Ex Parte Hansen

Patent Trial and Appeal Board

Apr 16, 2013

11630987 (P.T.A.B. Apr. 16, 2013)

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.
11/630,987 12/28/2006 Bernd Hansen 52858 4357
1609 7590 04/17/2013
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
SCHMIDT, EMILY LOUISE
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
04/17/2013 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 BERND HANSEN
__________

Appeal 2011-011048
Application 11/630,987
Technology Center 3700
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
receptacle. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 12-24 are pending and on appeal (App. Br. 2). We will focus
on claim 12, the only independent claim on appeal, which reads as follows:
12. A receptacle of elastically flexible plastic material, comprising:
a dosing chamber containing a delivery medium and having opposite
first and second ends;
a discharge opening at said first end of said dosing chamber;
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a compressible receptacle part containing a gaseous propellant
medium and coupled at said second end of said dosing chamber via a
connecting point connecting said dosing chamber and said receptacle part in
fluid communication, said connecting point being a capillary tube creating a
capillary action independently of relative three-dimensional locations of said
dosing chamber and said receptacle part to prevent flow of said delivery
medium into said receptacle part; and
a support device stiffening said capillary tube, said support device
including at least two bridge-shaped support arms extending along at least
part of a length of said receptacle part, all of a length of said capillary tube
and at least part of a length of dosing chamber;
whereby upon compression of said receptacle part, said propellant
medium displaces said delivery medium out of said dosing chamber via said
discharge opening.
Claims 12, 13, 15, 16, 18, 19, and 22-24 stand rejected under 35
U.S.C. § 103(a) as obvious over Dirksing (US 5,215,221, Jun. 1, 1993) in
view of Schenk et al. (WO 90/07351 A1, Jul. 12, 1990) as evidenced by
Schlosser et al. (US 5,350,366, Sep. 27, 1994), Kirchhofer (US
2008/0132840 A1, Jun. 5, 2008), and Pohlmann et al. (US 2009/0000615
A1, Jan. 1, 2009) (Ans. 4).
Claim 14 stands rejected under 35 U.S.C. § 103(a) as obvious over
Dirksing in view of Schenk and Welker, III et al. (US 3,993,223, Nov. 23,
1976) as evidenced by Schlosser, Kirchhofer, and Pohlmann (Ans. 6).
Claim 17 stands rejected under 35 U.S.C. § 103(a) as obvious over
Dirksing in view of Schenk and Fuchs (US 6,419,167 B1, Jul. 16, 2002) as
evidenced by Schlosser, Kirchhofer, and Pohlmann (Ans. 6).
Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as obvious
over Dirksing in view of Schenk and Garcia et al. (US 6,786,369 B2, Sep. 7,
2004) as evidenced by Schlosser, Kirchhofer, and Pohlmann (Ans. 7).
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I
In rejecting claim 12, the Examiner relies on Dirksing for teaching a
receptacle substantially as claimed (Ans. 4-5). In particular, the Examiner
finds that Dirksing teaches a receptacle “comprising: a dosing chamber [14]
containing a delivery medium . . . ; a discharge opening [18] at said first end
of said dosing chamber . . . ; a compressible receptacle part [13] containing a
gaseous propellant medium and coupled at said second end of said dosing
chamber via a connecting point” (id. at 4). However, the Examiner
acknowledges that “Dirksing does not specifically teach using a capillary
tube” (id. at 5).
The Examiner relies on Schenk for teaching “using a restriction of
capillary size to connect a product chamber and a gas chamber to provide for
sufficient velocity to allow for adequate delivery” (id.). The Examiner relies
on Schlosser, Kirchhofer, and Pohlmann “as evidence . . . that a tube of the
size between .1mm and 1mm as in Schenk et al. is a capillary tube” (id.).
The Examiner concludes that it would have been obvious “to use a capillary
tube constriction in the device of Dirksing because Schenk et al. teach that
such is beneficial to provide the necessary velocity for delivery” (id.).
Appellant argues that Schenk “does not disclose a capillary tube”
(App. Br. 6). Appellant also argues that the Examiner “has not pointed to
any specific principle or motivation in the prior art that would lead one
skilled in the art to arrive at the invention as claimed” (id. at 10). In
addition, Appellant argues that Schenk “is not in the same field of endeavor
as the inventor and is not reasonably pertinent to the particular problem with
which the inventor is involved” (Reply Br. 2).
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Issue
Has the Examiner set forth a prima facie case that it would have been
obvious to modify Dirksing’s dispenser to connect chamber 13 and product
reservoir 14 via a capillary tube?
Findings of Fact
1. Dirksing discloses “a unit dose dispenser . . . for fluidizing and
dispensing a predetermined quantity of powdered product” (Dirksing, col. 1,
ll. 44-46).
2. In particular, Dirksing discloses a dispenser 10 comprising a
blister 11 and a backsheet 12, wherein the “blister 11 comprises three
chambers; a gas or air chamber 13, a product reservoir 14 and a delivery
tube 15,” and wherein a “rupturable seal 17 separates gas chamber 13 from
product reservoir 14” (id. at col. 2, ll. 30-55).
3. To use the dispenser, Dirksing discloses:
Pressure is applied to gas chamber 13 . . . by manually
