10821624 (B.P.A.I. Dec. 23, 2011)

Ex Parte Dunkley et al

Board of Patent Appeals and InterferencesDec 23, 2011

10821624 (B.P.A.I. Dec. 23, 2011)

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. 10/821,624 04/09/2004 Michael John Dunkley 53315-US-CNT 8935 1095 7590 12/23/2011 NOVARTIS CORPORATE INTELLECTUAL PROPERTY ONE HEALTH PLAZA 101/2 EAST HANOVER, NJ 07936-1080 EXAMINER MATTER, KRISTEN CLARETTE ART UNIT PAPER NUMBER 3771 MAIL DATE DELIVERY MODE 12/23/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MICHAEL JOHN DUNKLEY, JON DAVID TUCKWELL EDWARD WILLIAM VERNON-HARCOURT, MARK GLUSKER and STEVE PABOOJIAN ____________ Appeal 2009-010767 Application 10/821,624 Technology Center 3700 ____________ Before LINDA E. HORNER, JOHN C. KERINS, and STEVEN D.A. McCARTHY, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-010767 Application 10/821624 2 STATEMENT OF THE CASE Michael John Dunkley et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 20, 27, 28, 31 and 32. Claims 1-19, 29, 30, 33 and 34 are canceled, and claims 21-26 are withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ invention is directed to an aerosolization apparatus. Independent claim 20 is illustrative, and is reproduced below with emphasis added: 20. An aerosolization apparatus comprising: a housing defining a chamber having one or more air inlets, the chamber being sized to receive a capsule which contains an aerosolizable pharmaceutical formulation; a puncturing mechanism within the housing, the puncturing mechanism comprising an alignment guide and a puncture member, wherein the alignment guide comprises a surface adapted to contact the capsule while the puncture member is advanced into the capsule to create an opening in the capsule, and wherein the surface comprises one or more protrusions for contacting the capsule; and an end section associated with the housing, the end section sized and shaped to be received in a user's mouth or nose so that the user may inhale through the end section to inhale aerosolized pharmaceutical formulation that has exited the capsule through the opening created in the capsule. THE REJECTIONS The Examiner has rejected claims 20, 27 and 28 under 35 U.S.C. § 102(b) as being anticipated by Valentini (US 4,069,819, issued January 24, 1978), and claims 31 and 32 under 35 U.S.C. § 103(a) as being obvious over App App Vale 2003 Vale protr (Ans prov The Exam eal 2009-0 lication 10 ntini in vie ). Did the E ntini discl usions for The Exa [t]he li separate not com broadest an arbitr begin an Figure 5 solid b underne surface "surface more pr location . 6-7). Re ided by th above figu iner’s pro 10767 /821624 w of Citte xaminer oses an ali contacting miner mai mitation ly (or bein mensurate reasonabl ary guide d end. Fo of Valen lack area ath the pro indicated adapted otrusions in which t produced e Examine re shows a posed “pr rio (US 20 employ a p gnment gu the capsu AN ntains that of the g complet with the s e interpre for setting r example tini, clearl . Either trusion o below the to contact (solid bla he capsule below is th r in the An portion o otrusions” 3 03/00005 ISSUE roper clai ide surfac le? ALYSIS protrusion ely surrou cope of th tation of t where th , see the y identify the arbit r the rema protrusio the caps ck area) rests whe e portion swer. An f Figure 5 denoted b 23 A1, iss m constru e that com s extend nded) from e claims, he claims, e surface below figu ing the pr rary hori ining part n can be ule" com because b n being pu of Figure 5 s. 7. of Valenti y the solid ued Janua ction in fin prises one ing some the surfa thus withi one can m and protru re taken otrusion a zontal su of the an considered prising on oth lie in nctured. of Valen ni with th black are ry 2, ding that or more how ce is n the ake sion from s the rface gled the e or the tini e a. Appeal 2009-010767 Application 10/821624 4 We do not agree that, within a broadest reasonable interpretation of claim 20, a person of ordinary skill in the art would make an “arbitrary guide for setting where the surface and protrusion begin and end”, as asserted by the Examiner. (Ans. 6). As noted by Appellants, the Examiner’s position evidenced by the annotated Figure 5 of Valentini (Ans. 7), appears to be that the claimed surface is “either (i) an arbitrary horizontal surface underneath the blackened portion of the Examiner's altered drawing on page 7 of the Examiner's Answer or (ii) the remaining part of the angled surface below the blackened part.” (Reply Br. 5). The arbitrary horizontal surface simply does not exist in Valentini as a surface. Further, a person of ordinary skill in the art would not regard a first portion of a flat surface as a “surface”, and a second portion of the same flat surface as a “protrusion” from the first portion. The broadest reasonable interpretation of claim 20, as would be understood by persons of ordinary skill in the art in view of Appellants Specification, requires that there be a surface, and a protrusion extending away from that surface. The Examiner has not shown how Valentini meets this claim limitation, and the rejection of claim 20, and of claims 27 and 28 depending therefrom, as anticipated by Valentini, will not be sustained. The rejection of claims 31 and 32 as being obvious over Valentini and Citterio relies on the same erroneous claim interpretation and findings as were employed in the rejection of claim 20. Accordingly, this rejection will likewise not be sustained. Appeal 2009-010767 Application 10/821624 5 CONCLUSION The Examiner did not employ a proper claim construction in finding that Valentini discloses an alignment guide surface that comprises one or more protrusions for contacting the capsule. DECISION The decision of the Examiner to reject claims 20, 27, 28, 31 and 32 is reversed. REVERSED nlk