Ex Parte Faram

Patent Trial and Appeal Board

Sep 8, 2017

11748907 (P.T.A.B. Sep. 8, 2017)

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.
11/748,907 05/15/2007 Joseph Dee FARAM CADO-33589-US 7275
50639 7590 09/12/2017
HITCHCOCK EVERT LLP
P.O. BOX 131709
DALLAS, TX 75313-1709
EXAMINER
LYDDANE, KATHRYNN M
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
09/12/2017 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):
docket @ hitchcockevert. com
eevert @ hitchcockevert .com
j tower @ hitchcockevert. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH DEE FARAM
Appeal 2016-000017
Application 11/748,9071
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Joseph Dee Faram (Appellant) timely filed a Request for Rehearing
(“Request”) under 37 C.F.R. § 41.52 on July 10, 2017 requesting that we
reconsider our decision of May 10, 2017 (“Decision”). In our Decision we
reversed the rejections under §§102 and 103 and pursuant to our authority
under 37 C.F.R. § 41.50(b), we entered a new ground of rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over Grychowski et al. (US
5,823,179, iss. Oct. 20, 1998) (“Grychowski”).
1 According to Appellant’s Brief, the inventor, Joseph Dee Faram, is
the real party in interest. Appeal Br. 4 (filed Feb. 20, 2015).
Appeal 2016-000017
Application 11/748,907
Rehearing is limited to matters misapprehended or overlooked by the
Board in rendering the initial decision.
Appellant argues that because Grychowski fails to explicitly disclose
a first cap and a second cap, the missing limitation is either “inherent” in
Grychowski or is supplanted with a “common sense” rationale. Request 3.
According to Appellant, because the Board reversed the Examiner’s
anticipation rejection stating that “Grychowski does not necessarily include
caps for closing off inlet and outlet openings,” the Board cannot rely on
inherency to establish the existence of this claim limitation in an
obviousness analysis. Id. at 5 (citing, Decision 7,11. 24—25) (emphasis
added).
We do not agree with Appellant’s contention because it misconstrues
our disposition of the Examiner’s rejection. The Decision did not rely on
inherency to meet the missing limitation of a first cap and a second cap.
Rather, the Decision modifies the nebulizer of Grychowski to include a first
cap and a second cap in light of Grychowski’s disclosure that the nebulizer
may be pre-filled. See Decision 12—13 (citing Grychowski, col. 7,11. 62—
63). Hence, the Decision is not based on inherency, but rather is an
improvement to Grychowski’s nebulizer to include first and second caps
when providing a pre-filled nebulizer “to ensure the hygiene of the medicine
during transport from the manufacturer to the point of usage” and for
“protecting the inlet and outlet openings from damage or contamination
prior to assembly to appropriate connectors for usage.” Id. at 13.
Appellant further argues, as noted above, that the Board improperly
“used ‘common sense’ to conclude it would have been obvious [to a person
of ordinary skill in the art] to supply the missing elements—the first and
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Application 11/748,907
second caps—into Grychowski.” Request 5. Appellant contends that: (1)
common sense is typically invoked to provide a known motivation to
combine, not to supply a missing claim limitation” (Request 5); (2) “the first
and second caps play a major role in the subject matter of claim 1 and . . .
‘common sense’ does not warrant supplying both the first and second caps”
{id. at 6); and (3) “common sense cannot replace reasoned analysis and
evidentiary support” {id.) (citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d
1355, 1361-63 (Fed. Cir. 2016)).
Although we appreciate that common sense is typically not used to
supply a missing limitation, nonetheless, “in appropriate circumstances, a
patent can be obvious in light of a single prior art reference if it would have
been obvious to modify that reference to arrive at the patented invention.”
Arendi S.A.R.L., 832 F.3d at 1361 (citing Takeda Chem. Indus., Ltd. v.
Alphapharm Pty, Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007); SIBIA
Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir.
2000)). As Appellant correctly notes, “one may invoke common sense to
supply an admittedly missing limitation when the limitation is unusually
simple and the technology particularly straightforward.” Request 5 (citing
Arendi S.A.R.L., 832 F.3d at 1362). Here, adding first and second removable
caps to the inlet and outlet openings of Grychowski’s nebulizer is simple and
straightforward. Any reasonable manufacturer of a container that holds
liquids, i.e., a nebulizer, and pre-fills the container with an appropriate
amount of liquid, would use common sense and place a cap on the container
to prevent the liquid from leaking, evaporating, or becoming contaminated
prior to use. A first cap would be placed on the top opening (outlet) to
prevent particles including dirt and bacteria from entering from above, as
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Application 11/748,907
well as to reduce evaporation. A second cap would be placed at the bottom
opening (inlet) to ensure that the liquid does not leak from the bottom and
also to ensure the integrity of the inlet connection with respect to damage
and contamination. See Decision 13.
Appellant further argues that “the Board did not provide any reasoned
analysis or evidence to support applying the pre-filled comment for the first
embodiment [of Grychowski’s Figure 1] to the second embodiment [of
Grychowski’s Figure 5].” Request 7. According to Appellant, “[t]he
significant design, structural and operational distinctions between
Grychowski’s first embodiment and second embodiment introduce a first
gap in reasoning.” Id. Moreover, as Grychowski does not disclose how to
pre-fill a nebulizer, this lack of structure introduces a second gap in logic
that does not lead to “the specific claimed structure of a first cap and a
second cap.” Id.
We are not persuaded by Appellant’s arguments for the following
reasons. Although we appreciate that Grychowski discloses pre-filling with
respect to the embodiment of Figure 1, in the embodiment of Figure 5 relied
on by the Examiner in making the rejection, “mouthpiece 199 (outlet), or
