John Power et al.

Patent Trials and Appeals Board

Oct 11, 2019

12583256 - (D) (P.T.A.B. Oct. 11, 2019)

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.
12/583,256 08/17/2009 John Power 016770-006712.10 6515
21968 7590 10/11/2019
NEKTAR THERAPEUTICS
455 Mission Bay Blvd., South, Suite 100
San Francisco, CA 94158
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3785
MAIL DATE DELIVERY MODE
10/11/2019 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 JOHN POWER, DESMOND REGAN, and
DECLAN MORAN
____________________

Appeal 2018-002136
Application 12/583,256
Technology Center 3700
____________________

Before JOHN C. KERINS, BENJAMIN D. M. WOOD, and
BRETT C. MARTIN, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
45–53 and 56–62. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Nektar Therapeutics Corporation.
Appeal Brief (“App. Br.”) 1.
Appeal 2018-002136
Application 12/583,256

2
THE INVENTION
The claims are directed to a nebulizer and methods of using a
nebulizer to deliver medicament to a respiratory system. Sole independent
claim 45, reproduced below, is illustrative of the claimed subject matter:2
45. A method of delivering a medicament to a
respiratory system, the method comprising:
[(i)] providing a reservoir for a liquid
medicament to be delivered to the respiratory system,
the reservoir having an access opening in a wall of an
upper portion thereof, a lower medicament outlet and
an interior surface, the interior surface of the
reservoir being inclined to promote flow of the liquid
medicament;
[(ii)] providing a cap positioned inline with
the reservoir, the cap having:
an inlet port provided through the cap;
a projecting annular lip suitable for
mounting the cap at the access opening;
an integral plug for selectively sealing the
inlet port to keep the reservoir from receiving the
liquid medicament, the plug having a projecting
annular shoulder suitable for sealing of the inlet
port; and
an arm connecting the plug to the cap, the
arm being for pivoting the plug between a sealed
position and an open position;
[(iii)] delivering a volume of the liquid
medicament into the reservoir by engaging the cap to
force open the plug, inserting a delivery tip of a
supply container having at least the volume of liquid
medicament therein into the inlet port, and allowing
the volume of the liquid medicament to flow through
the inlet port to the reservoir without dismounting
any parts of the reservoir or cap;

2 Claim 45 has been modified to add Appellant’s limitation designations.
Appeal 2018-002136
Application 12/583,256

3
[(iv)] providing an aerosol generator for
aerosolizing the liquid medicament;
[(v)] arranging the aerosol generator beneath
the reservoir at the lower medicament outlet of the
reservoir for gravitational flow of the liquid
medicament from the reservoir to the aerosol
generator;
[(vi)] aerosolizing the liquid medicament
using the aerosol generator by:
providing an aerosol supply conduit for
delivering the aerosolized medicament from the
aerosol generator into a gas conduit, wherein the
aerosol supply conduit is releasably mounted to the
reservoir, and wherein an outlet of the gas conduit is
co-axial with an inlet of the gas conduit; and
[(vii)] entraining the aerosolized
medicament with a gas in the gas conduit before
delivering the aerosolized medicament to the
respiratory system; and
[(viii)] delivering the aerosolized
medicament to the respiratory system by: providing
a respiratory conduit connecting the outlet of the gas
conduit to the respiratory system, wherein the
respiratory conduit is rotatable about a longitudinal
axis of the outlet of the gas conduit to allow
positioning of the reservoir; and
[(ix)] maintaining the reservoir at a suitable
orientation that enables gravitational flow of liquid
medicament from the reservoir to the aerosol
generator;
[(x)] wherein the method further comprises
coupling the aerosol generator to a ventilator.

REFERENCES
Brown
Buch
Enfield
Holever
US 3,724,454
US 3,828,773
US 3,874,379
US 4,240,417
Apr. 3, 1973
Aug. 13, 1974
Apr. 1, 1975
Dec. 23, 1980
Appeal 2018-002136
Application 12/583,256

