Ex Parte Rothenberg et al

Board of Patent Appeals and Interferences

Jul 10, 2003

09006982 (B.P.A.I. Jul. 10, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SIMON J. ROTHENBERG, HSU CHI YEH
and BERNARD J. GREENSPAN
____________
Appeal No. 2002-0747
Application No. 09/006,982
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-27,
which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/006,982
Page 2
1 The claims to which this rejection applies were not recited in the statement of the rejection. It
would appear, however, that it applies to claims 1-18, inasmuch as these are the only claims that contain
subject matter with which the examiner takes issue.
BACKGROUND
The appellants’ invention relates to an apparatus for delivering air-borne
substances . An understanding of the invention can be derived from a reading of
exemplary claim 1, which has been reproduced below.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Watt 4,554,916 Nov. 26, 1985
Spengler 4,781,146 Nov. 1, 1988
The following are the standing rejections:
(1) Claims 1-181 under 35 U.S.C. § 101 on the basis that the invention is inoperative
and therefore lacks utility.
(2) Claims 1-18 under 35 U.S.C. § 112, first paragraph, on the basis that the
specification does not enable any person skilled in the art to which it pertains, or with
which it is most nearly connected, to make or use the invention commensurate in
scope with these claims.
(3) Claims 1-27 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the appellants
regard as the invention.
(4) Claims 1-27 under 35 U.S.C. § 112, second paragraph, as being incomplete for
omitting essential elements, such omission amounting to a gap between the
elements.
(5) Claims 1, 2 and 8-18 under 35 U.S.C. § 103(a) as being unpatentable over Watt.
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Application No. 09/006,982
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(6) Claims 3-7 under 35 U.S.C. § 103(a) as being unpatentable over Watt in view of
Spengler.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the Answer
(Paper No. 20) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 19) and Reply Brief (Paper No. 21) for the appellants’ arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
Claim 1
An apparatus for delivering air-borne substances, comprising:
a structure comprising a chamber, wherein said chamber defines
an axis of air flow;
an air flow device at a first end of said chamber for introducing air
and flowing air substantially along said axis;
a plurality of pulsatile delivery devices positioned at said first end of
said chamber such that the actuation of said devices emits an air-borne
substance substantially along said axis; and
an actuator in communication with said delivery devices for
selective actuation thereof;
wherein:
said pulsatile delivery devices are positioned within a plurality of
cassettes; or
. said axis of air flow is substantially perpendicular to the forces of
gravity and said apparatus can be rotated about said axis of air flow.
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Application No. 09/006,982
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2 35 U.S.C. § 101 Inventions patentable. Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,
may obtain a patent therefore, subject to the conditions and requirements of this title.
(1)
The examiner has rejected claims 1-18 on the basis that the disclosed invention
is inoperative and therefore fails to comply with 35 U.S.C. § 1012 (Answer, page 4):
The examiner fails to see how all the elements of the apparatus can
rotate about . . . this axis and still be operative, [sic] won’t the hose
connecting the air flow device to the inlet port be torn off and wrap around
the outside of the cylindrical sleeve which defines this chamber? How
does [sic] the actuator & pulsatile devices rotate about this axis? Since
they are part of the apparatus they also rotate? Yes or no?
In the course of arriving at this conclusion, the examiner takes the position that the
phrase “can be rotated about,” which appears in independent claim 18, must be
interpreted to mean that the apparatus “is going completely around the axis and not
partially as set forth in . . . the specification.” The appellant counters by arguing that
neither the common definition of “rotated” nor this terminology as used in the
specification require that the apparatus rotate completely around the axis (Brief, page
7). We agree with the appellant that the definition of “rotated” does not require that the
apparatus rotate completely around the axis, but only that it rotate through an arc about
the axis. In this regard, we note on page 8 of the specification the explanation that the
chamber need rotate only through an arc of 180 degrees about the axis of air flow,
which in our view would have indicated to one of ordinary skill in the art that the
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Application No. 09/006,982
Page 5
apparatus is operable without complete rotation of the chamber about the axis of air
flow. Moreover, the examiner has not provided evidentiary support for the allegation
that the invention is inoperable.
It therefore is clear to us that even if one considers that a rejection under
35 U.S.C. § 101 is proper when an invention is inoperable, in the present case the
evidence does not support a finding of inoperativeness, and this rejection of claims 1-18
cannot be sustained.
