Ex Parte Hillis et al

Board of Patent Appeals and Interferences

Mar 20, 2012

11417898 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte W. DANIEL HILLIS, RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, ELIZABETH A. SWEENEY,
CLARENCE T. TEGREENE, RICHA WILSON, LOWELL L. WOOD JR.,
and VICTORIA Y.H. WOOD
__________

Appeal 2010-009459
Application 11/417,898
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
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 anticipation and obviousness. We have jurisdiction under 35
U.S.C. § 6(b).
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Application 11/417,898

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STATEMENT OF THE CASE
The following claim is representative:
1. A controllable release nasal system, comprising:
a structural element including at least one positioning portion
configured for contacting an interior surface of a nasal region and mounting
the structural element within the nasal region of a subject;
a delivery portion mounted relative to the structural element and
configured to release at least one material responsive to a delivery control
signal; and
control signal generation circuitry configured to generate a delivery
control signal corresponding to a desired pattern of release of the at least one
material into the nasal region.

Cited References

The Examiner relies on the following prior art references:

Lattin et al. US 5,551,953 Sep. 3, 1996
Reznick US 5,947,119 Sep. 7, 1999
Ferren et al. [„634] US 2007/0225634 A1 Sep. 27, 2007
Ferren et al. [„929] US 2007/0066929 A1 Mar. 22, 2007
Ferren et al. [„868] US 2007/0010868 A1 Jan. 11, 2007
Ferren et al. [„334] US 2007/0088334 Apr. 19, 2007

Grounds of Rejection
Claims 1, 5, 6, 17-19, 63, 66, 71, 126-128, 131, 133, and 134 are
rejected under 35 U.S.C. § 102(b) over Reznick.
Claim 130 is rejected for obviousness under 35 U.S.C. § 103(a) over
Reznick in view of Lattin.
Claims 1, 5, 6, 17-19, 63, 66, 71, and 126-134 are rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-2, 78, 141, 143-145 of U.S. Pub Nos.
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2007/0066929; claims 48-62,139 of U.S. Pub Nos. 2007/0010868; claims
126-149 of U.S. Pub Nos. 2007/0088334 and claims 1-4, 38-39, 50-51, 62,
83 of U.S. Pub Nos. 2007/0225634.

FINDINGS OF FACT
The Examiner‟s findings of fact are set forth in the Answer at pages 3-9.

Discussion
Claims 1, 5-6, 17-19, 63, 66, 71, 126-128, 131, and 133-134 are
rejected under 35 U.S.C. § 102(b) over Reznick.

ISSUE
The Examiner concludes that Reznick discloses each element claimed
either explicitly or inherently. (Ans. 3-7). Particularly, the Examiner argues
that Reznick inherently includes a delivery portion release substance or
material responsive to electrical circuitry/control signal and the control
signal generation circuitry configured to generate a delivery signal
corresponding to the desired pattern of release of the at least one material
into the nasal region. (Ans. 4-5.)
Appellants argue that Reznick does not disclose „“a delivery portion
mounted to the structural element and configured to release at least one
material responsive to a delivery control signal.”‟ (App. Br. 31-32).
Appellants argue that the Examiner failed to provide any evidence as to how
the mere disclosure of an electrical charge is equivalent to a delivery control
signal corresponding to a desired pattern of release. (App. Br. 38.) In other
words, Appellants challenge whether the Examiner has established that
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Reznick inherently includes a delivery portion responsive to electrical
circuitry/control signal and the control signal generation circuitry configured
to generate a delivery signal corresponding to the desired pattern of release
of the material into the nasal region.
The issue is: Does the cited prior art explicitly or inherently teach
each element of the invention as claimed?

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
“„Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient. [Citations omitted.] If, however, the
disclosure is sufficient to show that the natural result flowing from the
operation as taught would result in the performance of the questioned
function, it seems to be well settled that the disclosure should be regarded as
sufficient.‟” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)) (emphasis and
bracketed material in original).

“Under the principles of inherency, if a structure in the prior art
necessarily functions in accordance with the limitations of a process or
method claim of an application, the claim is anticipated. In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986).
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“To serve as an anticipation when the reference is silent about the
asserted inherent characteristic, such gap in the reference may be filled with
recourse to extrinsic evidence. Such evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference. . . . This modest flexibility in the rule that „anticipation‟ requires
that every element of the claims appear in a single reference accommodates
situations where the common knowledge of technologists is not recorded in
the reference.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d
1264, 1268 (Fed. Cir. 1991).

“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
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.

ANALYSIS
Appellants argue that Reznick does not disclose „“a delivery portion
mounted to the structural element and configured to release at least one
material responsive to a delivery control signal.”‟ (App. Br. 31-32).
Appellants argue that the Examiner failed to provide any evidence as to how
the mere disclosure of an electrical charge is equivalent to a delivery control
signal corresponding to a desired pattern of release. (App. Br. 38.) In other
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words, Appellant challenges whether the Examiner has established that
Reznick inherently includes a delivery portion responsive to electrical
circuitry/control signal and the control signal generation circuitry configured
to generate a delivery signal corresponding to the desired pattern of release
of the material into the nasal region.
We are persuaded by Appellants‟ arguments. We conclude that the
Examiner has not established a prima facie case of anticipation based upon
inherency. Inherency may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient to establish inherency. While the
Examiner makes a general statement concerning inherency in the Answer at
pages 4-5, the Examiner has not established that one of ordinary skill in the
art would have recognized the allegedly inherent elements as necessarily
present in the disclosure of Reznick. The Examiner has not established that
Reznick necessarily includes a delivery portion responsive to electrical
circuitry/control signal and the control signal generation circuitry configured
to generate a delivery signal corresponding to the desired pattern of release
of the material into the nasal region. Regarding the rejection based on §
103, the Examiner has not established that the limitations missing from
Reznick would have been obvious to a person of ordinary skill in the art.
The anticipation and obviousness rejections are reversed on this basis.

Claims 1, 5-6, 17-19, 63, 66, 71, and 126-134 are rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-2, 78, 141, 143-145 of U.S. Pub Nos.
2007/0066929; claims 48-62, and 139 of U.S. Pub Nos. 2007/0010868;
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claims 126-149 of U.S. Pub Nos. 2007/0088334 and claims 1-4, 38-39, 50-
51, 62, 83 of U.S. Pub Nos. 2007/0225634. “This is a provisional
obviousness type double patenting rejection because the conflicting claims
have not in fact been patented”. (Answer 9).
The Appellants do not traverse the merits of any of the obviousness-
type double patenting rejection, which are therefore, summarily affirmed.

CONCLUSION OF LAW
The anticipation and obviousness rejections are reversed. The
obviousness-type double patenting rejections are affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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