Ex Parte Paboojian et al

Board of Patent Appeals and Interferences

Jul 13, 2009

09731318 (B.P.A.I. Jul. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEVE PABOOJIAN, CARLOS SCHULER,
and ANDREW CLARK
__________

Appeal 2009-003637
Application 09/731,318
Technology Center 3700
__________

Decided:1 July 13, 2009
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving a claim to a
receptacle. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, begins to run from the
decided date shown on this page of the decision. The time period
does not run from the Mail Date (paper delivery) or Notification
Date (electronic delivery).

Appeal 2009-003637
Application 09/731,318

Statement of the Case
The Claims
Claims 1-4 are on appeal. Independent claim 1 is representative and
reads as follows:
1. A receptacle comprising:
a receptacle body that defines an enclosed cavity
containing powdered medicament, wherein the receptacle
body has a top end and a bottom end; and wherein the
bottom end of the receptacle body includes a raised central
region that extends upwardly into the cavity.

The prior art
The Examiner relies on the following prior art reference to show
unpatentability:
Watt et al. US 3,980,074 Sep. 14, 1976

The issue
The Examiner rejected claims 1-4 under 35 U.S.C. § 102(b) as
anticipated by Watt (Ans. 3).
The Examiner finds that “Watt et al. teaches a receptacle comprising:
a receptacle body that defines an enclosed cavity containing powdered
medicament (col. 2, lines 27-28), wherein the receptacle body has a top end
and a bottom end, and wherein the bottom end of the receptacle body
includes a raised central region that extends upwardly into the cavity” (Ans.
3).
Appellants contend that “Watt et al does not disclose an enclosed
cavity. Instead, the cavity of Watt et al has several openings, such as vents
11 and opening 2” (App. Br. 3). Appellants contend that “[a]s discussed
throughout Appellant’s specification, the powder medicament is contained
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within an enclosed cavity, such as a sealed blister pack (see page 7, lines 25-
35). In this way, the powder medicament may be stored on the shelf prior to
use and may be protected from the environments degrading effects” (App.
Br. 3).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Did the Examiner err in finding that Watt teaches a “receptacle body
that defines an enclosed cavity” as required by claim 1?
Findings of Fact (FF)
1. The Specification teaches that “[t]he invention provides
exemplary techniques and equipment for extracting powder that is held
within a receptacle, typically within a sealed cavity” (Spec. 7, ll. 25-26).
2. The Specification teaches that the
powders of the invention may be extracted by creating
an opening or access way into the receptacle and then
flowing air or other gases through the receptacle to
move the powder out of the access way.
Conveniently, one or more vents may also be created
in the receptacle to facilitate the flow of air through
the receptacle.

(Spec. 8, ll. 1-4.)
3. The Specification teaches that
the receptacles may be constructed to have preformed
holes and/or vents. In this way, the top surface of the
receptacle does not need to be pierced when inserting
the extraction tube or forming the vents.
Conveniently, a removable cover may be placed on
top of the receptacle. After insertion into an
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aerosolizing apparatus, the cover may be pulled from
the receptacle to expose the holes and/or vents.

(Spec. 9, ll. 28-33.)
4. Figure 3 of the Specification is reproduced below:

“Fig. 3 is a perspective view of the receptacle of Fig. 1 showing vents
formed in a top end and an extraction tube that has been inserted into the top
end” (Spec. 6, ll. 26-28).
5. Watt teaches a “container having one or more air inlet vents
adapted to direct incoming air into a turbulent stream within the container . .
. whereby the intake of breath by the user of the device causes powder
within the container to be fluidized, to pass into the vortex of air in the
housing” (Watt, col. 1, ll. 46-52).
6. Watt teaches that
the inhalation device comprises a hollow elongate housing 1,
made of plastic material. One end of the housing is provided
with an outlet 2 of restricted diameter which serves as a
mouthpiece. The other end of the housing 1 is provided with
a powder container 3 comprising a body 4 and a flange 5,
the latter being integral with the housing; and an extension 6
of the housing protrudes into the container. The container
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body 4 and flange 5 are joined by means of screw thread 7.
The base 8 of the container has a central protuberance 9
producing an annular trough 10. The flange 5 of the
container is provided with a number of air inlet vents 11,
drilled at a constant angle to the longitudinal axis of the
housing 1, this angle preferably being in the range 40°-85°.
The configuration of these vents is shown more clearly in
FIG. 3.

