Ex Parte Elahi et al

Patent Trial and Appeal Board

Jan 27, 2016

12438285 (P.T.A.B. Jan. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/438,285 04/13/2009
23650 7590 01/29/2016
NOVO NORDISK INC
INTELLECTUAL PROPERTY DEPARTMENT
800 Scudders Mill Road
Plainsboro, NJ 08536
FIRST NAMED INVENTOR
Ramin Nateghi Elahi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7481.204-US 4376
EXAMINER
SCHMIDT, EMILY LOUISE
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
01129/2016 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):
nnipatent@novonordisk.com
KISW@novonordisk.com
CELN@novonordisk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMIN NATEGHI ELAHI, JONAS SMITH-TORRY,
NILOLAJ EUSEBIUS JAKOBSEN, and MICHAEL EJSTRUP HANSEN
Appeal2013-003449
Application 12/438,285
Technology Center 3700
Before JAMES P. CALVE, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ramin Nateghi Elahi et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1, 11, and 16, which
are all the pending claims. See Appeal Br. 11; Reply Br. 1. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
According to Appellants, the real party in interest is Novo Nordisk
A/S, of Bagsvaerd, Denmark. Appeal Br. 3.
Appeal2013-003449
Application 12/438,285
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates to medical delivery system
wherein the container is adapted to be locked to the dosing assembly through
a nonrotational movement and unlocked from the dosing assembly through a
non-translational movement." Spec., p. 1, 11. 5-8. Pending claims 1, 11, and
16 are all independent. Claim 1, reproduced below with emphasis added, is
illustrative of the subject matter on appeal.
1. A medical delivery system comprising:
- a container adapted to contain a medicament in a
chamber and a slidably arranged piston which is movable in a
distal direction towards an outlet so as to reduce the volume of
the chamber and expel the medicament;
- a dosing assembly adapted to be fastened to the
container, so as to allow a driver of the dosing assembly to
move the piston of the container in the distal direction;
- wherein the dosing assembly defines a first fastening
means which during fastening of the container to the dosing
assernbly engages a second fastening rneans of the container,
the first and/or second fastening means being shaped such that
the container is adapted to be:
- locked to the dosing assembly through a
translational and non-rotational movement between one
of the container and the dosing assembly and at least a
part of the other one of the container and the dosing
assembly, and
- unlocked from the dosing assembly through a
rotational and non-translational movement between one
of the container and the dosing assembly and at least a
part of the other one of the container and the dosing
assembly
wherein each of the first and second fastening means
defines a depression, said depressions being axially aligned
when the container is fastened to the dosing assembly, and
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Appeal2013-003449
Application 12/438,285
wherein one of the first and second fastening means further
comprises a locking member which is radially movable in a
cavity defined by the depressions when the container is fastened
to the dosing assembly, and
wherein each of the container and the dosing assembly
comprises a radially extending abutment surface each of which
engages a corresponding radially extending surface of the
locking member such that upon relative rotation between the
container and the dosing assembly, the abutment swfaces apply
a circuniferential pressure to the locking member causing the
locking member to expand or contract.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Hutson
Bitdinger
us 5,242,416
US 6,648,859 B2
REJECTION
Sept. 7, 1993
Nov. 18, 2003
The following rejection is before us for review: Claims 1, 11, and 16
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bitdinger
and Hutson.
ANALYSIS
Appellants present the same arguments for all remaining claims on
appeal-namely, independent claims 1, 11, and 16. See Appeal Br. 7-11;
Reply Br. 2-3. Further, Appellants explicitly note that these claims "stand
or fall together." Reply Br. 1.
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Appeal2013-003449
Application 12/438,285
The Examiner determined that a combination of teachings from
Bitdinger and Hutson renders obvious the limitations of these independent
claims. Final Act. 4--5. Appellants argue that the combination relied on is
insufficient to teach all the features of the recited first and second fastening
means of each of the dosing assembly and container, respectively, to
selectively lock and unlock the container and the dosing assembly. See
Appeal Br. 7-11; Reply Br. 2-3. We are not persuaded by Appellants'
arguments.
Appellants assert that the combination of Bitdinger and Hutson
"fail[ s] to disclose or suggest at least that 'the abutment surfaces apply a
circumferential pressure to the locking member causing the locking member
to expand or contract' as provided in the independent claims." Appeal
Br. 7-8 (emphasis omitted). In response to this assertion, the Examiner
clarifies that Hutson, the reference relied on for teaching details of fastening
means, "specifically teaches circumferential pressure being applied to the
lock mechanism." Ans. 3 (citing Hutson, col. 9, 11. 24--27); see also Final
Act. 4--5. This finding is supported by a preponderance of the evidence, and
the Examiner's clarification is not contested in the Reply Brief, such that
Appellants' assertion does not apprise us of error.
Appellants also argue that the combination of Bitdinger and Hutson
would not have provided a reasonable expectation of success because the
fastening means of Hutson allegedly "would not provide a sufficiently
accurate and sufficiently firm attachment mechanism." Appeal Br. 8-9.
Further, Appellants assert that Hutson teaches "merely attaching or
coupling" elements together, but allege that "locking" elements together, as
in the claim, would imply a more firm attachment. Id. at 10. The claims do
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Appeal2013-003449
Application 12/438,285
not recite any threshold of accuracy or firmness necessary for the container
to be locked and unlocked from the dosing assembly, and it is well
established that limitations not appearing in the claim cannot be relied upon
for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). We
agree with the Examiner that the fastening means of Hutson "would be
sufficient to join" or lock (i.e., fasten or hold in position) the container and
dosing assembly of Bitdinger to the extent required by the claims. Ans. 3.
Finally, Appellants express disagreement with the Examiner's
statement that nothing in Bitdinger or Hutson prevents Hutson's fastening
means from locking or from being used as the fastening means for
Bitdinger's device. Reply Br. 2; see also Ans. 3. Appellants assert that the
references teach different modes of locking that are "not interchangeable,"
and that the teachings of the references "cannot be used together, at least not
with a reasonable expectation of success," alleging that Bitdinger's teaching
of stiff bayonet threads and Hutson' s teaching of flexible tabs somehow
result in an incompatibility. Reply Br. 2 (emphasis omitted). These
assertions are not responsive to the rejection articulated by the Examiner,
which does not combine structural details of Bitdinger's and Hutson's
respective locking mechanisms, but instead proposes to use the fastening
means of Hutson in the medical delivery system of Bitdinger as a known
equivalent mechanism to produce predictable results. See Final Act. 4--5.
Moreover, Appellants' assertions do not explain how combining the
teachings in the manner proposed would be unpredictable or somehow
beyond the level of ordinary skill in the art. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007).
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Application 12/438,285
After careful consideration of all the evidence, Appellants' arguments
do not apprise us of error in the Examiner's findings or reasoning for the
conclusion of obviousness in the rejection as presented. Accordingly, we
sustain the rejection of claims 1, 11, and 16 under 35 U.S.C. § 103(a) as
being unpatentable over Bitdinger and Hutson.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1, 11, and 16
under 35 U.S.C. § 103(a) as being unpatentable over Bitdinger and Hutson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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