Ex Parte Belcastro et alDownload PDFPatent Trial and Appeal BoardMay 29, 201412002773 (P.T.A.B. May. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARC D. BELCASTRO and JEFFREY A. SWEPSTON ____________ Appeal 2012-004593 Application 12/002,773 Technology Center 3700 ____________ Before STEFAN STAICOVICI, JILL D. HILL and THOMAS F. SMEGAL, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Marc D. Belcastro and Jeffrey A. Swepston (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1, 2 and 4-23, the only claims pending on appeal. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-004593 Application 12/002,773 2 CLAIMED SUBJECT MATTER An understanding of the invention can be derived from a reading of independent claim 1, which is reproduced below. 1. An aerosol generator in the form of a capillary tube, the capillary tube comprising at least one bend, fluid inlets, regions of reduced wall thickness located between the fluid inlets and the bend, and an outlet along the bend, wherein volatilized fluid discharges from the outlet to form an aerosol, and wherein the fluid inlets are located at ends of the capillary tube. REJECTIONS ON APPEAL The following Examiner’s rejections are before us for review: 1. Claims 1, 2, 4, 6 and 10-22 were rejected under 35 U.S.C. § 103(a) over Nichols (US 6,568,390 B2, iss. May 27, 2003), Baran (US 2004/0084050 A1, pub. May 6, 2004) and Zhu (US 5,400,665, iss. Mar. 28, 1995). 2. Claim 5 was rejected under 35 U.S.C. § 103(a) over Nichols, Baran, Zhu and further in view of Fukunaga (US 2004/0194781 A1, pub. Oct. 7, 2004). 3. Claim 7 was rejected under 35 U.S.C. § 103(a) over Nichols, Baran, Zhu and Pöhler (US 5,706,389, iss. Jan. 6, 1998). 4. Claims 8 and 9 were rejected under 35 U.S.C. § 103(a) over Nichols, Baran, Zhu and further in view of Byron (US 2004/0016427 A1, pub. Jan. 29, 2004). 5. Claim 23 was rejected under 35 U.S.C. § 103(a) over Baran and Zhu. Appeal 2012-004593 Application 12/002,773 3 ANALYSIS Claims 1, 2, 4, 6 and 10-22 as unpatentable over Nichols, Baran and Zhu. Claims 1, 4, 10, 11, 13-15, 17, 18 and 20-22 Appellants argue claims 1, 4, 10, 11, 13-15, 17, 18 and 20-22 as a group (App. Br. 5-8 and 11-13). We select claim 1 as the representative claim for this group such that the remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellants first argue that “none of the references teaches or suggests a capillary tube comprising at least one bend, fluid inlets, regions of reduced wall thickness located between the fluid inlets and the bend and an outlet along the bend, wherein the fluid inlets are located at ends of the capillary tube.” App. Br. 5. In particular, Appellants contend that Baran “does not teach or suggest a capillary tube comprising among other elements, at least one bend, an outlet along the bend, regions of reduced wall thickness located between the fluid inlets and the bend and wherein the fluid inlets are located at ends of the capillary tube.” Id. at 7. The Examiner found that Nichols discloses an aerosol generator 22 (fig. 2) in the form of a capillary tube 20/30 (fig. 2), the capillary tube comprising fluid inlets 20a/30a (fig. 2) (col.5, lines 6 - col. 6, lines 5); a heating mechanism 21 (fig. 1) which heats the capillary tube to a temperature sufficient to volatilize fluid in the capillary tube (col. 4, lines 40-60); and wherein the fluid inlets 20a/30a (fig. 2) are located at ends of the capillary tube 20/30 (fig. 2) (col. 2, lines 25-27). Ans. 5. Appeal 2012-004593 Application 12/002,773 4 While the Examiner acknowledged at page 6 of the Answer that Nichols didn’t disclose “at least one bend; regions of reduced wall thickness located between the fluid inlets and the bend, and an outlet along the bend, wherein volatilized fluid discharges from the outlet to form an aerosol,” the Examiner found that Baran “teaches at least one bend 363 (fig. 23) (para. 0138) . . . and an outlet . . . 367 (fig. 23) along the bend, wherein volatilized fluid discharges from the outlet to form an aerosol.” Id. at 12. Appellants also argue that nothing in Zhu directs a person of ordinary skill to produce a capillary tube having regions of reduced wall thickness located between the fluid inlets and the bend to increase[] the amount of heat energy transferred from the capillary tube to the fluid and [reduce] the amount of energy needed to raise the temperature of the capillary tube. App. Br. 8. However this argument is misplaced as Appellants are arguing the references individually when the rejection is directed to a combination. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references”) (citation omitted). Thus the Examiner has cited Nichols for disclosing capillary tubes, while Zhu is cited for teaching “regions of reduced wall thickness (see figure 15, where ends of the enclosed filter tube (8) are smaller than the coil section).” Ans. 12-13. The Examiner had also pointed out in the Final Rejection that Zhu “further teaches such a configuration [of wall thickness] provides a means to maintain a Appeal 2012-004593 Application 12/002,773 5 certain range of temperature during the evaporation process (col. 27, lines 55-57).” Id. at 7. Furthermore Appellants’ argument is not commensurate with the scope of claim 1 which is not limited to a capillary tube having regions of reduced wall thickness “to increase[] the amount of heat energy transferred from the capillary tube to the fluid and [reduce] the amount of energy needed to raise the temperature of the capillary tube.” Appellants also contend for the first time at page 6 of the Reply Brief that “none of the prior art references teaches or suggests a capillary tube comprising at least one bend and an outlet along the bend as recited in Claims 1, 11 . . . .” However, we agree with the Examiner that “Figure 23 of Baran shows disconnected tubular extensions 360/363 with the distal orifices 364/367, respectively, a long [sic] the bend as seen in figure 23.” Ans. 17. Appellants raise a hindsight argument for the first time at page 2 of the Reply Brief, asserting that “the rejections are based on impermissible hindsight using the claims as a template and picking and choosing prior art to meet the claims.” Appellants’ argument regarding hindsight is conclusory and therefore not persuasive, particularly given that “any obviousness inquiry necessarily involves some hindsight.” Radix Corp. v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989). Appeal 2012-004593 Application 12/002,773 6 Claim 2 While acknowledging that “Nichols discloses that ‘the electrical resistance of the connection between the capillary tube tips is controlled by geometry and material selection to regulate exit temperature,’” Appellants contend for the first time in the Reply Brief that “Nichols, however, does not teach or suggest a reduced wall thickness.” Reply Br. 8. Here again, Appellants are arguing the references individually, when the rejection is directed to a combination. Keller, 642 F.2d at 426 (“one cannot show non- obviousness by attacking references individually where, as here, the rejections are based on combinations of references”) (citation omitted). As the Examiner found in rejecting claim 1, Zhu “teaches regions of reduced wall thickness (see figure 15, where ends of the enclosed filter tube (8) are smaller than the coil section).” Ans. 12-13. Claim 12 Appellants also argue for the first time in the Reply Brief at page 7 that Zhu “does not teach or suggest a tube of electrically resistive material as recited in claim 12.” Here again, Appellants are arguing the references individually, when the rejection is directed to a combination. Keller, 642 F.2d at 426. As the Examiner found in rejecting claim 1, it is Nichols who teaches a tube of electrically resistive heating material. Ans. 5. Again arguing for the first time in the Reply Brief at page 9, Appellants contend that Nichols, however, does not teach or suggest replacing the tubes 20, 30 with outlets 20b, 30b and electrical connection 54 with a Appeal 2012-004593 Application 12/002,773 7 single capillary tube having a bend therein and an outlet along the bend wherein the bent tube is made of electrically resistive heating material with leads arranged such that the current passes along the bend as recited in Claim 12. Here again, Appellants are arguing the references individually, when the rejection is directed to a combination. Keller, 642 F.2d at 426. As the Examiner found in rejecting claim 1, Baran and Zhu are combined for disclosing the limitations not disclosed by Nichols. Ans. 6-7. Appellants have not persuasively argued that the Examiner’s finding regarding the teachings of Baran and Zhu are erroneous. Claim 16 In the Appeal Brief at page 12, Appellants made no specific argument in response to the rejection of claim 16, relying on the reasons asserted for the patentability of claim 15 that we previously rejected in sustaining the rejection of claim 1. Appellants now argue for the first time in the Reply Brief at page 9 that claim 16 is patentable over the combination of Nichols, Baran and Zhu because “Nichols includes two outlets rather than a single outlet, which is equidistant from the inlets as recited in Claim 16.” However, we agree with the Examiner that Nichols “discloses wherein the outlet 20b/30b (fig. 2) is equidistant from the first 20a (fig. 2) and second 30a (fig. 2) fluid inlets (See figure 2, the outlet is equidistant from the inlets).” Ans. 5. Claim 19 Appellants acknowledge that Nichols discloses that “while the purpose of the dual capillary tube aerosol generator [of Nichols] is to Appeal 2012-004593 Application 12/002,773 8 at least partially vaporize fluid, ‘other liquids such as fuel’ can also be vaporized (see col. 3, lines 1-5).” Rep. Br. 10. However, for the first time in the Reply Brief (id.), Appellants assert “the Examiner’s contention that Nichols teaches or suggests a liquid and a gas is in error.” At page 6 of the Answer, the Examiner found that Nichols