Ex Parte Pfeiffer

Patent Trial and Appeal Board

Jul 19, 2016

11587945 (P.T.A.B. Jul. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111587,945 11/14/2006
34375 7590 07/21/2016
NATH, GOLDBERG & MEYER
Joshua Goldberg
112 South West Street
Alexandria, VA 22314
FIRST NAMED INVENTOR
Jutta Pfeiffer
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.
27737U 7931
EXAMINER
YOUNG, RACHEL T
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
07/21/2016 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):
USPTO@nathlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WTT A PFEIFFER
Appeal2014-002765
Application 11/587 ,945 1
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jutta Pfeiffer (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1, 6, 7, 9, and 10.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellant, the real party in interest is Takeda GmbH. Br. 3
(filed August 30, 2013).
2 Claims 2-5 and 8 have been canceled. Br. 5.
Appeal2014-002765
Application 11/587 ,945
INVENTION
Appellant's "invention relates to a device which permits blinding of a
pressurized container for inhalation." Spec. 1.
Claim 1, reproduced below, is the only independent claim and is
representative of the claimed subject matter:
1. A pharmaceutical device comprising an aerosol container
having[:]
a base,
a cap made of metal and designed as a hollow cylinder
which is open at one end and has an opaque base at the other
end, and having an internal diameter narrowing slightly in the
direction of the open end of the cap providing an inner edge,
the cap being placed with a form fit onto the base of the
aerosol container, and the inner edge of the cap automatically
and irreversibly wedging with the base of the aerosol container,
and
a mouthpiece in which the aerosol container is received,
in which the aerosol container is a pressurized container with a
dispensing valve at the end directed away from the base of the
aerosol container and the height of the cap is chosen such that,
when the aerosol is actuated, the space between mouthpiece
and pressurized container is not changed.
Br. 21 (Claims App.) (emphasis added).
REJECTIONS
I. The Examiner rejected claims 1 and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Garby (US 5,799,651 iss. Sept. 1,
1998), Gupte (US 5,575,280 iss. Nov. 19, 1996), Jewett (US
5,622, 163 iss. Apr. 22, 1997), and Weinstein (US 5,411, 173 iss.
May 2, 1995).
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Application 11/587 ,945
IL The Examiner rejected claims 6, 7, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Garby, Gupte, Jewett, Weinstein,
and Bonney (US 2006/0096594 Al pub. May 11, 2006).
ANALYSIS
Rejection I
Appellant argues for patentability of claims 1 and 10 together as a
group. See Br. 10-16. Appellant does not separately argue for the
patentability of claim 10. Id. We select claim 1 as representative, and
claim 10 stands or falls with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
Appellant asserts the Examiner's obviousness rejection is erroneous
because Garby, Gupte, Jewett, and Weinstein "are silent regarding the
limitation[ s] reciting a cap made of metal ... " [and] "height of the cap is
chosen such that, when the aerosol is actuated, the space between
mouthpiece and pressurized container is not changed." Br. 13. "It is
Appellant's position that the cited combination of references fails to
establish a prima facie case of obviousness - at least in part due to their
complete lack of disclosure of a 'cap made of metal' where the height of the
cap is ' ... chosen such that, when the aerosol is actuated, the space between
mouthpiece and pressurized container is not changed."' Id. at 15-16. We
are not persuaded.
The Examiner finds,
modified Garby discloses a mouthpiece (118 Garby) in which
the aerosol container is received, in which the aerosol container
is a pressurized container with a dispensing valve (Col. 5, 11.
19-33, Col. 1, 11. 46-50) at the end directed away from the base
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Application 11/587 ,945
and the height of the cap is chosen such that, when the aerosol
is actuated, the space between mouthpiece and pressurized
container is not changed (the space still remains regardless of
movement of the canister), but is silent regarding that the cap is
made of metal.
Final Act. 3. Pointing to the fact that Weinstein teaches counter attachment
components may be made of metal (citing col. 2, 11. 50-53) the Examiner
concludes it was an obvious modification, at the time of Appellant's
invention, to use metal to make the claimed cap. Id. at 4. A skilled artisan
knew to use a metal cap because it provided "a strong material unlikely to be
damaged," moreover, using metal for the cap would have been an obvious
design choice because a skilled artisan would have recognized metal
"perform[ s] equally as well at incorporating a counting device on the base of
the aerosol container." Id.
Turning first to the "cap made of metal" limitation, Appellant argues a
skilled artisan would not have had any reason to modify Garby's counter cap
material to metal "because Weinstein teaches a counter attachment which is
an entirely different feature from a cap according to the instant claims."
Br. 15. In response, the Examiner notes, "Weinstein's counter 110 is
attached to the base of a medicament dispenser by a counter attachment 100
made of metal similar to Garby' s attachment cap that covers counter 50 ...
. " Ans. 7; see also Final Act. 8. A rational connection exists between the
factual findings and the Examiner's reason for modifying Garby to make the
cap from metal, as suggested by Weinstein. In re Kahn, 441 F .3d 977, 988
(Fed. Cir. 2006) (finding it necessary to establish a prim a facie case of
obviousness for the Examiner to articulate a reason with a rational
underpinning for the proposed modification).
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Application 11/587 ,945
The devices of Weinstein and Garby are sutliciently similar to
establish a rational connection between Weinstein's teaching that "the
