Ex Parte Morrison et al

Board of Patent Appeals and Interferences

May 16, 2012

11787274 (B.P.A.I. May. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK MORRISON, ERIC A. LIEBERMAN,
and LAKSHMI PENUGONDA
____________________

Appeal 2010-003987
Application 11/787,274
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, JAMES P. CALVE, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003987
Application 11/787,274

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-3, 5-18, 20, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellants’ claimed invention “relates to nebulizers, and more
particularly to devices and methods for detecting the level of drug solution
in a nebulizer.” Spec. 1, para. [02]. Claims 1 and 8 are the independent
claims on appeal, and are reproduced below:
1. A nebulizing drug delivery device, comprising:
a drug solution container for holding a drug
solution therein;
a piezoelectric transducer connected to the
drug solution container; and
electronics components electrically
connected to the transducer, the electronics
components being constructed and arranged to
provide A/C current to the transducer to drive the
transducer, the electronics components comprising
a sensor for sensing an electrical characteristic
associated with the transducer during operation,
wherein the electrical characteristic
associated with the transducer comprises an
electrical characteristic that varies as a function of
at least the amount of drug solution disposed in the
drug solution container.

8. A method of using a nebulizing device,
comprising:
operating a piezoelectric transducer to
generate acoustic waves to aerosolize a liquid; and
measuring an electrical characteristic
associated with the transducer.
Appeal 2010-003987
Application 11/787,274

3
REJECTIONS1
Appellants seek review of the following rejections:
1. Claims 1-3 and 5-7 under 35 U.S.C. § 102(b) as anticipated by Haveri
(US 2003/0196660 A1; pub. Oct 23, 2003)
2. Claims 8-18, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over
Haveri.

ISSUES
This appeal presents the following issues:
Does Haveri disclose a sensor for sensing an electrical characteristic
associated with the transducer during operation, wherein that characteristic
varies as a function of at least the amount of drug solution disposed in the
drug solution container as called for in claim 1?
Does Haveri disclose operating a piezoelectric transducer to generate
acoustic waves to aerosolize a liquid as called for in independent claim 8?

ANALYSIS
Claims 1-3 and 5-7 as anticipated by Haveri
Independent claim 1 is directed to a nebulizing drug delivery device
that includes a transducer, and electronic components having a sensor for
sensing an electrical characteristic associated with the transducer during
operation, wherein that characteristic varies as a function of at least the
amount of drug solution disposed in the drug solution container.

1 Claim 4 is cancelled, and the objection to claim 19 is not before us on
appeal. App. Br. 3; see also Ans. 2 (stating the status of claims in the
Appellants’ Brief is correct).
Appeal 2010-003987
Application 11/787,274

4
The Examiner’s determination of anticipation is based in part on a
finding that Haveri discloses electronics components (control unit 4)
comprising a sensor (mesh plate 52 and electrode 38) for sensing an
electrical characteristic associated with the transducer (piezoelectric element
56), wherein the electrical characteristic associated with the transducer
comprises an electrical characteristic that varies as a function of at least the
amount of drug solution disposed in the drug solution container (reservoir
17). Ans. 3-4, 8-9; see also Haveri, paras. [0055], [0059]-[0060]; figs. 1, 2.
Haveri discloses a nebulizing drug delivery device (nebulizer 1) that
stores drug solution (liquid) in a drug solution container (liquid chamber 60
of reservoir 17). Paras. [0043], [0046], [0055]; figs. 1, 2. From liquid
chamber 60, the liquid passes through valve 18 and forms a column of liquid
between mesh plate 52 (bottom of column) and electrode 38 (top of
column).2 Paras. [0057]-[0058]; figs. 1, 2, 4a. Electrode 38 and mesh plate
52 measure the presence and magnitude of liquid therebetween, and based
upon this measurement, control unit 4 operates valve 18. Para. [0059].
In light of these disclosures, Haveri’s sensor (electrode 38 and mesh
plate 52) senses an electrical characteristic that varies as a function of the
amount of drug solution (liquid) therebetween, not as a function of at least
the amount of drug solution disposed in the drug solution container
(reservoir 17). See App. Br. 7-8; Reply Br. 3-4. Because the Examiner’s
finding is in error, the rejection of independent claim 1 as anticipated by
Haveri is in error. See Verdegaal Bros. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and

2 Tubular sensing electrode 38 surrounds the outlet of valve 18. Para.
[0057]; fig. 2.
Appeal 2010-003987
Application 11/787,274

5
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.”). As such, we cannot
sustain the rejection of independent claim 1 and its dependent claims 2, 3,
and 5-7.

Claims 8-18, 20, and 21 as unpatentable over Haveri
Independent claim 8 is directed to a method of using a nebulizing
device that includes the step of operating a piezoelectric transducer to
generate acoustic waves to aerosolize a liquid.
The Examiner found that Haveri’s piezoelectric transducer
(piezoelectric element 56), like Appellants’, utilizes high frequency
alternating electrical energization, thus generating acoustic waves to
aerosolize a liquid as called for in claim 8. Ans. 5, 10 (citing the
Specification 7, para. [31], for evidence Appellants’ transducer is energized
by high frequency alternating electrical energization). In particular, the
Examiner found Haveri’s disclosure that “when high frequency alternating
electrical energization is supplied to piezoelectric transducer” implies that
piezoelectric transducer generates acoustic waves. Ans. 10.
Haveri does not explicitly disclose that piezoelectric element 56
generates acoustic waves that aerosolize a liquid. Haveri, passim. Haveri’s
pressure transducer is comprised of a piezoelectric element 56 mounted to
the upper surface of disc like plate 50 having mesh plate 52 with a central
opening 51. Haveri, paras. [0049], [0052]; fig. 2. In operation, a power
source energizes piezoelectric element 56 causing it vibrate so that the
motion of plate 50 causes nebulized liquid to be discharged from holes 52 in
mesh plate 52. Haveri, paras. [0060]-[0061]; figs. 3a-3c. In light of these
Appeal 2010-003987
Application 11/787,274

6
disclosures, we cannot conclude by a preponderance of the evidence that
Haveri’s piezoelectric element 56 generates acoustic waves to aerosolize a
liquid. See Reply Br. 6-7; see also In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (“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.”).
As such, we cannot sustain the rejection of independent claim 8 and
its dependent claims 9-18, 20, and 21.

CONCLUSIONS
Haveri does not disclose a sensor for sensing an electrical
characteristic associated with the transducer during operation, wherein that
characteristic varies as a function of at least the amount of drug solution
disposed in the drug solution container as called for in claim 1.
Haveri does not disclose operating a piezoelectric transducer to
generate acoustic waves to aerosolize a liquid as called for in independent
claim 8.

DECISION
We reverse the Examiner’s decision to reject 1-3 and 5-7 under 35
U.S.C. § 102(b) as anticipated by Haveri.
We reverse the Examiner’s decision to reject claims 8-18, 20, and 21
under 35 U.S.C. § 103(a) as unpatentable over Haveri.

REVERSED
Klh