Ex Parte Corbacho

Patent Trial and Appeal Board

Nov 12, 2014

11713335 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/713,335 03/02/2007 Hipolito P. Corbacho SWD-139A 7020
7590 11/12/2014
GLYNNTECH, INC.
6 MINNEAKONING ROAD
FLEMINGTON, NJ 08822
EXAMINER
YOUNG, RACHEL T
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
11/12/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HIPOLITO P. CORBACHO
__________

Appeal 2012-004723
Application 11/713,335
Technology Center 3700
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
monodose nasal sprayer device. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellant identifies the Real Party in Interest as Corbco, Inc. (see App. Br.
1).
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Application 11/713,335

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Statement of the Case
Background
The Specification teaches that “the present invention has been
developed to drive medicine through the spray nozzle in a manner that is
user independent as to dosage amount and dosage speed of delivery to yield
a consistent, predetermined dosage and a consistent predetermined profile
spray” (Spec. 7 ¶ 16).
The Claims
Claims 23–44 are on appeal. Claim 23 is representative and reads as
follows (relevant portion emphasized):
1. A monodose nasal sprayer device, which comprises:
a) an elongated main housing having a distal end adapted
for partial insertion into a human nasal cavity and having a
proximal end adapted to receive and hold a breakable
monodose medicine package-supporting central member, said
elongated main housing having a spray discharge nozzle located
at its distal end, said elongated main housing having medicine-
receiving chamber connected to said nozzle and biased toward
said breakable mono dose medicine package-supporting central
member;
b) said breakable medicine package-supporting central
member being connected to said proximal end of said elongated
main housing, said central member having a distal end adapted
to support a breakable monodose medicine package so as to be
positioned at said chamber, and having a piston shaft with a
piston-engaging high friction area end and having a piston-
releasing area distal end;
c) a piston located in said piston shaft, said piston having
a medicine container breaking distal end, having a central area
with a high friction engaging surface to engage said proximal
end of said piston shaft and having an extended proximal end
functionally connected to a firing cap wherein said proximal
end of said piston includes a flange that fits atop said spring and
fits into said firing cap cavity;
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d) a firing cap connected to said proximal end of said
central member and being movable toward said distal end of
said central member by compressive force, said firing cap
having a piston-receiving cavity and a drive spring located in
said cavity, said extended proximal end of said piston being
functionally connected to said spring;
e) finger support means located on the outside of one of
said main housing and said central member; and,
f) a child resistant locking mechanism connected to at
least one of said central member and said firing cap that is
unlockable and, when locked, prevents movement of said firing
cap toward said distal end of said central member, and permits
movement of said firing cap toward said distal end of said
central member when said locking member is unlocked;
wherein the force required to over come the frictional
force between said high friction engaging surface of said piston
and said piston shaft is greater than the force required to
compress said spring;
wherein a user may procure a monodose of medicine
with said device when loaded with a breakable mono dose
medicine package by (i) moving said locking mechanism from
its locked position to its unlocked position; (ii) placing fingers
in front of [t]he finger support means and applying compressive
force against said firing cap to move said firing cap towards
said central member so as to compress said spring and to move
said firing cap closer toward said central member to push said
piston out of said piston engaging friction area of said shaft so
as to sufficiently reduce friction such that said spring
automatically and with significant celerity, fires said piston and
causes said distal end of said piston to puncture said breakable
monodose medicine package and to drive medicine therefrom to
and through said spray nozzle in a manner that is user
independent as to dosage amount and dosage speed of delivery
to yield a consistent, predetermined profile spray.

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The issues
A. The Examiner rejected claims 23–25, 27–29, and 31–33 under
35 U.S.C. § 103(a) as obvious over Stihl,2 Galli,3 and Faughey4 (Ans. 5–9).
B. The Examiner rejected claims 26, 34–40, and 42–44 under 35 U.S.C.
§ 103(a) as obvious over Stihl, Galli, Faughey, and Roggenburg, Jr.5 (Ans.
9–15).
C. The Examiner rejected claims 30 and 41 under 35 U.S.C. § 103(a) as
obvious over Stihl, Galli, Faughey, and DeJonge6 (Ans. 10–15).
A. 35 U.S.C. § 103(a) over Stihl, Galli, and Faughey
The Examiner relies upon Stihl to teach a “housing having medicine-
receiving chamber 44 connected to the nozzle . . . and having a piston shaft
17, a piston 30 located in the piston shaft, the piston having a medicine
container breaking distal end” (Ans. 5–6). The Examiner finds that Stihl
teaches a “firing cap having a cavity 25 and a spring 33, but is silent
regarding that the cavity receives a drive spring and part of the piston and
the piston shaft having a piston-engaging high friction area end and a piston
having a piston releasing distal end” (id. at 6).
The Examiner finds that:
Galli teaches a firing cap 3 with a receiving cavity (where 6 and
spring 7 is located) with a drive spring 7 and part of a piston
(proximal end of 8) and the firing cap 3 that engages the outside
of a central member 13 at a proximal end and a piston shaft

