Ex Parte Hyde et al

Patent Trial and Appeal Board

Jul 27, 2016

12380679 (P.T.A.B. Jul. 27, 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.
12/380,679 03/02/2009 Roderick A. Hyde SE1-0998-US 4307
80118 7590 07/28/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
WILLIAMS, TERESA S
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
07/28/2016 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 RODERICK A. HYDE, ROBERT LANGER,
ERIC C. LEUTHARDT, ROBERT W. LORD,
ELIZABETH A. SWEENEY, CLARENCE T. TEGREENE, and
LOWELL L. WOOD JR.

Appeal 2013-003302
Application 12/380,6791
Technology Center 3600
____________

Before, JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 83–118. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 Appellants identify Searete LLC as the real party in interest. Br. 4.

Appeal 2013-003302
Application 12/380,679
2

Claim 83, reproduced below, is representative of the subject matter on
appeal.
83. A system, comprising:
an accepter module configured to accept at least one indication of use of an
inhalation device configured to dispense a bioactive agent to an individual;
and
a presenter module configured to present at least one artificial sensory
experience to monitor at least one desired effect of the bioactive agent on the
individual.

THE REJECTION
Claims 83–85, 89–97, 99, 101, and 106–118 are rejected under
35 U.S.C. § 102(b) as being anticipated by Trueba (US 7,198,044 B2, iss.
Apr. 3, 2007).

Claim 86 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Trueba in view of Jendrucko (US 7,427,417 B2, iss. Sept. 23, 2008).

Claims 87, 88, 98, and 100 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Trueba in view of Altieri (US 7,373,377 B2, iss.
May 13, 2008).

Claims 102–105 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Trueba in view of Huiku (US 7,447,541 B2, iss. Nov. 4,
2008).

FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 2-–15 of
the Final Action dated 3/16/2012.
2. Trueba discloses
The pressure sensor also may be used to
monitor the amount of composition released by the
device during inhalation. For example, the sensor
Appeal 2013-003302
Application 12/380,679
3
may measure the difference in pressure and
duration of the pressure drop, and the controller
(such as a microprocessor) may use this
information to calculate an amount of composition
released by the device. The controller may stop
the release of the composition from the dispenser
orifice prior to the end of inhalation by the subject,
if a sufficient amount of the composition has been
released, or if the amount of composition released
during inhalation is less than the programmed
dosage, the controller may cause the device to emit
a signal indicating that the subject should inhale
another dose of the composition.
Col. 6, ll. 47–60.

3. Trueba discloses
… a patient can download information stored in
the device about self-regulated dosage
administrations or symptoms experienced (as
indicated for example by which buttons have been
depressed on the device, and/or the pattern and
frequency of the buttons that are pushed). This
information can be transmitted over a modem to a
physician's or other health care provider's office,
where it can be displayed (in electronic or other
form) to a health care professional, and appropriate
action can be taken. For example, if symptoms are
noted to be increasing in spite of administration of
a therapeutic amount of a particular drug,
consideration can be given to providing a new drug
or reconsidering the diagnosis for which the drug
has been administered.
Col. 12, ll. 13–25.

4. Trueba discloses,
Alternatively, a dosage regimen can be altered by
preprogramming the unit to respond to clinical
Appeal 2013-003302
Application 12/380,679
4
information provided by the user (such as the
answer to questions which the user enters into a
computer) or in response to measurement of
clinical parameters (such as blood oxygenation
received by a portable pulse oximeter worn by the
subject).
Col. 11, ll. 24–29.
5. Trueba discloses
the device includes a piezoelectric or thermal jet
dispenser that includes a plurality of removable
modules in fluid communication with one or more
dispenser orifices (such as an array of orifices)
ejecting and directing a fluid from the dispenser
orifices toward a target body orifice.
Col. 6, ll. 22–27.

