Ex Parte Aquilonius et al

Patent Trial and Appeal Board

Jan 19, 2018

13130923 (P.T.A.B. Jan. 19, 2018)

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.
13/130,923 08/08/2011 Sten-Magnus Aquilonius EPCLP0135US 1891
23908 7590 01/23/2018
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
WAGGONER, TIMOTHY R
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
01/23/2018 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):
ipdocket @ rennerotto. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEN-MAGNUS AQUILONIUS, SORENNYGREN,
CARL-OLOF SJOBERG, and JAN KRANSE
Appeal 2016-002481
Application 13/130,923
Technology Center 3600
Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sten-Magnus Aquilonius et al. (Appellants)1 appeal under 35 U.S.C.
§ 134 from the Examiner’s Final Rejection of claims 1, 14, 15, 19—21, and
32.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance as NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellants identify the real party in interest as Sensidose AB. Appeal Br.
2.
2 Claims 2—5, 7, 11, 12, and 16—18 are cancelled, and claims 6, 8—10, 12,
13, 23—31, and 41—51 are withdrawn from consideration. Final Act. 1;
Reply to Office Act. (Dec. 11, 2014).
Appeal 2016-002481
Application 13/130,923
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
1, A hand held medicine dosing and dispensing device
comprising
a housing including a storage chamber to store discrete
units of medicine;
a feed assembly located between the storage chamber and
a dispenser to feed individual units of medicine from the
storage chamber to the dispenser; and
an impacter operably associated with the storage chamber
to agitate units of medicine stored in the storage chamber,
wherein the impacter includes a rigid element fixedly
connected at or towards one end to a wall of the storage
chamber and operably associated at or towards a second end
with an actuating mechani sm that deflects the second end of the
impacter towards the wall of the storage chamber to strain the
impacter such that, when released, the strained impacter moves
towards the interior of the storage chamber and impacts against
the units of medicine,
wherein the storage chamber is provided in a removable
cassette that is releasably engageable within the housing,
wherein the feed assembly includes a feed wheel defining
a plurality of feed pockets about its circumference, the feed
wheel being rotatable in a first direction to move the feed
pockets sequentially into alignment with a feed channel of the
storage chamber to each receive a unit of medicine and, on
further rotation of the feed wheel in the first direction, to move
the feed pockets sequentially into alignment with the dispenser
so as to feed the received units of medicine sequentially to the
dispenser, and
wherein the feed wheel is located in the cassette.
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Appeal 2016-002481
Application 13/130,923
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Pilot US 3,332,575
Bartur US 6,263,259 B1
Anderson US 6,880,722 B2
Gumpert US 7,831,336 B2
Perkitny WO 97/01157
THE REJECTIONS
I. Claims 1 and 19-21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Perkitny and Pilot. Final Act. 3^4.
II. Claims 1 and 19-21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Perkitny and Anderson. Id. at 4—5.
III. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Perkitny, either Pilot or Anderson, and Bartur. Id.
at 5—6.
IV. Claim 32 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Perkitny, either Pilot or Anderson, and Gumpert. Id. at 6.
OPINION
Rejection I
Appellants argue claims 1 and 19-21 as a group. Appeal Br. 5—16.
We select claim 1 as the representative claim, and claims 19-21 stand or fall
with claim 1.
The Examiner finds that Perkitny teaches most of the limitations of
independent claim 1, including, inter alia, a housing, a storage chamber, a
feed assembly including a feed wheel defining a plurality of feed pockets, a
dispenser, and an impacter. Final Act. 3 (citing Perkitny, Fig. 3). The
July 25, 1967
July 17, 2001
Apr. 19, 2005
Nov. 9, 2010
Jan. 9, 1997
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Appeal 2016-002481
Application 13/130,923
Examiner acknowledges that Perkitny does not teach “the storage chamber
being a removable cassette inserted into the housing.” Id. The Examiner
turns to Pilot, finding that it “teaches a storage chamber and dispensing
wheel in a removable cassette insertable into a housing.” Id. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art “to modify the dispenser of Perkitny to make it modular and have the
storage chamber with its wheel and impacter be a removable cassette
insertable into a housing comprising the varying other features.” Id. at 4.
