Ex Parte Poulard

Patent Trial and Appeal Board

Jun 30, 2014

10556432 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FABIEN POULARD
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Appeal 2012-005156
Application 10/556,4321
Technology Center 3700
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Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–23. Appeal Br. 4. Appellant’s representative
presented oral argument on June 19, 2014. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 According to Appellant, the real party in interest is VALOIS SAS. Appeal
Br. 2.
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Claimed Subject Matter
Claims 1, 22, and 23 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject.
1. A fluid dispenser comprising:
a stationary body (1) including at least one stationary
gear (110, 122),
a fluid reservoir (2) disposed in said body so as to be
axially displaceable relative to said body,
a dispenser member mounted on said reservoir (2), and
a dose indicator device, including a counter element (20)
that is displaceable axially and in rotation relative to said body
(1), for indicating the number of doses of fluid that have been
dispensed or that remain to be dispensed from said reservoir,
wherein said counter element (20) cooperates, while the
dispenser is being actuated, firstly with said at least one
stationary gear (110, 122) of said body, and secondly with said
reservoir (2), so that the dose indicator device is actuated once
the dispenser has performed a pretermined incomplete actuation
stroke, even if the dispenser does not perform a complete
actuation stroke.2

REJECTIONS
I. Claims 1–23 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.3
II. Claims 1–23 are rejected under 35 U.S.C. § 112, second
paragraph, as being incomplete for omitting essential structural cooperative
relationships of elements, and also as being indefinite.
III. Claims 1–23 are rejected under 35 U.S.C. § 102(b) as
anticipated by Bason (EP 0949584 A2, published Oct. 13, 1999).

2 In claim 1, it appears that “pretermined” should be “predetermined.”
3 We analyze rejections I and II below in the same order that both the
Examiner and Appellant address them.
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IV. Claims 1 and 23 are rejected under 35 U.S.C. § 102(b) as
anticipated by Rand (EP 0254391 A1, published Jan. 27, 1988).

