Ex Parte Hoke et al

Patent Trial and Appeal Board

Aug 8, 2016

13276448 (P.T.A.B. Aug. 8, 2016)

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.
13/276,448 10/19/2011 Martin R. Hoke RHIN 200002US04 1064
27885 7590 08/09/2016
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
PATEL, SHEFALI DILIP
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
08/09/2016 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 MARTIN R. HOKE
and PAUL R. METCALFE
__________

Appeal 2014-008678
Application 13/276,448
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL1
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 2, 4–8, 10,
11, 13–17, 35–37, 39–42, 45, and 462 (App. Br. 13). Examiner entered

1 Appellants identify the Real Party in Interest as RhinoSystems Inc. (App.
Br. 1).
2 We note that claim 3 was canceled in the After-Final Amendment filed
October 7, 2013, which was entered (see also Appellants’ Claims
Appendix). Therefore, the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Drinan, Kronenberg, and Atkinson
(see Final Act. 14–15) is moot.
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rejections under 35 U.S.C. §112, second paragraph,3 obviousness-type
double patenting, and 35 U.S.C. §103(a). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ invention “devices for irrigating and rinsing the nasal
cavity and anatomical openings thereto” (Spec. ¶ 2). Independent claims 1
and 35 are representative and reproduced in the Claims Appendix of
Appellants’ Appeal Brief.
Claims 10, 11, 39, and 40 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 1, 2, 4, 5, 7, 8, 10, 11, 14–17, 35–37, 39, 40, and 42 stand
rejected on the ground of nonstatutory obviousness-type double patenting as
being unpatentable over claims 1–6 and 8–14 of Hoke.4
Claims 1, 2, 6–8, 10, 11, 13–17, 35–37, 39–42, 45, and 46 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Drinan5 and Kronenberg.6
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Drinan, Kronenberg, and Henniges.7

3 We note that the Abstract and claims 15, 41, and 46 were objected to in the
Final Action mailed July 5, 2013 (see Final Act. 5–6). These are
petitionable matters not before us on appeal.
4 Hoke et al., US 8,048,023 B2, issued Nov. 1, 2011.
5 Drinan et al., US 6,907,879 B2, issued June 21, 2005.
6 Kronenberg, US 2,078,180, issued Apr. 20, 1937.
7 Henniges et al., US 6,099,494, issued Aug. 8, 2000.
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The rejections under 35 U.S.C. § 112, second paragraph and on the ground
of nonstatutory obviousness-type double patenting:
ISSUE
Should the rejections under 35 U.S.C. § 112, second paragraph and on
the ground of nonstatutory obviousness-type double patenting be summarily
affirmed?
ANALYSIS
Appellants do not contest the merits of the rejections under 35 U.S.C.
§ 112, second paragraph and on the ground of nonstatutory obviousness-type
double patenting. Therefore, we are compelled to summarily affirm these
rejections.
CONCLUSION OF LAW
The rejections under 35 U.S.C. § 112, second paragraph and on the
ground of nonstatutory obviousness-type double patenting are summarily
affirmed.

Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

FACTUAL FINDINGS (FF)
We adopt Examiner’s findings concerning the scope and content of
the prior art (Final Act. 8–15), and repeat the following findings for
emphasis.
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FF 1. Drinan suggests
The methods and devices disclosed provides for the
delivery of agents to an orifice cavity and subsequent aspiration
of the agent and orifice contents from the orifice cavity and
related areas. In one form, the delivery and aspiration system
comprises an agent delivery sub-assembly, an aspiration sub-
assembly and a device tip sub-assembly. The subassemblies
operate to first deliver an agent contained within the device to an
orifice cavity and after an optional time delay, subsequently
aspirate the delivered agent and orifice contents from the orifice
cavity and related areas. In another form, a removable reservoir
is provided whereby the aspirated agent and orifice contents from
the orifice are assayed either independent of or within the device
itself.
(Drinan Abstract; see also Final Act. 8–9, 11–12.)
FF 2. Drinan’s Figure 2 is reproduced below:

