Ex Parte Wissink et al

Patent Trial and Appeal Board

Aug 28, 2017

11885807 (P.T.A.B. Aug. 28, 2017)

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.
11/885,807 05/12/2008 Jeroen Mathijn Wissink KN-120 8845
20311 7590 08/30/2017
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
EXAMINER
YOUNG, RACHEL T
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROEN MATHIJN WISSINK, WIETZE NIJDAM,
IWAN RUTGER HESKAMP, and MARC HERMAN PADBERG
Appeal 2015-0058701
Application 11/885,807
Technology Center 3700
Before LINDA E. HORNER, STEFAN STAICOVICI, and JILL D. HILL,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeroen Mathijn Wissink et al. (“Appellants”) seek our review under
35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1-24. Final
Office Action (September 16, 2014) (hereinafter “Final Act.”). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants name Medspray Xmems BV as the real party in interest.
Appeal Brief 2 (January 12, 2015) (hereinafter “Appeal Br.”).
Appeal 2015-005870
Application 11/885,807
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “an inhaler with a
mixing channel for producing an aerosol to be inhaled.” Spec. 1. Claim 1 is
the sole independent claim on appeal and is reproduced below.
1. An inhaler with a mixing channel (1) for producing
an aerosol to be inhaled, where the mixing channel has:
an outlet (9) at one end that can be inserted in the mouth
of a person in order to inhale the aerosol that is produced;
at least one inlet (3) at its other end for drawing air into the
mixing channel (1); and
at least one injection zone (6) that lies between the inlet
(3) and the outlet (9) and forms part of the channel wall, where
the injection zone (6) has at least one nozzle orifice (10) in the
channel wall for supplying a liquid,
wherein an inner surface of the injection zone (6) is
substantially flush at least with a portion of a mean surface
curvature (22) of an inner surface of the channel wall (11) that is
adjacent to it on the inlet end,
where a possible height difference (17) between the inner
surface of the injection zone (6) and that portion of the mean
surface curvature (22) of the inner surface of the channel wall
(11) that is adjacent to it is less than 1 mm or at most 100 pm or
at most 20 pm,
wherein the nozzle orifice defines a single lumen opening
so that only the liquid passes through the orifice into the mixing
channel in the form of one jet of dispersed droplets (13) per
nozzle orifice (10) so as to entrain the droplets (13) with the
stream of intake air and keep them separated in an end zone (8)
between the injection zone (6) and the outlet (9) after the droplets
(13) have been mixed with the stream of air to form the aerosol,
the channel wall only having the at least one single lumen
nozzle orifice for the liquid, wherein the at least one single lumen
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Application 11/885,807
nozzle orifice has a peripheral edge contiguous with the channel
wall.
Appeal Br. 10-11 (Claims Appendix).
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1-3, 5, 6, 10, 12, 13, 15, and 16 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Schmidt et al.
(DE 43 06 458 Al, published September 15, 1994) (“Schmidt”),
Jones, Jr. et al. (US 5,724,986, issued March 10, 1998) (“Jones”),
and Ottolangui (US 2004/0035417 Al, published February 26,
2004) (“Ottolangui”).
2. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Schmidt, Jones, Ottolangui, and Gabrio et al. (US 6,615,826
Bl, issued September 9, 2003) (“Gabrio”).
3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Schmidt, Jones, Ottolangui, Thomlinson et al. (US
2005/0011524 Al, published January 20, 2005), and Abrams et al.
(US 2003/0041859 Al, published March 6, 2003) (“Abrams”).
4. Claims 8, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schmidt, Jones, Ottolangui, and Sayer
(US 4,148,308, issued April 10, 1979) (“Sayer”).
5. Claims 9, 10, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schmidt, Jones, Ottolangui, and Johansson et al.
(US 5,755,218, issued May 26, 1998) (“Johansson”).
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Application 11/885,807
6. Claims 11, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schmidt, Jones, Ottolangui, and Howlett
(US 6,341,603 Bl, issued January 29, 2002) (“Howlett”).
7. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Schmidt, Jones, Ottolangui, and Snyder et al.
(US 2005/0005929 Al, published January 13, 2005) (“Snyder”).
8. Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Schmidt, Jones, Ottolangui, and Allsop (US 7,793,806 B2,
issued September 14, 2010) (“Allsop”).
9. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schmidt, Jones, Ottolangui, and Riccio
(US 3,923,202, issued December 2, 1975) (“Riccio”).
ANALYSIS
First Ground of Rejection: Claims 1—3, 5, 6, 10, 12, 13, 15, and 16 as
unpatentable over Schmidt, Jones, and Ottolangui
Independent claim 1 recites that the injection zone of the mixing
channel forms part of the channel wall and “has at least one nozzle orifice
(10) in the channel wall for supplying a liquid.” Appeal Br. 23 (Claims
Appendix). The Examiner finds that Schmidt discloses in Figure 3 “a
mixing channel (located just below 17)” but is silent as to the mixing
channel having an outlet and an inlet. Final Act. 3. The Examiner proposes
to modify Schmidt’s mixing channel, based on the teaching of Jones, to add
an inlet and an outlet “for the purpose of providing additional air to entrain
the aerosol and a suitable mouthpiece.” Id. According to the Examiner, as
modified, Schmidt’s “mixing channel includes an injection zone (at 10
Schmidt) that lies between the inlet and the outlet and forms part of the
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Application 11/885,807
channel wall having a nozzle orifice (opening to 17 Schmidt) in the channel
wall for supplying a liquid.” Id.2 * * 5
Appellants argue that the Examiner erred in finding that Schmidt
discloses in Figure 3 a mixing channel located below liquid nozzle 17.