Appellants argue that “the removable portion of Pilot is merely a
cartridge including gear wheels with pill compartments, which are pre-
loaded with pills,” not a “removable cassette with a storage chamber that
stores pills and a feed wheel with feed pockets that are rotated into
alignment with a feed channel of the storage chamber to receive a pill and
then further rotated to feed the pill to a dispenser.” Appeal Br. 10.
Accordingly, Appellants argue that “Pilot would not provide any motivation
to one of ordinary skill in the art to modify Perkitny to include such an
arrangement.” Id.
We are not persuaded by Appellants’ argument. Simply that there are
differences between two references is insufficient to make a prima face case
of obviousness impossible. See In re Beattie, 974 F.2d 1309, 1312—13 (Fed.
Cir. 1992). That is, simply because Pilot lacks the particular storage
chamber and wheel of Perkitny (i.e., a “fixed, refillable storage chamber that
holds loose pills and a feed wheel”) (see Appeal Br. 14) in its removable
portion does not prevent Pilot from leading one of ordinary skill in the art to
provide Perkitny’s storage chamber and wheel in a portion that is removable
from the remainder of the housing. The Examiner finds that the combination
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Application 13/130,923
of Perkitny and Pilot teaches all of the claimed elements. Ans. 6. In
addition, Pilot suggests an advantage of a modular dispenser having a
removable portion that stores pills is to allow handling of pills “by the
manufacturer under the appropriate sanitary and other safeguards,” rather
than by the patient, while still allowing for easy reloading of pills by the
patient into an existing dispenser. Pilot, 1:35—40, 48—51.
Although Pilot’s reason for making its cartridge and wheel removable
is not based on a recognition that doing so would allow the storage chamber
and feed wheel to be “serviceable and/or replaceable” when “mechanical
faults . . . arise due to the build-up of dust and particles within the
mechanism” (see Appeal Br. 15), the reason to modify a reference may often
prompt a person of ordinary skill in the art to do what the inventor has done,
but for a different purpose or to solve a different problem; it is not necessary
that the prior art suggest the modification to achieve the same advantage or
result discovered by an applicant. See, e.g., In re Kahn, 441 F.3d 977, 987
(Fed. Cir. 2006); In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (citing In
re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“Although the
motivation to combine here differs from that of the applicant, the motivation
in the prior art to combine the references does not have to be identical to that
of the applicant to establish obviousness.”)).
For the foregoing reasons, we do not find that the Examiner erred in
concluding that Perkitny and Pilot renders obvious the subject matter of
independent claim 1. We sustain the Examiner’s rejection of claim 1, and
claims 19—21 which fall with claim 1, under 35 U.S.C. § 103(a) as
unpatentable over Perkitny and Pilot. Because our analysis relies upon
portions of Pilot that the Examiner did not specifically use, we designate the
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Appeal 2016-002481
Application 13/130,923
affirmance of the rejection of these claims as a NEW GROUND OF
REJECTION pursuant to 37 C.F.F. § 41.50(b).
Rejection II
Appellants argue claims 1 and 19-21 as a group. Appeal Br. 5—16.
We select claim 1 as the representative claim, and claims 19-21 stand or fall
with claim 1.
The Examiner relies on Perkitny for the same teachings as in
Rejection I, acknowledging that Perkitny does not teach “the storage
chamber being a removable cassette inserted into the housing.” Final Act. 4
The Examiner turns to Anderson, finding that it “teaches a storage chamber
and dispensing wheel in a removable cassette insertable into a housing.” Id.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art “to modify the dispenser of Perkitny to make it
modular and have the storage chamber with its wheel and impacter be a
removable cassette insertable into a housing comprising the varying other
features.” Id.
