Ex Parte Sj¿nell

Patent Trial and Appeal Board

Jan 27, 2016

12444969 (P.T.A.B. Jan. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/444,969 08/26/2009
23908 7590 01/29/2016
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BRNNP0103US 4079
EXAMINER
RANDALL, JR, KELVIN L
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
01129/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GORAN SJONELL
Appeal 2014-000443 1,2
Application 12/444,969
Technology Center 3600
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1, 3-8, and 10-21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the "invention relates to dispensing devices,
and in particular lockable dispensing devices intended to dispense
1 Our decision references Appellant's Specification ("Spec.," filed Apr. 9,
2009), Appeal Brief ("Appeal Br.," filed June 12, 2013), and Reply Brief
("Reply Br.," filed Oct. 1, 2013), as well as the Office Action ("Office
Action," mailed Oct. 12, 2012) and the Examiner's Answer ("Answer,"
mailed Aug. 1, 2013).
2 Appellant identifies "[t]he real party in interest ... [as] Sjonell & Co.
Aktiebolag." Appeal Br. 2.
Appeal2014-000443
Application 12/444,969
medicaments at pre-determined times, comprising reminder and alarming
means." Spec. 1, 11. 17-19. Claims 1, 12, and 21 are the only independent
claims under appeal. Claim 1, which we reproduce below, is representative
of the appealed claims.
1. A time-controlled dispensing device comprising at least a
tray and a cover for consecutive dispensing of doses of
medicaments, comprising
(a) a desired number of pre-filled storage compartments and/ or
cartridges each containing one predetermined dose of one or
several medicaments, said tray being fitted with a transport for
displacing the tray to a position where a desired compartment
and/or cartridge will be in the only dispensing position suitable
for removal of the dose from the compartment and/or the
cartridge,
(b) a timer connected to the transport for controlling the transport
of the tray in (a) at predetermined time intervals;
( c) a reminder device directed to the person using the device,
and/or
( d) an alarm indicating at a distance that removal of the dose has
or has not occurred;
wherein the dispensing device is configured for mounting to a
wall, whereby the medicaments could easily drop out of the
dispensing device at pre-set times by way of gravity, and wherein
the reminder device and/or the alarm is triggered respectively by
nonmovement of a lever and/or a hatch dependent on the removal
or not of the dose.
Appeal Br., Claims App.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claims 1, 3, 4, and 10-17 under 35 U.S.C. § 103(a) as unpatentable
over Weldi (US 2002/0190075 Al, pub. Dec. 19, 2002), Depeursinge
2
Appeal2014-000443
Application 12/444,969
(US 6,625,518 B2, iss. Sept. 23, 2003), and Baum (US 2004/0182873 Al,
pub. Sept. 23, 2004);
claims 5, 7, and 19 under 35 U.S.C. § 103(a) as unpatentable over
Weldi, Depeursinge, Baum, and Benaroya (US 4,572,403, iss. Feb. 25,
1986);
claims 6 and 18 under 35 U.S.C. § 103(a) as unpatentable over Weldi,
Depeursinge, Baum, and Varis (US 2003/0127463 Al, pub. July 10, 2003);
claim 8 under 35 U.S.C. § 103(a) as unpatentable over Weldi,
Depeursinge, Baum, and Pearson (US 7,159,720 B2, iss. Jan. 9, 2007); and
claims 20 and 21under35 U.S.C. § 103(a) as unpatentable over
W eldi, Depeursinge, Baum, Benaroya, and Varis.
ANALYSIS
Obviousness rejection of claims 1, 3, 4, and 10-17
Independent claims 1 and 12 recite that "the dispensing device is
configured for mounting to a wall." Appeal Br., Claims App. Claims 3, 4,
10, 11, and 13-17 depend either directly or indirectly from one of claims 1
and 12. Id. As summarized by Appellant, "[t]he Examiner contends that it
would have been obvious ... to combine the teachings of W eldi, teaching a
dispensing device for medicaments, with Despeursinge [sic], teaching a
reminder device and an alarm, and Baum, teaching wall mounting, to arrive
at the subject matter of claim 1." Appeal Br. 9. Appellant argues, however,
that "one ... would not combine Baum with Weldi and Despeursing [sic]"
as proposed by the Examiner. See id. More specifically, Appellant argues
that "Weldi is directed to a small, portable dispenser" (id.), and that there is
no reason to modify a small, portable device to be mounted to a wall (id. at
3
Appeal2014-000443
Application 12/444,969
10). We note that the Examiner does not respond, such in the Response to
Arguments section of the Answer, to either i) Appellant's arguments or
citations to W eldi which discuss that Weldi is intended to be a small,
portable device or ii) whether the proposed modification would result in
Weldi's device no longer being small or portable (see id. at 9--10). We
further note that the Examiner does not identify how W eldi is proposed to be
modified for wall mounting, such as by identifying any particular structure
in Baum that permits Baum to be mounted to a wall, and/or how such
structure is to be included in Weldi. Thus, based on the foregoing, we
determine that the Examiner does not establish persuasively that there is a
rational reason to modify W el di' s device to be configured for mounting to a
wall. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
("[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.").
Based on the above, we do not sustain the rejection of independent
claims 1 and 12. We also do not sustain the rejection of dependent claims 3,
4, 10, 11, and 13-17.
Obviousness rejections of 5-8, 18, and 19
Inasmuch as we do not sustain the rejection of independent claims 1
and 12, we also do not sustain the rejections of claims 5-8, 18, and 19
depending from the independent claims. The Examiner does not establish,
for example, that another reference remedies the deficiency in the rejection
of independent claims 1 and 12.
4
Appeal2014-000443
Application 12/444,969
Obviousness rejection of claims 20 and 21
Inasmuch as we do not sustain the rejection of independent claim 12,
we also do not sustain the rejection of claim 20 depending from claim 12.
The Examiner does not establish, for example, that another reference
remedies the deficiency in the independent claim's rejection.
With respect to independent claim 21, the claim recites that "the
dispensing device is configured for mounting to a wall." Appeal Br., Claims
App. For reasons similar to those discussed above with respect to
independent claims 1 and 12, we determine that the Examiner does not
establish persuasively that there is a rational reason to modify Weldi's
device to be configured for mounting to a wall.
DECISION
We REVERSE the Examiner's rejections under 35 U.S.C. § 103(a) of
claims 1, 3-8, and 10-21.
REVERSED
pgc
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