(2)
Claims 1-18 stand rejected under 35 U.S.C. § 112, first paragraph, “because the
specification, while being enabling for a chamber which partially rotates, it [sic] does not
reasonably provide for an entire apparatus that rotates about . . . an axis” (Answer,
page 4). For the reasons explained above, it is our view that claim 1 does not require
that the chamber be rotatable completely around the axis of air flow, and therefore
enablement of the claimed invention is provided by the specification. The examiner’s
own words, quoted above, support this conclusion.
The rejection of claims 1-18 under 35 U.S.C. § 112, first paragraph, is not
sustained.
(3)
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Application No. 09/006,982
Page 6
3 The second paragraph of 35 U.S.C. § 112 requires claims to set out and circumscribe a
particular area with a reasonable degree of precision and particularity. In re Johnson, 558 F.2d 1008,
1015, 194 USPQ 187, 193 (CCPA 1977). In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by one possessing the ordinary
level of skill in the pertinent art. Id.
In this rejection, claims 1-27 are considered by the examiner to be indefinite3
under the second paragraph of Section 112 for four reasons. The first of these is that
the statement in claim 1 that “said axis of air flow is substantially perpendicular to the
forces of gravity” is indefinite “since the Earth is subject to the forces of gravity of many
nearby heavenly bodies and it is not stipulated as to which force it is or could be
perpendicular too [sic], e.g. the Sun (Sol),. [sic] the Moon or maybe the Earth’s own?”
(Answer, page 5). The question here is whether one of ordinary skill in the art would
understand the phrase in issue to refer to anything other than the earth’s gravity, and
without any hesitation we answer it in the negative. We do not agree with the examiner
that this language renders the claims indefinite.
The second issue raised by the examiner is that there is “insufficient antecedent
basis” in claim 1 for the limitation “the forces of gravity” (Answer, page 5). Again, it is
our view that one of ordinary skill in the art would understand what is meant by this
language, even absent prior definition in the claim, and therefore its presence does not
cause the claim to be indefinite.
The examiner also expresses the view (Answer, page 5) that there is “insufficient
antecedent basis” for the limitation “the cross-sectional area” in claim 16, which renders
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Application No. 09/006,982
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4 However, consideration should be given to using either “cross-sectional area” or “diameter” as
the factor upon which the reduction in flow is based.
claim 16 indefinite. Claim 14, from which claim 16 depends, adds to claim 1 a reducing
adapter in fluid communication with the chamber at a second end thereof. Claim 16
states that the chamber has an inner diameter, and that “said reducing adapter effects
approximately 2 to 40 fold reduction in the cross-sectional area of air flow with respect
to said chamber inner diameter.” The effect of the reducing adapter is explained in the
specification as effecting “an approximately 2 to 40 fold diameter reduction with respect
to the chamber’s inner diameter” (emphasis added), which is reflected in original claim
16. While there appears to be an inconsistency between the manner in which the effect
of the reducing adaptor is recited in claim 16, that is, the comparison between the
cross-sectional area of the air flow and the inner diameter of the chamber, it is our view
that one of ordinary skill in the art would have appreciated that the intent of this feature
of the invention is to have the reducing adaptor reduce the airflow by 2 to 40 fold from
that flowing through the unaltered portion of the chamber, whether expressed in relative
cross-sectional areas or diameters. Therefore, we are of the view that this matter does
not cause claim 16 to be indefinite.4
Without amplifying explanation, the examiner further concludes that “in light of
the above 35 U.S.C. §§ 101 & 112(1) rejections the claims [presumably claims 1-18]
are indefinite” (Answer, page 5). We do not agree that the mere presence of the other
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Application No. 09/006,982
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5 Skill is presumed on the part of the artisan, rather than the lack thereof. In re Sovish, 769 F.2d
738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
rejections establishes a prima facie rejection of indefiniteness, which apparently is the
examiner’s position.
On the basis of the reasons expressed in the foregoing paragraphs, this rejection
under the second paragraph of Section 112 is not sustained.
(4)
In a second rejection under the second paragraph of Section 112, claims 1-17
are rejected as being indefinite on the basis that they are “incomplete for omitting
essential elements, such omission amounting to a gap between elements.” Here, the
examiner refers to Section 2172.01 of the MPEP and sets forth as the single omitted
element “[a] user/recipient respiratory interface in order to facilitate delivery of gases” to
a user (Answer, pages 5 and 6). The referenced section of the MPEP states that a
rejection under the second paragraph of Section 112 is proper when a claim “fails to
interrelate essential elements of the invention as defined by applicant(s) in the
specification.” The appellants have argued that the elements set out by the examiner
were not defined in their specification as essential elements of the invention, and on
that basis this rejection is improper. We agree, and further note that in our view one of
ordinary skill in the art5 would have possessed sufficient skill to understand from the
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Application No. 09/006,982
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6 The test for obviousness is what the combined teachings of the prior art would have suggested
to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
explanation of the invention how to deliver gases from a mixing chamber such as that
disclosed and claimed in this application to a user/recipient respiratory interface.
