Ex Parte Veasey et al

Patent Trial and Appeal Board

Feb 20, 2013

10315163 (P.T.A.B. Feb. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT FREDERICK VEASEY, ROBERT WOOLSTON,
SHANE ALISTAIR DAY, and CHRISTOPHER NIGEL LANGLEY
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Appeal 2011-004689
Application 10/315,163
Technology Center 3700
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Before: JAMES P. CALVE, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004689
Application 10/315,163

2
STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-7 and 9-13. Claim 8 is cancelled. Appellants
presented oral argument at a Hearing held on February 14, 2013. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim and is reproduced below:
1. A medicament injection apparatus suitable
for the self-administration of a medicament,
comprising:
a display; and
a timer, the timer being actuated upon
commencement of an injection operation, wherein
the timer runs to a predetermined time following
completion of the injection operation, the
predetermined time following completion of the
injection operation being a time sufficient to allow
the injected medicament adequately to disperse
locally from an injection site within a patient, and
the display operates while the timer runs;
wherein the display runs from the
commencement of the injection operation without
any indication of the completion of the injection
operation until said predetermined time has
elapsed and then stops, thereby indicating to the
user when to remove a needle from a body of the
user after said dispersion of the injected
medicament; and
the timer and the display automatically stop
upon expiration of the predetermined time.

Appeal 2011-004689
Application 10/315,163

3
REJECTIONS
1. Claims 1-7 and 9-12 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Jensen (WO 97/30742; pub. Aug. 28, 1997); and
2. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jensen.
OPINION
Claim 1 is directed to a medicament injection apparatus having a
display and a timer that both run upon commencement of an injection
operation for “a predetermined time . . . sufficient to allow the injected
medicament adequately to disperse locally from an injection site within a
patient.” The Examiner finds that Jensen explicitly discloses a timer and a
display that are actuated upon commencement of an injection operation and
run to a predetermined time following completion of the injection operation.
Ans. 3. The Examiner explains that “the limitation ‘predetermined time’ is a
broad limitation, as the term ‘predetermined’ simply means ‘set/decided in
advance’” and
[a]lthough Jensen has not provided a specific unit of time which
the display must run following completion of the injection,
Jensen’s incorporation of the observation that between 4 to 10
seconds is sufficient time for medicament to disperse in the
tissue following injection into the design of Jensen’s device so
as to achieve the result of guiding a user to keep a needle
inserted based on the display of the device, clearly shows that
device of Jensen comprises a displays which runs a
“predetermined time.”
Ans. 5.
Appellants explain that the only embodiment in Jensen that
includes the timer and display being activated upon commencement of
an injection is the first embodiment (see Reply Br. 4) and argue that
Appeal 2011-004689
Application 10/315,163

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Jensen “fails to disclose . . . running the timer for a predetermined
time” which follows completion of the injection operation in the first
embodiment (Reply Br. 5). We agree.
Jensen explains that “a switch [can be] operated at the start or at
the completion of the injection or at a time between the start and the
completion of the injection” with “the status of the stop watch
immediately after the operation of the switch [] displayed in a way
indicating the number of seconds passed after [] said operation.” Page
2, ll. 8-9 and 24-26. Jensen provides an example where the timer and
display run for six seconds upon activation of the switch. See pg. 5, ll.
10-17. While these six seconds (or even the “4 to 10 seconds”
referenced by the Examiner) may be considered a “predetermined
time,” Jensen simply discusses that the timer and display begin after
the switch is activated. When the switch in Jensen is activated at the
completion of an injection, the six seconds may form a predetermined
time following completion of the injection operation (consistent with
the predetermined time of claim 1). However, claim 1 additionally
requires that the timer and the display be “actuated upon
commencement of an injection operation” and Jensen does not
disclose an example describing the specific operation of the timer
when the timer begins at the start of the injection and then continues
to run a predetermined time following completion of the injection.
When the switch in Jensen is activated at the start of an
injection (consistent with the requirements of claim 1), the six seconds
may form a predetermined time from the start of the injection.
However, and as explained by Appellants, “[i]f the injection last 2
Appeal 2011-004689
Application 10/315,163

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seconds, the display will be operated for 6 seconds, wherein it will be
operated for 4 seconds after completion of the injection” and “[i]f the
injection last 3 seconds, the display will be operated for 6 seconds,
wherein it will be operated for 3 seconds after completion of the
injection.” Reply Br. 4. Because Jensen does not explicitly explain
the operation of the timer when it is started at the beginning of the
injection, it is unclear from Jensen’s disclosure if or how Jensen
accommodates these variations in injection duration to provide a
predetermined time for the timer and the display to run after
completion of the injection. Therefore, the Examiner has not
established by a preponderance of evidence that Jensen explicitly
discloses that the timer and the display run for a “predetermined time
following completion of the injection operation” in a sufficient
manner to support the Examiner’s anticipation rejection of claim 1.
Accordingly, we do not sustain the rejection of claims 1-7 and
8-12. Claim 13 depends from claim 1 and the stated basis for the
rejection of claim 13 does not cure the deficiencies in the rejection of
claim 1. Thus, we also do not sustain the rejection of claim 13.

DECISION
We REVERSE the Examiner’s decision to reject claims 1-7 and 9-13.

REVERSED

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