Ex Parte Cecka et al

Patent Trial and Appeal Board

Oct 8, 2013

11436239 (P.T.A.B. Oct. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte WALTER CECKA, WILLIAM W. ALSTON,
ADRIAN E. SMITH, GREGORY W. HALL, WINFIELD FISHER, and
GAL COHEN1
__________

Appeal 2012-003074
Application 11/436,239
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to valves
intended for use in endobronchial therapy, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify the Real Party in Interest as Novartis Pharma AG
(Appeal Br. 3).
Appeal 2012-003074
Application 11/436,239

2
STATEMENT OF THE CASE
The Specification discloses “valves, devices, adapters, systems and
components for use with apparatus to introduce aerosols, such as ventilator
circuits and/or nebulizers” (Spec. 8, ¶ 17).
Claims 1-8 and 10-44 are on appeal. Claims 1 and 36 are the only
independent claims on appeal and read as follows (emphasis added):
1. A valve, comprising:
a support comprising a plurality of apertures, the support
comprising a center and an outer edge; and
at least one flap for each aperture, wherein said flap has an end
connected proximal to the center of the support, said flap is capable of
moving, by a fluid pressure differential between at least one of a closed
position and an opened position and wherein the valve has an opening
pressure of less than 50 cm H2O.

36. A valve, comprising:
a support comprising an aperture;
a flap connected to the support; and
at least one protrusion on at least one member selected from the
support and the flap, wherein the at least one protrusion on at least one
member selected from the support and the flap has a surface that contacts the
other of the support and the flap when the flap is in a closed position, and
wherein the valve has an opening pressure of less than 50 cm H2O.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 1-7, 10-12, 15-19, 22, 23, and 35 based on Lundy2 and
Rutter3 (Answer 4) and
• Claims 8, 13, 14, and 36-44 based on Lundy, Rutter, and Köhnke4
(Answer 8).

2 Lundy, US 3,744,581, Nov. 27, 1973.
3 Rutter US 2004/0123868 A1, July 1, 2004.
Appeal 2012-003074
Application 11/436,239

3
DISCUSSION
Both of the rejections on appeal rely on the combination of Lundy and
Rutter. The Examiner finds that Lundy discloses a valve having the
structure required by claim 1 and, except for being biased to a closed
position, claim 36 (Answer 4-5, 8). However, the Examiner acknowledges
that “Lundy is silent regarding the opening pressure of the valve being less
than 50 cm H20” (id. at 5).
The Examiner finds that “Rutter teaches a valve with an opening
pressure of less than 50 cm H2O” (id.) and concludes that it would have
been obvious to modify Lundy’s valve “by forming the valve of a desired
material to have an opening pressure of less than 50 cm H2O, as taught by
Rutter, in order to form a valve that [ ] readily opens with minimal
application of pressure for its intended purpose of being used in low pressure
situations” (id.).
Appellants argue that “since Rutter is directed toward a tracheotomy
inlet valve . . . and Lundy is directed toward a combination poppet and reed
valve used in internal combustion engines in the automotive industry . . .
there is no motivation with which to combine Rutter and Lundy” (Appeal
Br. 13-14). Appellants argue that “there is no connection, link, or positively
recited reason that explains why one of ordinary skill in the art would
modify Lundy with Rutter” (id. at 17).
We agree with Appellants that the Examiner has not provided
adequate evidence or sound technical reasoning to show that a person of
ordinary skill in the art would have considered it obvious to modify Lundy’s

4 Köhnke, US 4,167,184, Sept. 11, 1979.
Appeal 2012-003074
Application 11/436,239

4
valve based on Rutter’s disclosure. Lundy discloses “an intake valve for
internal combustion engines” (Lundy, col. 1, ll. 2-3). Rutter discloses a
“tracheotomy valve unit” (Rutter 2, ¶ 26) that includes a “second valve . . .
allow[ing] air to leak out of the valve unit in a controlled fashion during
expiration” (id. at 2, ¶ 28). “The second valve typically opens at a pressure
of about 4 cm of water” (id.).
The Examiner concludes that it would have been obvious to modify
Lundy’s valve to open at the pressure disclosed by Rutter “for its intended
purpose of being used in low pressure situations” (Answer 5). The
Examiner has not, however, pointed to any evidence or provided technical
reasoning to support his position that a skilled worker would have
considered the pressure disclosed by Rutter for its tracheotomy valve to be
an appropriate opening pressure for Lundy’s intake valve for an internal
combustion engine. The Examiner therefore has not provided an evidentiary
basis sufficient to support a prima facie case of obviousness.
SUMMARY
We reverse both of the rejections on appeal.

REVERSED

lp