ANALYSIS
Concerning claim 83, the only independent claim before us,
Appellants argue, it
appears that the USPTO might be suggesting a
mapping of “[a] an accepter module configured to
accept at least one indication of use of an
inhalation device configured to dispense a
bioactive agent to an individual” onto a
configuration, which provides that “In certain
embodiments, the container may carry multiple
container modules, such as removable and
replaceable modules that contain a bioactive agent.
A container module may contain some other
composition, such as a carrier, surfactant, solvent,
or flavoring agent. Several modules may contain
the same or different bioactive compositions, or
some other composition, for example different
compositions that combine before or at the time of
delivery to modify one or both of the agents, or to
produce a desired bioactive effect.” Trueba,
Appeal 2013-003302
Application 12/380,679
5
Column 5, lines 12–20. Appellant notes that such
a mapping would not address or account for at
least the following language of Independent
Claim 83: “an accepter module configured to
accept at least one indication of use of an
inhalation device configured to dispense a
bioactive agent to an individual.”
(Appeal Br. 25–26).
In light of the breadth of the claim, the Appellants’ argument is not
persuasive as to error in the rejection. Specifically, the claim requires that
an accepter module accept “at least one indication of use of an inhalation
device configured to dispense a bioactive agent to an individual.” The
Examiner found that Trueba discloses the acceptor module finding inter alia,
Trueba’s system, administered through a method,
apparatus and kit, indeed indicates the amount of
the bioactive inhalant agent detected with pressure
sensors and further indicated with a display screen
and device lights. Also, how much of the
bioactive inhalant agent remaining in the device is
indicated, as mentioned in column 6, line 47 to
column 7, line 4.
(Answer 2). We agree with the Examiner because our review of Trueba at
the cited section reveals that Trueba discloses a pressure sensor which
“monitor[s/accepts data on] the amount of composition released by the
device during inhalation” (FF. 2), which we find meets the claim
requirement of an “indication of use.”
Appellants further argue,
It also appears that the USPTO might be
suggesting a mapping of “[b] a presenter module
configured to present at least one artificial sensory
experience to monitor at least one desired effect of
the bioactive agent on the individual” onto
“Display screens and touch screens also may
Appeal 2013-003302
Application 12/380,679
6
provide information about medications in the
device, and provide an interface through which
other information about the medications or their
administration can be entered and/or obtained.”
Trueba, Column 6, line 67 through Column 7,
line 4.
Appellant notes that such a mapping would
not address or account for at least the following
language of Independent Claim 83: “[a] an
accepter module configured to accept at least one
indication of use of an inhalation device
configured to dispense a bioactive agent to an
individual” and “[b] a presenter module configured
to present at least one artificial sensory experience
to monitor at least one desired effect of the
bioactive agent on the individual.”
(Appeal Br. 26).
We disagree with Appellants.
The Examiner found that Trueba discloses a presenter module at
Figures 1–3, column 6, lines 47–50, column 6, line 61 to column 7, line 4,
column 8, lines 45–51). (Final Act. 3).
According to the claims, the presenter module is configured to present
“at least one artificial sensory experience to monitor at least one desired
effect of the bioactive agent on the individual.” Appellants’ Specification
does not specifically define the term “artificial sensory experience”
(Answer 2), nor does it utilize the term contrary to its customary meaning.
The ordinary and customary definition of the word sensory is, “of or relating
to your physical senses.”2 The ordinary and customary definition of the
word experience is, “something personally encountered, undergone, or lived

2 http://www.merriam-webster.com/dictionary/sensory (last visited
7/7/2016).
Appeal 2013-003302
Application 12/380,679
7
through.”3 We, thus, agree with the Examiner and find that Trueba discloses
an artificial sensory experience in the form of physically answering
questions which is personally undergone by the user when responding
artificially through a computer to a medical professional. (FF. 3, 4). We
further find because in Trueba the dosage regimen can be altered by
preprogramming the unit by monitoring responses to answers answered
and/or buttons pushed to questions/conditions, the claimed function of the
presenter module monitoring at least one desired effect of the bioactive
agent on the individual effect of the bioactive agent on the individual, is met.
Appellants also argue that “Bioactive agents [in Trueba] are topically
administered or delivered to a mucous membrane by a jet dispenser using
inkjet technology, such as that used in printing.” (Appeal Br. 30).
In light of the breadth of the claim, the Appellants’ argument is not
persuasive as to error in the rejection because claim 83 does not recite in the
remotest sense the type delivery system used to dispense the bioactive agent.
Appellants argue,
Appellant has shown by direct quotations that
Independent Claim 83 and the cited portions of
Trueba are very different on their faces. See supra
at p. 24 (quotation of Claim 83); and at p. 28
(quotation of Trueba). Insofar as that Appellant
has shown that “at first sight; on the first
appearance; on the face of it; so far as can be
judged from the first disclosure” the specific
USPTO-cited technical material is different from
Claim 83, and Appellant respectfully submits that
Independent Claim 83 is prima facie patentable

