Ex Parte Langford et al

Patent Trial and Appeal Board

Dec 15, 2016

12713761 (P.T.A.B. Dec. 15, 2016)

United States Patent and Trademark Office
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.
12/713,761 02/26/2010 Alan Langford TEVE-123US1 5337
64955 7590 12/19/2016
RATNFRPRFSTTA
EXAMINER
2200 RENAISSANCE BLVD MATTER, KRISTEN CLARETTE
SUITE 350
KING OF PRUSSIA, PA 19406 ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
12/19/2016 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):
PCorrespondence @ ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN LANGFORD, FERGAL HENNESSY, and
MICHAEL HOLROYD
Appeal 2014-0083711
Application 12/713,7612
Technology Center 3600
Before STEFAN STAICOVICI, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—3, 6—8, 11—30, and 33. We have
jurisdiction under 35 U.S.C. § 6(b). The Appellants’ representative
appeared for oral hearing in this appeal on December 7, 2016 (“Hearing”).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Apr. 7, 2014), Reply Brief (“Reply Br.,” filed July 22,
2014), and Specification (“Spec.,” filed Feb. 26, 2010), and to the
Examiner’s Answer (“Ans.,” mailed May 27, 2014) and Final Office Action
(“Final Act.,” mailed Aug. 6, 2013).
2 According to the Appellants, “[t]he real Party [i]n Interest in this matter is
TEVA Pharmaceuticals, Inc. by virtue of an assignment to Norton
Healthcare Ltd.” Appeal Br. 1.
Appeal 2014-008371
Application 12/713,761
STATEMENT OF THE CASE
The Appellants’ invention “relates to the field of inhalers used for the
delivery of medicaments indicated for the treatment, or alleviation of the
effects of any ailment including respiratory complaints and various systemic
diseases, via the delivery of a medicament by the pulmonary route.”
Spec. 1,11. 13-16.
Claims 1, 7, 12, 16, 19, 25, and 33 are the independent claims on
appeal. Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A metered dose aerosol actuator for use in dispensing
medicament from a pressurized medicament container
having a valve stem at one end for dispensing the
medicament and a closed end opposite the valve stem,
the actuator comprising:
a housing adapted to receive the container in an
assembled position, the housing having a base and an
open end opposite the base, the container in the
assembled position being oriented with the valve stem
proximate to the base and the closed end proximate to the
open end so that when the housing is oriented in a use
position with the open end facing upwardly, the container
will be in an inverted orientation with the valve stem
facing downwardly and the closed end facing upwardly;
a stem block extending from the base of the
housing toward the open end of the housing;
a cavity in the stem block defining a mating
surface that is adapted to engage the valve stem of the
medicament container with the container in the
assembled position;
a spray orifice in the stem block in fluid
communication with the cavity via an outlet channel;
and a sump in the cavity extending from the outlet
channel toward the base of the housing, the sump being
molded in a continuous form and having a continuous
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Application 12/713,761
smooth, rounded interior surface without angles or
comers where the medicament being dispensed could
accumulate or deposit.
REJECTIONS
Claims 1—3, 6—8, and 11—30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Smith (US 5,069,204, iss. Dec. 3, 1991) and
Bames (US 5,894,964, iss. Apr. 20, 1999). Final Act. 2—3.
Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith, Bames, and Engelbreth (US 6,345,617 Bl, iss.
Feb. 12,2002). Id. at 4.
ANALYSIS
The Appellants argue all of the claims as a group. Appeal Br. 4. We
select claim 1 as representative; claims 2, 3, 6—8, 11—30, and 33 stand or fall
with claim 1. See 37 C.F.R. § 41.37(l)(c)(iv).
The Appellants contend the Examiner’s rejection is in error because
Bames is not analogous art. Appeal Br. 5—12; Reply Br. 1—3. Specifically,
the Appellants argue that Bames is not from the same field of endeavor as
the claimed invention and is not reasonably pertinent to the particular
problem with which the inventor is involved. Id. After careful
consideration of the Appellants’ Appeal and Reply Briefs and of the
arguments presented during the Hearing, for at least the reasons below, we
disagree.
“Two separate tests define the scope of analogous prior art: ( 1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
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endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381F.3d 1320,
1325 (Fed. Cir. 2004).
We are not persuaded by the Appellants’ argument that Barnes does
not pass the second test of being reasonably pertinent to the inventor’s
particular problem. See Appeal Br. 8—11. The Appellants argue that the
claimed invention is “directed to solving the problem of inconsistent doses.”
Id. at 9. In contrast, the Examiner contends the invention is directed to the
problem “being the accumulation and/or deposition of medicament.” Ans. 4
(citing Spec. 1,11. 25—28). The Specification provides that “there remains a
need for improved, superior sumps to address and solve the problem of
medicament accumulation and/or deposition and the concomitant reduction
in the dose available resulting in variations and inconsistencies of the actual
dose administered, blockage of the spray orifice, and medicament flaking.”
Spec. 1,11. 25—28. The Declaration of Robert Clayborough, Ph.D, dated
Sept. 7, 2012, and submitted by the Appellants on Sept. 10, 2012, provides,
at paragraph 12, “a common problem with pMDI [medical inhaler] devices
is internal blockages. Blockages can affect the efficacy of the device
because it can lead to inconsistent dosing. . . . Suspensions have a tendency
to agglomerate and this can often lead to blockages.” Thus, we agree with
the Examiner that the invention is directed to the problem of medicament
accumulation and/or deposition that can result in blockage of spray orifices.
Barnes is directed to an aerosol actuator with a mathematically
continuous arrangement that minimizes nozzle blockage. Barnes, Abstract.
The mathematically continuous arrangement provides that the surface of
inner actuator chamber has no discontinuities such as comers or edges. Id.
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at col. 2,1. 65 through col. 3,1. 3. This arrangement minimizes deposition
(accumulation) of the composition material that results in nozzle blockage,
i.e., blockage of the spray orifice. Id. at col. 8,11. 11—15. Thus, Barnes
similarly pertains to the problem of deposition of composition material that
can result in blockage of a spray nozzle/orifice. As such, we find that
Barnes is reasonably pertinent to the particular problem and constitutes
analogous art.
We also find unpersuasive the Appellants’ argument that the
Examiner impermissibly uses hindsight in defining the problem because the
Examiner focuses on the solution rather than the problem. See Appeal Br.
11—12. Rather, we find the Examiner reasonably focuses on the problem of
material accumulation that can lead to blockages. Moreover, to the extent
that the Appellants argue the Examiner improperly used hindsight, the
argument is of no import where the Examiner states a rationale for the
modification, namely, “minimize[] nozzle blockage in the actuator for better
medicament delivery to a user” (see Final Act. 3), that we determine is
supported adequately by sufficient facts. See In re Cree, 818 F.3d 694, 702,
n.3 (Fed. Cir. 2016). Thus, we are not persuaded that the Examiner’s
rejection of independent claim 1 is in error, and we sustain the Examiner’s
rejection of claim 1. We also sustain the rejections of claims 2, 3, 6—8, 11—
30, and 33, as they fall with claim 1.
DECISION
The Examiner’s rejections of claims 1—3, 6—8, 11—30, and 33 under
35 U.S.C. § 103(a) are AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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