2 Stihl, A., US 6,877,672 B2, issued Apr. 12, 2005.
3 Galli, R., US 5,546,932, issued Aug. 20, 1996.
4 Faughey et al., US 6,394,317 B1, issued May 28, 2002.
5 Roggenburg, Jr., S.L., US 4,474,314, issued Oct. 2, 1984.
6 DeJonge, S., US 6,591,832 B1, issued July 15, 2003.
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(within 13) having a piston-engaging high friction area end 11
and a piston having a piston releasing distal end 10.
(Id.).
The Examiner finds it obvious to
modify Stihl’s firing cap to connect to the outside of the central
member, the piston to extend into the firing cap receiving cavity
and have a piston releasing distal end and drive spring to be
located within the cavity and piston shaft to have a friction
engaging area within the central portion, as taught by Galli, for
the purpose of providing an automatic and forceful actuation.
(Id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Stihl, Galli, and Faughey render the
claims obvious?
Findings of Fact
1. Stihl teaches that the
operation of the pump has tensioned the restoring spring 33 and
returns the actuator 25 and therefore the pump piston 27 to the
initial position sucking air into the pump. By removing the
adaptor 14 and replacing the blister 19 by an unused blister, the
dispenser is again ready for use. In the case where it is a
disposable dispenser, there is no need for the spring 33.
(Stihl, col. 5, ll. 8–14).
2. Stihl teaches that after the foil blister is inserted, “cylinder 17 is
then filled with air, which in this case forms the feed fluid 36” (Stihl, col. 4,
ll. 4–5).
3. Stihl teaches that “the foil is burst by the internal pressure, the
feed fluid 36 flows under its pressure through the blister, carries with it the
second medium 37 by mixing therewith . . . the mixture flows to the
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discharge opening 15 and . . . [is] applied to a nostril” (Stihl, col. 4, ll. 27–
33).
4. Galli teaches that:
upward movement of the control sleeve 45 releases the resilient
expansible detent ring 11, which expands, then stopping its
detent action on the piston 42 which snaps forward, instantly
releasing all the energy previously accumulated by loading the
main spring 41 and causing a jet of compressed air at
predetermined and reproducible speed and pressure which
carries, as described for the basic embodiment, the powder
contained in the dosage chamber, through the nozzle, to the
mouth and the lungs of the patient.
(Galli, col. 8, ll. 24–32).
Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398,418 (2007).
Analysis
Appellant contends that “[l]ike Stihl, the Galli device uses compressed
air to deliver the drug to the user . . . Thus, as with Stihl, Galli operates on a
different principle than the present invention monodose nasal sprayer” (App.
Br. 15). Appellant contends that “[e]ven if Stihl and Galli could be
physically combined, neither reference discloses replacing the compressed
air delivery system with one based on piston impact” (id.).
The Examiner responds that “Galli is used to teach a similar spring as
the instant invention and Stihl teaches a bursting spike that are used in
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combination to burst the medicament capsule and deliver medicament to the
user’s nasal cavity” (Ans. 16). The Examiner finds that there “is also no
language in the claims disallowing compressed air as part of the delivery
process and it appears that compressed air would only help deliver
medicament to a user’s nasal cavity” (id.).
We find that Appellant has the better position. Both independent
claims 23 and 34 require the “distal end of said piston to puncture said
breakable monodose medicine package and to drive medicine therefrom to
and through said spray nozzle . . . to yield a consistent, predetermined profile
spray.” We agree with Appellant that this claim language requires the piston
itself to drive the medicine through the spray nozzle, thereby excluding
embodiments in which the piston indirectly compresses air or another fluid
which is then used to drive the medicine. Because Stihl and Galli both rely
upon compressed air to carry or deliver the medicine (FF 3–4) rather than
direct driving of the medicine by the piston, neither reference suggests this
claim limitation.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Stihl, Galli, and Faughey render the claims obvious.
B-E. 35 U.S.C. § 103(a) rejections
These rejections rely upon the underlying obviousness rejection over
Stihl, Galli, and Faughey. Having reversed the rejection of claim 23, we
also necessarily reverse these obviousness rejections because neither
Roggenburg nor DeJonge is relied upon to teach a device where the piston
functions to “drive medicine therefrom to and through said spray nozzle” as
required by claims 23 and 34.
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SUMMARY
In summary, we reverse the rejection of claims 23–25, 27–29, and 31–
33 under 35 U.S.C. § 103(a) as obvious over Stihl, Galli, and Faughey.
We reverse the rejection of claims 26, 34–40, and 42–44 under 35
U.S.C. § 103(a) as obvious over Stihl, Galli, Faughey, and Roggenburg, Jr.
We reverse the rejection of claims 30 and 41 under 35 U.S.C. § 103(a)
as obvious over Stihl, Galli, Faughey, and DeJonge.

REVERSED
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