Ex Parte Smaldone et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201311062519 (P.T.A.B. Feb. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/062,519 02/22/2005 Gerald C. Smaldone STONYB-09331 8157 23535 7590 02/27/2013 MEDLEN & CARROLL, LLP 703 Market Street SUITE 340 SAN FRANCISCO, CA 94103 EXAMINER DIXON, ANNETTE FREDRICKA ART UNIT PAPER NUMBER 3778 MAIL DATE DELIVERY MODE 02/27/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GERALD C. SMALDONE and LUCY B. PALMER ____________ Appeal 2011-005397 Application 11/062,519 Technology Center 3700 ____________ Before STEFAN STAICOVICI, WILLIAM V. SAINDON, and MICHAEL C. ASTORINO, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005397 Application 11/062,519 2 STATEMENT OF THE CASE Gerald C. Smaldone and Lucy B. Palmer (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 22-24, 26, 27, 29-34, and 37-40. Claims 1-21, 25, 28, 35, and 36 have been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6. THE INVENTION Appellants’ invention relates to a process and device for administering medicaments to a mechanically ventilated patient. Spec., fig. 15B. Claim 22 is illustrative of the claimed invention and reads as follows: 22. A device comprising tubing configured approximately as a Y piece, said device having a first end attachable to an inspiratory line of a ventilator, a second end attachable to an expiratory line of said ventilator, and a stem attachable to an endotracheal tube, wherein said stem comprises a lumen and an aerosol generator, said aerosol generator comprising a vibrational element, a dome-shaped aperture plate with tapered holes, and lacking both a propellant and a fluid driving element. THE REJECTIONS The following rejections are before us for review: The Examiner rejected claims 22-24, 26, 27, 29-34, and 37-40 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. The Examiner rejected claims 22-24, 26, 27, and 31-33 under 35 U.S.C. § 103(a) as unpatentable over Piper (US 5,287,849, iss. Feb. 22, 1994), Robertson (US 5,487,378, iss. Jan. 30, 1996), and Appellants’ Admitted Prior Art (hereafter “AAPA”) (Spec. 20, l. 28 through Spec. 21, l. 4). Appeal 2011-005397 Application 11/062,519 3 The Examiner rejected claims 29, 30, 38, and 39 under 35 U.S.C. § 103(a) as unpatentable over Piper, Robertson, AAPA, and Burns (US 5,284,133, iss. Feb. 8, 1994). The Examiner rejected claim 40 under 35 U.S.C. § 103(a) as unpatentable over Piper, Robertson, AAPA, Burns and Mason (US 3,642,987, iss. Feb. 15, 1972). The Examiner rejected claims 34 and 37 under 35 U.S.C. § 103(a) as unpatentable over Piper, Robertson, AAPA, and Isaza (US 5,881,717, iss. Mar. 16, 1999). The Examiner rejected claims 22-24, 32, and 33 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 5, 12, 27, 28, and 30 of US Application No. 10/430,765. SUMMARY OF DECISION We AFFIRM-IN-PART. ANALYSIS The Written Description Rejection Each of independent claims 22, 27, 32, and 37 recites, inter alia, an “aerosol generator . . . lacking both a propellant and a fluid driving element.” App. Br., Clms. App’x. The Examiner found that the limitation “lacking both a propellant and a fluid driving element” is not supported by Appellants’ original disclosure. Ans. 5-6. It is well settled that the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as Appeal 2011-005397 Application 11/062,519 4 now claimed. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). In this case, Appellants’ Specification specifically states that “[i]n a preferred embodiment, the driving element can be avoided entirely by the use of an AerogenTM aerosol generator.” Spec. 35, ll. 25-26; see also App. Br. 7. Appellants’ Specification further states that “[t]he Aerogen TM aerosol generator does not require propellant.” Spec. 21, l. 4; see also Reply Br. 3. We thus agree with Appellants that the limitation “lacking both propellant and fluid driving element” is supported by Appellants’ original disclosure. App. Br. 7. Accordingly, we do not sustain the rejection of claims 22-24, 26, 27, 29-34, and 37-40 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. The obviousness rejection based upon Piper, Robertson, and AAPA Claims 22, 24, 32, and 33 Appellants have not presented arguments for the patentability of claims 24, 32, and 33 apart from claim 22. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 22 as the representative claim to decide the appeal of the rejection of these claims, with claims 24, 32, and 33 standing or falling with claim 22. The Examiner found that Piper discloses all the limitations of independent claim 22 with the exception of “the particulars of the nebulizer having a vibration element and a dome shape of the aperture [plate].” Ans. 7. The Examiner further found that Robertson discloses an aerosol generator 3 having a vibrational element 54 and AAPA discloses that “a dome-shaped aperture plate is well known in the art, such as the one in the available Appeal 2011-005397 Application 11/062,519 5 Aerogen[TM] aerosol generator.” Id. The Examiner concluded that it would have been obvious to a person of ordinary skill in the art “to modify the nebulizer of Piper to include a vibrating aerosol generator as taught by Robertson to control the dispensing of medicament during therapy” and to further “modify the combined Piper and Robertson nebulizer with a dome- shaped aperture plate as taught by the admitted prior art, since such feature is well known in the art and it appears that the modified Piper’s device would perform equally well with the dome-shaped aperture plate.” Ans. 7-8. First, Appellants argue that the Examiner’s reasoning to combine the teachings of Piper and Robertson, namely, “to control the dispensing of medicament during therapy,” appears to already be performed by the Piper device. App. Br. 8-9. According to Appellants, because “Piper boasts of ‘an increase in efficiency of greater than nine hundred percent over conventional delivery systems’” and “Piper specifies how to ‘control the dispensing’ without the need for changing the delivery device,” the Examiner’s stated reasoning lacks rational underpinning. Id.; see also Piper, col. 3, ll. 20-33. Moreover, Appellants note that, “Robertson teaches a handheld inhaler,” which does not take into account the design parameters of Piper’s ventilator system, such as, “a) the dynamics of the large volume ‘charging system’ of Piper, b) the continuous flow design of Piper, or c) the impact of the inhalation and exhalation phases on the ventilator.” App. Br. 8. We are not persuaded by Appellants’ arguments because like the Examiner, we find that Piper’s system includes a nebulizer (aerosol generator) 102 for dispensing a medicinal aerosol. Ans. 13; see also Piper, col. 3, ll. 7-10 and fig. 4. We further agree with the Examiner that the aerosol generator of Robertson likewise dispenses medicinal aerosol. Ans. Appeal 2011-005397 Application 11/062,519 6 13; see also Robertson, Abstract. Thus, the modification of Piper to include the aerosol generator of Robertson, as proposed by the Examiner, is nothing more than the substitution of one element, i.e., Robertson’s aerosol generator, for another known in the field, i.e., Piper’s generic nebulizer 102, to yield a predictable result. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (citing to United States v. Adams, 383 U.S. 38, 50-51 (1966)) (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). Although we appreciate that Piper’s ventilator system and Robertson’s handheld inhaler are different, nonetheless, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR, 550 U.S. at 421. Appellants have not provided any persuasive evidence why the differences in technologies between Piper and Robertson are of such a nature as to have dissuaded a person of ordinary skill in the art at the time of Appellants’ invention from using Robertson’s aerosol generator to dispense the medicinal aerosol in Piper’s ventilator system, as reasoned by the Examiner. Second, Appellants argue that the Examiner’s reasoning to combine the teachings of Piper, Robertson and AAPA, that is, “that the dome-shaped device was ‘known,’” . . . “is not the legal standard for justifying an obviousness rejection.” App. Br. 14; see also Reply Br. 4. Thus, according to Appellants, the Examiner arrived at the rejection by employing impermissible hindsight reconstruction. Id. Appellants further point out that Appeal 2011-005397 Application 11/062,519 7 the technological differences between Robertson’s device and the AerogenTM aerosol generator are such that the Examiner’s proposed modification, namely, replacing Robertson’s aerosol generator with the AerogenTM aerosol generator, “is not technically possible.” App. Br. 15. Finally, Appellants note that modifying the ventilator system of Piper to include an AerogenTM aerosol generator would render Piper’s system unsatisfactory for its intended purpose because “the low velocity aerosol from an Aerogen[TM]-type generator would have ample time to coalesce (‘rain out’) in the large ‘charging system’ of Piper before reaching air flowing to a subject.” App. Br. 16. At the outset, we agree with the Examiner that “Appellant[s’] admission teaches [that] the use of a dome shaped aperture plate was known at the time the invention was filed.” Ans. 13; see also Spec. 20, l. 28-Spec. 21, l. 4. As such, it follows that the advantages of a dome-shaped aperture plate, as presented in the Declaration of Yehuda Ivri, filed June 30, 2008, paras. 6 and 7 (hereafter “Ivri Declaration”), were also known. Furthermore, in paragraph 6, the Ivri Declaration states that a “dome or non-planar shape is advantageous for any vibrating mesh plate” which would include aperture plate 50 (nozzle array) of Robertson’s device. Emphasis added. See also Robertson, figs. 5a and 5b. Hence, modifying the ventilator system of Piper and Robertson to include the dome-shaped aperture plate of AAPA is “the mere application of a known technique to a piece of prior art ready for the improvement.” KSR, 550 U.S. at 416. “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (quoting Appeal 2011-005397 Application 11/062,519 8 Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). This does not amount to impermissible hindsight. Although we appreciate Appellants’ position that the reservoir of Robertson’s device requires a negative differential pressure with respect to the atmosphere in order to prevent leakage (see App. Br. 15), Appellants have not provided any persuasive evidence to show that modifying the system of Piper and Robertson to include the dome-shaped aperture plate of AAPA would not dispense a medicinal aerosol because of leakage. Moreover, we note that both Robertson’s nozzle array 50 and the dome- shaped aperture plate of AAPA rely on ultrasonic vibrations to form droplets that are periodically ejected through the nozzle array and dome-shaped aperture plate, respectively. Compare, Robertson, col. 10, ll. 56-64 to Ivri Declaration, para. 5. Finally, Appellants have not provided any persuasive evidence that modifying the ventilator system of Piper and Robertson to include the dome- shaped aperture plate of AAPA would allow the aerosol particles to coalesce before reaching air flowing to the patient so as to render Piper’s ventilator system unsatisfactory for its intended purpose. Attorney argument cannot take the place of evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Other factors besides the length of Piper’s “charging system” affect coalescing of aerosol particles, such as particle size, particle velocity, particle composition, and humidity of the gas inside the ventilator system. For the foregoing reasons, we are not persuaded that the Examiner’s conclusion that independent claim 22 is obvious over the combined teachings of Piper, Robertson, and AAPA is in error. Accordingly, we Appeal 2011-005397 Application 11/062,519 9 sustain the rejection of independent claim 22, and claims 24, 32, and 33 standing or falling with claim 22, under 35 U.S.C. § 103(a) as unpatentable over Piper, Robertson, and AAPA. Claim 23 Claim 23 recites that “said aerosol generator is integral to said stem.” App. Br., Clms. App’x. The Examiner found that aerosol generator 102 of Piper “is integral . . . to said stem (20) and to said endotracheal tube (22).” Ans. 8. Appellants argue that even if charging system 26 of Piper could be considered as the stem of the patient wye, “aerosol generator (102) is merely connected to this tube through a supply hose, i.e. it is not integral.” App. Br. 11. In other words, while pointing to the Specification, Appellants argue that the term “integral” should be interpreted to mean a “one-piece” construction. App. Br. 11-12; see also Spec. 11, l. 18 through Spec. 12, l. 2 and Spec. 15, ll. 19-21 (“ . . . said aerosol generator is integral to said second end (e.g. attached at the time of molding the piece).”). Although we appreciate that the term “integral” can be used to mean a “one-piece” construction and Appellants’ Specification discloses an embodiment in which the claimed aerosol generator is a “one-piece” construction with the stem of a Y-piece tubing, nonetheless, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The Court of Appeals for the Federal Circuit has interpreted the term “integral” to cover more than a unitary construction. Appeal 2011-005397 Application 11/062,519 10 See, e.g., Advanced Cardiovascular Sys. v. Scimed Life Sys., 887 F.2d 1070, 1074 (Fed.Cir. 1989) (nothing of record limited “integral” to mean “of one- piece”construction). In this case, Appellants’ Specification states that, “the aerosol generator is integral to the Y piece (e.g. attached, embedded therein, inserted, etc.).” Spec. 36, ll. 15-16. Emphasis added. Thus, the term “integral,” as used by Appellants’ Specification, is not limited to a “one- piece construction,” as Appellants would have us believe, but rather is inclusive of an attached construction. As such, we agree with the Examiner that because aerosol generator 102 of Piper is attached to stem 20, aerosol generator 102 of Piper is integral to stem 20, as called for by claim 23. Ans. 13; see also Piper, fig. 2. We thus sustain the rejection of claim 23 over the combined teachings of Piper, Robertson, and AAPA. Claim 26 Claim 26 recites that “said aerosol generator extends through said stem.” App. Br., Clms. App’x. The Examiner found that aerosol generator 102 of Piper “extends to . . . said stem (20) and to said endotracheal tube (22).” Ans. 8. According to the Examiner, “the aerosol generator (via 32) extends into the Y stem in order to connect to the endotracheal tube (22).” Ans. 14. Appellants argue that the Examiner has misinterpreted the scope of claim 26 because the phrase “extends through” has a different meaning from the phrase “extends to.” App. Br. 12. We agree. When construing claim terminology in the United States Patent and Trademark Office, claims are to be given their broadest reasonable Appeal 2011-005397 Application 11/062,519 11 interpretation consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). An ordinary and customary meaning of the term “extend” is “to stretch out in distance, space, or time : REACH.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). Further, the term “through” is a “word indicat[ing] movement into at one side or point and out at another.” Id. Thus, we interpret the phrase “extends through” to mean reaching into one side or point and out at another. This interpretation is consistent with Appellants’ Specification, which describes an “aerosol generator [that] extends through the walls of the tube.” Spec. 36, l. 19. Thus, because aerosol generator 102 of Piper does not reach into one side of stem 20 and out at another, we agree with Appellants that Piper does not disclose “an aerosol generator that extends through the stem of the Y piece.” App. Br. 12. Therefore, we do not sustain the rejection of claim 26 under 35 U.S.C. § 103(a) as unpatentable over Piper, Robertson, and AAPA. Claim 27 Claim 27 recites, inter alia, “[a] device consisting of tubing configured approximately as a Y piece, said device having . . . a stem attachable to an endotracheal tube, wherein said stem comprises a lumen and an aerosol generator . . . .” App. Br., Clams. App’x. Emphasis added. Appellants argue that because of the term “consists,” the claimed Y piece is a “stand alone device.” App. Br. 13. According to Appellants, Piper’s configuration “ADDS a tube to a Y-piece though which the off-line aerosol generator is connected through a supply hose.” App. Br. 14. Appeal 2011-005397 Application 11/062,519 12 Appellants’ contention is not supported by the claim, because the use of the term “comprising” allows stem 20 to include other elements besides a lumen and an aerosol generator, such as, charging system 26 and hose 24.1 See Piper, figs. 2 and 4. We thus agree with the Examiner that the stem of Piper constitutes “the portion extending from line to the endotracheal tube (22), where the aerosol generator is located on the stem (via line 32).” Ans. 14. Therefore, we sustain the rejection of claim 27 over the combined teachings of Piper, Robertson, and AAPA. Claim 31 Claim 31 recites that “said aerosol generator is intermediate to said stem and to said endotracheal tube.” App. Br., Clms. App’x. The Examiner found that aerosol generator 102 of Piper is “intermediate to said stem (20) and to said endotracheal tube (22).” Ans. 8. Appellants argue that because Piper’s aerosol generator 102 is not attached to the patient wye 10, but rather is attached to the charging system 26, it is not positioned “intermediate to (meaning in the middle of) said stem of the Y piece and said endotracheal tube,” as called for by claim 31. App. Br. 13. We are not persuaded by Appellants’ arguments because claims are to be given their broadest reasonable interpretation consistent with the Specification. In this case, an ordinary and customary meaning of the term “intermediate” is “being or occurring at the middle place, stage, or degree or 1 See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.). Appeal 2011-005397 Application 11/062,519 13 between extremes.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). In Piper, aerosol generator 102 is positioned between extremes, that is, between tracheal tube 22 and stem 20. See Piper, fig. 2. We thus agree with the Examiner that “[t]he position of the aerosol generator via line 32 is located between the stem (20) and the endotracheal tube (22).” Ans. 14. Accordingly, we sustain the obviousness rejection of claim 31. The obviousness rejection based upon Piper, Robertson, AAPA, and Burns Appellants argue that because Burns does not disclose “dome-shaped aperture plates” or “ventilator circuits or intubated patients,” the Examiner’s conclusion of obviousness is in error. App. Br. 16-17. We do not agree because nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this case, the combined teachings of Piper, Robertson, and AAPA discloses “dome-shaped aperture plates” and “ventilator circuits.” We thus sustain the rejection of claims 29, 30, 38, and 39 under 35 U.S.C. § 103(a) as unpatentable over Piper, Robertson, AAPA, and Burns. The obviousness rejection based upon Piper, Robertson, AAPA, Burns, and Mason Claim 40 recites, inter alia, “said medicament is a combination of two antibiotics.” App. Br., Clams. App’x. The Examiner found that Mason discloses the use of two antibiotics “in order to limit side effects found by Appeal 2011-005397 Application 11/062,519 14 using higher concentrations of a single antibiotic.” Ans. 9 (citing to Mason, col. 2, ll. 36-50). Appellants argue that: Mason is not even in the relevant field of endeavor and does not attempt to solve the problems of the intubated patient. Indeed, the two specific antibiotics are prepared for “oral and parenteral administration.” (Abstract). There is nothing suggesting administration by inhalation, let alone into a ventilator circuit. Second, Mason does not provide the necessary teachings that are missing in Piper and Robertson. App. Br. 17. Once more, Appellants are attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In Piper, a medicinal aerosol is dispensed to a patient through an endotracheal tube. Piper, col. 3, ll. 7-10 and fig. 4. As noted above, Mason discloses dispensing a combination of two antibiotics. Mason, col. 2, ll. 36-50. Thus, the modification of Piper, Robertson, Burns, and AAPA to include the antibiotics of Mason, as proposed by the Examiner, is nothing more than the substitution of one element, i.e., Mason’s antibiotics, for another known in the field, i.e., Piper’s medicament, to yield a predictable result. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (citing to Adams, 383 U.S. 38, 50-51 (1966)). Although we appreciate that Mason specifically discloses “oral and parenteral administration” of the antibiotics, nonetheless, Appellants have not provided any persuasive evidence why the antibiotics of Mason could not be delivered as a medicinal aerosol in the system of Piper, Robertson, and AAPA, as reasoned by the Examiner. An artisan is not compelled to blindly follow the teaching of one prior art reference over the other without Appeal 2011-005397 Application 11/062,519 15 the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Thus, for the foregoing reasons, we likewise sustain the rejection of claim 40 under 35 U.S.C. § 103(a) as unpatentable over Piper, Robertson, AAPA, Burns, and Mason. The obviousness rejection based upon Piper, Robertson, AAPA, and Isaza Claim 34 Appellants do not present any other substantive