(Watt, col. 2, ll. 3-18.)
7. Watt teaches a container as in Figure 1, reproduced below:

“FIG. 1 is a cross-section through the major axis of an oral inhalation
device” (Watt, col. 1, ll. 57-58).
8. Watt teaches that “the base 8 of the container 3 has a central
protuberance 9. This provides the annular trough 10 for the powder and
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reduces the likelihood of a dense cloud of powder passing towards the outlet
vent 2 at the onset of inhalation” (Watt, col. 2, ll. 57-61).
9. Figure 2 of Watt is reproduced below:

“FIG. 2 is a cross-section through the line A-A of FIG. 1” (Watt, col. 1, ll.
60-61).
10. Watt teaches that the “housing 1 also has inlet vents 12 again
drilled tangentially as shown in FIG. 2” (Watt, col. 2, ll. 19-20).
11. The Examiner finds that the word “enclosed” is defined as
“surrounded by walls, objects or structures” (Final Rej. 2).
Principles of Law
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994); see
Karsten Manufacturing Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001) (“Invalidity on the ground of ‘anticipation’ requires lack of
novelty of the invention as claimed … that is, all of the elements and
limitations of the claim must be shown in a single prior reference, arranged
as in the claim.”).
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“[T]he PTO gives a disputed claim term its broadest reasonable
interpretation during patent prosecution.” In re Bigio, 381 F.3d 1320, 1324
(Fed. Cir. 2004). The court recognizes the fairness of reading claims broadly
“before a patent is granted [since] the claims are readily amended as part of
the examination process.” Burlington Indus., Inc. v. Quigg, 822 F.2d 1581,
1583 (Fed. Cir. 1987). “Thus, a patent applicant has the opportunity and
responsibility to remove any ambiguity in claim term meaning by amending
the application.” Bigio, 381 F.3d at 1324. Applying the broadest reasonable
interpretation to claims also “’serves the public interest by reducing the
possibility that claims, finally allowed, will be given broader scope than is
justified.’” In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004).
Analysis
Watt teaches a receptacle body with a cavity with powdered
medicaments that has a top end and a bottom end (FF 5-7). Watt teaches
that the receptacle has a raised central region that extends upwardly into the
cavity (FF 7-8). Watt also teaches that the receptacle has vents in the top
end (FF 5-7, 9-10).
The dispute centers on whether the cavity within the receptacle of
Watt is an “enclosed cavity” as required by claim 1. Appellants contend that
“Watt et al does not disclose an enclosed cavity. Instead, the cavity of Watt
et al has several openings, such as vents 11 and opening 2” (App. Br. 3).
Appellants equate enclosed with sealed, referencing the discussion of the
sealed blister pack in the specification (see App. Br. 3).
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However, while the Specification discusses a sealed blister pack as a
receptacle (see Spec. 7, ll. 25-35; FF 1), the Specification expressly
discusses receptacles having vents (FF 2-4). The Specification states that
“one or more vents may also be created in the receptacle to facilitate the
flow of air through the receptacle” (Spec. 8, ll. 3-4; FF 2).
The Specification also states that “the receptacles may be constructed
to have preformed holes and/or vents. In this way, the top surface of the
receptacle does not need to be pierced when inserting the extraction tube or
forming the vents” (Spec. 9, ll. 28-30; FF 3).
Appellants admit that “openings may be preformed into the enclosed
cavity and these preformed openings include a removable cover that allows
for access to the cavity” (App. Br. 4). However, the claim simply requires a
receptacle comprising an “enclosed cavity” and the receptacle in claim 1 is
open as to whether the cavity comprises the removable cover or not.
Therefore when interpreting the receptacle with an “enclosed cavity”
as required by claim 1 in light of the Specification, the “enclosed cavity” is
reasonably interpreted to encompass receptacles with cavities which can
comprise vents, since the Specification expressly teaches receptacles with
vents (FF 1-4).
We are not persuaded by Appellants’ arguments that “[t]he cavity of
Watt et al is not ‘enclosed’” (App. Br. 3). Appellants own Specification
discloses embodiments with vents (FF 2-4) and suggests regarding blister
packs that “the invention is not intended to be limited to these specific types
of receptacles” (Spec. 7, ll. 33-34). Further, the ordinary meaning of the
word “enclosed” does not require that the “enclosed cavity” is sealed, only
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that it is “surrounded by objects” such as a vented lid (see FF 3, 4, 11). Had
Appellants wished to limit the claim to a receptacle without vents,
Appellants have ipsis verbis support for a “sealed cavity” (see Spec. 7, l. 26)
which would have excluded vents such as those disclosed in Watt.
We are also not persuaded by Appellants’ argument that “openings of
the type described by Watt et al would prevent one of ordinary skill from
viewing the cavity of Watt et al as being enclosed” (Reply Br. 4).
Appellants argue that because the vents permit the powder to exit, the cavity
in Watts with vents cannot be “enclosed.” However, in the receptacles of
both Watts and the Specification, vents are present with a cavity which is
intended to retain the powder until the patient inhales (see FF 5).
Consequently, Appellants attempt to limit “enclosed” to “sealed” is not
found persuasive.
Conclusion of Law
The Examiner did not err in finding that Watt teaches a “receptacle
body that defines an enclosed cavity” as required by claim 1.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
102(b) over Watt. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also
affirm the rejection of claims 2-4, as these claims were not argued
separately.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED

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cdc

NOVARTIS
CORPORATE INTELLECTUAL PROPERTY
ONE HEALTH PLAZA 104/3
EAST HANOVER NJ 07936-1080
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