Ex Parte Gyory

Board of Patent Appeals and Interferences

Feb 3, 2012

10814705 (B.P.A.I. Feb. 3, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte J. RICHARD GYORY
____________________

Appeal 2010-002526
Application 10/814,705
Technology Center 3700
____________________

Before: JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002526
Application 10/814,705
2
STATEMENT OF CASE
Appellant seeks review of the Examiner’s rejection of claims 17-22
under 35 U.S.C. § 102(b) as anticipated by, or under 35 U.S.C. § 103(a) as
obvious over, either Flower (US 5,857,994; iss. Jan. 12, 1999) or
Kuribayashi (US 6,915,159 B1; iss. Jul. 5, 2005).1 We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.

THE INVENTION
Appellant’s claimed invention relates to a “transdermal therapeutic
agent delivery and sampling device having a reservoir housing having a
flexible electrically conductive element integrally molded within the
generally non-conductive housing.” Spec. 1, para. [0002]. Independent
claim 17, the sole independent claim on appeal, is reproduced below
(emphasis added):
17. An electrotransport device comprising:
a reservoir and a non-conductive housing for the
reservoir that comprises a substantially flexible electrically
conductive element integrally molded within the nonconductive
housing,
the electrically conductive element comprising
an electrode end positioned within the non-
conductive housing and coated with an electrode coating;
a connecting portion coated with a connecting
coating comprising a flexible polymer; and
a contact end positioned outside the non-
conductive housing and coated with a contact coating;
wherein a substantially liquid and moisture-impermeable
bond is created between the material forming the non-
conductive housing and the conductive element.

1 The Examiner withdrew the rejection of claim 22 as indefinite under
35 U.S.C. § 112, second paragraph. Ans. 2.
Appeal 2010-002526
Application 10/814,705
3
OPINION
Independent Claim 17
Independent claim 17 calls for a reservoir and a non-conductive
housing for the reservoir, and an electrically conductive element that
includes a connecting portion coated with a connecting coating comprising a
flexible polymer.

Flower
The Examiner found that Flower discloses a reservoir and a non-
conductive housing for the reservoir (patch 4), and an electrically conductive
element (electronic interconnectors 26 and electrode 8) having a connecting
portion (electronic interconnector 26) and a connecting coating (electronic
interconnectors 26 is “a layer of substance covering part of the patch (4)
meeting the definition of a coating2”). Ans. 3-4.
This finding is capable of two interpretations. One interpretation is
that Flower’s electronic interconnector 26 corresponds to both the
connecting portion and the connecting coating of claim 17. Such finding is
erroneous because it relies upon one element (electronic interconnector 26)
to meet two limitations of the claim (the connecting portion and the
connecting coating). Further, electronic interconnector 26 cannot be a
coating on itself. Another interpretation is that Flower’s electronic
interconnector 26 is a coating on patch 4, in which case patch 4 would
correspond to the claimed connecting portion of the electrically conductive
element. This finding is also erroneous because the Examiner relies upon
patch 4 as the reservoir and a non-conductive housing for the reservoir of

2 The Examiner interpreted that an ordinary definition of a coating is “a layer
of one substance covering another.” Ans. 3.
Appeal 2010-002526
Application 10/814,705
4
claim 17. See Ans. 3. Consequently, we agree with Appellant that Flower
does not disclose a connecting portion with a connecting coating as called
for in claim 17. See Br. 5. As such, we cannot sustain the rejection of claim
17, and its dependent claims 18-22, as anticipated by Flower.
The Examiner concluded that it would have been obvious to modify
Flower’s electrotransport device to make it liquid and moisture
impermeable. Ans. 4. This modification does not correct the deficiency
noted above. Consequently, we also cannot sustain the rejection of claim 17,
or its dependent claims 18-22, as obvious over Flower.

Kuribayashi
The Examiner found that Kuribayashi discloses an electrically
conductive element (electrode layers 2, 14, 15) including “a connecting
portion (portions of 23 connecting the areas between reference numbers and
arrows 14 and 154 in the annotated figure below5) coating with a connecting
coating comprising a flexible polymer (col 8, lns 50-col 9, lns 15).” Ans. 5-
6. In other words, the Examiner found that Kuribayashi discloses an
electrically conductive element (electrode layers 2, 14, 15) including a
connecting portion (the portion of electrode layer 2 between electrode layers
14 and 15 in Figure 6) with a connecting coating comprising a flexible
polymer.
This finding is deficient in that it fails to identify an element in
Kuribayashi corresponding to a connecting coating. Further, while
Kuribayashi discloses an iontophoresis device having a backing (Ia) that

3 Referring to electrode layer 2.
4 Referring to electrode layers 14, 15.
5 Referring to the Examiner’s annotated Figure 6 of Kuribayashi. Ans. 7.
Appeal 2010-002526
Application 10/814,705
5
includes an electrode layer 2 (col. 5, ll. 2-10; col. 6, l. 65 – col. 7, l. 1; figs.
1-2), the Examiner relies upon Kuribayashi’s separation type electrode
structure (Ib-3) iontophoresis device which includes electrode layers 14, 15,
and does not include electrode layer 2 (col. 5, ll. 22-25; col. 19, l. 33 – col.
22, l. 14; fig. 6). Thus, the Examiner’s finding is also deficient in that it
relies on components from two distinct embodiments of Kuribayashi to
construct a connecting coating that is neither expressed or inferred in
Kuribayashi. Contrary to the Examiner’s finding, Kuribayashi’s Figure 6
does not include electrode layer 2, and electrode layer 2 cannot correspond
to a connecting portion between electrode layers 14 and 15. Kuribayashi
does not disclose a connecting portion with a connecting coating as called
for in claim 17. See Br. 7. We reverse the rejection of claim 17, and its
dependent claims 18-22, as anticipated by Kuribayashi.
The Examiner concluded that it would have been obvious to modify
Kuribayashi’s electrotransport device to make it liquid and moisture
impermeable. Ans. 7-9. This modification does not correct the deficiency in
Kuribayashi noted above. Consequently, we cannot sustain the rejection of
claim 17, or its dependent claims 18-22, as obvious over Kuribayashi.

DECISION
We reverse the Examiner’s decision to reject claims 17-22 as
anticipated by, or as obvious over, either Flower or Kuribayashi.

REVERSED

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