Ex Parte Kuehn et al

Patent Trial and Appeal Board

Apr 26, 2013

11327050 (P.T.A.B. Apr. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte TORSTEN KUEHN, ROLF KUHN, BURKHARD METZGER,
HUBERT HOELZ, STEFAN LUSTENBERGER,
and HERBERT WACHTEL
__________

Appeal 2011-006740
Application 11/327,050
Technology Center 3700
__________

Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a capsule
and a capsule loading method. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

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Application 11/327,050

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STATEMENT OF THE CASE
Claims 1-3 and 5-19 are on appeal. Claims 1 and 6 are representative
and read as follows (emphasis added):
1. A capsule, for use as reservoir for pharmaceutical
preparations in powder inhalers, comprising
two capsule elements each open on one side, the
elements being a capsule body and a capsule top the relative
sizes of the elements allowing them to be inserted telescopically
into each other via their openings so that a stable, sealed cavity
of defined volume is formed, wherein:
the capsule elements are of a non-water-soluble plastic
material,
two annular channels lying behind one another relative to
the opening, running peripherally around a first capsule element
are formed on the inside or outside of the first capsule element
in the vicinity of its opening and
two annular raised sections lying behind one another
relative to the opening, running peripherally around the other
capsule element are formed on the outside or inside of the other
capsule element in the vicinity of its opening,
provided that when the annular channels are formed on
the inside of the first capsule element then the raised sections
are formed on the outside of the other capsule element and the
other capsule element fits inside the first capsule element and
that when the annular channels are formed on the outside of the
first capsule element then the raised sections are formed on the
inside of the other capsule element and the first capsule element
fits inside the other capsule element, and
further provided that the raised section furthest from the
opening is continuous around the capsule element and is higher
and/or wider and/or has more surface area than the raised
section closest to the opening and the raised section closest to
the opening is optionally segmented,
the raised sections and the annular channels being
positioned correspondingly such that the two raised sections
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catch within the two annular channels upon the telescopic
closure of the two capsule elements,
the first raised section closest to the opening of the other
capsule element and the first channel closest to the opening on
the first capsule element, capable of forming a pre-seal of the
elements when the first raised section catches within the first
channel, the opening of which by pulling apart the two capsule
elements requires a first force, and
the second raised section furthest from the opening of the
other capsule element and the first channel on the first capsule
element capable of forming a main closure when they catch
within each other, the opening of which by pulling apart the
two capsule elements requires a second force, and
the first force to be applied for opening is smaller than
the second force.

6. The capsule according to claim 1, wherein the first raised
section closest to the opening is a segmented raised section.

The claims stand rejected as follows:
I. Claims 1-3, 5, 8-17, and 19 under 35 U.S.C. § 103(a) over the
combination of Eckert
1
and Grayson.
2

II. Claims 6, 7, and 18 under 35 U.S.C. § 103(a) over the combination
of Eckert, Grayson, and Yang.
3

FINDINGS OF FACT
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.

1
Eckert et al., CA 2 338 323 A1, published Feb. 2, 2000.
2
Grayson, US 4,487,327, issued Dec. 11, 1984.
3
Yang, US 5,632,971, issued May 27, 1997.
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FF1. Appellants‟ invention relates to a capsule that “consists of two
parts, a capsule body (body) and a capsule top (top) which can be joined to
each other so that ... a stable, sealed cavity of defined volume is formed
which contains the pharmaceutical formulation” (Specification 4, ll. 7-9).
FF2. The Specification discloses that the capsule has a final closure
means, the main closure, and also a provisional closure means, the pre-
closure (id. at 3, ll. 21-23).
FF3. The Specification discloses that the capsule “can be produced
easily, can easily be provisionally closed but easily reopened again, and
which can finally also be closed so that they can preferably be opened again
only by damaging the capsule” (id. at 3, ll. 25-27).
FF4. Eckert “relates to a capsule for holding pharmaceutical
preparations for powder inhalers” that “consist of water-insoluble,
hydrophobic synthetic materials” (Eckert, 3, ll. 21-27).
FF5. The capsule “consist of two parts, a capsule body (body) and a
capsule cap (cap), which can be connected together so as to form a stable
enclosed hollow space of defined volume which contains the pharmaceutical
formulation” (id. at 3, l. 34 to 4, l. 2).
FF6. Eckert discloses as follows:
the cap and body of the capsule are of mutually-similar
cylindrical shape, comprising an inherently closed jacket with,
in each case, a closed end and an open end. Here, the shape and
size of the cap and the capsule are such that the body can be
pushed telescopically into the open end of the cap with its open
end, so that the cap is attached solidly to the body.

