Ex Parte Trautman et alDownload PDFPatent Trial and Appeal BoardDec 15, 201613100924 (P.T.A.B. Dec. 15, 2016) 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. 13/100,924 05/04/2011 Joseph C. Trautman 091500-0397 3943 108547 7590 12/19/2016 McDermott Will & Emery LLP 500 North Capitol Street NW Washington, DC 20001 EXAMINER HALL, DEANNA K ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 12/19/2016 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): mweipdocket @ mwe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH C. TRAUTMAN, DOUGLAS JOSEPH SCOTT BOURNE, ANTHONY LE, ROBERT WADE WORSHAM, and PARMINDER SINGH Appeal 2014-009345 Application 13/100,9241 Technology Center 3700 Before STEFAN STAICOVICI, JAMES P. CALVE, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Joseph C. Trautman et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1, 7—11, 22, and 26-352 under 35 U.S.C. § 102(b) as anticipated by McDonough (US 2006/0253079 Al, pub. Nov. 9, 2006). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Corium International, Incorporated. Br. 1 (filed April 14, 2014). 2 Claims 2—6 have been canceled. Br. 6 (Claims App.). Claims 12—21 and 23—25 have been withdrawn. Id. at 7—9. Appeal 2014-009345 Application 13/100,924 INVENTION Appellants’ invention “relates generally to drug delivery using microneedles or other microprojections, and more specifically to applicators for applying an array of microprojections to the stratum comeum.” Spec. 12. Claim 1, reproduced below, is independent and representative of the claimed invention. 1. An applicator, comprising: a housing having at least one opening and a projection', an actuating member having an external surface for application of a force and being movable between a first position and a second position; a push member having a proximal end including a projection that can be retained by the housing projection', an energy-storing element having a first configuration and second configuration, the energy-storing element being positioned between a lower surface of the housing and a proximal end of the push member; and a skin-contacting member positioned in contact with a distal end of the housing; wherein application of force to the actuating member moves the actuating member from the first position to the second position, thereby to effect release of the push member and corresponding release of the energy-storing element from the first configuration to the second configuration. Appeal Br. 6 (Claims App.) (emphasis added). ANALYSIS Claim 1 is the only independent claim from which claims 7—11, 22, and 26—35 depend, either directly or indirectly. Br. 6—10 (Claims App.). Appellants assert the Examiner’s finding that McDonough anticipates claim 2 Appeal 2014-009345 Application 13/100,924 1 is mistaken because “McDonough fails to teach an applicator with a push member that includes a projection at a proximal end that can be retained by a housing projection.” Id. at 3. For the following reasons, we agree. The Examiner identifies McDonough’s 500/480 elements as the claimed push member, which have a proximal end “including a projection 450 that can be retained by the housing projection.” Final Act. 2. According to the Examiner, paragraph 93 of McDonough supports this finding because it “states that on the interior surface 446 of housing 440, there may be stops or notches to hold springs, gears, and plungers.'” Id. at 4; see also McDonough, Fig. 7. Moreover, the Examiner finds “[wjith the plunger (push member) having stop 450, this projection (stop) would be retained by the projection on the interior surface of the housing as disclosed in [paragraph 93].” Ans. 4. Appellants’ annotated Figure 2A is reproduced below. \ Appellants’ annotated Figure 2 A illustrates an embodiment of the claimed applicator 100 including spring 118, push member 106, housing 104, and projections 112, 114, and 116. Appellants’ Specification states that 3 Appeal 2014-009345 Application 13/100,924 applicator 100, prior to actuation, holds spring 118 in the loaded state between push member 106 and housing 104 with corresponding parts 112, 114, 116 that protrude out of each structure. Spec. 82—83, Fig. 2A. More specifically, as annotated Figure 2A above depicts, the housing’s protrusions 112, 114 provide a surface to rest the corresponding protrusions 116 on the push member 106 and secure the push member from being driven toward the distal end of the housing 108 by spring 118, until actuated by actuator 102. Id. 1 82—83. With this context, a skilled artisan would understand the terms “projection” and “retainer” in claim 21 to carry their plain meaning: “a part that juts out” and “to hold secure or intact,” respectively. Projection Definition, Merriam-Webster.com, http://www.merriam- webster.com/dictionary/projection (last visited on Dec. 7, 2016); Retainer Definition, Merriam-Webster.com, http://www.merriam- webster.com/dictionary/retainer (last visited on Dec. 7, 2016). McDonough’s Figure 7 is reproduced below. FIG. 7 McDonough’s Figure 7 is an illustration of the applicator embodiment the Examiner relies upon. The above figure illustrates element 450 as a “stop,” 4 Appeal 2014-009345 Application 13/100,924 that “is located on the interior surface 446 [of housing 440] toward second end 444 [of housing 440],” which was relied on by the Examiner as the projection of the push member. McDonough, 193. McDonough’s Figure 7 further illustrates rotating/sliding gear and plunger assembly 500/480 that was relied on by the Examiner as the claimed push member. Although McDonough, at paragraph 93, states, “[o]n the interior surface 446 of housing 440, there may be stops or notches to hold springs, gears, and plungers,” the Examiner never explains why that statement about the “housing 440” supports the finding that stop 450 constitutes a projection of push member 500/480, nor does the Examiner explain how stop 450 can be used by housing 440 to hold secure push member 500/480. In fact, it does not appear McDonough’s push member 500/480 is ever “retained.” To the contrary, McDonough describes push member 500/480 as translating in one direction, when a user “gently pushes” the applicator into the skin, and as automatically translating in the opposite direction when it is removed from the skin. See McDonough, || 95—108. In other words, spring 484 is never held in a compressed state by securing push member 500/480 push member against housing 440 using stop 450. A preponderance of the evidence, therefore, does not support the Examiner’s finding McDonough discloses an applicator with “a push member having a proximal end including a projection that can be retained by the housing projection,” as claim 1 requires. As a result, we do not sustain the Examiner’s anticipation rejection of claims 1, 7—11, 22, and 26—35. 5 Appeal 2014-009345 Application 13/100,924 SUMMARY The Examiner’s rejection of claims 1, 7—11, 22, and 26—35 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation