Robert Selby et al.

Patent Trials and Appeals Board

Aug 6, 2021

2021000485 (P.T.A.B. Aug. 6, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/117,800 04/04/2014 Robert Gordon Maurice Selby GJE-022917 US PCT 8112
26294 7590 08/06/2021
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
08/06/2021 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):
docketing@tarolli.com
rkline@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT GORDON MAURICE SELBY,
NEIL POLLOCK, DANIEL CRICHTON, and
DOUGLAS ROBERT SAUNDERS BRADSHAW
____________________

Appeal 2021-000485
Application 14/117,800
Technology Center 3700
____________________

Before JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and
SEAN P. O’HANLON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 5–7, 12, and 19–25.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as The Technology
Partnership PLC. Appeal Br. 3.
2 Claims 4, 8–11, and 13 have been withdrawn from consideration. Final
Act. 1; Appeal Br. 3. No other claims are pending.
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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A unit dose container for holding a single dose of a given
liquid, the container comprising:
a chamber in which, in use, the given liquid is stored, the
chamber having a wall through which, in use, the liquid is to be
supplied to an ambient space;
a release mechanism, at least part of which is internal to,
or forms part of the wall of, the chamber, the release
mechanism being movable relative to the chamber between first
and second positions, the wall of the chamber including at least
one flexible wall portion for allowing the release mechanism to
move from the first to the second positions, thereby opening a
passage through the wall so that the liquid can exit the chamber
via the passage in the wall; and a perforate membrane for
aerosolising the single dose of the liquid as the liquid exits the
chamber into the ambient space via the passage through the
wall.
EVIDENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Gruber US 3,583,602 June 8, 1971
Wiegner US 4,247,001 Jan. 27, 1981
Althoff US 7,621,403 B2 Nov. 24, 2009
Guay US 8,308,388 B2 Nov. 13, 2012
REJECTIONS
I. Claims 1, 5–7, 12, 19, and 25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wiegner and Gruber.
II. Claims 20–22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wiegner, Gruber, and Guay.
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III. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wiegner, Gruber, and Althoff.
OPINION
Rejection I – Obviousness Based on Wiegner and Gruber
In rejecting independent claim 1, the Examiner finds that Wiegner
discloses a unit dose container including, in relevant part, “a discharge spout
4ʹ[,] but fails to disclose the discharge spout 4ʹ comprising a perforate
membrane for aerosolizing the single dose of the given liquid, as the liquid
exits the chamber into the ambient space via the passage through the wall.”
Final Act. 3. However, the Examiner finds that “Gruber teaches a fluid
spray apparatus comprising a perforate member 7 for spraying liquid (fig. 1
and col. 1, lines 2-5).” Id. The Examiner determines that it would have
been obvious “to have made the discharge spout 4ʹ of W[ie]gner, a perforate
member, for the predictable result [of] providing controlled distribution by
enabling the user to cut off the flow from the spray apparatus cleanly and
quickly and without drip[,] as taught by Gruber in col. 1, lines 34-37.” Id.
Appellant argues that the Examiner’s articulated reasoning for
modifying Wiegner lacks a rational underpinning. Appeal Br. 17–18. In
particular, Appellant asserts that “the cited portions of [Gruber] actually
indicate a deficiency in the prior art, rather than a feature of [Gruber]. The
Examiner has not actually tied any such dripless flow cutoff feature to the
perforate membrane.” Id. at 18 (emphasis omitted). We agree with
Appellant that a sustainable case of obviousness has not been established.
Gruber discloses that it was known in the prior art to use pliable
containers with ventless fluid dispensers “by tilting the container until the
liquid level is above the apertures and distorting the container such that the
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consequent decrease in volume forcibl[y] expels the fluid through the
