Ex Parte Borland et al

Board of Patent Appeals and Interferences

Jul 20, 2012

11471282 (B.P.A.I. Jul. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SCOTT BORLAND and GARY BAKER
____________________

Appeal 2010-007846
Application 11/471,282
Technology Center 3700
____________________

Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/471,282

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 27-30 and 35-45. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

The claimed subject matter relates to the formation and use of
aperture plates configured to produce fine liquid droplets. See Spec. para.
[0002]. Apertures within the aperture plate are tapered and have specified
exit angles to “enhance the rate of droplet production while maintaining the
droplets within a specified size range” for inhalation in the deep lung. See
Spec. para. [0039]; see also paras. [0003] and [0018].
Claims 27 and 35 are the independent claims on appeal. Claim 27,
reproduced below with the key disputed limitation emphasized, is illustrative
of the claimed subject matter:

27. A method for aerosolizing a liquid, the method
comprising:
providing an aperture plate comprising a plate body
having a top surface, a bottom surface, and a plurality of
tapered apertures that taper in a direction from the bottom
surface to the top surface, wherein the apertures have an exit
angle that is in the range from about 30° to about 60°, and a
diameter that is in the range from about 1 micron to about 10
microns at the narrowest portion of the taper; supplying a liquid
to the bottom surface of the aperture plate; and vibrating the
aperture plate to eject liquid droplets from the top surface,
wherein the aperture plate is vibrated with a vibratory element
that mechanically transmits vibratory energy to the aperture
plate without first passing through a liquid medium in order to
cause the aperture plate to vibrate.
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REJECTIONS
Appellants seek review of the following rejections:

(1) Claims 27-30, 35-37, 41, and 42 under 35 U.S.C. § 103(a) as
unpatentable over Takahashi (US 5,299,739, iss. Apr. 5, 1994). Ans. 3.
(2) Claims 38-40 and 43-45 under § 103(a) as unpatentable over
Takahashi and Okumura (US 5,889,351, iss. Mar. 30, 1999). Ans. 4.

ANALYSIS
The Examiner found that “Takahashi differs from what is being
claimed in the exit angle ranging from 30 to 60 degrees.” Ans. 3. The
Examiner concluded that:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to have provided a taper
in the range of 30 to 60 degrees to optimize operating
conditions, since it has been held that where the general
conditions of a claim are disclosed in the prior art, discovering
the optimum or workable ranges involves only routine skill in
the art.
Id. (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Appellants argue
that the claimed range of exit angles in the apertures of the aperture plate
provide for an unexpected increase in flow rate while minimizing droplet
size. App. Br. 13. In particular, Appellants argue that “[a]t no point does
Takahashi disclose that droplet size may be controlled by the exit angle of
the aperture, as claimed and described by the Appellant” and that the prior
art instead correlated droplet size with the frequency of a vibrating element
used to mechanically transmit vibratory energy to the aperture plate. App.
Br. 13. Here, Appellants’ claimed structure of apertures having an exit angle
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of about 30º to 60º addresses Appellants’ stated problem of striking a
balance between providing a droplet small enough in size to insure that an
inhaled drug reaches the deep lung (Spec. para. [0003]) and sufficient
droplet production so that a sufficient dosage is aerosolized without the need
for a capture chamber to capture and hold the prescribed amount of
medication (Spec. paras. [0007] and [0018]).
Although not discussed in depth in Aller, the variables involved –
concentration and temperature – were known variables that a chemical
engineer would appreciate as affecting the speed of the chemical reaction.
See Aller, 220 F.2d at 456 (“Normally, it is to be expected that a change in
temperature, or in concentration, or in both, would be an unpatentable
modification”). In re Antonie clarified the principle set forth in Aller,
requiring the prior art to recognize the parameter to be optimized to be “a
result-effective variable.” Id., 559 F.2d 618, 620 (CCPA 1977). In other
words, a particular parameter must first be recognized as a result-effective
variable, i.e., a variable which achieves a recognized result, before the
determination of the optimum or workable ranges of said variable might be
characterized as routine experimentation. Antonie, 559 F.2d at 620 (The
claimed wastewater treatment device had a tank volume to contractor area of
0.12 gal./sq. ft. The prior art did not recognize that treatment capacity is a
function of the tank volume to contractor ratio, and therefore the parameter
optimized was not recognized in the art to be a result-effective variable).
The Examiner in this case has not made any findings as to the
particular exit angle of the apertures (holes 6) of the aperture plate (mesh 3)
in Takahashi. At most, the Examiner has identified Takahashi as disclosing
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the aperture (hole 6) being tapered in either direction or having no taper.
Ans. 3. In addition, the Examiner has not articulated that an ordinary artisan
would have recognized exit angle as a result-effective variable subject to
routine optimization, nor explained why that would be the case. The
Examiner has not established that Takahashi recognized the taper angle of
the holes 6 to be a variable which achieves a result such as droplet size
and/or flow rate. Neither has the Examiner provided evidence or technical
reasoning independent of the disclosure of Takahashi which shows that one
of ordinary skill in the art would have recognized the exit angle of tapered
apertures in an aperture plate to be result-effective. Without sufficient
articulation and findings to establish that exit angle is a result-effective
variable, a prima face case of obviousness has not been established.
Since a prima facie case of obviousness has not been established,
Appellants do not bear the burden of rebuttal by showing the criticality of
the claimed range. See, e.g., In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir.1990) (“The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other variable within
the claims. . . . In such a situation, the applicant must show that the
particular range is critical” (citations omitted)). Therefore, the Examiner’s
finding that Appellants failed to provide objective evidence of criticality or
unexpected results (Ans. 5, 6) is not persuasive.
For the foregoing reasons, the Examiner erred in concluding that
claims 27 and 35, and their dependent claims 28-30, 36, 37, 41, and 42 are
unpatentable over Takahashi. The Examiner articulates no persuasive
reason why the teachings of Okumura might have remedied the deficiencies
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of the teachings of Takahashi. Therefore, the Examiner erred in concluding
that claims 38-40 and 43-45 are unpatentable over Takahashi and Okumura.

DECISION
The Examiner’s rejection of claims 27-30, 35-37, 41, and 42 under 35
U.S.C.§ 103(a) as obvious over Takahashi is REVERSED.
The Examiner’s rejection of claims 38-40 and 43-45 under 35 U.S.C.
§ 103(a) as obvious over Takahashi and Okumura is REVERSED.

REVERSED

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