squeezing the dispenser 10. . . . Seal 17 eventually ruptures and
releases the pressurized gas from gas chamber 13 into product
reservoir 14 and out through delivery tube 15. . . . The energy
stored in the compressed gas, up to the point of the rupture of
seal 17 and the quickness of the collapse of gas chamber 13,
causes a jet of air or gas to discharge from gas chamber 13 into
the adjacent product reservoir 14. The air jet fluidizes and
dispenses powdered product 25 in product reservoir 14 and out
through delivery tube 15.
(Id. at col. 3, ll. 20-45.)
4. Schenk discloses:
an oral inhaler for use in inhaling a powdered or particulate
medical product and comprising a chamber for containing the
medical product [14], a gas flow passage [17] defining a
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restriction or throat [18], and means defining a connecting
passage interconnecting the product chamber and the flow
passage at the restriction or adjacent thereto so as to allow
product to be drawn into the gas flow passage.
(Schenk 3: 8-14 & Abstract).
5. Schenk also discloses:
[W]hen the inhaler according to the invention is operated a
relatively small volume of gas or air is caused to flow through
the restriction of the gas flow passage at a relatively high
velocity. . . . The low static pressure, which is thereby generated
in the restriction, causes that medical product from the product
chamber [to be] rapidly sucked into the restriction of the gas
flow passage. When the product is moved further through the
gas flow passage it will become influenced by the concentrated,
high velocity air or gas flow from the restriction giving rise to
heavy turbulence, whereby the product particles are
disintegrated into respirable particles. Because a relatively
small gas or air volume is used for operating the inhaler, the
flow emerging from the restriction or throat will soon expand,
whereby the flow velocity is rather rapidly reduced to about 0
even when the expansion volume is relatively small. Then the
air or gas with the respirable particles dispersed therein may be
inhaled in a normal manner. Thus, the vigorous gas or air flow
formed in the restriction of the gas flow passage has a double
function. Firstly, it should cause suction of medical product
from the product chamber into the gas flow passage, and,
secondly, it should cause disintegration of the product into
respirable particles to an extent which cannot be obtained by
conventional inhalers apart from aerosol inhalers in which a
propellant gas under a rather high pressure is used.
(Id. at 6: 3-25.)
6. In addition, Schenk discloses:
In order to obtain a sufficiently high velocity of the gas or air
flow in the restriction of the air flow passage to form the
desired respirable particles, the diameter of the restriction or
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throat must be relatively small. In a preferred embodiment the
diameter of the restriction should be greater than 0.1 mm and
smaller than 1 mm.
(Id. at 8: 1-5.)
Analysis
Dirksing discloses a unit dose dispenser comprising “three chambers;
a gas or air chamber 13, a product reservoir 14 and a delivery tube 15,”
wherein a “rupturable seal 17 separates gas chamber 13 from product
reservoir 14” (Findings of Fact (FF) 1-2). It is undisputed that Dirksing does
not teach a capillary tube connecting gas chamber 13 and product
reservoir 14 (Ans. 5).
Instead, the Examiner relies on Schenk for teaching a capillary tube
(id.). Specifically, the Examiner finds that Schenk’s restriction 18 is a
capillary tube (id. at 5 & 8-9). However, even if we assume that Schenk’s
restriction 18 would be considered a capillary tube, we conclude that the
Examiner has not adequately explained why it would have been obvious to
include Schenk’s restriction 18 to connect Dirksing’s gas chamber 13 and
product reservoir 14.
The Examiner concludes that it would have been obvious “to use a
capillary tube constriction in the device of Dirksing because Schenk et al.
teach that such is beneficial to provide the necessary velocity for delivery”
(Ans. 5). However, as noted by Appellant (App. Br. 7), Schenk discloses
that “the vigorous gas or air flow formed in the restriction of the gas flow
passage . . . cause[s] suction of medical product from the product chamber
into the gas flow passage, and . . . cause[s] disintegration of the product into
respirable particles” (FF 5). Given that the Examiner’s combination would
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incorporate Schenk’s restriction 18 upstream of Dirksing’s product
chamber 14 (Ans. 4-5; see also FF 3), the Examiner has not adequately
explained why this incorporation would have been beneficial to Dirksing’s
dispenser.
Conclusion
The Examiner has not set forth a prima facie case that it would have
been obvious to modify Dirksing’s dispenser to connect chamber 13 and
product reservoir 14 via a capillary tube. We therefore reverse the
obviousness rejection of claim 12 and of claims 13, 15, 16, 18, 19, and 22-
24, which depend from claim 12.
II
In rejecting claims 14, 17, 20, and 21, which depend from claim 12,
the Examiner includes Welker, Fuchs, and/or Garcia to address features
recited in these dependent claims. However, the Examiner does not explain
how Welker, Fuchs, and/or Garcia suggest a capillary tube. We therefore
also reverse the obviousness rejections of claims 14, 17, 20, and 21.

REVERSED

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