3 http://www.merriam-webster.com/dictionary/experience. (last visited
7/7/2016).
Appeal 2013-003302
Application 12/380,679
8
over the pinpoint-cited portions of Trueba.4
(Appeal Br. 30, emphasis omitted).
We disagree with Appellants. The fact that the prior art does not
recite verbatim the words of the claim does not mean the prior art is
substantively different. It just means the drafter used different words to
describe the same concept. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009) (a reference does not have to satisfy an ipsissimis verbis test to
disclose a claimed element).
Also, the Federal Circuit has held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, “‘. . . . together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application.’” (See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011)). Thus, “all that is required of the office to meet its prima
facie burden of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132.” (Id.
at 1363).
Here, the Examiner notified Appellants that the sole independent
claim 83 was rejected under 35 U.S.C. § 102(b) as anticipated by Trueba,
and the Examiner cited specifically to Trueba by paragraph numbers, that
are the basis for the rejection. (See Final Act. 2–8); notified Appellants that
dependent claim 86 was rejected under 35 U.S.C. § 103(a) as obvious over

4 Appellants make the same argument for claim 89 (Appeal Br. 33), for
claim 91 (Appeal Br. 34–35), and for claim 94 (Appeal Br. 37), and for the
same reasons given below, we are not persuaded by Appellants’ argument
for these claims either.
Appeal 2013-003302
Application 12/380,679
9
Trueba and Jendrucko, with reasons (Final Act. 9); notified Appellants that
dependent claims 87, 88, 98, and 100 were rejected under 35 U.S.C. § 103(a)
as obvious over Trueba and Altieri, with reasons (Final Act. 9–11); notified
Appellants that the dependent claims 102–105 were rejected under 35 U.S.C.
§ 103(a) as obvious over Trueba and Huiku, with reasons (Final Act. 11–13).
Thus, we find the cited portions of the references together with the
accompanying explanations (See Answer 2–3) constitute the objectively
verifiable evidence, which Appellants allege is lacking.
Concerning claim 89, Appellants argue that, “Appellant notes that this
discussion takes place in the context of *a bioactive composition* not *a
medication accepter module. * Consequently, on its face, Trueba does not
show the text of Dependent Claim 89.” (Appeal Br. 33).
We disagree with Appellants. Claim 89 only further defines the claim
as comprising a medication acceptor module. The Examiner found that this
feature is disclosed by Trueba at column 3, lines 17–27 which discloses a
bioactive agent used as a drug or medication. (Final Act. 3). We agree with
the Examiner’s finding that Trueba discloses a plurality of removable
modules accepting the drug/medication for dispensing. (FF. 5)
A similar argument is made for claim 91 (Appeal Br. 34), that Trueba
fails to disclose a bioactive agent. This is not true because Trueba explicitly
discloses a bioactive agent at column 3, line 17.
We are further unpersuaded that Trueba fails to disclose a recreational
agent module, which is required by claim 94. The Examiner found that this
item is disclosed by Trueba at column 3, lines 9–34. (Final Act. 4). We find
no error with the Examiner’s finding that a “bronchodilator and vitamin”
would be known to one of ordinary skill in the art as a recreational agent as
Appeal 2013-003302
Application 12/380,679
10
these agents would enhance recreational activities, such as biking or
running.
We also affirm the rejections of dependent claims 83-88, 90, 92, 93,
95–118 because Appellants have not challenged such with any reasonable
specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 83–85, 89–
97, 99, 101, and 106–118 under 35 U.S.C. § 102(b).

We conclude the Examiner did not err in rejecting claim 86 under
35 U.S.C. § 103(a).

We conclude the Examiner did not err in rejecting claims 87, 88, 98,
and 100 under 35 U.S.C. § 103(a).

We conclude the Examiner did not err in rejecting claims 102–105
under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 83–118 is affirmed.

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)(1)(iv).

AFFIRMED