Ex Parte Bruna

Board of Patent Appeals and Interferences

Apr 25, 2012

10532961 (B.P.A.I. Apr. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PASCAL BRUNA
____________________

Appeal 2010-004715
Application 10/532,961
Technology Center 3700
____________________

Before LINDA E. HORNER, EDWARD A. BROWN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004715
Application 10/532,961

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3 and 6-22. (App. Br. 4). Claims 4 and 5 were
cancelled. (Resp. to Notification of Non-Compliant App. Br. 4). We have
jurisdiction over this appeal under 35 U.S.C. § 6(b). An oral hearing was
held on April 12, 2012.
We REVERSE.
THE INVENTION
The invention is directed to a fluid dispenser device that includes a
dose indicator with a display, in which the energy required to change the
display is created when the device is being actuated to dispense a fluid.
(Spec. 1, ll. 2-4; 3, ll. 1-3). Independent claim 1, reproduced below with
paragraphing and emphasis added, is representative of the appealed subject
matter.
1. A fluid dispenser device comprising:
a body (1) incorporating a dispenser
orifice (5);
a reservoir (10) containing the fluid; and
a dispenser member (15) for selectively
dispensing the fluid contained in the reservoir (10),
the device being characterized in that it
further comprises a dose indicator comprising
electronic display means (20), said display means
(20) including a permanent display member (21)
that does not require any energy in order to keep
the display unchanged, and that requires only a
small amount of energy in order to change said
display; and
wherein said indicator operates without a
battery; and
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the energy required to change the display is
created while the device is being actuated during
actuation of the fluid dispenser member.
Independent claim 13 is directed to a fluid dispenser device and
recites "a dose indicator comprising an electronic display, the display
comprising a permanent display member that does not require energy to
keep the display unchanged and that requires electrical energy to change the
display," and "wherein the electrical energy required to change the display is
generated during actuation of the fluid dispenser member by interaction
between two physical portions of the device moving relative to each other."
THE REJECTION
The rejection of claims 1-3 and 6-22 under 35 U.S.C. § 103(a) as
being unpatentable over Walker (US 5,564,414, iss. Oct. 15, 1996), Barberi
(US 6,327,017 B2, iss. Dec. 4, 2001), and Liou (US 5,895,159, iss. Apr. 20,
1999) is before us for review. 1, 2, 3

1 The ground of rejection lists only claims 1-3 and 6-21 (Ans. 4), but the
Examiner explains that claim 22 also was rejected in the final rejection
under this ground of rejection (Id. at 2), and refers to claim 22 in the
statement of the ground (Id. at 4). Accordingly, we also review the rejection
of claim 22.
2 In the Amendment Under 37 C.F.R. § 1.116 filed on March 23, 2009,
claim 6 was amended to depend from claim 1 to address the rejection of
claims 6-9 under 35 U.S.C. § 112, second paragraph. The Amendment was
entered. (Ans. 2). As this rejection is not listed in the Grounds of Rejection
to be Reviewed on Appeal (Id. at 2-3), we understand that the Examiner has
withdrawn it.
3 Claims 1-3 and 6-20 are provisionally rejected on the ground of non-
statutory obviousness-type double patenting as being unpatentable over
claims 1-8 of co-pending U.S. Application No. 10/532,073. (Ans. 3).
Appellant indicates that this rejection is not at issue in this appeal and
presents no arguments regarding its merits. (App. Br. 5; Reply Br. 2). The
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ANALYSIS
The Examiner found Walker discloses a fluid dispensing device
comprising, inter alia, a dose indicator with a liquid crystal display (LCD).
(Ans. 4, citing Walker col. 7, ll. 30-35). The Examiner found that a switch
135 controls the LCD screen such that upon actuation of the dispensing
member, portions of the switch 135 contact each other, sending an electric
pulse to change the display (citing Walker col. 7, ll. 40-50). (Ans. 4, 7-8).
The Examiner found Walker does not disclose that the display requires no
energy to keep it unchanged, and only a small amount of energy to change it.
(Id. at 4).
The Examiner found Barberi discloses a bistable nematic LCD, and
concluded that it would have been obvious to one of ordinary skill in the art
to use Barberi's bistable nematic LCD in place of Walker's LCD to preserve
power. (Ans. 4, citing Barberi col. 19, ll. 50-55). The Examiner found that
the modified device would require no energy to keep the display unchanged,
and only a small electric pulse to change the display. (Id.).
The Examiner found Walker also does not disclose that the energy to
change the display is created while the device is being actuated, and that no
battery is required to operate the device. (Ans. 4-5). The Examiner found
Liou discloses a current producer (60) that produces a current when a
pressing bar (31) strikes an internal flint to avoid use of an external power
source (Id. at 5, citing Liou col. 2, ll. 47-53), and concluded that it would

Examiner requests that we review this rejection. (Ans. 3, 11). We do not
reach the merits of this rejection because it would be premature to do so at
this time, consistent with the holding of Ex Parte Moncla, 95 USPQ2d 1884,
1885 (BPAI 2010) (precedential).