discloses wherein a liquid is supplied to the first fluid inlet and a gas is supplied to the second fluid inlet (col. 1, lines 47-54; col. 4, lines 61 - col. 5, lines 10)”. Nichols also discloses that inhalers containing compressed propellants such as compressed gas for entraining a medicament are often operated by depressing a button to release a short charge of the compressed propellant. The propellant entrains the medicament as the propellant flows over a reservoir of the medicament so that the propellant and the medicament can be inhaled by the user. Col. 1, ll. 48-54. We find that the Examiner has the better argument and sustain the Examiner’s rejection of claim 19 as being obvious over Nichols, Baran and Zhu. Claim 6 While reincorporating the prior arguments for patentability of claim 1 in asserting the patentability of claim 6 at pages 9-10 of the Appeal Brief, Appellants further contend that “rather than the source of liquid being in fluid communication with the fluid inlets (i.e., both inlets of a capillary tube) as recited in Claim 6, the source of fluid in Nichols is in fluid communication with only one inlet of each capillary tube (i.e., inlet 20a and Appeal 2012-004593 Application 12/002,773 9 30a).” However, we agree with the Examiner that Nichols “discloses a source of liquid 60 (fig. 2) in fluid communication with the fluid inlets 20a/30a (fig. 2) (col. 5, lines 62-63).” Ans. 15. Thus Nichols teaches “a source of liquid in fluid communication with the fluid inlets” as recited by claim 6. For the foregoing reasons, we sustain the Examiner’s rejection of claims 1, 2, 4, 6 and 10-22 as being obvious over the combination of Nichols, Baran and Zhu. Claim 5 as unpatentable over Nichols, Baran, Zhu and Fukunaga. Appellants made no specific argument in response to this rejection in the Appeal Brief, including failing to rebut the Examiner’s reliance on Fukunaga. However, for the first time at page 5 of the Reply Brief, and without identifying claim 5, Appellants observe that “Fukunaga does not teach or suggest a capillary tube.” Here again, Appellants are arguing the references individually, when the rejection is directed to a combination. Keller, 642 F.2d at 426 (“one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references”) (citation omitted). As the Examiner found in rejecting claim 1, it is Nichols that teaches capillary tubes. Ans. 5. We agree with the Examiner’s fact finding. For the foregoing reasons, we sustain the Examiner’s rejection of dependent claim 5 as being unpatentable over the combined teachings of Nichols, Baran, Zhu and Fukunaga, for the same reasons stated above with respect to independent claim 1. Appeal 2012-004593 Application 12/002,773 10 Claim 7 as unpatentable over Nichols, Baran, Zhu and Pöhler. Appellants have made no specific argument in response to this rejection, including failing to rebut the Examiner’s reliance on Pöhler. Thus, we sustain the Examiner’s rejection of dependent claim 7 as being unpatentable over the combined teachings of Nichols, Baran, Zhu and Pöhler, for the same reasons stated above with respect to independent claim 1. Claims 8 and 9 as unpatentable over Nichols, Baran, Zhu and Byron. Appellants have made no specific argument in response to this rejection, including failing to rebut the Examiner’s reliance on Bryon. Thus, we sustain the Examiner’s rejection of dependent claims 8 and 9 as being unpatentable over the combined teachings of Nichols, Baran, Zhu and Byron, for the same reasons stated above with respect to independent claim 1. Claim 23 as unpatentable over Baran and Zhu. Appellants argue that Baran “does not teach or suggest a capillary tube comprising . . . one single bend, a single, common outlet along the bend, and wherein the fluid inlets are located at ends of the capillary tube. Rather, . . . as shown in Fig. 23 of Baran, the outlets are located at the ends of each capillary tube, rather than along the bend as recited in Claim 23,” and that Zhu “does not teach or suggest regions of reduced wall thickness located between the fluid inlets and the bend. Instead, as shown in FIG. 15, the region of reduced wall thickness is at outlet port 8(b).” App. Br. 15. We agree with the Examiner that “Figure 23 of Baran shows disconnected tubular extensions 360/363 with the distal orifices 364/367, Appeal 2012-004593 Application 12/002,773 11 respectively, a long [sic] the bend as seen in figure 23” and that Zhu “teaches regions of reduced wall thickness (see figure 15, where ends of the enclosed filter tube (8) are smaller than the coil section).” Ans. 17. Thus, we also agree with the Examiner that “the combination of Baran in view of Zhu et al. fully meets all of the claimed limitations.” Id. For the foregoing reasons, we sustain the Examiner’s rejection of claim 23 as being obvious over Baran and Zhu. DECISION We AFFIRM each of the Examiner’s rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh Copy with citationCopy as parenthetical citation