Ex Parte Urbanus

Board of Patent Appeals and Interferences

Mar 26, 2007

10836174 (B.P.A.I. Mar. 26, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID URBANUS
__________

Appeal No. 2007-0671
Application No. 10/836,174
__________

ON BRIEF
__________

Before ADAMS, MILLS, and GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1-16, which are all the claims pending in the
application.
Claims 1, 2, and 5 are illustrative of the subject matter on appeal and are
reproduced below:
1. A disposable medication dispenser comprising, in combination,
a canister for storing medication,
an electronic circuit for displaying the number of doses
remaining in said canister, and
a housing for said electronic circuit permanently attached to said
canister whereby said housing and said electronic circuit are discarded
with said canister when the medication in said canister have been
depleted.
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Application No. 10/836,174

2. A disposable medication dispenser as set forth in claim 1 wherein said
disposable medication dispenser is an inhaler and wherein said
housing permanently attached to said canister defines a mouthpiece
through which said medication is dispensed, and wherein said
electronic circuit includes a numerical display positioned on the exterior
of said housing above said mouthpiece for direct viewing by a user of
said dispenser when said mouthpiece is brought to the user’s mouth.

5. A disposable medication dispenser as set forth in claim 1 wherein said
electronic circuit includes one or more count presetting switches for
presetting a count in said electronic circuit at the time said housing and
said canister are combined during initial assembly.

The references relied upon by the examiner are:
Mishelevich et al. (Mishelevich) 5,363,842 Nov. 15, 1994
Wolf 5,809,997 Sep. 22, 1998

Merriam-Webster’s Collegiate Dictionary (Dictionary), p. 865 (10th ed., Merriam-
Webster, Inc. 1998)1

GROUNDS OF REJECTION
Claims 1, 2, 6, 10, 11, and 13-16 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Wolf.
Claims 2-4, 7-9, and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Wolf and Mishelevich.
We reverse the rejection under 35 U.S.C. § 102(b). We vacate the
rejection under 35 U.S.C. § 103 and remand the application to the examiner for
further consideration.

1 We were unable to locate this reference in the electronic file. Nevertheless, we were able to
locate a copy of the reference outside of the record. Accordingly, we have attached a copy of the
reference to this opinion.

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Application No. 10/836,174

DISCUSSION
Claim Construction:

To assist in our discussion of appellant’s claimed invention we reproduce
appellant’s figure 3 below:

Appellant’s claim 1 is drawn to a disposable medication dispenser. The
dispenser comprises the following three components in combination:
1. a canister 7 for storing medication,

2. an electronic circuit 2, 3, 4, 5, 6, and 132 for displaying the
number of doses remaining in said canister, and

3. a housing 1 for the electronic circuit.

In addition, claim 1 requires that the housing for the electronic circuit is
permanently attached to the canister. Claim 1 defines “permanent” to mean that
when the medication in the canister is depleted the entire dispenser (including
the housing, electronic circuit and canister) is discarded. Appellant’s

2 According of paragraph 32 of appellant’s specification, “the electronic components include[d] an
LCD screen [2], a populated printed circuit board (PCB) [3], a custom microprocessor [4], an
activation switch [5], an audio buzzer [6], and a battery [13].”

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Application No. 10/836,174

specification provides further insight into how the components of the dispenser
are permanently attached. Specifically, appellant discloses (specification,
paragraph 31) that “[t]he canister [7] includes a nozzle [93] which is received in
and permanently held by an atomizing socket [10]. When the content of the
canister [7] is depleted, the canister and the housing, along with the electronic
counting circuitry . . . are discarded.”
According to the examiner (Answer, page 3), appellant has not limited the
definition of the phrase “permanently attached.” Therefore, the examiner looked
to the Dictionary for a definition of “permanent.” Id. According to the examiner
(id.), the Dictionary defines “permanent” as “continuing or enduring without
fundamental or marked change . . . .” From this the examiner concludes “when
the canister is housed inside the housing it is permanently attached to the
housing as per the broadest reasonable interpretation per dictionary definition.”
We disagree with the examiner’s finding. Instead, we agree with appellant (Brief,
page 4), the examiner’s interpretation of the term “permanent” is in conflict with
the definition the examiner relies upon.
In our opinion, simply placing a canister in a housing does not necessarily
provide for a permanent attachment of the canister to the housing. Instead, it
simply means that the canister is in a housing. Therefore, we find the examiner’s
construction of the phrase “permanently attached” insufficient as it says nothing

