Ex parte SCHULTZ et al.

Board of Patent Appeals and Interferences

Sep 22, 1998

08067221 (B.P.A.I. Sep. 22, 1998)

Application for patent filed May 26, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT K. SCHULTZ, CONSTANTINOS SIOUTAS
_____________
Appeal No. 97-2736
Application 08/067,2211
______________
ON BRIEF
_______________
Before MEISTER, FRANKFORT and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 1 through 9 as amended subsequent to the final
rejection in a paper filed March 23, 1995 (Paper No. 9).
Claims 1 through 9 are all of the claims remaining in the
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Application 08/067,221
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application.
Claims 10 through 18 have been canceled.
Appellants’ invention relates to a hand held aerosol
actuator or metered dose inhaler of the type used to treat
pulmonary disorders such as asthma, chronic bronchitis, and
emphysema. Independent claim 1 is representative of the
subject matter on appeal and a copy of that claim appears in
the Appendix to appellants’ brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Lankinen 4,940,051 Jul. 10,
1990
Pritchard 5,048,729 Sep.
17, 1991
Claims 1 through 4 and 7 through 9 stand rejected under
35 U.S.C. § 103 as being unpatentable over Pritchard.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Pritchard in view of Lankinen.
Appeal No. 97-2736
Application 08/067,221
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Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellants regarding those
rejections, we make
reference to the examiner's answer (Paper No. 17, mailed
December 12, 1995) for the examiner's reasoning in support of
the rejections, and to appellants’ corrected brief (Paper No.
16, filed October 16, 1995) for appellants’ arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellants and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Turning first to the examiner's rejection of claims 1
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Application 08/067,221
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through 4 and 7 through 9 under 35 U.S.C. § 103, we note that
Pritchard discloses a hand held aerosol actuator which
comprises an aerosol source (12, 24, 14, 38) capable of
expelling a turbulent aerosol dose of drug comprising
particles of respirable size, and a chamber (defined within
mouthpiece 22) having walls defining a constriction aperture
(60). The aerosol source in Pritchard “communicates” with the
chamber and comprises an exit orifice (36, 37) that directs
the aerosol along an axis into the
chamber. At least a portion of the walls which define the
constriction aperture in Pritchard are “opposite the exit
orifice” and the constriction aperture therein is coaxial with
the exit orifice. As recognized by the examiner (answer, page
3), the constriction aperture (60) of Pritchard has a radius
of about 1mm (column 2, lines 31-34) and a cross sectional
area of about 0.03 square centimeters, while the constriction
aperture of appellants’ claimed aerosol actuator is required
to have a significantly larger cross sectional area of 0.2 to
0.6 square centimeters.
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Application 08/067,221
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To address the difference between the aperture size in
Pritchard and that in the claimed aerosol actuator, the
examiner urges that Pritchard (column 3, lines 8-11) suggests
that the small constriction aperture (60) therein might have a
size which differs from the disclosed dimensions. From this
disclosure, the examiner then concludes that
Since Pritchard recognizes that a plurality of
dimensions including the aperture diameter may
differ from those disclosed, it would have been
obvious to modify Pritchard to employ any well known
or desired dimensions including a diameter which
would result in a cross sectional area of 0.2-6cm .2
Contrary to the examiner’s position, we do not believe
that the suggestion found in Pritchard at column 3, lines 8-11
is such as to suggest “any... desired dimensions” for the
aperture (60). In this regard, we share appellants’ view as
expressed on pages 5 and 6 of the brief that the disclosure of
Pritchard, when considered as a whole, would not have in any
way been suggestive of a cross sectional area for the small
aperture (60) therein which would fall within appellants’
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Application 08/067,221
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claimed range. While some latitude on the size of the
aperture (60) in Pritchard is certainly provided for, the
degree of any such size variation is limited by the other
disclosure in Pritchard (column 1, lines 44-50) concerning the
function of the aperture (60) in allowing less than 10
percent, and desirably less than 5 percent, of the emitted gas
stream from the exit orifice of the aerosol source to pass
therethrough. Given the clear disclosure in Pritchard that
the aperture (60) is on the order of about 2mm in diameter and
the limitations on the function of the aperture in the aerosol
apparatus of Pritchard, we find it incomprehensible that one
of ordinary skill in the art would have contemplated sizing
the aperture (60) in the manner urged by the examiner, that
is, so as
to make the aperture of Pritchard 250% larger than the
disclosure therein would seem to indicate is appropriate.
In our opinion, the examiner’s above position is based on
impermissible hindsight gleaned from appellants’ own
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Application 08/067,221
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disclosure and not from any fair teaching or suggestion found
in the applied Pritchard patent. Absent the disclosure of the
present application, it is our opinion that one of ordinary
skill in the art would not have been motivated to modify the
aerosol apparatus of Pritchard in the manner urged by the
examiner so as to arrive at the subject matter set forth in
appellants’ independent claim 1 on appeal. Thus, the
examiner's rejection of appellants’ claims 1 through 4 and 7
through 9 under 35 U.S.C. § 103 based on Pritchard will not be
sustained.
We have also reviewed the patent to Lankinen applied by
the examiner in the § 103 rejection of dependent claims 5 and
6. However, we find nothing in this reference which would
supply that which we have noted above to be lacking in the
basic reference to Pritchard. Accordingly, the examiner's
rejection of claims 5 and 6 on appeal under 35 U.S.C. § 103
will likewise not be sustained.
As should be apparent from the foregoing, the decision of
the examiner rejecting claims 1 through 9 of the present
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Application 08/067,221
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application is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
vsh
Appeal No. 97-2736
Application 08/067,221
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Douglas E. Reedich
3M Office of Intellectual Prop. Counsel
P.O. Box 33427
St. Paul, MN 55133-3427