ANALYSIS
Rejection I
The Examiner found that the claims recite the elements and their
functions in relation to one another, but not the “actual” structures and
connections between the elements. Ans. 5. According to the Examiner, the
Specification does not adequately disclose the actual structures of a body,
reservoir, dispenser member, indicator device, at least one stationary gear,
and counter element (claims 1 and 22), and first safety means and second
safety means (claim 22) (claim 23 recites a stationary body, at least one
stationary gear, dose indicator, and counter element), and the structural
connections between these elements, so as to enable one skilled in the art to
make and/or use the system recited in claims 1, 22, and 23, “so that the
counter element is displaceable axially and in rotation relative to the body,
the body gear is stationary, the reservoir is axially displaced relative to the
body even if the dispenser does not perform a complete actuator stroke and
the counter element co-operating, while the dispenser is being actuated,
firstly with the at least one stationary gear and secondly with the reservoir.”
Ans. 5-6.
In contrast, Appellant contends the Examiner did not consider the
Wands factors. Appeal Br. 14. Appellant also contends the Specification
discloses that the invention applies to Metered Dose Inhaler devices (Appeal
Br. 15; see Spec. 8, ll. 25–34) and the drawings are simplified (Appeal Br.
16; see Spec. 8, ll. 13–24), and one skilled in the art would understand the
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structure and connection of a body, reservoir, actuator, counter, and
dispenser member and specific connections need not be disclosed (Appeal
Br. 16).
“Although not explicitly stated in section 112, to be enabling, the
specification of a patent must teach those skilled in the art how to make and
use the full scope of the claimed invention without ‘undue
experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir.
1989)(citations omitted). The Wands factors are factors for accessing
whether a disclosure is sufficient to enable one of ordinary skill in the art to
practice a claimed invention without having to engage in “undue
experimentation” See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
We agree with Appellant that the Examiner did not articulate adequate
reasoning why the claimed subject matter is not described in the
Specification in such a way to enable one of ordinary skill in the art to make
and use the invention. See In re Wright, 999 F.2d at 1561–62 (“the case law
makes clear that properly reasoned and supported statements explaining any
failure to comply with section 112 are a requirement to support a rejection”).
Firstly, the Examiner did not mention or appear to apply the Wands factors
in the enablement analysis. Secondly, Appellant explains that the structural
components and the operation of the embodiment of the fluid dispenser
depicted in Figures 1–8 are disclosed at page 8, line 35 to page 14, line 19 of
the Specification. See Appeal Br. 19–29. This disclosure describes and
depicts the operation of the fluid dispenser from a rest position (Fig. 1) to an
actuated position (Fig. 4), where this operation includes the counting of a
dose with “a predetermined incomplete actuation stroke of the dispenser.”
See Spec. p. 10, l. 18 – p. 12, l. 28; Figs. 1–4. In light of this disclosure, the
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Examiner does not provide adequate reasoning to establish that one of
ordinary skill in the art would have been unable to make and use the fluid
dispenser recited in claim 1 without undue experimentation, absent
additional disclosure as to the “actual structures, shapes and connections of
and between the elements of the invention.” Ans. 9.
We also find the Examiner’s non-enablement position to be
unsupported in regard to claim 2, which depends from claim 1. See Ans. 10.
Appellant explains that the subject matter recited in claim 2 is supported by
the disclosure at page 13, line 17 – page 14, line 17, and Figure 6 of the
Specification. Appeal Br. 34–35.
The Examiner does not identify any specific subject matter in claims
3–9 (Ans. 6) and 21, which depend from claim 1.
The Examiner’s position regarding claims 10–14 (Ans. 6) and 15–20
(Ans. 6–7) is similar to the position for claim 1. The Examiner also found
that “[i]n figs. 9-12, the counter element 20 is attached to actuator 30 which
is integral one piece with a reservoir 2; therefore, it is impossible to counter
element 20 co-operating the reservoir 2 [sic].” Ans. 6, 7.
In response, Appellant explains that, as shown in Figures 9–11, “[t]he
downward movement of the actuator causes the counter element 20 to also
move downward with respect to the stationary gears. Thus, the counter
element cooperates with the reservoir. See also FIGS. 1-8.” Reply Br. 6.
Appellant’s explanation is consistent with the depicted subject matter, and is
persuasive.
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The Examiner’s position for claim 22 is the same as that for claim 1.
Ans. 5–6, 9–10.4
Thus, the Examiner did not establish a prima facie case of non-
enablement for claims 1–22, and so the burden did not shift to Appellant to
show that one of ordinary skill in the art could have practiced the claimed
invention without undue experimentation. See In re Strahilevitz, 668 F.2d
1229, 1232 (CCPA 1982). However, although the burden did not shift,
Appellant submitted a Declaration regarding the state of the art and the level
of ordinary skill in the art. We agree with Appellant that the Examiner did
not adequately respond to this submission. Appeal Br. 17; Reply Br. 4–5;
see Ans. 9–10.
Therefore, we do not sustain the rejection of claims 1–22 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
However, for the reasons discussed below for Rejection II, we do not
reach the rejection of claim 23 under 35 U.S.C. § 112, first paragraph.
Rejection II
Claims 1-22
The Examiner found that claims 1–23 are incomplete for omitting
essential structural cooperative relationships of elements, in that “the claims
compris[e] many elements but do not include structures or shapes of

4 Claim 22 recites, inter alia, “second safety means for preventing the fluid
from being expelled again until said dispenser has completed the
predetermined incomplete return stroke.” Emphasis added. We note there
is no antecedent basis for “the predetermined incomplete return stroke” in
this limitation.
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elements and structural connections between the elements, such omission
amounting to a gap between the necessary structural connections.” Ans. 7.
The Examiner does not specify any particular omitted “essential
structural cooperative relationships of elements,” and provides reasoning
that is similar to the non-enablement position described above. Ans. 10–12.
Appellant’s contentions in response to this rejection are similar to
those discussed above in regard to Rejection I. Appeal Br. 36–43.
We agree with Appellant in that the Examiner did not adequately
identify any “gap between the necessary structural connections” of the
recited elements for claims 1–22.
The Examiner also determined that claims 1–22 are indefinite because
it is unclear what are required for the structures or shapes, and the structural
connections, of the claimed elements. Ans. 7.
In contrast, Appellant contends that the Specification provides
sufficient details regarding the claimed elements and their structural
connections. Appeal Br. 43–44.
The Examiner’s response does not specify any particular deficiencies
as to the structure, shapes, or connections of the elements. Ans. 12. The
Examiner does not explain why one of ordinary skill in the art would not
understand the meaning of the claims, when read in light of the
Specification, without adding further claim limitations regarding “structures
or shapes of elements and structural connections between the elements.”
Thus, we do not sustain the rejection of claims 1–22 under 35 U.S.C. § 112,
second paragraph.

