Ex Parte Lintern et al

Patent Trial and Appeal Board

Mar 30, 2018

12302515 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/302,515 11/26/2008
23347 7590 04/03/2018
GLAXOSMITHKLINE
Global Patents UP4110
1250 South Collegeville Road
Collegeville, PA 19426
FIRST NAMED INVENTOR
Richard David Lintern
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.
PB61800USw 7949
EXAMINER
CERNOCH, STEVEN MICHAEL
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
laura.m.mccullen@gsk.com
US_cipkop@gsk.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD DAVID LINTERN,
ALLEN JOHN PEARSON, and PAUL KENNETH RAND
Appeal2017-001802
Application 12/302,515
Technology Center 3700
Before LISA M. GUIJT, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 45, 48, 49,
52, 53, 57-59, and 62-73, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as GlaxoSmithKline, LLC. App. Br.
3.
Appeal2017-001802
Application 12/302,515
Claimed Subject Matter
The claimed subject matter "relates to a fluid dispenser, for example
for a nasal spray." Spec. 1. In particular, the fluid outlet at the top of nozzle
16 of the fluid dispenser may be sealed by 0-ring 54 that is lodged between
the nozzle and end wall 50 of the nipple 60, which extends from piston
member 14, as shown in Figure 1 of the Specification. See Spec. 27. Claim
45, the sole independent claim, illustrates the claimed subject matter and is
reproduced below with disputed limitations emphasized.
45. A fluid dispenser having a fluid outlet through which fluid
will, in use, be dispensed, a seal member for sealing the fluid
outlet which is movable from a normal closed state, in which the
seal member prevents fluid being dispensed through the fluid
outlet, to an open state, in which the seal member opens the fluid
outlet for dispensing therefrom, a member movable between a
normal first position, in which the member acts on the seal
member to locate the seal member in the closed state, and a
second position, which enables the seal member to move to the
open state, and a biasing mechanism which biases the member to
its first position, wherein the dispenser is adapted such that the
member moves from the first position to the second position in
response to actuation of the fluid dispenser, wherein the seal
member is supported on a support member having an open-ended
passageway therethrough, wherein the member moves between
the first and second positions relative to the support member and
the seal member, wherein the member has a free end which, in
the first position, extends into the passageway to push against the
seal member to push the seal member into sealing engagement
with the fluid outlet, and wherein the member and the support
member are interengageable to limit how far the free end is able
to extend into the passageway to push against the seal member
wherein the support member and the seal member are separate
from each other.
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Application 12/302,515
Rejections
I. Claims 45, 48, 49, 52, 53, 57-59, 62---64, and 66-73 stand
rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Petit (WO
03/078073 Al, published Sept. 25, 2003)2 and Ruscitti (US 5,842,616,
issued Dec. 1, 1998). Final Act. 2---6.
II. Claim 65 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Petit, Ruscitti, and Brulle (US 6,443,370 Bl, issued Sept.
3, 2002). Final Act. 6-7.
DISCUSSION
Rejection I
Appellants argue claims 45, 48, 49, 52, 53, 57-59, 62-64, and 66-73
as a group. App. Br. 6-11. 3 We select claim 45 as representative.
37 C.F.R. § 41.37(c)(l)(iv).
2 Petit is published in French, with a Title and Abstract in English. The
record also contains an English translation of Petit provided by Appellants.
See Amedment (filed Aug. 15, 2011); Information Disclosure Statement
(filed Aug. 15, 2011).
3 In one paragraph, Appellants contend Petit does not teach additional
features of claims 64 and 67. See App. Br. 11. The conclusory statements
regarding these claims do not constitute separate arguments under our rules.
37 C.F.R. § 41.37(c)(l)(iv) ("The arguments shall explain why the examiner
erred as to each ground of rejection contested by appellant. ... A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (holding that "the Board reasonably
interpreted Rule 41.3 7 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art").
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Application 12/302,515
Appellants argue claim 45 's recitation that "the member and the
support member are interengageable to limit how far the free end is able to
extend into the passageway to push against the seal member" (hereinafter,
the "interengageable" limitation) provides the benefit of protecting the seal
member from damage caused by being pushed too forcefully by the free end
of the member. App. Br. 6. Appellants argue "Petit provides no means to
limit the degree to which the free end (5) of the rigid insert (4) pushes
against the plugging element (10)," but acknowledge "Ruscitti discloses an
interengagement (of piston ( 13) with seat ( 1 7)) to limit how far the piston
(13) can move in the sealing direction." Id. at 6-7. Appellants contend,
however, that in Ruscitti "there is no sealing arrangement of the type in the
claimed dispenser; namely, a seal member being pushed by a member into
sealing engagement with a fluid outlet." Id. at 6-7. Acknowledging that the
Examiner's rejection is based on combining Petit's teaching of a seal with
Ruscitti' s teaching of limiting movement of the piston, Appellants contend
"there is no motivation in either of Petit or Ruscitti to make this
combination." Id. at 8.
In particular, Appellants argue first that "Petit does not identify a
problem to be solved that would lead to its modification to the form of the
claimed fluid dispenser." Id. Although "it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does,"
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), "[t]he obviousness
analysis cannot be confined by a formalistic conception of the words
teaching, suggestion, and motivation, or by overemphasis on the importance
of published articles and the explicit content of issued patents," id. at 419.
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Application 12/302,515
See also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009) ("[W]hile an analysis of obviousness always depends on
evidence that supports the required Graham factual findings, it also may
include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference or expert opinion."). Accordingly, Appellants' contention, namely
that one of the references relied on by the Examiner does not identify a
problem to be solved, does not inform us of error. Here, the Examiner relies
on Ruscitti in finding one of ordinary skill in the art would have used a
support member to limit how far a moveable member can travel in order "to
prevent any damage to the movable member or to prevent the movable
member from damaging the outlet (Ruscitti - col. 3, lines 11-18)." Final
Act. 4.
Appellants argue secondly that "Petit and Ruscitti concern
fundamentally different types of sealing arrangements for a fluid dispenser"
because Petit's piston pushes on a seal member whereas Ruscitti's piston
"itself has the sealing function and so obviates the need for a separate seal
member." App. Br. 9. Appellants contend Ruscitti also "does not teach
limiting the travel of the piston to avoid damage of another part of the
device, but just damage of the piston (tip of appendix 16) itself." Id.
Appellants also argue Ruscitti is not reasonably pertinent to addressing a
problem concerning a seal member pushed into sealing engagement because
Ruscitti' s piston appendix 16 forms the closure seal for the dispenser of
Ruscitti. Id.
To the extent Appellants are arguing that Ruscitti is not analogous art
to the claimed invention, the argument does not inform us of error because
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Application 12/302,515
Appellants have not addressed the Examiner's finding, with which we agree,
that "both Petit and Ruscitti are well within the field of applicant's endeavor
as both pertain to atomizers with piston type actuators to seal an outlet."
Final Act. 7.
We also consider Appellants' arguments regarding the "reasonably
pertinent" prong of the analogous art inquiry as they may relate more
generally to whether or not one of ordinary skill in the art would have
combined Petit and Ruscitti, but we are not informed of error in the rejection
on this basis. Ruscitti teaches:
[W]hen the piston 13 is inserted into the seat 1 7 and is retained
by the step which delimits this seat, the tip or end of the appendix
16 remains free (FIG. 2), [i.e.,] spaced from the opposing surface
of the insert 6, hence not suffering damage by the effect of the
thrust of the spring 15, because it does not come into contact with
the adjacent surface of the insert 6 ....
Ruscitti col. 3, 11. 12-18. Ruscitti supports the Examiner's finding that one
of ordinary skill in the art would have wanted to limit the travel of Petit's
piston, as taught by Ruscitti, in order "to prevent any damage to the movable
member or to prevent the movable member from damaging the outlet."
Final Act. 4. The end or "appendix" of the piston near the nozzle in both
Ruscitti and Petit has a smaller diameter than the rest of the piston. See
Ruscitti Figs. 1-2; Petit Figs. 1-2. Ruscitti teaches that "because of the very
small dimensions of the appendix" it can easily become ruined or broken if
"thrust with considerable force (by the spring acting on the piston) against
the insert comprising the discharge nozzle." Ruscitti col. 1, 11. 51-55, cited
at App. Br. 9. Because of the similarities in structure of the piston, one of
ordinary skill in the art would have recognized that Petit's dispenser could
similarly benefit from a step formed in the structure surrounding the piston
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Application 12/302,515
to act on the larger diameter of the piston and prevent excessive force from
acting on the appendix. Appellants have not persuasively explained why
Petit' s use of plugging element 10 would nullify the benefit of limiting
movement as taught in Ruscitti. 4 Indeed, we agree with the Examiner that
one of ordinary skill in the art considering Ruscitti' s teachings would
additionally have recognized that limiting the movement of the piston may
also prevent damage to Petit's plugging element 10 by preventing the piston
from exerting excessive force on it. Although this is not explicitly taught in
Ruscitti, the obviousness analysis "may include recourse to logic, judgment,
and common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion." Perfect
Web, 587 F.3d at 1329.
Appellants also contend one of skill in the art would not have
combined Petit and Ruscitti in the manner claimed because "Ruscitti
discloses the need for the free end of the piston (13) to not be pushing
against another structure," and that this "essential teaching" of Ruscitti "is
completely at odds with the requirement in Petit for the free end of the
piston (4) to push against the seal member (10)." App. Br. 9--10; see Reply
Br. 2--4. We are not apprised of error by this argument. The concern with
damage to Ruscitti's appendix is with this small-dimensioned part being
"thrust with considerable force ... against the insert comprising the
discharge nozzle." Ruscitti col. 1, 11. 52-54. Thus, the "end of said
4 The Federal Circuit has "repeatedly held that the motivation to modify a
prior art reference to arrive at the claimed invention need not be the same
motivation that the patentee had." Alcon Research, Ltd. v. Apotex Inc., 687
F.3d 1362, 1368 (Fed. Cir. 2012) (collecting cases). By implication, the
motivation may also be the same.
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Application 12/302,515
appendix remains spaced from the opposing surface of said insert." Id. at
col. 2, 11. 10-12. Petit is different than Ruscitti in that the plugging element
10 immediately surrounding the small-diameter extension of the piston "can
move and/ or be deformed between a sealing position in which the discharge
channel (2) is blocked and a non-sealing position in which the discharge
channel (2) is not blocked." Petit Abstract. Thus, Petit's deformable
plugging element 10 does not present the same concern as the rigid seat of
Ruscitti's nozzle, and one of ordinary skill in the art would have been
concerned instead with limiting the extent to which the small-diameter
portion of Petit's piston could be forced (even indirectly) against the rigid
nozzle structure surrounding the plugging element 10.
Appellants also contend that, even if one of ordinary skill in the art
would have wanted to limit the degree of travel of Petit's piston (rigid insert
4 ), it is incorrect to assume that "this would be through providing
interengagability between the rigid insert ( 4) and the hollow stem ( 5 5 -
presents retention device (25)) which supports the plugging element (10)."
App. Br. 10-11. Appellants argue the error stems from the Examiner's
allegedly incorrect finding that Ruscitti's bush (8) and wall (12) thereof can
"be a 'support member' as that term is to be understood in the context of the
claims." Id. at 11. Appellants assert that the rejection "ignores the fact that
any such interengagability could be between the rigid insert ( 4) and another
component of the Petit dispenser; see Figure 4 of Petit showing a fuller view
of the dispenser." Id.
We do not discern error in the Examiner's labeling of Ruscitti's wall
12 as a "support member." Final Act. 3. Appellants' argument is premised
on the fact that Ruscitti' s wall 12 does not support a seal member as required
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Application 12/302,515
by claim 45. App. Br. 8. The Examiner's rejection, however, finds that
Petit teaches a support member that supports a seal, and Appellants do not
challenge these findings. Final Act. 3; see ans. 3--4. Like the nozzle 16 in
Appellants' Figure 1, Ruscitti' s support member is the structure that
surrounds the piston. One of ordinary skill in the art looking to limit the
movement of Petit's piston, as in Ruscitti, logically would have used a step
in the nozzle structure surrounding the piston, as taught by Ruscitti. See
Final Act. 4 (finding Ruscitti "teaches a movable member (Fig. 2, 16) ...
and a support member (12) wherein the member is movable relative to the
support member," as recited in claim 45).
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claim 45 under
35 U.S.C. § 103(a) as unpatentable over Petit and Ruscitti. Thus, we sustain
the rejection of claim 45, and, for the same reasons, the rejection of claims
48, 49, 52, 53, 57-59, 62---64, and 66-73, which are not argued separately.
Rejection II
Appellants' Appeal Brief does not refer to claim 65, waiving
argument as to the rejection of this claim. In the Reply Brief, Appellants
include claim 65 in the listing of claims "currently under appeal," Reply Br.
2, and in the listing of claims in the "Conclusion," id. at 5. For the same
reasons as claim 45, we sustain the rejection of claim 65 under 35 U.S.C.
§ 103(a).
DECISION
We affirm the Examiner's rejections of claims 45, 48, 49, 52, 53, 57-
59, and 62-73.
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Application 12/302,515
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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