Ex Parte Waring et al

Board of Patent Appeals and Interferences

Mar 16, 2011

09341821 (B.P.A.I. Mar. 16, 2011)

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.
09/341,821 09/01/1999 MICHAEL J. WARING CV0244 5635
26079 7590 03/16/2011
CONVATEC INC.
100 HEADQUARTERS PARK DRIVE
SKILLMAN, NJ 08558
EXAMINER
GHALI, ISIS A D
ART UNIT PAPER NUMBER
1611
MAIL DATE DELIVERY MODE
03/16/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL J. WARING and ELIZABETH JACQUES
____________

Appeal 2010-012392
Application 09/341,821
Technology Center 1600
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-012392
Application 09/341,821

This is a decision on the appeal under 35 U.S.C. § 134 by the Patent
Applicant from the Patent Examiner’s final rejection of the claims. The
Board’s jurisdiction for this appeal is under 35 U.S.C. § 6(b). We affirm.

Background
The claims involve a self-sealing barrier aerosol vessel comprising
multiple doses of a wound gel. Claims 5, 6, 8-10, 14, 15, and 18-20, which
are all the pending claims, stand rejected under 35 U.S.C. § 103(a) as
obvious in view of the ‘081 publication,2 the ‘521 patent,3 and the ‘223
patent.4 Claim 5 is representative and reads as follows:
5. A self-sealing barrier aerosol vessel, under positive pressure,
which minimizes contamination, containing multiple doses of a
wound gel for the treatment of wounds wherein the gel
comprises:
(a) from about 0.05% to 10% by weight of a natural
gelling agent;
(b) from about 1.0 % to 10% by weight of a
hydrocolloid;
(c) from about 5.0% to 30.0% by weight of an alkylene
glycol; and
(d) at least 50% by weight of water.

Issue
Did the ordinary skilled worker have a reason to use the aerosol vessel
described in the ‘521 patent for the gel disclosed in the ’081 publication?

2 Court, EP 0 666 081 A1 published Aug. 9, 1995.
3 Laauwe, U.S. Patent No. 3,788,521 issued Jan. 29, 1974.
4 Jass, U.S. Patent No. 3,976,223 issued Aug. 24, 1976.
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Application 09/341,821

3
Principles of Law
Two criteria are relevant in determining whether prior art is
analogous: “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.”
Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir.
2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir.
1992)). Whether a reference in the prior art is “analogous” is a
fact question. In re Clay, 966 F.2d at 658.
Wyers et al. v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010).

Findings of Fact (FF)

Specification
The Specification discloses:
1. The “invention provides a barrier aerosol vessel containing a wound gel”
(Spec. 2: 12-13).
2.
Aerosol barrier vessels are of the type where the product to be
dispensed and the pressure generating media, ie [sic] the
propellant, are maintained in isolation through separation on
opposite sides of a barrier. This has many advantages in the
context of wound gels. Firstly, because there is positive
pressure in the container, the vessel can be made to be self-
sealing. This aids maintenance of product sterility.
(Id. at 2: 14-21).
3.
In a second variant of an aerosol barrier vessel, a flexible
collapsible inner container is affixed within an outer container
opening either to the aerosol discharge valve or to the bead of
the container opening. Patents which illustrate a barrier vessel
Appeal 2010-012392
Application 09/341,821

4
of this variant are described in US 3,788,521 [the cited ‘521
patent], 3,896,970 and 4,067,499.
(Id. at 3: 9-14.)

‘521 Patent
4. The ‘521 patent describes an aerosol package that comprises a rigid
container, a dispensing valve, and a collapsible flexible container inside the
rigid container (Abstract).
5. The collapsible flexible container contains an extrudable liquid product in
which a liquified compressed gas is dissolved or dispersed (id.).
6. A liquified compressed gas propellant, with a vapor pressure higher than
that of the product’s liquified gas, is in the rigid container outside of the
flexible container (id.).
7. The product is extruded under pressure of the propellant through the
valve (id.).
8. The ‘521 patent describes its aerosol package for shaving cream and hair
coloring foam formulations (col. 7, ll. 11-18), but such uses are not
described in the Abstract or the “Summary of the Invention.”