materials used for construction of the components for the counter
attachments can be metal" (Weinstein 2: 50-51) and the Examiner's
conclusion a skilled artisan would have recognized the same metal was an
available material for making the modified cap of Garby to protect it against
damage. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.") Appellant's point of distinction is unpersuasive
because the Examiner's analysis "need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for [an
Examiner] can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ." Id. at 418. Therefore, we do not
agree the Examiner's analysis fails to establish a prima facie case that it
would have been obvious to make the modified cap of Garby from metal.
Next, turning to the "height of the cap is chosen such that, when the
aerosol is actuated, the space between mouthpiece and pressurized container
is not changed" limitation, we note that Appellant never actually articulates
a basis of disagreement. Br. 13. Specifically, Appellant does not direct us
to any specific error the Examiner allegedly made finding Garby to disclose
that limitation. For example, the Examiner finds the space between the
mouthpiece and pressurized container in the Garby device remains the same
regardless of movement of the canister during activation. Final Act. 3, 6;
see also Ans. 8. The Examiner even points out that, "Appellant's argument
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Application 11/587 ,945
regarding this limitation is unclear without further elaboration, since it
appears that appellant's pressurized container is depressed towards the
mouthpiece in a similar way to Garby's pressurized container." Ans. 8; see
also Final Act. 6.
Disregarding the Examiner's implicit request for additional
information regarding this challenge, Appellant continues to rely on a
conclusory assertion that all of the references are "silent" about this
limitation. Appellant does not dispute the space between the mouthpiece
and pressurized container in the Garby device remains constant during use,
nor does Appellant propose a construction of this limitation that would
disqualify the arrangement disclosed by Garby, or even put into question the
Examiner's application of Garby. Simply put, Appellant does not apprise us
of how the Examiner erred by finding Garby discloses a cap such that, when
the aerosol is actuated, the space between mouthpiece and pressurized
container is not changed.
Finally, we have considered Appellant's alleged deficiencies as to
Jewett and Gupte. See Br. 14--15. We do not find the allegations
persuasive, however, because Appellant analyzes each prior art reference in
isolation without considering the collective teachings in light of the
creativity and common sense of a person of ordinary skill. See KSR, 550
U.S. at 419-21. For example, Appellant points out the lid of Gupte does not
envelope a pressurized container and is not placed with a form fit onto the
base of an aerosol container. Br. 14. But, Appellant fails to address the
Examiner's reliance on how Gupte's disclosure of a lid with a tapering
internal diameter informs the obviousness inquiry when combined with
Garby, which discloses a cap placed on the base of an aerosol container with
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Application 11/587 ,945
a friction fit by narrowing the inner diameter at the open end of the cap. See
Final Act. 2-3, 7-8; see also Ans. 8-9.
Similarly, Appellant alleges "[n]owhere does Jewett teach or suggest
the 'cap automatically and irreversibly wedging with the base of the aerosol
container' as required by claim 1." Br. 15. Again, Appellant fails to address
how the combined teachings of Garby and Jewett informs the Examiner's
obviousness inquiry; namely, "Garby already discloses a cap that
automatically wedges with the base of the aerosol container (Col. 15, 11. 36-
44) and Jewett is used to teach a cap that irreversibly wedges with the base
of an aerosol container." Final Act. 6-7. The Examiner correctly notes that
Appellant's allegations regarding both Gupte and Jewett improperly attempt
to "show nonobviousness by attacking references individually where the
rejections are based on combinations of references." Ans. 9, 10 (citing In re
Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed.
Cir. 1986)).3
3 To the extent Appellant is arguing there is no factual support to find Jewett
discloses a cap that automatically and irreversibly wedges with the base of
the aerosol container, we do not agree. As support, the Examiner points to
Jewett's statement that "[i]ntegral to canister 16, preferably adhesively
attached and non-removable from the exterior of canister 16 in a location on
the upturned bottom of canister 16 is a hermetically sealed device 30 .... "
See Final Act. 3, 6-7. In view of the fact that Jewett makes clear flange 64
serves as a means for frictional engagement with canister 16 bottom to
attach the device 30 (Jewett 5:60-63), Jewett's statement that device 30 is
integral to canister 16, and made non-removable using adhesive, supports
the Examiner's finding Jewett discloses a cap that automatically and
irreversibly wedges with the base of the aerosol container.
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Application 11/587 ,945
Therefore, for the above reasons, we sustain the Examiner's
obviousness rejection of claim 1 and, as a result, we also sustain the
rejection of claim 10.
Rejection II
Appellant argues claims 6, 7, and 9 are patentable because Bonney
"fails to cure the deficiencies previously outlined" regarding Garby, Gupte,
Jewett, and Weinstein for claim 1. Br. 18-19. For the reasons discussed
above (see supra, Rejection I), we are not persuaded by Appellant's
deficiency arguments. Appellant does not make any other arguments of
patentability for claims 6, 7, and 9. Therefore, we sustain the Examiner's
obviousness rejection of claims 6, 7, and 9.
SUMMARY
We affirm the Examiner's decision to reject claims 1, 6, 7, 9, and 10.
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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