part, and a second, non-15 disposable part in which said liquid droplet spray 16 device, said electromechanical actuation means, 17 said electronic control means and said fluidic 18 interface are arranged in a second, non-disposable 19 part such that said reservoir does not directly 20 contact said fluid channel, said valve ensuring that 21 said first, disposable part is liquid tight when not in 22 use. 23 (Amendment dated Feb. 14, 2007 at 2). The language of amended claim 1, 24 italicized above, is of similar scope and wording to the corresponding 25 language of claim 1 as originally filed. 26 The Appellants have shown that the Examiner erred in rejecting claim 27 1 under § 112, para. 1 as failing to comply with the written description 28 requirement. Since claims 2-20 are rejected under § 112, para. 1 only on the 29 Appeal 2009-004138 Application 11/037,473 6 basis of their dependence from claim 1, the Appellants have shown that the 1 Examiner erred in rejecting claims 2-20 under § 112, para. 1. 2 Only the rejection of claim 1 under § 102(b) remains. Hess describes 3 a liquid droplet spray device 5 including a housing 8 provided with a space 9 4 and a perforated membrane 18 covering the space 9. (Hess, col. 5, ll. 26-29 5 and col. 7, l. 65 – col. 8, l. 1). A supply tube 7 conveys the liquid substance 6 4 contained in a reservoir 3 to the space 9 by way of capillary action. A 7 valve 17 isolates the reservoir 3 from the space 9. (Hess, col. 4, ll. 49-50, 8 54-57 and 61-63). An electromagnetic actuation means in the form of a 9 piezoelectric element 10 is arranged to actuate a liquid substance 4 in the 10 space 9. (Hess, col. 6, ll. 23-27). An electronic control means 21 controls 11 the piezoelectric element 10. (See Hess, col. 9, ll. 2-7). 12 Hess discloses that the reservoir 3, the valve 17, and the liquid droplet 13 spray device 5 are associated in a modular fashion and may be disposable. 14 This arrangement allows the use of the same power source 22 and electronic 15 control means 21 for multiple diverse therapies. (Hess, col. 7, ll. 38-43). 16 This disclosure implies that the liquid droplet spray device 5 and the 17 electronic control means 21 are in separate modules or parts for purposes of 18 disposing of the reservoir 3 and the valve 17. 19 Although the Appellants do not define the terms “disposable” and 20 “non-disposable” formally in the Specification, the Specification does 21 indicate that the term “disposable” is limited to a part which is capable of 22 being removed from the system and replaced. (See Spec. 8, ll. 5-9; see also 23 Spec. 6, ll. 18-23). Hess does not disclose removing a first part in which the 24 reservoir 3 and the valve 17 are arranged from a second part in which the 25 liquid droplet spray device 5 is arranged. At least one limitation of claim 1 26 Appeal 2009-004138 Application 11/037,473 7 is missing from the system described by Hess. The Appellants have shown 1 that the Examiner erred in rejecting claim 1 under § 102(b) as being 2 anticipated by Hess. 3 4 DECISION 5 We REVERSE the Examiner’s decision rejecting claims 1-20. 6 7 REVERSED 8 9 10 Klh 11 12 GRIFFIN & SZIPL, PC 13 SUITE PH-1 14 2300 NINTH STREET, SOUTH 15 ARLINGTON, VA 22204 16