‘223 Patent
9. The ‘223 patent describes the use of the aerosol package to dispense a
“strippable gel bandage” for burn treatment (id. at col. 9, l. 16 to col. 10, l.
29).
Analysis
The claimed invention is directed to a “self-sealing barrier aerosol
vessel” containing multiples doses of a wound gel. The gel comprises four
Appeal 2010-012392
Application 09/341,821

5
components: a natural gelling agent, a hydrocolloid, an alkylene glycol, and
water.
The only difference between the claimed invention and the ‘081
publication is that the gel of the claimed invention is packaged in a self-
sealing barrier aerosol vessel, but the same gel in ‘081 is in the form of a
dressing (Ans. 3-4). However, the ‘521 patent describes a pressurized
container (FF3-FF7) acknowledged in the Specification to be an aerosol
barrier vessel (FF3). Based on the description of self-sealing in the
Specification (FF2), the Examiner found that the ‘521 container was also
self-sealing (Ans. 4). The Examiner concluded that it would have been
obvious to place the wound composition of the ‘081 publication into the
‘521 barrier aerosol vessel, “motivated by the teaching of US ‘521 that the
discharged product from such as [sic, an] aerosol [vessel] has a uniform
density and maintained a predetermined physical characteristic all the life of
the package” (id. at 6). The Examiner also found that the positive pressure
inside the self-sealing barrier vessel would maintain sterility of the product
in the vessel (id.).
Appellants contend:
• the container in the ‘223 patent is not self-sealing, only the lower
chamber of the ‘223 patent is pressurized; the ‘223 patent does not avoid the
problem of gel contamination during use (App. Br. 4); and
• the ‘521 patent does not teach delivering a gel and has different
requirements from the claimed invention; the skilled worker would not have
put a wound gel in the hair coloring and shaving cream container of the ‘521
patent (id. at 4-5).
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Appellants’ arguments are not persuasive. The Examiner cited the
‘223 patent for its teaching of a wound gel in an aerosol container (FF9),
providing motivation to have placed the ‘081 gel in the aerosol vessel of the
‘521 patent (Ans. 5). The Examiner’s determination that “the art recognized
at the time of the invention that wound dressing gel can be delivered from an
aerosol package” was therefore supported by the teachings of the ‘223 patent
(id.).
The ‘521 patent taught a self-sealing aerosol barrier package as in
claim 5. Consequently, Appellants’ argument about the differences between
the claimed aerosol package and that of the ‘223 patent are not persuasive
because the latter patent was relied upon for motivation, not the specifics of
the claimed container. Moreover, because the ‘521 aerosol barrier device
utilized positive pressure to extrude its product (FF6 & FF7), the Examiner
reasonably found it would avoid contamination of the product inside the
vessel (FF2; Ans. 5).
We are not persuaded that the ‘521 patent is deficient because it does
not describe delivering a gel and because it is non-analogous art. The ‘521
patent discloses shaving cream and hair color formulations in its aerosol
package (FF8), but its disclosure is not limited to these uses. Rather, there is
a more general description of the aerosol package without any apparent
restriction to a specific product (FF4 & FF8).
Furthermore, even were the ‘521 patent in a different field of
endeavor from the claimed invention (shaving/hair formulations versus
wound gels), it would still be reasonably pertinent – and therefore analogous
prior art – because the ‘521 patent describes the same general class of
aerosol devices as in the claimed invention and the devices perform the same
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Application 09/341,821

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function in dispensing product. Wyers, 616 F.3d at 1237. Consequently, the
skilled worker, seeking to deliver a wound gel by aerosol – as taught by the
‘223 patent (Ans. 5; FF9) – would have considered the aerosol of the ‘521
patent relevant to the problem addressed by the claimed invention.
For the reasons stated above and those set forth in the Examiner’s
Answer, we affirm the rejection of claim 5. Claims 6, 8-10, 14, 15, and 18-
20 were not separately argued and therefore fall with claim 5. 37 C.F.R. §
41.37(c)(1)(vii).

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

bim

CONVATEC, INC.
100 HEADQUARTERS PARK DRIVE
SKILLMAN, NJ 08558