Figure 2 shows that “the agent delivery assembly 10 portion of the apparatus
consists of a base subassembly, whereby said assembly consists of a sprayer
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pump 11, an agent release button 12, an agent reservoir 14 and a connection
assembly 15” (Drinan 7:27–31; see also Final Act. 8–9, 11–12), along with
“ports and nozzles 34 for the dispensation of materials from the agent
delivery assembly to the orifice cavity and passageways of the individual”
(Drinan 7:33–35; see also Final Act. 8–9, 11–12), and that “[s]torage of the
agent and orifice contents aspirated after delivery of the agent may be within
the device tip assembly in storage chamber 33” (Drinan 10:49–51; see also
Final Act. 8–9, 11–12).
FF 3. Drinan’s Figure 5 is reproduced below:

Figure 5 shows
a device for use in the lavaging of the nasal passageways
of an individual. . . . In the device, first reservoir 85 filled with
agent is attached into plunger 76 and seals thru seal 73 to bottle
plug 72. The fluid path is primed by depressing squirt plunger
83, flexibly or slideably sealed by 84, which forces air out spray
tip via associated first check valve duckbill 74. . . . Releasing
the squirt plunger 83 allows the spring 92 to push the squirt-
plunger back out which aspirates agent from bottle 85 thru takeup
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tube 75 into bottleplug 72, thru second duckbill 74, thru agent
tube 90 and associated path in body 71 into squirting chamber.
(Drinan 14:15–28; see also Final Act. 8–9, 11–12.)
FF 4. Drinan suggests “a bi-directional flow method to allow for the
delivery and subsequent aspiration of agents contained within a
single hand-held device” (Drinan 6:54–56; see also Final Act. 14).
FF 5. Drinan suggests that “[d]epressing squirt[]plunger 83 releases agent
thru spray tip. During squirt plunger 83 depressions, if the flushed cavity is
blocked, agent will immediately flow into the collection reservoir 82 and
displace air thru third check valve 74” (Drinan 14:34–38; see also Final Act.
8–9).
FF 5. Kronenberg suggests that
the irrigating liquid is caused to flow through the nasal passages
under substantially neutral conditions, i. e. no positive or
negative pressure except that necessary to cause a sufficient
quantity of liquid to flow to perform the desired results. The
operation of the present invention depends for its effectiveness
on the aspirating action of the flowing liquid on the sinuses, for
it flows at substantially right angles to the direction of the
passages into the sinuses and thus exerts a very gentle suction
tending to remove excretions from the sinuses without irritating
the surrounding tissues.
(Kronenberg p. 1, col. 2:31–44; see also Final Act. 9–10, 12.)

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FF 6. Kronenberg’s Figure is reproduced below:

Kronenberg’s Figure shows that “[o]ne of the nozzles 12 is connected by a
flexible tube 14 to a suitable reservoir such as the bottle 15” (Kronenberg p.
2, col. 2:4–6; see also Final Act. 9–10, 12) and that “[t]he nozzle 10 is
connected by a tube 20 to the entrance pipe 21 into the receptacle 22”
(Kronenberg 2, col. 2:9–11; see also Final Act. 9–10, 12).

ANALYSIS
The combination of Drinan and Kronenberg:
Appellants’ independent claim 1, requires, inter alia, “the saline
solution flows continuously downhill from the source of saline solution to
the effluent receptacle” (see Appellants’ claim 1). Appellants’ independent
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claim 35, similarly requires, inter alia, “the effluent receptacle is disposed
relative to the source of saline solution and the nasal interface for continuous
downhill flow and gravitational inducement of the saline solution through
the device” (see Appellants’ claim 35).
Based on the combination of Drinan and Kronenberg, Examiner
concludes that, at the time of Appellants’ invention was made, it would have
been obvious to
modify the nasal interface, of the device of Drinan et al[.], to be
disposed relative to the source of saline solution for gravitational
inducement of the saline solution to the nasal interface, as taught
by Kronenberg, as such will minimize the vacuum and pressure
necessary for inducement of the saline solution to the nasal
interface as inducement will occur by gravity (page 2, column 2,
lines 29–39), thus providing a power-saving feature to the device
as less power will be supplied to the vacuum source and pressure
source.
(Final Act. 9–10.)
We adopt Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 8–15; Ans. 2–7; FF 1–6) and
agree that the claims are obvious over Drinan and Kronenberg. We address
Appellants’ arguments below.