This rejection is not sustained.
(5)
Claims 1, 2 and 8-18 have been rejected as being unpatentable6 over Watt. It is
the examiner’s position that Watt discloses all of the subject matter recited in
independent claim 1 except that “Watt only disclose [sic] the use of a single cassette
and not a plurality of cassettes and discloses the air flow device & pulsatile devices at a
mid point of the chamber & not an end” (Answer, page 6). The examiner notes,
however, “that appellant’s [sic] specification does not set forth this specific co-location
of air source & pulsatile devices at an end of the apparatus, as unexpectedly providing
any new result or unexpectedly solving any new problem in the art over the prior art,”
and from this concludes “[a]ccordingly, the examiner considers the selection of such to
be a mere obvious matter of design choice and does not patentably distinguish the
claims over the prior art, barring a convincing showing to the contrary,” and
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Application No. 09/006,982
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“[f]urthermore the co-location of an air source and pulsatile device at one end of a
delivery device is old and well known in the art and one of ordinary skill in the art would
consider such to be more of a matter of mere obvious routine design choice rather than
it constituting a patentably distinct inventive step, barring a convincing showing of
evidence to the contrary” (Answer, page 7). The appellants argue in rebuttal that the
examiner has provided no evidence to support the conclusions set forth above, and
thus the rejection should not stand.
Watt discloses a rotary proportioning inhalator comprising a somewhat cone-
shaped cylindrical body having an outer element 38, an inner element 39, and a face
adaptor 47. Several pressurized therapeutic gases are supplied to the inhalator
through a plurality of individual inlets 36 which are located at about the midpoint along
the length of the device. The mixing of the pressurized gases is controlled by demand
valves located at each inlet, and the mixture is communicated to the user by means of
the face adaptor. There is no teaching of introducing a stream of air in addition to the
gases, or that the Watt device is rotatable in use.
By the examiner’s admission, Watt fails to disclose or teach at least two
elements recited in the claim, namely, positioning the delivery devices at a first end of
the chamber, and positioning the delivery devices within a plurality of cassettes.
Contrary to the statement of the examiner, the appellants have explained in detail how
and why the specified locations of the air source and the pulsatile delivery devices are
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important to their invention and solves problems present in the art (specification, pages
2-12). On the other hand, the examiner has not adduced any evidence in support of his
assertions that the claimed “co-location” of the air source and the delivery devices and
the use of a plurality of cassettes are “old and well known in the art,” and that
positioning the delivery devices in a plurality of cassettes is merely a duplication of
known parts for a known purpose.
The mere fact that the prior art structure could be modified does not make such
a modification obvious unless the prior art suggests the desirability of doing so. See In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In the present
situation, we fail to perceive any teaching, suggestion or incentive which would have led
one of ordinary skill in the art to modify the Watt device in such a manner as to meet
the terms of claim 1. Watt fails to establish a prima facie case of obviousness with
regard to the subject matter recited in claim 1. This being the case, we will not sustain
the rejection of claim 1 or, it follows, of claims 2 and 8-18, which depend from claim 1.
Claims 3-7 stand rejected as being unpatentable over Watt in view of Spengler,
which was cited for its disclosure of “several representative ranges which may be used
to assist in determine [sic] proper length & diameter which encompass those set forth in
the claims” (Answer, page 10). The examiner goes on to opine that one of ordinary skill
in the art would therefore have had the “suggestion/motivation” to “optimize the [Watt]
device with these known dimensions in the art in order to produce a more efficient &
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effective device” (Answer, page 11). There is absolutely no support in evidence or logic
for this theory. Moreover, be that as it may, the teachings of Spengler do not alleviate
the problems pointed out above with regard to Watt, and we will not sustain this
rejection of claims 3-7.
CONCLUSION
None of the other rejections are sustained.
The decision of the examiner is reversed.

Appeal No. 2002-0747
Application No. 09/006,982
Page 13
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NEA:pgg
JOSEPH LUCCI
WOODCOCK, WASHBURN, KURTZ,
MACKIEWICZ & NORRIS
ONE LIBERTY PLACE - 46TH FLOOR
PHILADELPHIA, PA 19103