10561655 (P.T.A.B. Mar. 28, 2013)

Ex Parte Purkins

Patent Trial and Appeal BoardMar 28, 2013

10561655 (P.T.A.B. Mar. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GRAHAM R. PURKINS ____________________ Appeal 2011-001098 Application 10/561,655 Technology Center 3700 ____________________ Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and NEIL A. SMITH, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001098 Application 10/561,655 2 STATEMENT OF CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-8 and 15-21. Claims 9-14 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION The invention relates to “valve stems for metered dose dispensing valves.” Spec. 1, ll. 5-6. Claim 1, reproduced below, is the sole independent claim and representative of the claimed subject matter: 1. An aerosol valve stem for use with a metering valve, said valve stem comprising an elongate stem element having an elastomeric sleeve molded onto at least a portion thereof and a sealing element having an inner surface, said sealing element being affixed onto the elongate stem element, such that at least a portion of the inner surface of the sealing element is overlying at least a portion of the elastomeric sleeve. REFERENCES The Examiner relies upon the following prior art references: Neff Bryant Bonningue US 4,522,374 US 5,772,085 US 2002/0020721 A1 Jun. 11, 1985 Jun. 30, 1998 Feb. 21, 2002 Hoelz US 6,739,333 B1 May 25, 2004 REJECTIONS The following rejections are before us on appeal: Claims 1, 2, 5-8, and 15-19 under 35 U.S.C. § 103(a) as being unpatentable over Bryant and Neff. Appeal 2011-001098 Application 10/561,655 3 Claims 3 and 4 under 35 U.S.C. § 103(a) as being unpatentable over Bryant, Neff, and Bonningue. Claims 20 and 21 under 35 U.S.C. § 103(a) as being unpatentable over Bryant, Neff, and Hoelz. ANALYSIS Rejection of claims 1, 2, 5-8, and 15-19 Appellant does not present any separate arguments for the patentability of dependent claims 2, 5-8, and 15-19 apart from independent claim 1. App. Br. 4-5. As such, we treat claims 1, 2, 5-8, and 15-19 as argued as a single group and select independent claim 1 as the representative claim in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellant presents two arguments for the patentability of claim 1. First, Appellant argues that the Examiner has improperly relied on non- analogous art. App. Br. 3. Specifically, according to Appellant, the teachings of Neff “lie in a field that does not inform one of ordinary skill in the art regarding aerosol valve stems that are useful, for instance, in metered dose dispensing devices.” Reply Br. 2. Appellant states further that the claimed aerosol valve stems “should meet performance requirements that are unique to the delivery of aerosol medicament doses” and thus require “functions [that] are very different than the directional, reversing flow control function of the valve spool described in Neff” such that Neff constitutes non-analogous art. App. Br. 4. These arguments do not refute either of the two tests for analogous art, which are: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably Appeal 2011-001098 Application 10/561,655 4 pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Regarding the first test, Appellant fails to present a convincing argument that Neff’s sliding valve spool is in a different field of endeavor as aerosol valve stems. Appellant’s argument on this point is not persuasive because it relies on a field of endeavor that is narrower than justified by claim 1. In other words, although the valve stem of claim 1 may be useful for delivering medicaments, claim 1 does not require such a function. As such, Appellant’s assertion that the valve stem as claimed requires functions that are very different from the functions of Neff’s valve spool is incorrect. Regarding the second test, the Examiner finds that “[b]oth Bryant and Neff are drawn to sliding valve stems which are used in a pressurized environment” and Neff discusses the problem of “maintaining the seal integrity around the valve stem grooves.” Ans. 6. We take this to be a determination that Neff is reasonably pertinent to the particular problem that Appellant faced. Given that Appellant sought to enhance resistance to valve stem leakage, we agree with the Examiner. See Spec. 3, ll. 4-10. Appellant’s argument that the claimed valve stem has very different functions than Neff’s valve spool, flawed for the reason discussed above, does not persuade us that the teachings of Neff are not reasonably pertinent to the particular problem with which Appellant is concerned. Appellant’s second argument for the patentability of claim 1 is that one of ordinary skill in the art would have no reasonable expectation of success in combining Bryant and Neff in the manner set forth by the Examiner. App. Br. 4. Appellant states “nothing in Neff indicates the ability of the spool valve described therein to perform under the demanding Appeal 2011-001098 Application 10/561,655 5 requirements of an aerosol valve stem.” Id. This argument is not persuasive. First, Neff’s failure to expressly indicate the spool valve could perform under the demanding requirements of an aerosol valve stem does not mean one of ordinary skill in the art could not predict success in the proposed combination. Absolute predictability that the substitution will be successful is not required; all that is required is a reasonable expectation of success. See In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). Second, for the reasons discussed above, we disagree that claim 1 requires any “demanding requirements” that are different from the environment of Neff’s valve spool. Accordingly, for the reasons stated above, we sustain the Examiner’s rejection of claim 1 as obvious over Bryant and Neff. Claims 2, 5-8, and 15- 19 fall with claim 1. Rejections of claims 3, 4, 20, and 21 Appellant relies solely on the same arguments made in connection with claim 1 as the basis for patentability of claims 3 and 4 over the combination Bryant, Neff, and Bonningue and of claims 20 and 21 over the combination Bryant, Neff, and Hoelz. App. Br. 5. We find this argument unavailing for the reasons set forth above in our analysis of claim 1. As Appellant has thus failed to apprise us of error, we sustain the rejections of claims 3, 4, 20, and 21. DECISION We affirm the decision of the Examiner rejecting claims 1-8 and 15- 21. Appeal 2011-001098 Application 10/561,655 6 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 hh