Ex Parte Cabiri

Patent Trial and Appeal Board

Feb 9, 2018

13472112 (P.T.A.B. Feb. 9, 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.
13/472,112 05/15/2012 Oz CABIRI 688210-51US(201100668) 5159
570 7590 02/13/2018
PANITCH SCHWARZE BELISARIO & NADEL LLP
TWO COMMERCE SQUARE
2001 MARKET STREET, SUITE 2800
PHILADELPHIA, PA 19103
EXAMINER
LAIOS, MARIA J
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
02/13/2018 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):
u sptomail @ panitchlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OZ CABIRI
Appeal 2017-004669
Application 13/472,112
Technology Center 1700
Before: LINDA M. GAUDETTE, MARKNAGUMO, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 15-18 and 23-27. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 In this Decision, we refer to the Specification filed May 15, 2012
(“Spec.”), the Non-Final Office Action mailed January 15, 2016 (“Final
Act.”), the Appeal Brief filed July 14, 2016 (“Appeal Br.”), the Examiner’
Answer mailed December 1, 2016 (“Ans.”), and the Reply Brief filed
January 27, 2017 (“Reply Br.”).
2 Appellant identifies Medimop Medical Projects Ltd. as the real party in
interest as. Appeal Br. 1.
Appeal 2017-004669
Application 13/472,112
The subject matter of the claims on appeal relates to a selectively
powered battery-operated transdermal drug-delivery device. See Spec. 1.
Sole independent claim 15, reproduced below from the Claims Appendix of
the Appeal Brief, is representative of the claims on appeal.
15. A selectively powered battery-operated drug-
delivery device comprising:
a unitary housing having a battery and a complete battery
circuit therein;
a needle disposed within said housing and projectable at
least partially out of said housing for administering a drug
within said housing to a user;
a selectively-removable isolator, said isolator disposed in
a first position whereat said isolator contacts a battery terminal
within said housing so as to interrupt the complete battery
circuit, such that no power is provided to the device;
said isolator configured to be movable to a second
position whereat the complete battery circuit is uninterrupted by
said isolator, such that power is provided to the device; and
an adhesive surface disposed along a side of the unitary
housing, configured for fastening the device to the skin of the
user, said adhesive surface being provided with a selectively
removable protective cover, said isolator being an integral
extension of the protective cover extending into the housing in
the first position, whereby removal of the protective cover
moves the isolator from the first position to the second position,
thereby connecting the complete battery circuit to provide
power to the device.
Appeal Br. A-l (Claims App.)
DISCUSSION
The Examiner maintains the rejections under 35 U.S.C. § 103(a) of
claims 15-18, 24, and 27 over Yodfat et al. (WO 2009/125398 A2,
published October 15, 2009) (“Yodfat”) and Garde (US 6,377,848 Bl,
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Appeal 2017-004669
Application 13/472,112
issued April 23, 2002) (“Garde”), and claims 23, 25, and 26 over Yodfat,
Garde, and Selevan (US 2009/0209896 Al, published August 20, 2009).
Non-Final Act. 3-6.
We focus on independent claim 15 is deciding this appeal.
Claim 15 is directed to a selectively powered battery-operated drug-
delivery device that includes a unitary housing having a battery and a
complete battery circuit, a selectively-removable isolator, and an adhesive
surface, with a selectively removable protective cover, disposed along a side
of the unitary housing, configured for fastening the device to the skin of the
user. Appeal Br. A-l (Claims App.) According to claim 15, the selectively-
removable isolator is configured to be movable from a first position to a
second position. When in the first position, “said isolator contacts a battery
terminal within said [device’s] housing so as to interrupt the complete
battery circuit, such that no power is provided to the device.” Id. When in
the second position, “the complete battery circuit is uninterrupted by said
isolator, such that power is provided to the device.” Id. In addition,
claim 15 requires the “isolator being an integral extension of the protective
cover extending into the housing in the first position, whereby removal of
the protective cover moves the isolator from the first position to the second
position, thereby connecting the complete battery circuit to provide power to
