Ex Parte Sullivan et al

Patent Trial and Appeal Board

Oct 20, 2016

13191315 (P.T.A.B. Oct. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/191,315 07/26/2011
21586 7590 10/24/2016
VINSON & ELKINS, L.L.P.
FIRST CITY TOWER
1001 FANNIN STREET, SUITE 2500
HOUSTON, TX 77002-6760
FIRST NAMED INVENTOR
Timothy R. Sullivan
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.
MYS300/4-004DIVCONUS/1600 3854
EXAMINER
CHEUNG, CHUN HO!
ARTUNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
10/24/2016 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):
IPTLdocket@velaw.com
tcorder@velaw.com
sbrown@velaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY R. SULLIVAN
and JEFFREY NELSON
Appeal2015-001050
Application 13/191,315
Technology Center 3700
Before JAMES P. CALVE, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 and 3-10. Appeal Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
Appeal2015-001050
Application 13/191,315
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal, is reproduced below.
1. An internally pierced formed blister comprising:
a blister formed from a stretched flexible film material
into a recess with an open end;
a piercable surface sealed to the open end of the blister to
form an internal chamber enclosed by the formed recess; and
a piercing nozzle wholly contained in the internal
chamber, the piercing nozzle comprising a base, a tapered
hollow elongated body, projecting from the base at a first end,
and forming an internal channel and a discharge nozzle at a
second end opposite the base, and comprising structural
features on the surface of the internal channel to control the
spray pattern and droplet size of a fluid forced to flow through
the piercing nozzle under pressure, and one or more inlet
openings and channels providing a fluid path from the internal
chamber through the base and into the internal channel of the
piercing nozz 1 e and out the discharge nozz 1 e.
REJECTIONS
Claims 1and3-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dunmire (US 2,769,443, iss. Nov. 6, 1956) and Taylor-
McCune (US 6,481,645 Bl, iss. Nov. 19, 2002).
Claims 1 and 3-10 are rejected for obviousness-type double patenting
over U.S. Patent No. 8,047,204 and Dunmire.
ANALYSIS
Claims 1 and 3-10 as unpatentable over Dunmire and Taylor-McCune
The Examiner found that Dunmire discloses a blister 1, as claimed,
including a piercable surface (flat lower end wall 7) and piercing nozzle
(hypodermic needle 10), but lacks a nozzle with structural features on an
internal channel surface. Final Act. 3--4. The Examiner found that Taylor-
McCune teaches a nozzle 10 with these features. Id. at 4.
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Appeal2015-001050
Application 13/191,315
The Examiner determined that it would have been obvious to modify
the nozzle of Dunmire with the nozzle inner surface and structural features
of Taylor-McCune. Id. The Examiner found that the invention is drawn to a
dispensing device, and Dunmire teaches a similar structure with a dispensing
nozzle to dispense a medical component, and Taylor-McCune discloses a
dispensing nozzle with the specific dispensing structure claimed. Ans. 3--4.
The Examiner's reason for modifying nozzle 10 of Dunmire with the
internal surface structures of the nozzle of Taylor-McCune is not supported
by a rational underpinning. The Examiner did not explain sufficiently why a
skilled artisan would have modified the smooth internal channel surface of
Dunmire's needle 10 to include the internal structures of Taylor-McCune's
condiment nozzle. See Appeal Br. 10-12. Dunmire teaches a device with
hypodermic needle 10 including sharply pointed end 13 and hollow shank 11
with no internal structures. Dunmire, 3:34--37, Figs. 1-21. Dunmire teaches
that "it is essential to employ a needle design which can be produced at a
minimum cost while being capable of efficient and reliable operation." Id.
at 4:34--39, 40--41 ("It is also essential that the needle be easily sterilized
both inside and out."). Dunmire teaches that the needle can be formed in a
simple manner from a single flat sheet. Id. at 5:48-74, Figs. 8-10. In
addition, Dunmire teaches that the needle can be formed from tubing or a
channel. Id. at 6:75-7:20, Figs. 14, 15, 16, 17. None of these embodiments
teaches or suggests an inner channel with additional structural features.
The Examiner's finding that Dunmire teaches ramps and structure on
an internal channel of a nozzle (Ans. 3) is not supported by a preponderance
of evidence. Channels 23 and web 36 are located externally of the internal
channel the nozzle. Dunmire, 4:57-5:34, Figs. 7, 8; see Reply Br. 3---6.
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Appeal2015-001050
Application 13/191,315
Moreover, Taylor-McCune teaches the placement of structure on an
internal channel of a nozzle as a flow disrupter that "acts to reduce pressure
in the condiment flow (and also preferably to reduce flow speed) for better
... condiment discharge control." Taylor-McCune, 6:66-7:4. Although the
flow disrupter can take different forms (id. at 7:4--7, Figs. 2--4), the purpose
is the same - to disrupt the condiment flow through the nozzle so condiment
is discharged more slowly. The Examiner has not explained why a skilled
artisan would have been motivated to disrupt the flow of medicine through
the needle of Dunmire when Dunmire' s design allows medicament to flow
freely to the end of the needle and through shank 11 as shell 1 is collapsed.
Dunmire, 3:56-72; see Appeal Br. 10; Reply Br. 3-5.
Thus, we do not sustain the rejection of claims 1 and 3-10.
Claims 1 and 3-10 for double patenting over US 8, 047,204 and Dunmire
The Examiner rejected claims 1 and 3-10 for obviousness-type double
patenting over claims 1-7 of U.S. Patent No. 8;047;204 and Dunmire. Final
Act. 5---6. Appellants filed a Terminal Disclaimer to overcome that rejection
on May 27, 2014. Appeal Br. 12-13. The Terminal Disclaimer was
approved on May 28, 2014. Although the Examiner maintained all of the
grounds of rejection set forth in the Final Action (Ans. 2), the Examiner does
not dispute Appellants' contentions regarding the Terminal Disclaimer.
Thus, we do not sustain the rejection of claims 1 and 3-10 on this ground.
DECISION
We REVERSE the rejections of claims 1 and 3-10.
REVERSED
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