(Id. at 6, ll. 9-14.)
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FF7. Eckert discloses that “the cap and body are provided with
locking devices, which are advantageous for temporary and/or final closure
of the capsule” (id. at 6, ll. 16-18).
FF8. “[T]here are point-shaped elevations on the inner jacket of the
cap and on the outer jacket of the body there are somewhat larger point-
shaped recesses which are arranged so that the elevations engage with the
recesses on closure of the capsule” (id. at 6, ll. 20-24).
FF9. “[T]he aforementioned annular recesses and/or elevations, these
can be continuous or interrupted” (id. at 7, ll. 4-5).
FF10. “The elevations can be designed so that the cap can be opened
at any time without damage to the capsule, or so that once closed, the
capsule can no longer be opened without being damaged” (id. at 7, ll. 11-
14).
FF11. Grayson discloses edible capsules formed by a pair of sections
locked to one another by a latching assembly. The latching assembly
includes at least one projecting member and abutment, which snap together
to join the sections in a manner that resists separation (see e.g., Grayson,
Abstract).
FF12. Figures 11 and 12 of Grayson are reproduced below:

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Figures 11 and 12 provide side views of Grayson‟s locking capsule in
open and closed configurations.
FF13. The following excerpt from Grayson provides a description of
the elements in Figures 11 and 12:
A capsule 410 according to the present invention is illustrated
in FIGS. 11 and 12 of the drawing as including a first section
412 and a second section 414 each comprising a body 416 and
418, respectively, and the usual closed ends 420 and 424 and
open ends 422 and 426. A latching arrangement 428 is similar
to arrangement 328, except that the plurality of projecting
members 430 is each in the form of an annular flange 432
having a saw-tooth shape in cross section. Similarly, an
abutment 434, flared toward open end 426 to form a flange 438
similar to flange 338, is in the form of a plurality of anchor
rings 440 each also having the aforementioned saw-tooth
configuration in section.
(Grayson, col. 4, 1. 59 – col. 5, l. 3.)
FF14. Yang discloses an empty medicinal and food capsule that is
formed by locking together a body and cap (Yang, Abstract).
FF15. Yang discloses that “[a]t least one raised member 4 and at least
one auxiliary raised member 5 is formed on the inner surface thereof
providing a prelocking state and for use in preventing the transformation or
movement of the capsule” (id. at col. 3, ll. 26-30).