4
Kee
Hilliard
Ivri
Heinonen
Cise
US 5,445,141
US 5,586,551
US 5,758,637
US 6,530,370 B1
US 6,612,304 B1
Aug. 29, 1995
Dec. 24, 1996
June 2, 1998
Mar. 11, 2003
Sept. 2, 2003
REJECTIONS
Claims 45–48, 51–53, 56, 57, and 60–62 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Heinonen, Buch, Holever, Kee, and
Enfield.
Claims 45–48, 51–53, 56, 57, and 60–62 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Heinonen, Buch, Holever, Kee, and
Cise.
Claim 49 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Heinonen, Buch, Holever, Kee, Enfield, and Hilliard.
Claim 50 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Heinonen, Buch, Holever, Kee, Enfield, and Brown.
Claims 58 and 59 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Heinonen, Buch, Holever, Kee, Enfield, and Ivri.
ANALYSIS
Claims 45–48, 51–53, 56, 57, and 60–62—Rejected as
Unpatentable over Heinonen, Buch, Holever, Kee, and Enfield
Appellant treats claim 45 as representative of the claims subject to this
rejection. Br. 8–13. We select claim 45 as representative of these claims
and decide the appeal of the rejection of these claims on the basis of claim
45 alone. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner relies on Heinonen to teach most the elements of claim
45, including providing a reservoir for a liquid medicament, the interior
Appeal 2018-002136
Application 12/583,256

5
surface of the reservoir inclined towards an aerosol generator; arranging the
aerosol generator beneath the reservoir for gravitational flow of liquid
medicament from the reservoir to the aerosol generator; and maintaining the
reservoir at a suitable orientation to enable gravitational flow of liquid
medicament from the reservoir to the aerosol generator. Final Act. 3–4
(citing Heinonen, 4:52–67, 5:1–5, 10–54, 6:39–65, 7:43–50, Figs. 1–7); Ans.
15 (citing Heinonen, 6:38–50, 7:10–30, 8:60–65, 9:30–36, Figs. 2, 5, 6).
The Examiner relies on Buch, Holever, Kee, and Enfield to teach the
limitations not found to be taught by Heinonen. Final Act. 4–6.
Appellant first argues that Heinonen’s nebulizer is designed to be
“operated in any position,” and therefore does not rely on gravitational flow
of liquid from the reservoir to the aerosol generator, as recited in limitations
(i), (v), and (ix). Br. 11. This argument is not persuasive of Examiner error.
Appellant does not explain why the embodiment depicted in Figure 5 of
Heinonen, on which the Examiner specifically relies to teach the claimed
gravitational flow of liquid medicament from a reservoir to an aerosol
generator (Ans. 15), does not teach this limitation.
Appellant also argues that Heinonen does not teach a reservoir for a
liquid medicament. The Examiner relies on internal volume 80, depicted in
Figure 2, as corresponding to the claimed reservoir. Final Act. 4. According
to Appellant, “because Heinonen’s approach produces a liquid column
maintained by surface tension, the liquid does not take the shape of its
container,” and thus “there is no ‘reservoir of liquid’ in the space between
the end of the transport line 32a and rear surface 76 of mesh plate 66.”
Again, this argument is not persuasive of Examiner error. Specifically, we
Appeal 2018-002136
Application 12/583,256

6
are not persuaded that internal volume 80 is incapable of receiving and
holding liquid medicament that takes the shape of this volume.
Appellant also suggests that Heinonen does not teach a reservoir that
comprises an interior surface that is inclined to promote flow of liquid
medicament. Br. 14. The Examiner relies on the embodiment depicted in
Figure 7 to teach this limitation. Ans. 15. We agree with the Examiner that
the internal volume shown in Figure 7 comprises an inclined interior surface.
Thus, this argument is not persuasive.
Finally, Appellant argues that the Examiner fails to set forth a
sufficient reason to modify Heinonen based on the teachings of Buch, Kee,
and Holever. Br. 13. We disagree. See Final Act. 4–6, Ans. 15–15.
Appellant does not explain why the Examiner’s analysis in this regard is
erroneous.
Remaining Rejections
Appellant relies on the arguments above regarding claim 45, which
we found to be unpersuasive, to respond to the remaining rejections.
Accordingly, we sustain these rejections.
DECISION
For the above reasons, the Examiner’s rejections are affirmed.
Specifically:
Claim(s) Rejected Basis Affirmed Reversed
45–48, 51–53, 56,
57, 60–62
§ 103, Heinonen,
Buch, Holever, Kee,
Enfield
45–48, 51–53,
56, 57, 60–62
45–48, 51–53, 56,
57, 60–62
§ 103, Heinonen,
Buch, Holever, Kee,
Cise
45–48, 51–53,
56, 57, 60–62
Appeal 2018-002136
Application 12/583,256

7
Claim(s) Rejected Basis Affirmed Reversed
49
§ 103, Heinonen,
Buch, Holever, Kee,
Enfield, Hilliard
49
50
§ 103, Heinonen,
Buch, Holever, Kee,
Enfield, Brown
50
58, 59
§ 103, Heinonen,
Buch, Holever, Kee,
Enfield, Ivri
58, 59
Overall Outcome 45–53, 56–62

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).
AFFIRMED