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have been obvious to one of ordinary skill in the art to replace the battery
and switch mechanism in Walker's modified device with Liou's pressing bar
and current producer to produce the electric pulse to change the display
without an external power supply (Id.). The Examiner determined that this
modification would involve mere substitution of one well-known method for
another to yield predictable results. (Id. at 9). The Examiner found that as
the modified device is actuated by a user pressing the inhaler down to
release a dose of medicine, the striking bar would contact the flint element to
create an electrical current thereby changing the display. (Id. at 10).
Appellant contends that Walker and Barberi both require an electric
power supply to power an LCD screen. (App. Br. 14). Appellant also
contends that Liou creates electric pulses in a different way than Walker, and
only for the purpose of igniting gas. (App. Br. 13-15; Reply Br. 5-6).
Appellant contends that Liou does not teach that the current producer would
be a suitable substitute for a power supply such as a battery. (App. Br. 14;
Reply Br. 5-6).
We agree with Appellant that the Examiner did not establish that
Liou's electric current producing mechanism would be suitable for
producing the electric current required to change the display in the modified
Walker device. Liou discloses a heat-melting glue gun including a current
producer 60 having a flint, and wire lines 61 having first ends connected to
electrodes of current producer 60 and second ends located above nozzle 72.
(Liou, col. 2, ll. 26-29 & 46-54). When force is applied to the pressing bar
31 to strike the flint of current producer 60, electric current is generated and
a short-circuit spark is produced at the second ends of wire lines 61 to ignite
gas jetting from nozzle 72. (Liou, col. 2, ll. 50-60). Liou discloses that its
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structure, which uses burning gas instead of electric resistance to produce
heat necessary for melting glue, eliminates the need for an electric wire 12 to
supply electric power to the glue gun to generate thermal energy to melt the
glue stick. (Liou, col. 1, ll. 48-53, col. 2, ll. 14-16; Fig. 1). As such, Liou
discloses that the mechanism for producing a spark in combination with the
gas supply replaces an external power source to operate the glue gun, not
that current producer 60 and pressing bar 31 are a substitute for the external
power source. As such, the Examiner did not establish that substituting
Liou's current producer 60 and pressing bar 31 for Walker's switch
mechanism 135 and power source would have yielded a predictable result,
and that Liou's current producer 60 and pressing bar 31would be a suitable
substitute for Walker's switch mechanism 135 and power source.
Appellant also contends that the combination of teachings still would
not include all of the features of claims 1 and 13. (App. Br. 15).
Particularly, Appellant contends that Walker and Liou do not create energy
during actuation of the devices, and the combination of Walker and Liou
would require a separate actuation to create energy. (App. Br. 16; Reply Br.
7). Walker discloses that a user applies downward pressure on the
medication canister 13 and on concave disk 122 to move the tip of vertical
trigger shaft 123 to close microswitch 135, causing LCD display 131 to
change. (Col. 7, ll. 36-46; Fig. 2D). For Liou's glue gun, a user applies
force to the pressing bar 31 to generate a spark. We agree with Appellant
that in the modified Walker device, a separate actuation (by a user) of Liou's
pressing bar 31 (i.e., in addition to actuation of Walker's device by moving
canister 13 and disk 122 to dispense fluid) would appear to be needed to
create energy to change the display. Accordingly, the Examiner did not
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establish by a preponderance of the evidence that the applied combination of
references would produce the claimed feature, "the energy required to
change the display is created while the device is being actuated during
actuation of the fluid dispenser member" (emphasis added). Hence, we do
not sustain the rejection of claim 1, and claims 2, 3, 6-12, and 21 which
depend from claim 1, as being unpatentable over Walker, Barberi, and Liou.
The Examiner's findings and conclusions (Ans. 4-5, 7-11) and
Appellant's contentions (App. Br. 11-16; Reply Br. 5-7) with respect to the
rejection of claim 13 are similar to those discussed supra for claim 1.
Hence, we also do not sustain the rejection of claim 13, and claims 14-20
and 22 which depend from claim 13, as being unpatentable over Walker,
Barberi, and Liou.

DECISION
The Examiner's decision rejecting claims 1-3 and 6-22 is
REVERSED.
REVERSED

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