I.
Issues Presented
The Examiner rejected claims 1-3, 5, 8-17, and 19 under 35 U.S.C. §
103(a) over the combination of Eckert and Grayson. The issue presented
with regard to this rejection is:
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Did the Examiner err in concluding that the subject matter of the
claims would have been obvious over the combinations of Eckert and
Grayson?
Analysis
The Examiner finds that Eckert discloses a capsule having top and
bottom elements capable of being inserted telescopically into each other and
locked together (see e.g., Ans. 3). The Examiner finds that “[t]here appears
to be no unobviousness to the exact arrangement of the locking elements”
(id.) and that “[i]t would have been obvious to one of ordinary skill in the art
to modify Eckert to use the locking arrangement taught by Grayson as an
obvious equivalent alternative means for performing the same function” (id.
at 5). The Examiner further concludes as follow:
While Grayson appears silent with regard to whether or not the
raised section furthest from the opening is higher or wider or
has more surface area than the raised section closest to the
opening such changes in sizes or shapes is well within the realm
of the artisan of ordinary skill. Changes in size or shape of the
locking sections in order to find the optimum characteristics of
locking the two capsule elements is well within the realm of the
artisan of ordinary skill. ... It is not inventive to discover the
optimum or workable sizes by routine experimentation. A
change in size or shape is merely a change in degree of force
required to separate the two capsules. The changes do not
produce a new and unexpected results. ... It also would have
been obvious to increase the height or width or surface area of
the raised section of the means for locking the two capsule
elements together to increase the strength of the locking
mechanism as desired or required. Changing the height of the
raised section would clearly have the [e]ffect of increasing the
locking characteristic by extending further into the side of the
capsule increasing the force required to separate the two
capsules thereby preventing unintentional separation.
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(Id.)
We find the Examiner failed to clearly articulate a rationale explaining
why a person of ordinary skill in the art would have sought to modify the
locking assembly of Grayson with two raised sections “where the raised
section furthest from the opening . . . is higher and/or wider and/or has more
surface area than the raised section closest to the opening temporary pre-
seal” as required by claim 1.
The Examiner explains that changes in the configuration and
dimensions of Grayson‟s locking assembly would have been modified “to
find optimum characteristics of locking two capsule elements,” but fails to
provide a rationale or establish a motivation for making two raised sections
in the same device different from each other. Because the rejection does not
include an adequate rationale or motivation, it must be reversed. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“Rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”).
However, we are not persuaded by Appellants‟ additional arguments.
In particular, Appellants contend that Grayson discloses a rib arrangement
where any attempt to disengage the halves of the capsule after the ribs are
engaged would destroy the capsule, and that this disclosure is a “teaching
away from a first disengagement force in order to permit temporarily
connecting the capsule halves prior to filling” (App. Br. 8). We disagree.
The feature of a final closure such that reopening of the capsule would
result in the damage of the capsule is a feature of the present invention (FF3)
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as well as a feature of Eckert (FF7) and Grayson (FF11). Appellants argue
that the cited prior art teaches away from the recited pre-seal feature of the
claims, a feature allowing for the temporary closure and re-opening of the
capsule without damage. However, it cannot be said that the final closure of
the capsule as presented in the prior art is a teaching away from the
additional feature of a reversible pre-seal. That is, the passages of Grayson
relied on by Appellants address the purpose and function of the final closure,
but do not teach away from a temporary pre-seal, which we find to be an
additional, separate feature not expressly addressed by Grayson. Silence as
to a feature of the claims is not a teaching away. DyStar Textilfarben GmbH
v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not
read into a reference a teaching away from a process where no such
language exists.”).
Appellants also contend that neither Eckert nor Grayson discloses a
“structure of the capsule elements to permit a pre-seal, which is reversible
and does not result in damage to the capsule elements when they are pulled
apart” (App. Br. 7). We are not persuaded. First, we note that Eckert
discloses a capsule where the cap and body are provided with locking
devices that permits temporary closure of the capsule (FF7), and more
specifically, reopening of the capsule without damage (FF10).
Second, the claims do not require a reversible pre-seal. Rather, claim
1 simply requires a difference in the force necessary to separate the two
capsule elements between a first “pre-seal” and second “main closure”. In
this regard, we find that the Examiner has presented a sound rationale for
finding that Grayson‟s latching assembly meets this element of the claim.
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Specifically, we agree that the force required to separate Grayson‟s capsule
elements would increase with each successive engagement of the series of
projecting members and abutments that form the Grayson‟s latching
assembly. Appellants do not present evidence suggesting otherwise. See In
re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.… Whether the rejection is
based on „inherency‟ under 35 U.S.C. § 102, on „prima facie obviousness‟
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO‟s inability to manufacture
products or to obtain and compare prior art products.)
Conclusion of Law
The Examiner‟s rationale is insufficient to establish that that the
subject matter of the claims would have been obvious over the combinations
of Eckert and Grayson. We therefore reverse the obviousness rejection over
Eckert and Grayson of claim 1 and of claims 2, 3, 5, 8-17, and 19, which
depend from claim 1.
II.
Issue Presented
The Examiner rejected dependent claims 6, 7, and 18 under 35 U.S.C.
§ 103(a) over the combination of Eckert, Grayson, and Yang. The issue
presented is:
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Does the evidence of record support the Examiner‟s findings that the
combined cited art renders the capsule of claims 6 obvious?
Analysis
Appellants argue as follows:
To modify the device of [Grayson] such that a reversible
pre-lock is obtained, would clearly change the principle of
operation and destroy the intended purpose of the primary
reference. Indeed, the concept of having a reversible pre-lock
function is antithetical to the clear intention of [Grayson]: a
capsule structure that becomes misformed and mutilated if
separation is attempted, such that even a casual observer would
see external signs of tampering.
(App. Br. 13).
We are not persuaded. “A change in the basic principles” refers to
change that is fundamental in scope to the scientific or technical principles
under which the invention is designed to operate. In re Ratti, 270 F.2d 810,
813 (CCPA 1959) (“This suggested combination of references would require
a substantial reconstruction and redesign of the elements shown in [the
primary reference] as well as a change in the basic principles under which
the [primary reference] construction was designed to operate.”). It cannot be
said that “change in the basic principles” occurs by all modifications of a
prior art device which changes the manner in which the device operates.
Otherwise, even nominal modification to a prior art device could be
considered a “change in the basic principles,” thereby eliminating the need
for obviousness analysis under 35 U.S.C. § 103. As noted above, we do not
agree that Grayson teaches away from a pre-seal. For substantially the same
reasons, we are not persuaded that the Examiner‟s modification changes
Grayson‟s principle of operation or destroys its intended purpose.
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We further find that Appellants do not address this specific finding of
the Examiner. The Examiner finds that “[i]t would have been obvious to
one of ordinary skill in the art at the time the invention was made to modify
Grayson to have the first raised section closest to the opening to be a
plurality of punctiform raised section as taught by Yang in order to provide a
pre-locking state and preventing the transformation or movement of the
capsule as taught by Yang” (id., citing Yang at col. 3, lines 25-30). Without
evidence or argument to the contrary, we find that the preponderance of
evidence on this record supports the Examiner‟s conclusion of obviousness
(see e.g., FF7, FF15, and Yang, Figures 1-2).
Conclusion of Law
The preponderance of evidence on this record supports the
Examiner‟s finding that the combination of Eckert and Grayson renders
claim 6 obvious. Claims 7 and 18 fall with claim 6. 37 C.F.R.
§ 41.37(c)(1)(vii).
SUMMARY
We reverse the rejection of claims 1-3, 5, 8-17, and 19 under 35
U.S.C. § 103(a) over the combination of Eckert and Grayson.
We affirm the rejection of claims 6, 7, and 18 under 35 U.S.C. §
103(a) over the combination of Eckert, Grayson, and Yang.

AFFIRMED-IN-PART

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