other suitable means of delivering an aerosol to a patient, such as a mask,”
corresponds to mouthpiece 100 that generates an aerosol in the embodiment
of Figure 1. Compare Grychowski col. 12,11. 10—12 with col. 8,11. 16—17.
In addition, like reservoir 123 and nozzle assembly 124 having fitting 128
(inlet) of Grychowski’s Figure 5 embodiment, the embodiment of Figure 1
includes reservoir 23 and nozzle assembly 24 with fitting (inlet) 28.
Furthermore, for the embodiment of Grychowski’s Figure 5, “to operate the
nebulizer 110, a suitable amount of liquid medicine is placed in reservoir of
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Application 11/748,907
the chamber 114,” whereas for nebulizer 10 of Grychowski’s Figure 1, “a
suitable amount of a liquid such as a medicine or water is placed in the
reservoir of the chamber 14 ... or further, the nebulizer may be provided
pre-filled with the appropriate amount of medicine from the manufacturer.”
Grychowski, col. 7,11. 52—63, col. 13,11. 14—16 (emphasis added). As such,
based on the similarity in structure between the inlet (fittings 28, 128), outlet
(mouthpiece 100, 199), chamber (14, 114), and reservoir (23, 123) in the
embodiments of Grychowski’s Figures 1 and 5, and their similar functions, a
person of ordinary skill in the art of nebulizers would readily understand that
both embodiments would be used in a similar manner, and thus,
Grychowski’s Figure 5 embodiment can likewise be pre-filled with medicine
from the manufacturer. An artisan must be presumed to know something
about the art apart from what the references disclose. See In re Jacoby, 309
F.2d 513,516 (CCPA 1962). Appellant does not provide persuasive
evidence that there is any difference between liquid medicine placed in the
reservoir immediately prior to use, or pre-filling the reservoir by the
manufacturer. In other words, Appellant does not provide persuasive
technical argument or evidence that pre-filling the nebulizer of Figure 5
would be any different from pre-filling the nebulizer of Figure 1, or would
be any different from filling the nebulizer immediately prior to use. As
such, because a pre-filled reservoir is supported by the disclosure of
Grychowski, the “common sense” use of removable caps is adequately
supported and constitutes the next logical step to prevent leaking,
evaporation, and contamination of the fluid in the reservoir, and to prevent
damage of the fittings.
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Application 11/748,907
Appellant also argues that the Board’s conclusion of obviousness is
not supported by rational underpinnings because the Board fails to account
for Grychowski’s necessary features. Request 8. According to Appellant,
Grychowski includes additional ports, and that modifying Grychowski’s
nebulizer to include a first cap on the outlet opening and a second cap on the
inlet opening would not address these ports, and, therefore, would fail to
achieve the Board’s underlying purpose “to ensure hygiene of the medicine
or prevent contaminating the nebulizer.” Id.
At the outset, we note that the modification to Grychowski’s nebulizer
discussed in the Decision does not bodily incorporate any features of the
embodiment of Grychowski’s Figure 1 into Figure 5 and does not modify
the existing Figure 5 structure other than to include first and second caps.
Although we appreciate that Grychowski’s nebulizers have additional ports,
adding additional caps to the additional ports is a mere duplication of parts.
See In re Harza, 274 F.2d 669 (CCPA 1960). A person of ordinary skill in
the nebulizer manufacturing art would understand that each port would have
a corresponding cap to ensure hygiene during transport from the
manufacturer to the point of use. Nonetheless, we note that claim 1 only
requires a first cap removably engaged with the outlet opening and a second
cap removably engaged with the inlet opening, and these caps are addressed
in the Decision. See Decision 12—13. Moreover, we note that even if other
ports of Grychowski’s nebulizer are not capped, as Appellant contends,
nonetheless, providing first and second caps to Grychowski’s nebulizer
would protect “the inlet and outlet openings from damage or contamination
prior to assembly to appropriate connectors for usage.” Id. at 13.
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Finally, Appellant argues that “Grychowski teaches away from
sealing all the nebulizers’ openings because it would introduce design
modifications that counter the Grychowski purpose and create additional
patient risks.” Request 8. According to Appellant, “[sjealing ambient ports
would prevent necessary ambient airflow and interfere with the Grychowski
functionality.” Id. at 9. Appellant contends that in the Examiner’s Answer,
“the Examiner agreed that Grychowski teaches away from sealing a
nebulizer.” Id. at 9-10 (citing Ans. 14, 16, and 17).
We are not persuaded by Appellant’s argument because the Decision
does not suggest sealing all ports. The Decision modifies “the Grychowski
nebulizer to include a first cap that is removably engaged with the outlet
opening and a second cap that is removably engaged with the inlet opening.”
Decision 13 (emphasis added). The modification in the Decision relies on
caps that are removably engaged “prior to assembly to appropriate
connectors for usage.” Id.', see also Grychowski, col. 11,11. 54—57; col. 12,
11. 10—12 and col. 13,11. 15—18. Moreover, although the Examiner agrees
that Grychowski teaches away from sealing, Appellant fails to include the
Examiner’s caveat “that there is no part of the Final Rejection which
discloses or teaches sealing Grychowski’s airflow openings.” Ans. 16.
In conclusion, for the foregoing reasons, Appellant’s Request does not
persuade us that the Decision misapprehended or overlooked any matter in
entering the new ground of rejection of claim 1.
CONCLUSION
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Application 11/748,907
We have granted Appellant’s Request to the extent that we have
considered our Decision in light of the points raised by Appellant, but have
denied the Request with respect to any modification to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
DENIED
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