Ex Parte Glynn

Board of Patent Appeals and Interferences

Jun 19, 2012

11637275 (B.P.A.I. Jun. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/637,275 12/11/2006 Kenneth P. Glynn GTI-114A 1542
7590 06/20/2012
Kenneth P. Glynn
24 Mine Street
Flemington, NJ 08822
EXAMINER
LUCCHESI, NICHOLAS D
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
06/20/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KENNETH P. GLYNN
__________

Appeal 2011-000299
Application 11/637,275
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
DEMETRA J. MILLS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2011-000299
Application 11/637,275

2
STATEMENT OF THE CASE
The following claim is representative and reads as follows:
31. A drug delivery device, which comprises:
(a.) a main housing having a linear shaft with a proximal end, a distal end
and a side wall, and having a drug holding reservoir within said shaft toward
said proximate end, and having a drug release conduit located on said shaft
side wall toward said distal end, and having a shaft outlet located at said
distal end of said shaft;
(b.) a fill port, the fill port being connected to a fill port inlet conduit;
(c.) said fill port inlet conduit connected to said shaft at said holding
reservoir;
(d.) a one-way valve located within said inlet conduit between said fill port
and said holding reservoir positioned to permit flow from to said holding
reservoir and not the opposite;
(e.) a slide valve having a proximal end, said proximal end being a first wall,
and having a distal end, said distal end being a second wall, said side valve
having a side wall connecting said distal end and said proximal end, said
slide valve first wall facing toward said holding reservoir and said slide
valve second wall facing away from said holding reservoir, said first wall
having a liquid inlet channel connected to said side wall, and said
second wall having a liquid outlet channel connected to said side wall, said
liquid inlet channel and said liquid outlet channel being in proximity to one
another and not directly connected to one another, and having a seal located
on said side wall between said liquid inlet channel and said liquid outlet
channel, said slide valve being located in said shaft and adapted for
movement within said shaft from a first position to a second position and
vice versa;
wherein when said slide valve is in said first position, said slide valve
is away from said drug release conduit and said drug holding reservoir is
closed from said drug release conduit, and when said slide valve is in said
second position, said slide valve is located at said drug release conduit and
said drug release conduit is open to permit liquid drug to pass from said drug
holding reservoir through said slide valve via, in sequence, said
liquid inlet channel, said drug release conduit and said liquid outlet channel,
to a needle;
(f.) a needle functionally connected to said slide valve liquid outlet channel;
(g.) a plunger being partially and slideably located in said proximal end of
said shaft, said
Appeal 2011-000299
Application 11/637,275

3
plunger having a rod and a piston, said plunger having sufficient length to be
moved from a first plunger position to a second plunger position to a third
plunger position, and vice versa;
(h.) a spring located in said shaft at said distal end of said slide valve biasing
said slide valve to its first position;
wherein, when the drug fill port is connected to a liquid drug source,
and the plunger is pulled back from the first position to the second position,
the liquid drug will be moved from its source into the fill port through said
fill port inlet conduit into the drug holding reservoir, and when said plunger
is pushed forward from its second position toward its first position, said
spring will compress and said slide valve will move from its closed, first
position to its open, second position in alignment with said drug release
conduit and said needle will move to a functional position through said shaft
outlet, and when said plunger is moved from its second position to its third
position, said spring remains compressed and the force of the plunger will
advance the liquid drug through said liquid inlet channel, through said drug
outlet conduit, through said liquid outlet channel and through said needle for
injection thereof.

Cited References

The Examiner relies on the following prior art references:

Lesch, Jr. US 2005/0020984 A1 Jan. 27, 2005
Landau et al. US 2004/0111054 A1 Jun. 10, 2004
Dixon US 5,374,250 Dec. 20, 1994

Grounds of Rejection
 Claims 31-48 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lesch in view of Landau and Dixon.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages
3-10.
Appeal 2011-000299
Application 11/637,275

4
Discussion
ISSUE
The Examiner concludes that Lesch discloses each element claimed
except for a fill port, spring and retractable needle. The Examiner relies on
Landau for the disclosure of a fill port for a needle free injection system.
The Examiner concludes that “it would have been obvious to one of ordinary
skill in the art at the time the invention was made to modify Lesch's drug
delivery device to include a fill port connected to an inlet conduit and with a
one-way valve, as taught by Landau, for the purpose of supplying the drug
holding reservoir with suitable fluids and for preventing backflow of the
fluid.” (Ans. 5.) The Examiner further relies on Landau for the disclosure of
a spring, and Dixon for the disclosure of a retractable needle. (Ans. 6.)
Appellant argues that Lesch does not disclose a slide valve with a
liquid outlet channel connected to a side wall. (App. Br. 12.)
The issue is: Does the cited prior art support the Examiner’s rejection
by disclosing a slide valve with a first wall having a liquid inlet channel
connected to said side wall, and said slide valve with a second wall having a
liquid outlet channel connected to a side wall, as claimed?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Appeal 2011-000299
Application 11/637,275

5
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
Moreover, “obviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

ANALYSIS
We do not find that the Examiner has established a prima facie case
of obviousness on the evidence before us.
The Examiner argues that “Lesch, JR discloses liquid outlet channel
90 on second wall 80 (See Figure below and paragraph 0043; ie. ‘The
preferred distal side 80 of the stopper 70 also has channels 90 for facilitating
the flow of the medicament 44’) and discloses channel 90 is connected to a
side wall 82.” (Ans. 11.)
Figure 2 of Lesch is reproduced below. Figure 2 shows stopper 70
with sides 78 and 80, and sidewall 82.
Appeal 2011-000299
Application 11/637,275

6

We do not find that the stopper 70 of Lesch is a slide valve with a first
wall having a liquid inlet channel connected to a side wall, and said slide
valve with a second wall having a liquid outlet channel connected to a side
wall, as claimed. Side channels 74 and 76 of Lesch are liquid channels but
are not part of the stopper/slide valve. Channel 90 does not connect to a side
wall (which is not a proximal or distal end).

CONCLUSION OF LAW
The cited references do not support the Examiner’s obviousness
rejection. The rejection is reversed.

REVERSED
alw