Ex Parte Von Schuckmann

Patent Trial and Appeal Board

May 23, 2018

13708053 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/708,053 12/07/2012
98548 7590 05/24/2018
McDonnell Boehnen Hulbert & Berghoff LLP
Sanofi - Aventis
300 South Wacker Drive
Chicago, IL 60606
FIRST NAMED INVENTOR
Alfred Von Schuckmann
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.
11-1177-US-CON 1052
EXAMINER
STUART, COLINW
ART UNIT PAPER NUMBER
3771
MAILDATE DELIVERY MODE
05/24/2018 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 ALFRED VON SCHUCKMANN
Appeal 2016-002880
Application 13/708,053 1
Technology Center 3700
Before EDWARD A. BROWN, ERIC C. JESCHKE, and
SEAN P. O'HANLON, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alfred Von Schuckmann ("Appellant") seeks review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated April 27, 2015 ("Final Act."), rejecting claims 1-6, 8, 9, and 20. We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellant identifies Sanofi SA as the real party in interest. Appeal
Br. 1.
Appeal 2016-002880
Application 13/708,053
BACKGROUND
The disclosed subject matter "relates to an inhaler for powdered,
particularly medical substances." Spec. 1, 11. 3--4. Claim 1, the sole
independent claim on appeal, is reproduced below, with emphasis added:
Reichle
1. An inhaler for a powdered substance,
compnsmg:
a suction air channel leading to a
mouthpiece,
a storage chamber for the substance; and
a linearly movable dosing chamber for
apportioning a specific amount of substance from
said storage chamber and bringing said amount of
substance into a transfer position, for transfer to a
suction air stream,
wherein said dosing chamber is rotationally
moveable in a superposed manner, is disposed
eccentrically in relation to a corresponding axis of
rotation, and
is closed in a radial direction in relation to
the axis of rotation.
EVIDENCE RELIED ON BY THE EXAMINER
US 2,029,835 Feb. 4, 1936
Von Schuckmann Machine Translation of German
Publication DE 101 44 572 Al
Mar. 27, 2003
REJECTION
Claims 1---6, 8, 9, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Von Schuckmann and Reichle.
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Appeal 2016-002880
Application 13/708,053
DISCUSSION
For independent claim 1, the Examiner relied on Von Schuckmann for
certain limitations but stated that "[ t ]he [V]on Schuckmann device is silent
as to the dosing chamber being disposed eccentrically in relation to a
corresponding axis of rotation," as recited in the limitation shown with
emphasis above. Final Act. 3. The Examiner found, however, that "Reichle
teaches a dispensing device which includes a plunger slide with dosing
chamber ( 14 Reichle Fig. 2 for example) which are formed eccentrically
relative to a corresponding axis (see Reichle Fig. 1-2 for example)." Id.
According to the Examiner, it would have been obvious for one of ordinary
skill in the art at the time of the invention
to modify the [V]on Schuckmann device's dosing chamber to
be eccentrically located on its plunger slide (25 [V]on
Schuckmann), as taught by Reichle, in order to improve the
ability of the dosing chamber to pick up the correct amount of
powder for inhalation as such a combination of the [V]on
Schuckmann and Reichle devices would yield predictable
results of improved accurate dosing.
Id. at 3--4; Ans. 3; see also Ans. 6 (stating that the proposed modification is
"based on the rational underpinning that such a combination would improve
the ability of the dosing chamber to pick up the correct amount of substance
due to the modified location of the dosing chamber in combination with the
linear and rotational movement of the dosing chamber"), 10 (stating that the
proposed modification "would improve powder pickup by the dosing
chamber due to the location providing for greater movement by the dosing
chamber in the storage chamber").
We understand the proposed modification to include relocating the
identified dosing chamber in Von Schuckmann (metering chamber 26) from
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Appeal 2016-002880
Application 13/708,053
the axis of rotation of plunger 25 to some location off that axis of rotation, in
view of the location of certain bores 14 in Reichle being off the center line
of shaft 12 in Reichle. See Final Act. 6-7 (stating that Reichle "was relied
upon only for the teaching of an off-center, i.e. eccentrically located[,]
dosing chamber relative to an axis of the dosing plunger (defined by the
center of element 12 in Fig. 2 of Reichle for example)"); see also Ans. 10
(stating that "Reichle was only relied upon for the teaching of dosing
chambers eccentrically located in relation to central axis of element 12 of
Reichle"), 9 ("The modification in view of Reichle merely involved the
location of the dosing chamber 25 [sic - 26] on the plunger slide 26 [sic -
25] of [V]on Schuckmann .... ").
As to the reasoning provided by the Examiner to modify Von
Schuckmann in view of Reichle in the manner discussed above, Appellant
argues that "the Examiner's assertion that an eccentrically located chamber
would improve the ability of the dosing chamber to pick up the correct
amount of substance (see [Ans. 6]) does not come from either cited
reference" and that "[ t ]he only disclosure disclosing an eccentrically located
dosing chamber and the advantage of such is Appellant's disclosure." Reply
Br. 3; see also Appeal Br. 4--5 (presenting arguments relating to the
reasoning statement provided by the Examiner).
Rejections based on obviousness must be supported by "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Although certain aspects of Appellant's arguments incorrectly
imply that an obviousness determination requires an express teaching,
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Appeal 2016-002880
Application 13/708,053
suggestion, or motivation in the prior art (see KSR, 550 U.S. at 418-19), we
agree with Appellant's position that the Examiner has not provided adequate
articulated reasoning to support the legal conclusion of obviousness of
independent claim 1.
We determine that the reasoning provided by the Examiner-"to
improve the ability of the dosing chamber to pick up the correct amount of
powder for inhalation as such a combination of the [V]on Schuckmann and
Reichle devices would yield predictable results of improved accurate
dosing" (Final Act. 4}-does not support the conclusion of obviousness.
The Examiner has not adequately explained why-without the Specification
before us on Appeal-the benefit of "improved accurate dosing" would have
been a ''predictable result[]" of the proposed modification (id. (emphasis
added)). See, e.g., Spec. 16:7-11 (disclosing that "the way in which the
dosing chamber 26 is disposed eccentrically in relation to the axis of rotation
of the plunger slide 25 achieves optimum filling of the same by means of
plunging helically through the mass of substance"); see also id. at 1 :25-2:7
(discussing various alleged benefits of the disclosed configuration).
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 2---6, 8, 9, and 20, which depend from claim 1.
DECISION
We reverse the decision to reject claims 1---6, 8, 9, and 20.
REVERSED
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