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Claim 23
We find that claim 23 is indefinite because it recites “said counter
element is caused to be displaced axially and permitted to rotate relative to
said body,” but there is no antecedent basis for “said counter element.”
Consequently, it is unclear to us whether “said counter element” should
instead be another element recited previously in claim 23. If not, then it
appears that additional limitations pertaining to “said counter element” have
been omitted in this claim, making it incomplete. Lack of antecedent basis
is a sufficient basis for rejecting a claim as indefinite when one of ordinary
skill in the art would not understand the bounds of the claim as a whole
when read in light of the specification. See Energizer Holdings, Inc. v. Int’l
Trade Comm’n, 435 F.3d 1366, 1370–71 (Fed. Cir. 2006). We find the
scope and meaning of claim 23 to be unclear, and thus, we sustain the
rejection of this claim under 35 U.S.C. § 112, second paragraph.
Rejection III
Claims 1 and 22 recite “a stationary body (1) including at least one
stationary gear (110, 122).”
The Examiner found that Bason discloses a fluid dispenser
comprising, inter alia, a stationary body A including at least one stationary
gear 2. Ans. 8.
Appellant contends that Bason’s stationary body A does not include a
stationary gear. Appeal Br. 45. We agree.
Figures 1–8, 9–12, and 13–21 of Appellant’s application all show
stationary gear 110 as being part of stationary body 1. In other words, the
depicted stationary body 1 and stationary gear 110 form a unitary structure.
Stationary gear 110 is also stationary with respect to stationary body 1.
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Consistent with the Specification and drawings, and with Appellant’s
contentions, we construe “a stationary body (1) including at least one
stationary gear (110, 122)” as a stationary body including, as a unitary or
monolithic part of the stationary body, at least one stationary gear. In
contrast, Bason’s teeth 2 are shown as being part of a second part 1, which is
a separate part from the structure shown as corresponding to stationary body
“A.” See ¶ 14; Figs. 1–3. Thus, we agree with Appellant that Bason’s
stationary body “A” does not include teeth 2.
We also agree with Appellant that the Examiner did not provide
sufficient evidence to show that Bason’s device meets the limitation “so that
the dose indicator device is actuated once the dispenser has performed a
pretermined [sic] incomplete actuation stroke, even if the dispenser does not
perform a complete actuation stroke,” in claim 1. See Appeal Br. 46.
Thus, because the Examiner did not establish by a preponderance of
the evidence that Bason discloses each and every limitation of claim 1 or 22,
we do not sustain the anticipation rejection of these claims, or of claims 2–
21, which depend from claim 1.
Because the scope of claim 23 is indefinite, the rejection of claim 23
as anticipated by Bason must fall, pro forma, as it is necessarily based on
speculative assumptions as to the claim’s scope. See In re Steele, 305 F.2d
859, 862–63 (CCPA 1962). Therefore, we reverse, pro forma, the rejection
of claim 23 as anticipated by Bason.
Rejection IV
The Examiner found that Rand discloses a fluid dispenser comprising,
inter alia, a stationary body 1 including at least one stationary gear 11. Ans.
8 (citing Figs. 1, 2).
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Figures 1 and 2 of Rand show driving arm 11 disposed within housing
22. See also col. 4, ll. 28–31. “This housing 22 extends from the cap
member 8 along the external surface of the tubular housing 1.” Col. 4, ll.
22–24; Figs. 1, 2.
Appellant contends that Rand’s stationary housing 1 does not have a
stationary gear. Appeal Br. 51–52.
We agree with Appellant that driving arm 11 of Rand is not a
stationary gear of tubular housing 1. That is, driving arm 11 is not a unitary
or monolithic part of tubular housing 1. Accordingly, the Examiner’s
finding that Rand discloses “a stationary body (1) including at least one
stationary gear (110, 122),” as claimed, is not supported by a preponderance
of the evidence.
We also agree with Appellant that the Examiner did not establish that
Rand’s device meets the limitation reciting “so that the dose indicator device
is actuated once the dispenser has performed a pretermined [sic] incomplete
actuation stroke, even if the dispenser does not perform a complete actuation
stroke,” in claim 1. See Appeal Br. 52–53.
Therefore, we do not sustain the anticipation rejection of claim 1
based on Rand.
For the same reasons discussed above for rejection III, we reverse, pro
forma, the rejection of claim 23 as anticipated by Rand.

DECISION
We AFFIRM the rejection of claim 23, and REVERSE the rejections
of claims 1–22.
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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-IN-PART

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