apertures.” Gruber, col. 1, ll. 20–24. However, Gruber discloses that such
dispensers have a drawback in that they may provide uncontrolled
distribution of fluid due to “the inability of the user to cut off the flow of the
herbicide from the spray apparatus cleanly and quickly and without drip.”
Id. at col. 1, ll. 34–37. To address this issue, Gruber discloses container 1
having pliable portion 5 encompassed by resilient band 6. Id. at col. 2, ll.
3–5, 9–12; Figs. 1, 2. Container 1 includes resilient band 6, which
urg[es] the pliable portion 5 toward its normally circular cross
section at a greatly increased rate once the distorting pressure has
been relieved. The result is a sudden increase in volume within
the container 1 with a commensurate decrease in pressure which
may fall below atmospheric. The pressure differential existing
across the apertures 7 forcibly interrupts the flow of the fluid
through the apertures and thereby causes the desired cleanly
controlled cutoff.
Id. at col. 2, ll. 45–53.
Based on the disclosure of Gruber discussed above, it is apparent that
Gruber attributes the clean cut off of fluid flow to the inclusion of resilient
band 6 quickly forcing the container back into its original shape. However,
the Examiner’s proposed modification of Wiegner includes only substituting
Gruber’s apertures 7 for Wiegner’s spout 4ʹ. See Final Act. 3; Ans. 5. In
this regard, Appellant persuasively asserts that “[t]here is no ‘mere
substitution’ yielding a ‘predictable result’ when the resilient band 6 of
[Gruber]--to which [Gruber] attributes the dripless flow cutoff--is not
similarly provided to the device of [Wiegner].” Appeal Br. 18. Here, the
Examiner does not point to, nor do we discern, any disclosure in Gruber to
support the Examiner’s position that apertures 7 enable a user to cut off fluid
flow without dripping. See Final Act. 3. The Examiner posits that Gruber’s
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apertures 7 are smaller, and, thus, would “provide[] more control, less
fluid[,] and less dripping.” Ans. 5. However, this position lacks adequate
evidentiary support. To the extent that Gruber’s apertures 7 may be smaller
than Wigner’s spout 4ʹ, the Examiner does not explain or provide
evidentiary support for how smaller apertures necessarily would provide
more control and less dripping than spout 4ʹ.
Rejections based on 35 U.S.C. § 103(a) must rest on a factual basis.
In making such a rejection, the Examiner has the initial duty of supplying
the requisite factual basis and may not, because of doubts that the invention
is patentable, “resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in [the] factual basis.” In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Absent improper hindsight
reconstruction, we fail to see a sufficient reasoned explanation based on
some rational underpinning as to why one of ordinary skill in the art would
have been led to modify Wiegner as proposed by the Examiner, and a reason
for such modification is not otherwise evident from the record.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that independent claim 1 is
unpatentable based on the cited references. On this basis, we do not sustain
the rejection of independent claim 1, or its dependent claims 5–7, 12, 19, and
25, under 35 U.S.C. § 103(a) as unpatentable over Wiegner and Gruber.

Rejections II and III – Obviousness Based on Wiegner, Gruber,
and One of Guay and Althoff
The rejections of claims 20–24, which depend from independent claim
1, are deficient for the same reasons discussed above in connection with
Rejection I. The Examiner relies on Guay and Althoff for teaching
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additional features, but does not articulate any findings or reasoning that
would cure the aforementioned deficiency in the combination of Wiegner
and Gruber. See Final Act. 4–6. Accordingly, we do not sustain the
rejection of claims 20–22 under 35 U.S.C. § 103(a) as unpatentable over
Wiegner, Gruber, and Guay; or the rejection of claims 23 and 24 under
35 U.S.C. § 103(a) as unpatentable over Wiegner, Gruber, and Althoff.
CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5–7, 12,
19, 25
103(a) Wiegner, Gruber 1, 5–7, 12,
19, 25
20–22 103(a) Wiegner, Gruber,
Guay
20–22
23, 24 103(a) Wiegner, Gruber,
Althoff
23, 24
Overall
Outcome
1, 5–7, 12,
19–25
REVERSED