Appeal Br. 16. Appellants contend that Schmidt’s mixing channel 2 is
shown to be separate from the injection zone 10. Id. Appellants further
contend that Figure 3 shows a modified embodiment of Figure 2 and does
not show mixing channel 2 located just below liquid nozzle 17. Id. As such,
Appellants argue that “the injection zone is not arranged in the channel wall”
in Schmidt. Id.
The Examiner responds that the pre-chamber area 18 below nozzle 17
in Schmidt is for mixing medicament and gas and is, thus, a mixing channel.
Further, the Examiner proposes to modify Schmidt to eliminate pre-chamber
18 and provide a flow channel as seen in Jones, such that the apparatus, as
modified, would result in the injection zone arranged in the channel wall.
Ans. 17.
Appellants respond that if one having ordinary skill in the art were
led, based on the teachings of Jones, to eliminate pre-chamber 18 of
Schmidt, then they also would be led to position the nozzle in the middle of
the canal, as taught by Jones, so that the nozzle orifice and the injection area
would not be flush with the channel wall as required by claim 1. Reply
Br. 3.
2 The Examiner proposes to further modify Schmidt’s dispenser to use the
pressurized aerosol canister, as taught by Ottolangui. Final Act. 3—4. We
need not address Appellants’ arguments against this proposed modification
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We are persuaded by Appellants’ argument that the teachings of
Schmidt, Jones, and Ottolangui would not have led one having ordinary skill
in the art at the time of Appellants’ invention to the claimed injection zone
and nozzle orifice within the mixing channel, as recited in claim 1. The
Examiner has engaged in impermissible hindsight reconstruction in reaching
the determination of obviousness based on the combined teachings of these
prior art references. In particular, Schmidt discloses, in Figure 1, an aerosol
duct 2 having an outlet. Schmidt 5,1. 17 (describing that aerosol is inhaled
by the patient through aerosol duct 2).3 Schmidt shows, in Figure 2, that
liquid nozzle 17 injects liquid into pre-chamber 18, which is located between
aerosol duct 2 and the outlet of liquid nozzle 17. Id. at Fig. 2. Schmidt
discloses, in Figure 3, “a section according to Figure 2 by a modified
embodiment.” Id. at 5,1. 9. The portion of the area below liquid nozzle 17
is shown in partial view only in Figure 3 and is not numbered or described.
Because Schmidt describes Figure 3 as a modified embodiment of the
atomizer of Figure 2 {id. at 5,1. 9), we presume that the portion below liquid
nozzle 17 is pre-chamber 18, having no reason in the evidence before us to
presume otherwise.
We agree with the Examiner, as noted in the Answer (Ans. 17) that
mixing occurs in pre-chamber 18. Schmidt 5,1. 33-34 (describing that
aerosol generated from compressed air from gas nozzle 15 and fluid from
fluid nozzle 17 is in pre-chamber 18, and that the flow is slowed down
before it exits from pre-chamber 18 into aerosol duct 2). To the extent the
3 References to Schmidt are to the English language translation provided by
the Examiner on December 6, 2012.
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Examiner proposes to modify pre-chamber 18 to add an inlet and outlet as
disclosed in Jones (Jones, col. 3,11. 23-33), such a modification is not based
on sound reasoning because Schmidt already has an aerosol duct 2 having an
outlet with a mouthpiece suitable for a patient to inhale the medicament
from the duct.
The Examiner clarified in the Answer that the proposed “modification
eliminates area 18 in [Figure] 2 of Schmidt, providing a flow channel as
seen in [Figure 8] of Jones[] in which ambient air and medicament is mixed
and delivered to the user upon inhalation.” Ans. 17. The Examiner has not
provided adequate reasoning to explain why a person having ordinary skill
in the art would have been led to make the proposed modification based on
the teaching in Figure 8 of Jones and would not also have been led to
position the outlet of the nozzle orifice in the center of the canal as shown in
Figure 8. Specifically, Jones discloses that “canister segment 28 includes a
protuberance 38 that defines a fourth or medication opening 39 [which]
includes a conical outlet portion 40 through which aerosolized medication
sprays out into the bore or cavity 29.” Jones, col. 3,11. 53-57. Jones states
that “[t]he distal end of the protuberance 38 extends to a point proximate the
middle of the bore 29.” Id. at col. 3,11. 60-61, Figs. 2, 8. The Examiner has
not adequately explained why a person having ordinary skill in the art would
modify Schmidt with the teachings of Jones and eliminate pre-chamber 18 of
Schmidt without also injecting the aerosol medicament in the center of the
duct 2 in the same manner as taught by Jones. As such, we disagree with the
Examiner’s determination that the teachings of Schmidt and Jones would
have led one having ordinary skill in the art to eliminate pre-chamber 18 to
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result in an injection zone that is substantially flush at least with a portion of
a mean surface curvature of an inner surface of the channel wall and a
nozzle orifice with a peripheral edge that is contiguous with the channel
wall, as called for in independent claim 1. For these reasons, we do not
sustain the rejection of independent claim 1, or its dependent claims 2, 3, 5,
6, 10, 12, 13, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over
Schmidt, Jones, and Ottolangui.
The other grounds of rejection of the remaining dependent claims rely
on the same problematic proposed modification of Schmidt with the
teaching of Jones as discussed above. Accordingly, we also do not sustain
the rejections under 35 U.S.C. § 103(a) of claims 4, 7-11, 14, and 17-24 as
unpatentable over Schmidt, Jones, Ottolangui, and one or more of Gabrio,
Thomlinson, Abrams, Sayer, Johansson, Howlett, Snyder, Allsop, and
Riccio.
DECISION
The rejections of claims 1-24 are reversed.
REVERSED
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