Ex Parte Olsen

Board of Patent Appeals and Interferences

Feb 8, 2012

10862768 (B.P.A.I. Feb. 8, 2012)

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.
10/862,768 06/07/2004 James M. Olsen 151P9962US01 2784
54228 7590 02/08/2012
IPLM GROUP, P.A.
POST OFFICE BOX 18455
MINNEAPOLIS, MN 55418
EXAMINER
HAND, MELANIE JO
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
02/08/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES M. OLSEN
____________

Appeal 2010-002727
Application 10/862,768
Technology Center 3700
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
JAMES P. CALVE, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002727
Application 10/862,768

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STATEMENT OF THE CASE
James M. Olsen (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 2, 4-7, and 29 under 35 U.S.C. §
102(b) as anticipated by Sampson (EP 0 409 511 A1, published Jan. 23,
1991) and claims 3 and 27 under 35 U.S.C. § 103(a) as unpatentable over
Sampson. Claim 30 has been withdrawn by the Examiner. Claims 8-26 and
28 have been canceled. We have jurisdiction over this appeal under 35
U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to an implantable drug delivery system
10 for delivery of a drug 11 including drug reservoir 12 having propellant
chamber 14 and drug reservoir chamber 15, refill septum 17, regulator 19
having flexible diaphragm 21 that divides the regulator into control chamber
22 and outlet chamber 23, and pump 24 having inlet 24a and outlet 24b.
Spec. 5, para. [21] and fig. 1.
Claim 1, the sole independent claim, reads as follows:
1. A pump mechanism for use in an implantable drug delivery
system, the pump mechanism comprising:
a) a pump having a pump inlet and a pump outlet;
b) a pressure regulator, the pressure regulator comprising:
i) a housing having a chamber;
ii) a diaphragm dividing the chamber into a first
subchamber and a second subchamber;
iii) the first subchamber having a first inlet and a first
outlet; and
iv) the second subchamber having a second inlet and a
second outlet;
c) a positive pressure reservoir;
d) a valve for controlling flow from the positive pressure
reservoir through the first inlet, the valve operatively connected to the
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Application 10/862,768

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diaphragm, the diaphragm being moveable within the chamber in
response to difference in pressure between the first subchamber and
the second subchamber wherein movement of the diaphragm controls
movement of the valve; and
e) the pump inlet in fluid communication with the first outlet
and the pump outlet in fluid communication with the second inlet.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Independent claim 1 requires “a pump having a pump inlet and a
pump outlet” and “a positive pressure reservoir.” Br., Claims Appendix.
The Examiner found that Sampson teaches a pump 10 and a positive
pressure reservoir defined by pump housing 12. Ans. 3 and 4. See also,
Sampson, fig. 1.
Appellant argues that Sampson teaches only a “positive pressure
reservoir,” but fails to teach a “pump,” as called for in claim 1. Br. 12.
Specifically, Appellant argues that claim 1 requires both a “pump” and a
“positive pressure reservoir” as “two separate and distinct elements.” Id. As
evidence, Appellant points to Appellant’s Specification to show that the
pump and positive pressure reservoir are described as separate elements, and
to Appellant's Drawings to show “a separate pump 24 and a separate positive
pressure reservoir 12.” Id.
In response, the Examiner opines that, “the positive pressure reservoir
is described in the disclosure in a manner that clearly discloses a positive
pressure reservoir that is associated with the pump housing.” Ans. 8.
Pointing to claim 2, the Examiner notes that the claimed positive pressure
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reservoir includes “a propellant chamber within the pump housing.” 1 Id.
Emphasis added. Hence, the Examiner concludes that because Sampson
also teaches a propellant chamber 18 within pump housing 12, infusion
pump 10 of Sampson constitutes a “pump,” as called for by claim 1. Id. See
also, Sampson, col. 2, ll. 29-33 and fig. 1.
The disagreement between Appellant and Examiner appears to stem
from the difference between a “positive pressure reservoir” and a “pump,” as
called for by claim 1. It is well settled that claims are to be given their
broadest reasonable interpretation consistent with the specification. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Our analysis begins with an explanation of the meaning of the term
“positive pressure reservoir,” which as described in the prior art in the same
field as that of the clamed subject matter,
… employs a bellows drug reservoir that is driven
by the use of a propellent in the form of a fluid
liquid/vapor component such as Freon 11 (DuPont
tradename). The liquid/vapor equilibrium is
employed to pressurize the bellows drug reservoir
at a positive pressure.

(U.S. Patent No. 5,207,666, issued May 4, 1993, col. 1, ll. 14-19).
Continuing our analysis, we note that Appellant’s Specification
describes an implantable drug delivery system 10 including a drug reservoir
12 that includes a housing 13, divided into a drug reservoir chamber 15 and
a propellant chamber 14 by bellows 16, a refill septum 17, and an opening

1 It appears that the limitation of “the pump housing” in claim 2 lacks
antecedent basis because the claimed propellant chamber 14 is disclosed as
being within the “second housing” (defining a drug reservoir chamber 15)
and not the “pump housing.” See Appellant’s Drawings, fig. 1.
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18. Spec. 5, para. [21] and fig. 1. Appellant’s Specification further
describes a “pump” 24, in addition to and different from drug reservoir 12,
that is actuated to deliver drug 11 to catheter 25. Spec. 5, para. [22]. See
also, Br. 8. In view of the similarity of Appellant’s drug reservoir 12 and a
“positive pressure reservoir,” as described above, we find that drug reservoir
12 of Appellant’s implantable drug delivery system 10 constitutes a
“positive pressure reservoir.”
Next, we note that Sampson describes an infusion pump 10 including
a housing 12 divided into a drug chamber 16 and a propellant chamber 18 by
bellows 20. Sampson further teaches that propellant chamber 18 is filed
with FREON™ which creates a pressure upon bellows 20 that in turn forces
a drug contained in drug chamber 16 out through discharge opening 26.
Sampson, col. 2, ll. 31-41 and fig.1. Once more, in view of the similar
structure and function of Sampson’s infusion pump 10 and that of a
“positive pressure reservoir,” as described above, we find that infusion pump
10 of Sampson constitutes a “positive pressure reservoir,” as called for in
claim 1. The claimed “positive pressure reservoir” and Sampson’s infusion
“pump” 10 both contain a positive pressurized fluid that forces a drug
contained in a bellows out from their respective reservoirs. Hence, the
Examiner’s finding that Sampson includes a pump is really a finding that
Sampson discloses a reservoir with a positive pressure as in the claimed
positive pressure reservoir.
As such, since infusion pump 10 of Sampson constitutes a “positive
pressure reservoir,” as called for in claim 1, and Appellant’s Specification
and Drawings disclose that the pump mechanism also includes a “pump” 24
that works in conjunction with a “positive pressure reservoir 12” (see Spec.
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para. [22]), we find that infusion pump of 10 of Sampson cannot also be a
“pump,” as the Examiner posits because the pumping function that the
Examiner ascribes to Sampson’s infusion pump 10 is actually the positive
pressure function. See Becton, Dickinson and Co. v. Tyco Healthcare
Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (Where a claim lists
elements separately, “the clear implication of the claim language” is that
those elements are “distinct component[s]” of the patented invention).
In conclusion, for the foregoing reasons, the rejection of claim 1 and
its dependent claims 2, 4-7, and 29 under 35 U.S.C. § 102(b) as anticipated
by Sampson cannot be sustained.
With respect to claims 3 and 27, the Examiner’s proposed
modification of Sampson does not remedy the deficiency of Sampson as
discussed above. Accordingly, the rejection of claims 3 and 27 under 35
U.S.C. § 103(a) as unpatentable over Sampson likewise cannot be sustained.
Finally, regarding Appellant’s request to reverse the Examiner’s
withdrawal of claim 30 (see Br. 11), we note that the Examiner’s withdrawal
from consideration of claim 30 as being directed to a non-elected invention
is a petitionable matter. See Manual of Patent Examining Procedure
(MPEP) §§ 1002.02(c)(2) and 1201. As such, claim 30 is not part of the
instant appeal.

SUMMARY
The decision of the Examiner to reject claims 1-7, 27, and 29 is
reversed.

REVERSED
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Application 10/862,768

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