the device.” Id.
The dispositive issue before us in this appeal is:
Has the Examiner reversibly erred in finding that a person of skill in the art
would have had a reason to adapt Garde’s isolator pull tab to Yodfat’s
device by making the isolator pull tab integral with the protective cover of
Yodfat’s adhesive strip? We answer this question in the affirmative.
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Appeal 2017-004669
Application 13/472,112
The Examiner finds that Yodfat discloses all elements of claim 15’s
device except “an isolator configured to be moveable from a first position to
a second position and the [isolator] being an integral extension of the
protective cover.” Non-Final Act. 3 (citing Yodfat ]fl[ 20, 187, 212, Figs. 2c,
11a).
The Examiner finds that Garde discloses a drug delivery device
including a housing having battery 22, where the battery includes
selectively-removable pull tab (isolator) 43. Non-Final Act. 3; Garde 6:39—
53, Fig. 8A. Garde’s pull tab 43 is disposed in a first position where the
isolator contacts a battery terminal within said housing so as to interrupt the
battery circuit, such that no power is provided to the device—i.e., when the
pull tab is physically disposed between the cathode of power source 22 and
the first battery terminal of control circuitry 24, thus, interrupting the battery
circuit. Id. In addition, Garde’s pull tab 43 is configured to be movable to a
second position where the complete battery circuit is uninterrupted by said
isolator—i.e., when the user removes pull tab 43 from the controller, a
spring force, such as that provided by battery holder 45, urges power
source 22 against the first battery terminal of control circuitry 24, causing
electrical contact, and thus, providing power to the device. Non-Final
Act. 4; Garde 6:39-53, Fig. 8A. The Examiner finds that Garde teaches that
pull tab 43 ensures that battery 22 is not being drained prior to the user
removing pull tab 43, which is advantageous when the manufacturer of the
drug delivery device ships the device with batteries in place. Non-Final
Act. 4; Garde 6:54-67.
The Examiner determines that one of ordinary skill in the art would
have been led, based on Garde, to include a pull tab (isolator) in Yodfat’s
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Appeal 2017-004669
Application 13/472,112
device to ensure the battery is not drained prior to the user removing the pull
tab (e.g., during shipping). Non-Final Act. 4. The Examiner’s
acknowledges that the combination of Yodfat and Garde teach the protective
cover and isolator as separator components of the drug-delivery device, but
determines that “having the isolator extend from said protective cover and
the isolator being pre-attached [(integral)] to the cover” would be a matter of
engineering choice. Id. (citing Manual of Patent Examining Procedure
(MPEP) § 2144.04 (9th ed., Jan. 2018)).
Appellant argues that “Garde does not disclose, teach or suggest,
anywhere in the reference, that the pull tab 43 is attached in any manner to
anything, much less to a removable protective cover of [an adhesive surface
of] the device, much less being integral therewith.” Appeal Br. 5.
Appellant’s argument is persuasive of reversible error. Although
Garde may provide a reason for using a pull tab (isolator) in Yodfat’s
device, because the Examiner has not established a reason for making the
pull tab on Yodfat’s modified device “an integral extension of’ Yodfat’s
protective cover extending into the housing, whereby removal of the
protective cover moves the isolator from a first position to a second position,
“thereby connecting the complete battery circuit to provide power to”
Yodfat’s device, the Examiner’s obviousness determination is based on
improper hindsight reasoning. Non-Final Act. 3—4. In other words, the
Examiner has not adequately explained why it would have been desirable to
integrate Garde’s pull tab with Yodfat’s protective cover rather than include
Garde’s pull tab as a separate component in Yodfat’s device to prevent the
battery in Yodfat’s device from being drained prior to removing the pull tab.
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Appeal 2017-004669
Application 13/472,112
Because this deficiency is present in all the appealed rejections, we reverse
the rejections of claims 15-18 and 23-27.
DECISION
For the above reasons, the rejections of claims 15-18 and 23-27 are
reversed.
REVERSED
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