3 Appellant’s specification does not identify component “9”. As we understand the figures,
element “9” refer to the nozzle. We will proceed with our deliberations with this understanding of
the figures. We encourage both the examiner and appellant to work together to carefully review
the specification and figures to insure that all numbered elements in the figures are accounted for
in the specification.

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Application No. 10/836,174

with regard to whether the canister is removable or permanently attached to the
housing. In contrast, according to appellant’s claimed invention, the canister
must be permanently attached to the housing. As discussed above, appellant’s
specification discloses how the canister may be permanently attached, e.g., the
canister 7 includes a nozzle which is received in and permanently held by an
atomizing socket 10. Specification, paragraph 31. This attachment is such that
when the canister is empty the entire dispenser is discarded. Stated differently,
the canister cannot be removed to allow the housing to be reused with a different
canister.
Claims 2-12 ultimately depend from and further limit the components of
claim 1. Of claims 2-12, claims 5-12 require closer inspection. The examiner
“asserts that [a]ppellant’s [c]laims 5-12 are directed towards product-by-process
claims rather than product claims itself [sic]” Answer, page 10, emphasis
removed. According to the examiner (id., emphasis removed),
[i]n [c]laim 5, [a]ppellant recites the “electronic circuit includes one
or more count presetting switches for presetting a count in said
electronic circuit at the time said housing and said canister are
combined during initial assembly. Appellant’s use of the recited
claim language recites not only a structural element or product “the
presetting switches” but also a process by which the device or
product is to be assembled “combined during initial assembly.” As
such, [a]ppellant has essentially recited a process by which the
product is to be assembled rather than an end product itself.

For his part, appellant argues that claims 5-12 contain limitations that are
not product-by-process limitations and cannot be ignored.” Brief, page 8-9. We
agree. Claim 5 depends from and further limits the electronic circuit of claim 1.
Specifically, claim 5 requires that the electronic circuit includes one or more

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Application No. 10/836,174

count presetting switches for presetting a count in the electronic circuit at the
time the housing and canister are combined during initial assembly. Claim 6
depends from and further limits the switches of claim 5. Specifically, claim 6
requires that the one or more switches are positioned within the housing and are
inaccessible to a user of the dispenser after the dispenser as been assembled.
While claims 7-12 do not contain the term “assembly” or “assembled”, they
depend directly or indirectly from claim 5.
The examiner appears to be of the opinion that because the phrase
“during initial assembly” appears in claim 5 and the term “assembled” appears in
claim 6 the claims must be drawn to a process of assembling the claimed
dispenser. See Answer, page 10, wherein the examiner states “[a]ppellant’s use
of the recited claim language recites not only a structural element or product ‘the
presetting switches’ but also a process by which the device or product is to be
assembled ‘combined during initial assembly.’” We disagree.
Claim 5 simply further limits the electronic circuit of claim 1 to include one
or more count presetting switches for presetting a count in the electronic circuit at
the time the housing and canister put together. Stated differently, the electronic
circuit has at least one switch. The purpose of the switch is to preset a count in
the electronic circuit when the housing and canister are put together. Why? So
that the proper number of doses are reported on the display for the particular
medicament in the canister. See, e.g., specification, paragraph 39,
[t]he manufacturer of the medication canister prints the amount of
doses of medication on the canister [7] label. A special sequence
of pressing the set switches [28], [29], [30] at the time of assembly

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Application No. 10/836,174

activates the LCD screen [2] to display the correct number of doses
[15] in the medication canister [7]. The presetting switches [28],
[29], [30] on the PCB board [3] permit the electric counting circuitry
to be assembled with canisters of different capacity; thereby
forming factory preset disposable dispenser of different capacities.

Neither claim 5, nor claim 6 require that any processing step be taken or that any
particular component be produced in a particular manner (e.g., molded or die-
casted). To the contrary, claims 5 and 6 and their dependent claims simply
further define the structure of the dispenser and how the components are to be
used. Accordingly, we agree with appellant that the limitations of claims 5-12 are
not product-by-process limitations and they cannot be ignored. Brief, page 8-9.

Anticipation:
Claims 1, 2, 6, 10, 11, and 13-16 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Wolf. To assist in our discussion of Wolf we have reproduced
Wolf’s figures 13, 14 and 17a below:

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Application No. 10/836,174

According to the examiner (Answer, page 4),

Wolf teaches a disposable medication dispenser (Figs. 12-17c)
comprising, in combination, a canister 1590[ ]for storing medication,
an electronic circuit 1200 for displaying the number of doses
remaining in said canister, and a housing 1210 for said electronic
circuit permanently attached to said canister whereby said housing
and said electronic circuit are discarded with said canister when the
medication in said canister have [sic] been depleted.

Contrary to the examiner’s assertion, Wolf does not teach a device wherein the
housing for the electronic circuit is permanently attached to the canister so that
the housing, electronic circuit, and canister are discarded with the medicine in the
canister is depleted. Instead, as appellant correctly points out (Brief, page 3),
“Wolf teaches a dispenser that uses a replaceable canister rather than a canister
permanently attached to the dispenser housing as claimed.” Specifically, Wolf
teaches an apparatus into which a
patient then inserts a prescribed drug in its manufacturer’s actuator
dispenser package (which has attached “piggyback” to it the
apparatus of the present invention). . . . The patient may change
out depleted drug dispenser packages as needed and replace with
new ones. The apparatus of the present invention even records
this event.

Wolf, column 3, lines 51-61. As Wolf explains (column 17, lines 8-12), “[t]he
accessory chronology 1200 is attached to the adaptable housing 1210 via a snap
latch system 1470. There are two each snap latches 1470. There are two each
snap latches 1470 on both sides of the housing 1410 to securely hold the
assembly between the devices 1200 and 1210.” In our opinion, the ability of
Wolf’s device to record when a patient changes out depleted drug dispenser
packages (e.g., canisters) is hardly consistent with the requirement in appellant’s

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Application No. 10/836,174

claimed invention that the housing and electronic circuit are discarded with the
canister when the medication in the canister is depleted. To the contrary, it
serves only to emphasize that Wolf’s device is reusable and not permanently
attached to the canister as opposed to the non-reusable (e.g. permanently
attached and disposable) device set forth in appellant’s claimed invention.
We disagree with the examiner’s construction of appellant’s claims to read
on a device that is “capable of being discarded in its entirety once the contents of
the canister have been depleted.” Answer, page 9, emphasis added. This
reading of appellant’s claim infers that appellant’s device is “capable of” being
reused as in Wolf. This is, however, not what appellant has disclosed or claimed.
The phrase “capable of” does not appear in appellant’s claims. To the contrary,
both appellant’s specification and claims make very clear that the whole device is
discarded when the medication in the canister is depleted. See, e.g., appellant’s
specification, paragraph 15, wherein appellant discloses that “[i]n accordance
with the invention, the disposable canister housing and the canister and counting
electronics which are contained in the housing, are simply discarded when the
contents of the canister are depleted.”
We recognize the examiner’s assertion that appellant’s specification does
not disclose the type of “adhesive, sealing, locking or latching means that would
inhibit or retain the canister ‘permanently’ inside the housing to the point at which
the unit would become dysfunctional and/or the canister would be destroyed, if
removed.” Answer, page 10. However, in our opinion, this assertion has little, if
any, bearing on the appellant’s claimed invention. There is no requirement in