argument separate from the arguments presented supra with respect to the rejection of independent claim 22, from which claim 34 depends, over the combined teachings of Piper, Robertson, and AAPA. See App. Br. 17-18. Thus, for the same reasons, we sustain the rejection of claim 34 under 35 U.S.C. § 103(a) as unpatentable over Piper, Robertson, AAPA, and Isaza. Claim 37 The Examiner found that the combined teachings of Piper, Robertson, and AAPA disclose all the limitations of independent claim 37 “with the exception of the method of replacing one Y-piece for another Y-piece.” Ans. 9. The Examiner further found that “Isaza teaches a ventilation circuit comprising the ability to detect occlusions and disconnections of the ventilation lines.” Ans. 10 (citing to Isaza, Abstract). The Examiner concluded that it would have been obvious for a person of ordinary skill in the art “to modify the Y-piece of the modified Piper [system in view of Robertson and AAPA] to include the detection and removal of occluded Appeal 2011-005397 Application 11/062,519 16 respiratory lines, as taught by Isaza for enabling proper patient compliance and care.” Id. Appellants argue that in contrast to the claimed method in which “the Y-piece of a functional circuit . . . is replaced” in Isaza “the Y-piece of an occluded circuit is replaced.” App. Br. 18. According to Appellants, the Y- piece of claim 37 that is to be replaced is functional because “‘air is flowing’ at the time the Y piece is replaced.” Id. Thus, Appellants contend that, “[c]laim 37 does not encompass replacing because of a disabled device,” but rather “replacement of a conventional Y-piece with a novel and unobvious Y-piece comprising a particular aerosol generator in the stem.” Id. At the outset, we note that in Isaza, even if the tubing system is occluded, air still flows through the system, albeit at a level lower than a threshold level. Isaza, col. 4, ll. 22-26. Thus, in contrast to Appellants’ position, we see no difference between the occluded tubing system of Isaza and the claimed “first tubing device . . . comprising a lumen through which air in the circuit is flowing.” We further note that the sole difference between the claimed first and second tubing devices, as called for in claim 37, is that the second tubing device includes an “aerosol generator comprising a vibrational element, a dome shaped aperture plate with tapered holes, and lacking both a propellant and a fluid driving element.” However, as set forth supra, the combined teachings of Piper, Robertson, and AAPA disclose a second tubing device, as called for by claim 37. Lastly, we note that the reason to modify a reference may often prompt a person of ordinary skill in the art to do what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same Appeal 2011-005397 Application 11/062,519 17 advantage or result discovered by an applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). In this case, the combined teachings of Piper, Robertson, AAPA, and Isaza disclose replacing an occluded first Y piece with a second Y piece that includes an “aerosol generator comprising a vibrational element, a dome shaped aperture plate with tapered holes, and lacking both a propellant and a fluid driving element,” as called for by claim 37. In conclusion, for the foregoing reasons, we likewise sustain the rejection of claim 37 under 35 U.S.C. § 103(a) as unpatentable over Piper, Robertson, AAPA, and Isaza. The obviousness-type double patenting rejection With respect to the Examiner’s provisional double patenting rejection of claims 22-24, 32, and 33 over claims 1, 5, 12, 27, 28, and 30 of US Application No. 10/430,765, we note that Application No. 10/430,765 has matured into US Patent No. 8,245,708, iss. Aug. 21, 2012. Since a number of claims have been canceled or withdrawn from Application No. 10/430,765, we leave it to the Examiner to determine whether an obviousness-type double patenting rejection over claims 1-6 of US Patent No. 8,245,708 is appropriate in view of these changes. SUMMARY The decision of the Examiner is affirmed as to claims 22-24, 27, 29- 34, and 37-40 and reversed as to claim 26. 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). AFFIRMED-IN-PART Appeal 2011-005397 Application 11/062,519 18 mls Copy with citationCopy as parenthetical citation