Appeal Number: 2006-1762
Application Number: 09/848,774
argument by the appellants, both applied references describe structural devices to precisely
control the amount of a medicament delivered. Velasquez resorts to precise measuring of small
amounts in equal sized depressions for use in an inhaler. Schenk resorts to a metering chamber.
To the extent the appellants mean to argue that neither reference teaches how to translate those
structural controls into the precise amounts of insulin needed to be deposited for inhalation, we
again note the broad ranges both disclosed and claimed in the appellants’ application that suggest
the precise amount is not critical to the invention, or more properly, the precise amount is highly
dependent on the individual patient and therefore cannot be claimed with precision. Again, we
note that the appellants’ disclosure at p. 21 supports this high degree of variability among
patients. We further note that the claim does not recite any structural mechanism for precisely
matching the amounts of insulin with the patient. Therefore the appellants’ arguments that
neither reference teaches how to translate those structural controls into the precise amounts of
insulin needed to be deposited for inhalation are unpersuasive.
We further note that the appellants have attempted to portray the examiner’s rejection as an
obvious to try application, followed by an admonition that the law does not support such a
theory. However, our reviewing court has stated that “it is not inventive to discover the optimum
or workable ranges by routine experimentation.” In re Geisler, 116 F.3d 1465, 43 USPQ2d
1362 (Fed. Cir. 1997). Therefore, we find the appellant's arguments as to such optimization to
be unpersuasive.
As to claims 25, 26, 31 and 35, the appellants repeat the above arguments and they are
equally unpersuasive as to these claims. The appellants further argue claim limitations of
repetition (claim 25, 26 and 31 - [See Brief at p. 14-17]) and of lowering the glucose level to an
acceptable level (claim 31 - [See Brief at p. 16]) and of controlling the glucose levels (claims 25,
26, 31 and 35 - [See Brief at p. 14-17]). We note Shenk’s inhaler is inherently repeatable in
operation, and that the lowering of glucose levels to an acceptable level and controlling the
glucose levels are both highly dependent upon the particular patient and a person of ordinary
skill in the art would monitor the patient’s vital statistics to achieve the desired result in view of
the high variability among patients as a matter of course. Therefore, we find the appellant's
arguments to be unpersuasive.
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007