Ex Parte Widerstrom

Board of Patent Appeals and Interferences

Jun 26, 2008

09051443 (B.P.A.I. Jun. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARIN WIDERSTROM
____________

Appeal 2007-4164
Application 09/051,443
Technology Center 3700
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Decided: June 26, 2008
____________

Before WILLIAM F. PATE III, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
This is an appeal from the final rejection of claims 1-5 and 7-12.
These are all of the claims in the application.
The copy of the claims appended to Appellant’s brief is incorrect. A
correct Claims Appendix was furnished to the Board by facsimile on May
15, 2008 after the hearing.
Appeal 2007-4164
Application 09/051,443

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We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6 and
§134.
The claimed invention is directed to a disposable inhaler device which
dispenses powdered medicaments into the air stream as the air is inhaled.
The specific feature of Appellant’s invention is that the inhaler comprises
individual containers of medicine, the medicine in the containers being of
different dose sizes.
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A single use inhaler for administering medicament by
inhalation, the inhaler comprising:

an inhalation channel through which a user may inhale;

a first container containing a first dose of medicament;
and
a first release means for releasing said first dose into the
said inhalation channel; wherein the inhaler further comprises:

at least one subsidiary container for containing a
subsidiary dose of medicament;

at least one respective subsidiary release means for
releasing said subsidiary dose into said inhalation channel;
wherein

said first release means is independently operable of said
at least one subsidiary release means such that one or more of
said first dose and said subsidiary dose may be released into
said inhalation channel at the same time and such that a variable
dose is provided and the subsidiary dose of said at least one
said subsidiary container is a predetermined fraction of said
first dose that is less than said first dose.
Appeal 2007-4164
Application 09/051,443

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REFERENCES
The references of record relied upon by the examiner as evidence of
obviousness are:
Gonda 5,743,250 Apr. 28, 1998
Källstrand 5,533,505 Jul. 09, 1996
Goettenauer 5,881,719 Mar. 16, 1999
Goettenauer (as translated) DE 4,400,084 A1 Jul. 06, 1995

REJECTIONS
Claims 1-5, 7, and 8 stand rejected under 35 U.S.C. § 103 as
unpatentable over Goettenauer ‘084 in view of Gonda.
Claims 9-12 stand rejected under 35 U.S.C. § 103 as unpatentable
over Goettenauer ‘719 in view of Gonda.
Claims 1-5, 7, and 8 stand rejected under the judicially created
doctrine of obviousness-type double patenting as unpatentable over claims
1-19 of Källstrand in view of Gonda.
OPINION
For a teaching of an inhaler with differing amounts of medicaments in
each container, the Examiner has cited the Gonda reference. Gonda states in
col. 42, ll. 24-28 that, “[i]n addition to disclosing specific information
regarding the day and time for drug delivery[,] the indices could provide
more detailed information such as the amount of insulin dispensed from each
container which might be particularly useful if the containers included
different amounts of insulin.” We are in agreement with Appellant that this
disclosure is inexact and is susceptible of two different interpretations. The
Appeal 2007-4164
Application 09/051,443

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Examiner interprets the quoted passage to mean that the containers 1 having
collapsible walls 2 which hold the medicament 5 have flexible walls 2 of
different sizes on the same disposable package 46. See, generally, col. 16, l.
66 to col. 18, l. 46 and Fig. 4. Appellant interprets this phrase to mean that
the containers 1, provided in the kit containing the device 40, are provided in
disposable packages 46 with different amounts in the containers of each
disposable package. We agree with the Appellant that the quoted phrase is
amenable to these two different interpretations, and that each interpretation
is as likely to be true as the other interpretation.
Fortunately, the law provides a way out of this conundrum. In the
first instance, the Examiner has the burden of proof of establishing prima
facie obviousness by a preponderance of the evidence. That is, the
Examiner must show that it is more likely than not that the references teach
the features that the Examiner relies upon. In this instance, since it is
equally likely that the Appellant’s interpretation of the reference is correct,
rather than the Examiner’s, the Examiner has not satisfied his burden of a
preponderance of the evidence. Accordingly, we are unable to credit that the
combination of Gottenauer ‘084 and Gonda, would be able, when modified,
to release a first dose and a subsidiary dose into the inhalation channel at the
same time as required by claim 1. Nor would a combination of Gottenauer
‘719 and Gonda be suitable for arranging for the release of a first dose and a
subsidiary dose at the same time as required by the method of claim 9. This
also holds true for the obviousness-type double patenting rejection that relies
on Gonda.

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Application 09/051,443

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On the other hand, when analyzing the method of claim 10 we do not
find therein the simultaneous limitation from claims 1 and 9. Therefore,
even if the containers with different amounts of medicaments were on
different disposable packages 46 as per Appellant’s interpretation of the
quoted phrase of Gonda, the method of claim 10 is still taught by Gonda in
that one disposable package with one amount could be used followed by
another disposable package with another amount in a method of providing a
variable quantity of substances in an administration device. Since Gonda
teaches all of the limitations of claim 10, we will affirm the obviousness
rejection of claim 10 as unpatentable over Goettenauer ‘719 in view of
Gonda, since anticipation is the epitome of obviousness. See in re
McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2003) (quoting Sears Roebuck &
Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Claims 11 and 12 fall with
claim 10.

CONCLUSION
The rejection of claims 1-5 and 7-8 under 35 U.S.C. § 103 as
unpatentable over Goettenauer ‘084 in view of Gonda is reversed.
The rejection of claim 9 under 35 U.S.C. § 103 as unpatentable over
Goettenauer ‘719 in view of Gonda is reversed.
The rejection of claims 10-12 under 35 U.S.C. § 103 as unpatentable
over Goettenauer ‘719 in view of Gonda is affirmed.
The double patenting rejection of claims 1-5, 7 and 8 is reversed.
Appeal 2007-4164
Application 09/051,443

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED-IN-PART

vsh

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