Appellants argue that “the removable portion of Anderson is merely a
cassette including a medicine in the form of a blister strip,” not a “removable
cassette with a storage chamber that stores pills and a feed wheel with feed
pockets that are rotated into alignment with a feed channel of the storage
chamber to receive a pill and then further rotated to feed the pill to a
dispenser.” Appeal Br. 13. Accordingly, Appellants argue that “Anderson
would not provide any motivation to one of ordinary skill in the art to
modify Perkitny to include such an arrangement.” Id.
We are not persuaded by Appellants’ argument for the reasons
described in more detail above. That is, simply because Anderson lacks the
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Application 13/130,923
particular storage chamber and wheel of Perkitny (i.e., a “fixed, refillable
storage chamber that holds loose pills and a feed wheel”) (see Appeal Br.
14) in its removable portion does not prevent Anderson from leading one of
ordinary skill in the art to provide Perkitny’s storage chamber and wheel in a
portion that is removable from the remainder of the housing. The Examiner
finds that the combination of Perkitny and Anderson teaches all of the
claimed elements. Ans. 7. Furthermore, Anderson suggests an advantage of
a modular dispenser having a removable portion that stores pills is to allow
for easy refilling of pills when the dispenser is empty, while still “allowing]
the retained part of the dispenser to be fitted with additional features such as
electronics which may not be cost effective on a completely disposable
dispenser.” Anderson, 1:27-43.
Although Anderson’s reason for making its cassette and blister strip
removable is not based on a recognition that doing so would allow the
storage chamber and feed wheel to be “serviceable and/or replaceable” when
“mechanical faults . . . arise due to the build-up of dust and particles within
the mechanism” (see Appeal Br. 15), the reason to modify a reference may
often prompt a person of ordinary skill in the art to do what the inventor has
done, but for a different purpose or to solve a different problem; it is not
necessary that the prior art suggest the modification to achieve the same
advantage or result discovered by an applicant. See, e.g., Kahn, 441 F.3d at
987; Kemps, 97 F.3d at 1430 (citing Dillon, 919 F.2d at 693).
For the foregoing reasons, we do not find that the Examiner erred in
concluding that Perkitny and Anderson renders obvious the subject matter of
independent claim 1. We sustain the Examiner’s rejection of claim 1, and
claims 19—21 which fall with claim 1, under 35 U.S.C. § 103(a) as
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Application 13/130,923
unpatentable over Perkitny and Anderson. Because our analysis relies upon
portions of Anderson that the Examiner did not specifically use, we
designate the affirmance of the rejection of these claims as a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
Rejections III and IV
Appellants’ arguments in support of the patentability of claims 14, 15,
and 32 solely relate to the perceived deficiencies of Perkitny and one of Pilot
and Anderson. Because we have found no such deficiencies in the
combination of Perkitny and one of Pilot and Anderson, we also sustain the
rejections, under 35 U.S.C. § 103(a), of: claims 14 and 15 as unpatentable
over Perkitny, either Pilot or Anderson, and Bartur; and claim 32 as
unpatentable over Perkitny, either Pilot or Anderson, and Gumpert. For the
same reasons discussed above in the context of Rejections I and II, we
likewise designate our affirmance of the rejections of claims 14, 15, and 32
under 35 U.S.C. § 103(a) as NEW GROUNDS OF REJECTION pursuant to
37 C.F.R. §41.50(b).
DECISION
The Examiner’s decision to reject claims 1, 14, 15, 19-21, and 32
under 35 U.S.C. § 103(a) is affirmed, and we designate our affirmance of the
rejections of these claims as NEW GROUNDS OF REJECTION.
This decision contains NEW GROUNDS OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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Appeal 2016-002481
Application 13/130,923
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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: 37 C.F.R, $ 41.50(b)
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