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Application No. 10/836,174

appellant’s claimed invention that the canister is attached in such a manner that
“the unit would become dysfunctional and/or the canister would be destroyed, if
removed.” Accordingly, we are not persuaded by the examiner’s assertion.
“Under 35 U.S.C. § 102, every limitation of a claim must identically appear
in a single prior art reference for it to anticipate the claim.” Gechter v. Davidson,
116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). For the
foregoing reasons, it is our opinion that the examiner failed to demonstrate that
every limitation of appellant’s claimed invention is taught by Wolf. Accordingly,
we reverse the rejection of claims 1, 2, 6, 10, 11, and 13-16 under 35 U.S.C.
§ 102(b) as anticipated by Wolf.

Obviousness:
Claims 2-4, 7-9, and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Wolf and Mishelevich.
According to the examiner (Answer, page 7),
Wolf teaches essentially all of the limitations including said
disposable medication dispenser is an inhaler 1590 [and] wherein
said housing permanently attached to said canister defines a
mouthpiece 1585 through which said medication is dispensed, and
wherein said electronic circuit includes a numerical display 1420
positioned on the exterior of said housing . . . .

According to the examiner (id.), Wolf differs from appellant’s claimed invention in
that the numerical display 1420 is not positioned above the “mouthpiece for direct
viewing by a user of said dispenser when said mouthpiece is brought to the
user’s mouth.” For the reasons set forth above under the heading “anticipation,”

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Application No. 10/836,174

we disagree with the examiner’s findings with regard to Wolf. In short, Wolf does
not teach a housing for the electronic circuit permanently attached to said
canister.
The examiner relies on Mishelevich to teach “an inhaler with an electronic
circuit wherein the display is position on the exterior about the mouthpiece so
that the patient may receive feedback and view the effectiveness of the use of
the device while the device is in use.” (Id.) As presented to us for review,
Mishelevich fails to make up for the deficiencies in Wolf as discussed above
under the heading “anticipation.”
The examiner makes no attempt to address the arrangement of the
canister and the housing for the electronic circuit in Mishelevich’s device, or how
these structural features relate to appellant’s or Wolf’s device. Specifically, the
examiner fails to address whether or not Mishelevich discloses a device wherein
the housing for the electronic circuit is permanently attached to the canister, as
required by appellant’s claimed invention. For his part, appellant does not
address the Mishelevich reference.
Accordingly, we vacate the rejection of claims 2-4, 7-9, and 12 under
35 U.S.C. § 103 as being unpatentable over the combination of Wolf and
Mishelevich, and remand the application to the examiner for further
consideration. Upon receipt of the application, we encourage the examiner to
take a step back and reconsider appellant’s claimed invention. In doing so, the
examiner should pay particular attention to the foregoing discussion addressing
the requirement in appellant’s claimed invention that the housing for the

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Application No. 10/836,174

electronic circuit is permanently attached to the canister so that the whole device
will be discarded when the medication in the canister is depleted. Then we
encourage the examiner to consider Mishelevich, and any other available prior
art4 alone or in combination teach or suggest a device having the requirements of
appellant’s claimed invention.
REVERSED-IN-PART, VACATED-IN-PART, and REMANDED-IN-PART

)
Donald E. Adams )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
Demetra J. Mills ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
Lora M. Green )
Administrative Patent Judge )

4 In this regard, we note that appellant’s specification discloses that “[t]he electronic circuitry may
be the same as the circuitry described in . . . Samiotes et al.[,] Patent [No.] 5,505,192, permitting
the PCB [3] and its components to be used in the dispenser shown in that patent or in the
“disposable” dispenser contemplated by the present invention.”

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Application No. 10/836,174

Charles G. Call
68 Horse Pond Road
West Yarmouth, MA 02673-2516