Claim 1:
We recognize, but are not persuaded by Appellants’ contention that
“[t]he Examiner’s combination fails because neither reference teaches
continuous downhill flow” (App. Br. 10; see Reply Br. 2 (Figure 2 of
Appellants’ Specification illustrates “the flow pattern . . . as ‘all downhill,’”
and “[t]here is no way that the saline solution in the Kronenberg
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embodiment can ever flow from the supply to the effluent receptacle without
powered suction”)).
Drinan suggests “a bi-directional flow method to allow for the
delivery and subsequent aspiration of agents contained within a single hand-
held device” (FF 4). Drinan suggests that “[d]epressing squirt[]plunger 83
releases agent thru spray tip. During squirt plunger 83 depressions, if the
flushed cavity is blocked, agent will immediately flow into the collection
reservoir 82 and displace air thru third check valve 74” (FF 5; see also FF 1–
3). Kronenberg suggests that “[o]ne of the nozzles 12 is connected by a
flexible tube 14 to a suitable reservoir such as the bottle 15” and that “[t]he
nozzle 10 is connected by a tube 20 to the entrance pipe 21 into the
receptacle 22” (FF 6; see also FF 5). Accordingly, both Drinan and
Kronenberg suggests a continuous feed, and therefore, a continuous flow.
We note Appellants’ contention that “Drinan teaches some
gravitational flow to the effluent receptacle only. Kronenberg teaches some
downhill flow from the supply receptacle to the nasal interface, but uphill
from the nasal interface to the effluent receptacle” (App. Br 10–11
(emphasis added)).
We do not find this argument persuasive. As Examiner explains,
Examiner is interpreting the limitation “wherein the saline
solution flows continuously downhill from the source of saline
solution to the effluent receptacle” in light of the Specification.
As annotated in Appellant[s’] Figure 2 below, saline solution
flows downhill from the source of saline solution, then uphill into
the first nozzle and the first nostril, then downhill from the
second nostril and second nozzle and into the effluent receptacle.
Thus, Examiner is reading the limitation as the effluent
receptacle is downward from the source of saline solution with
saline solution flowing uphill into the first nozzle and first
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nostril. Drinan et al[.] teaches that the source of saline solution
(first reservoir [85]) is disposed above the nasal interface
(nozzles [34]) and the effluent receptacle (collection reservoir
[82]), such that the effluent receptacle is downward from the
source of saline solution with saline solution flowing uphill into
the first nozzle and first nostril (Figure 5).

(Ans. 2–3; FF 2–3.) Examiner’s annotation of Appellants’ FIG. 2 illustrates
a side elevational view of an embodiment of Appellants’ nasal irrigation
device, annotated to highlight the flow of fluid from the source to a nostril
and then the effluent receptacle (id.; see Spec. ¶ 24–25 and FIG. 2).
We recognize, but are not persuaded by Appellants’ contention that
both Drinan and Kronenberg include teachings which undermine
the very reason being professed why the elements should be
combined. The Drinan purpose is to treat a nasal cavity through
a single nostril, where Kronenberg’s purpose is to apply an
irrigant flow through the nasal cavity from a first nostril to a
second nostril.
(App. Br. 11.)

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As Examiner explains,
Examiner is not combining the nozzle elements of Kronenberg
with the controller element of Drinan et al. Drinan et al[.] teaches
that the source of saline solution [85] is disposed above the nasal
interface [34], thus gravitational flow of the saline solution may
naturally occur downward from the source of saline solution to
the nasal interface. As further support, only the concept of
gravitational inducement, of Kronenberg, is combined with the
device, of Drinan et al, for minimizing the vacuum and pressure
necessary for inducement of the saline solution to the nasal
interface (Kronenberg, page 2, column 2, lines 29–39).
(Ans. 5; FF 2–3, 5–6.) “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references []. [The reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.”
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). See also In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[A]ttorney argument [is] not
the kind of factual evidence that is required to rebut a prima facie case of
obviousness”).

Claim 13:
We recognize, but are not persuaded by Appellants’ contention that
“[l]imiting the effluent receptacle to be disposed below the nasal interface,
in Kronenberg it is clearly above the nasal interface, while in Drinan, both
the supply and effluent receptacle are both disposed below the nasal
interface” (App. Br. 11). We agree with Examiner that “[a]s admitted by
Appellant[s], the primary reference of Drinan et al[.] teaches that the effluent
receptacle [82] is disposed below the nasal interface [34] (Figure 5). The
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secondary reference of Kronenberg is only used as further support for the
concept of gravitational inducement” (Ans. 5; FF 2–3).

Claim 33:
We recognize, but are not persuaded by Appellants’ contention that
“Kronenberg is clearly not a hand-held device and requires professional
assistance to the user to effect the therapy. Drinan is a hand-held device, but
fails to teach continuous flow, since the delivery and removal from a single
nostril must be done in sequence through a single nozzle interface” (App.
Br. 11). As Examiner explains,
First, as admitted by Appellant[s], the primary reference
of Drinan et al[.] teaches a hand-held device (Figures 1–6).
Second, as Drinan et al[.] teaches that the source of saline
solution [85] is disposed above the nasal interface [34] and the
effluent receptacle [82] (Figure 5), such allows for continuous
flow of saline solution with respect to the source of saline
solution. Drinan et al[.] teaches nozzles [34] for a patient’s
nostrils, wherein saline solution is delivered into a nostril and
removed out of the same nostril. The claim does not preclude
saline solution from being delivered and removed from the same
nostril. Further in support of continuous flow, Drinan et al[.]
teaches that saline solution is delivered into the nostril and
immediately flows into the effluent receptacle [82] (column 14,
lines 34–38). Third, the secondary reference of Kronenberg is
only used as further support for the concept of gravitational
inducement.
(Ans. 6; FF 2–5). See In re Merck & Co., 800 F.2d at 1097.

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Claim 41:
We recognize, but are not persuaded by Appellants’ contention that
“[t]he users in Kronenberg and Drinan are not concerned with viewing the
amounts of fluids in the supply or effluent receptacles” (App. Br. 11). We
agree with Examiner that
In the primary reference of Drinan et al[.], since the source
of saline solution [85] is disposed above the nasal interface [34]
(Figure 5), the user would be able to see the source of saline
solution when the nasal interface is placed within the nostrils of
the user. The secondary reference of Kronenberg is only used as
further support for the concept of gravitational inducement.
(Ans. 6; FF 2–3.) See In re Merck & Co., 800 F.2d at 1097.

Claim 45:
We recognize, but are not persuaded by Appellants’ contention that
The references fail to teach or suggest a single hand-held
device containing the nasal interface, the vacuum source, the
pressure source, the supply and effluent receptacles, the fluid
passageway and the switch assembly. Kronenberg is not a
handheld self-contained device, while Drinan fails to teach or
suggest a nasal interface comprising first and second nozzle to
effect continuous flow through the nasal cavity.
(App. Br. 12.) As Examiner explains,
The primary reference of Drinan et al[.] teaches a single
hand-held device (Figures 1–6) containing the nasal interface
[34], the vacuum source (suction generator [26]), the pressure
source (sprayer pump [11]), the supply [85] and effluent
receptacle [82], the fluid passageway (Figure 5), and the switch
assembly (vacuum release button [21] and agent release button
[12]). Drinan et al[.] teaches first and second nozzles (nozzles
[34]). As Drinan et al[.] teaches that the source of saline solution
[85] is disposed above the nasal interface [34] and the effluent
receptacle [82] (Figure 5), such allows for continuous flow of
saline solution with respect to the source of saline solution.
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Further in support of continuous flow, Drinan et al teaches that
saline solution is delivered into the nostril and immediately flows
into the effluent receptacle [82] (column 14, lines 34–38). And
the secondary reference of Kronenberg is only used as further
support for the concept of gravitational inducement.
(Ans. 7; FF 2–5.) See In re Merck & Co., 800 F.2d at 1097.

The combination of Drinan, Kronenberg, and Henniges:
Appellants present no additional argument based on the teachings of
Henniges, and rely on the same arguments addressed above. For the reasons
discussed above, therefore, we affirm the rejection of claims 4 and 5.

CONCLUSION OF LAW
The preponderance of the evidence relied upon by Examiner supports
a conclusion of indefiniteness, nonstatutory obviousness-type double
patenting, and obviousness.
We affirm the rejection of claims 10, 11, 39, and 40 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
We affirm the rejection of claims 1, 2, 4, 5, 7, 8, 10, 11, 14–17, 35–
37, 39, 40 on the ground of nonstatutory obviousness-type double patenting
as being unpatentable over claims 1–6 and 8–14 of Hoke.
We affirm the rejection of claims 1 and 35 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Drinan and Kronenberg. Claims 2,
6–8, 10, 11, 13–17, and 45 fall with claim 1, and claims 36, 37, 39–42, and
46 fall with claim 35.
We affirm the rejection of claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Drinan, Kronenberg, and Henniges.

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED