Ex Parte Hood et alDownload PDFPatent Trial and Appeal BoardApr 10, 201311272524 (P.T.A.B. Apr. 10, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte LEROY E. HOOD, MURIEL Y. ISHIKAWA, EDWARD K. Y. JUNG, ROBERT LANGER, CLARENCE T. TEGREENE, LOWELL L. WOOD JR., and VICTORY Y. H. WOOD __________ Appeal 2011-009284 Application 11/272,524 Technology Center 3700 __________ Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and ULRIKE W. JENKS, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a reaction device. The Examiner rejected the claims as anticipated and as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2011-009284 Application 11/272,524 2 Statement of the Case Background “[T]he present application relates to remotely controlled reaction devices that make use of control signals carried between a remote controller and a reaction device in an environment by electrical, magnetic, or electromagnetic fields or radiation” (Spec. 3-4). The Claims Claims 1, 21, 22, 45, 83, and 100-124 are on appeal. Claim 1 is representative and reads as follows: 1. A reaction device comprising: a body structure adapted for positioning in a body of an organism; a reaction region located in or on the body structure, the reaction region including a first material configured to influence a chemical reaction; and a remotely activatable control element operably coupled to the body structure and responsive to an electromagnetic field control signal to modify one or more of the rate or kinetics of the chemical reaction. The issues A. The Examiner rejected claims 1, 21, 45, and 101-120 under 35 U.S.C. § 102(b) as anticipated by Kraus1 (Ans. 4-8). B. The Examiner rejected claims 1 and 22 under 35 U.S.C. § 102(e) as anticipated by Herman2 (Ans. 8). C. The Examiner rejected claim 124 under 35 U.S.C. § 102(e) as anticipated by Coppeta3 (Ans. 8-9). 1 Kraus, M., US 6,198,950 B1, issued Mar. 6, 2001. 2 Herman et al., US 2005/0267440 A1, published Dec. 1, 2005. Appeal 2011-009284 Application 11/272,524 3 D. The Examiner rejected claims 83, 100, and 121-123 under 35 U.S.C. § 103(a) as obvious over Coppeta and Biscup4 (Ans. 10-12). A. 35 U.S.C. § 102(b) over Kraus The Examiner finds that Kraus teaches a reaction device comprising: a body structure adapted for positioning in a body of an organism (figure 1); a reaction region located in or on the body structure including a first material configured to influence a chemical reaction (column 2, lines 18-22 - analytes from the environment enter the body structure and react with the photosensitizers at the reaction region); and a remotely activatable control element operably coupled to the body structure and responsive to an electromagnetic field control signal to modify one or more of the rate or kinetics of the chemical reaction (figure 2a; column 4 lines 37-39 – magnetically actuated flaps would be responsive to a magnetic control signal). (Ans. 4-5). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Kraus anticipates the claims? Findings of Fact The following findings of fact (“FF”) are supported by a preponderance of the evidence of record. 1. The Specification teaches that the “reaction region of the reaction device may be located in an interior portion of the body structure and may be at least intermittently in fluid communication with the environment via at least one inlet or outlet” (Spec. 8). 3 Coppeta et al., US 2005/0055014 A1, published Mar. 10, 2005. 4 Biscup, R., US 2004/0193166 A1, published Sep. 30, 2004. Appeal 2011-009284 Application 11/272,524 4 2. The Specification teaches that a “reaction occurring at reaction region 30 may be modulated by the activity of remotely activatable control element 22. As an example, reactant molecules 32 may move into reaction device 20 and participate in a reaction at reaction region 30” (Spec. 7). 3. Kraus teaches a diagnostic apparatus for determining analytes which comprises at least (i) one measurement unit for single or continuous determination of an analyte, wherein the measurement unit generates a signal in the presence of the analyte to be determined; (ii) a signal transmission unit capable of converting that signal and capable of forwarding it to a signal-processing unit or forwarding the unconverted signal to a signal-processing unit; and (iii) a sample feeder to the measurement unit(s) which extends into the relevant liquid-containing body compartment, for instance a blood vessel. (Kraus, col. 3, ll. 11-21). 4. Figure 1 of Kraus is reproduced below: “FIG. 1 shows the scheme of one preferred embodiment of such a diagnostic apparatus” (Kraus, col. 2, l. 30-31). Appeal 2011-009284 Application 11/272,524 5 5. Kraus teaches that the “measurement unit comprises discrete measurement chambers which can be individually closed off by valves and can be used just once, and also a pump apparatus connected to the cannula” (Kraus, col. 5, ll. 39-42). 6. Kraus teaches that within the measurement chambers there is a reaction region where “the analytes react with photosensitizers in such a way that the photosensitizers yield, depending on the analyte’s concentration or activity, singlet oxygen which is measured by electrodes and converted into a transmittable signal” (Kraus, col. 2, ll. 19-22). 7. Kraus teaches that the “closure of the measurement chambers is especially important. Magnetically actuable closure flaps which can assume two fixed states (flip-flops) can advantageously be used here” (Kraus, col. 4, ll. 37-40). 8. Kraus teaches “a closure flap which can be actuated by the action of an extracorporeal signal” (Kraus, col. 4, ll. 10-11). 9. Kraus teaches that “the signal is generated in the presence of analytes by photosensitizers that are in close proximity with acceptors, which might be incorporated into so-called acceptor beads, and the singlet oxygen generated by the photosensitizers activates said acceptors which subsequently produce light” (Kraus, col. 3, ll. 45-50). Principles of Law “A single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005). Appeal 2011-009284 Application 11/272,524 6 Analysis Claims 1 and 45 Appellants contend that the “Examiner failed to demonstrate, using objectively-verifiable evidence, where the Examiner-cited portion of Kraus discloses ‘a reaction region in or on’ a ‘body structure’ of the Kraus apparatus or where the alleged reaction region of Kraus includes ‘a first material configured to influence a chemical reaction’” (App. Br. 26). Appellants also contend that “[t]here is no indication, nor has the Examiner pointed to one, in column 4, lines 37-39 of Kraus that the magnetically actuable closure flaps are ‘responsive to an electromagnetic field control signal to modify one or more of the rate or kinetics of the chemical reaction’” (App. Br. 28). The Examiner finds that “the analyte enters the chamber shown in Fig 2b and reacts with the photosensitizers capable of producing oxygen radicals (column 3, lines 36-41). The region in which this takes place is taken as the reaction region; it is coupled to the body structure as it is within the body structure” (Ans. 12). The Examiner “finds that as the flaps control the amount of analyte allowed into the reaction chamber they effectively modify the rate or kinetics of the reaction as they determine whether or not the reaction is initiated as well as the scale of the reaction by regulating the amount of analyte which enters the chamber” (Ans. 12-13). We find that the Examiner has the better position. Interpreting the term “reaction region” in light of the Specification, we conclude that this phrase simply requires “that the “reaction region of the reaction device may be located in an interior portion of the body structure and may be at least Appeal 2011-009284 Application 11/272,524 7 intermittently in fluid communication with the environment via at least one inlet or outlet” (Spec. 8; FF 1). This is an intended use recitation, since the claim is drawn to a system, not a method, and so the claim simply requires a structure such as a chamber which has the capacity to function as an interior reaction region. “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Kraus teaches measurement chambers located within the detection device in fluid communication with the environment via a cannula (FF 3-5). Kraus further teaches that within this region “the analytes react with photosensitizers in such a way that the photosensitizers yield, depending on the analyte’s concentration or activity, singlet oxygen which is measured by electrodes and converted into a transmittable signal” (Kraus, col. 2, ll. 19-22; FF 6). Kraus therefore teaches a reaction region, specifically a measurement chamber, which comprises a first material, here the photosensitizers, which react in the measurement chamber as required by claims 1 and 45 (FF 2-6). We also agree with the Examiner that Kraus satisfies the requirement of claims 1 and 45 for an element which controls the rate of the chemical reaction. Interpreting the phrase “rate or kinetics of the chemical reaction” in claim 1 in light of the Specification, we conclude this phrase may be satisfied where the control element acts so that “reactant molecules 32 may move into reaction device 20 and participate in a reaction at reaction region 30” (Spec. 7; FF 2). Kraus teaches “a closure flap which can be actuated by the action of an extracorporeal signal” (Kraus, col. 4, ll. 10-11; FF 8). Kraus teaches that Appeal 2011-009284 Application 11/272,524 8 the “closure of the measurement chambers is especially important. Magnetically actuable closure flaps which can assume two fixed states (flip- flops) can advantageously be used here” (Kraus, col. 4, ll. 37-40; FF 7). Kraus therefore teaches remotely opening the closure flap to permit fluid flow to the measurement chamber (FF 5, 7) which will result in the initiation of the chemical reaction (FF 3, 6). As the Examiner finds, the initiation of the chemical reaction itself is a change in the rate or kinetics from no reaction to a rate at which the reaction proceeds (see Ans. 13). Claims 1 and 45 do not require any more specific modification of the rate or kinetics of the reaction. “[L]imitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Claim 102 and 112 Appellants contend that the “Examiner provided no objectively- verifiable evidence in Kraus which discloses an equivalent to the recitations of claim 102” (App. Br. 29). We are not persuaded. Kraus teaches “modifying the rate of exposure of a reactant” as required by claims 102 and 112 when Kraus teaches initiating a chemical reaction, as discussed above (FF 3-6). This is factual evidence supporting the Examiner’s position. Claim 103 Appellants contend that the “Examiner provided no objectively- verifiable evidence in Kraus which discloses an equivalent to the recitations of claim 103” (App. Br. 30). We are not persuaded. Claim 103 states that the control element must include, among a variety of options, “magnetically active material”. Kraus Appeal 2011-009284 Application 11/272,524 9 teaches “[m]agnetically actuable closure flaps which can assume two fixed states (flip-flops) can advantageously be used here” (Kraus, col. 4, ll. 37-40; FF 7). This is factual evidence supporting the Examiner’s position. Claims 104, 106, 114, and 117 Appellants contend that “the Examiner failed to provide evidence, or even assert, that the magnetically actuable closure flaps of Kraus are ‘configured to be heated or cooled by action of the electromagnetic field control signal,’ as recited in claim 104” (App. Br. 32). The Examiner finds that “as the flap is recited as being magnetically actuatable, it would necessarily be a magnetically active material; otherwise it would not be capable of being magnetically actuatable. Additionally, as the flaps open and close they change orientation” (Ans. 13). We find that Appellants have the better position. The Examiner does not identify, and we do not find, any teaching in Kraus that the magnetically active component is either heated or cooled, or that the heating and cooling changes the configuration of a polymer, as required by claim 104. We also agree that claims 106, 114 and 117 require a change in configuration or shape of the polymer which is not taught by Kraus. Claims 105 and 115 Appellants contend that the “Examiner failed to provide objectively- verifiable evidence of where Kraus allegedly discloses that the magnetically actuable closure flaps of Kraus are ‘responsive to at least one of . . . a static or quasi-static magnetic field’” (App. Br. 33). We are not persuaded. We agree with the Examiner that Kraus satisfies the requirement for a “remote activatable control element” which is Appeal 2011-009284 Application 11/272,524 10 responsive to a “static or quasi-static magnetic field control signal” in claim 1. The Specification teaches that “[s]tatic and quasi static electrical fields may be produced, for example, by charged metallic surfaces, while static and quasi static magnetic fields may be produced, for example, by passing current through one or more wires or coils, or through the use of one or more permanent magnets, as known to those of skill in the art” (Spec. 9). We therefore interpret the magnetic control field signal as requiring the element to be responsive to a magnetic signal. Kraus teaches “[m]agnetically actuable closure flaps which can assume two fixed states (flip-flops) can advantageously be used here” (Kraus, col. 4, ll. 37-40; FF 7). Thus, Kraus teaches that the closure flaps are responsive to a magnetic signal (FF 7). The Examiner reasonably finds that Kraus’s signal inherently satisfies the “static or quasi-static” requirement since Appellants have not identified any structural difference between the magnetic signal of Kraus and the magnetic signal in claim 1. We also agree that Kraus teaches a “remote control” when teaching “a closure flap which can be actuated by the action of an extracorporeal signal” (Kraus, col. 4, ll. 10-11; FF 8). The only reasonable interpretation of this teaching of Kraus is that the extracorporeal signal is a “remote control” signal, since extracorporeal literally means “outside the body” and the device of Kraus is intended for implantation within the body as shown in Figure 1 (FF 4). In addition, claims 105 and 115 broadly encompass “a non-ionizing electromagnetic signal” as well as “an ultraviolet electromagnetic signal”. These two recitations cover the entire range of electromagnetic radiation Appeal 2011-009284 Application 11/272,524 11 other than gamma and x-rays, including visible light, infrared, microwave, and radio waves. Therefore, when Kraus teaches “a closure flap which can be actuated by the action of an extracorporeal signal” (Kraus, col. 4, ll. 10- 11; FF 8), the extracorporeal signal is necessarily some type of either magnetic, non-ionizing or ultraviolet electromagnetic radiation. Claim 108 Appellants contend that the “Examiner failed to establish how the photosensitizer of Kraus is allegedly simultaneously a reactant and a non- reactant material” (App. Br. 34). The Examiner finds that “the analyte enters the chamber shown in Fig 2b and reacts with the photosensitizers capable of producing oxygen radicals (column 3, lines 36-41)” (Ans. 13). We find that Appellants have the better position. Claim 108 requires that the “first material is a non-reactant material”. Kraus teaches that the “analytes to be determined react with photosensitizers” (Kraus, col. 3, ll. 41- 42) so the photosensitizers cannot be a “non-reactant material” since they react. Claim 109 Appellants contend that the “Examiner failed to cite any portion of Kraus which discloses that the photosensitizers of Kraus include ‘one or more of a hydrophobic group, a hydrophilic group, an acid, an acidifier, a base, an alkalizer, a buffering agent, an enzyme, an antioxidant, a charge donor, or a charge acceptor’” (App. Br. 36). Appeal 2011-009284 Application 11/272,524 12 The Examiner finds that “the analyte enters the chamber shown in Fig 2b and reacts with the photosensitizers capable of producing oxygen radicals (column 3, lines 36-41)” (Ans. 13). We find that the Examiner has the better position. Kraus teaches that “the signal is generated in the presence of analytes by photosensitizers that are in close proximity with acceptors, which might be incorporated into so- called acceptor beads, and the singlet oxygen generated by the photosensitizers activates said acceptors which subsequently produce light” (Kraus, col. 3, ll. 45-50; FF 9). In order for the photosensitizer to induce light, there is necessarily a charge transfer where the photosensitizers function as either (or both) charge donors and charge acceptors. Claim 110 Appellants contend that the “Examiner failed to cite any portion of Kraus which discloses that the photosensitizers of Kraus are catalysts or that the photosensitizers of Kraus include ‘at least one transition metal, acid-base catalyst, catalytic nucleic acid, enzyme, oxidoreductase, transferase, hydrolase, lyase, isomerase, ligase, enzymatic complexes, or cofactor’” (App. Br. 37). We agree with Appellants. The Examiner has not provided any evidence that the catalysts of Kraus fall within the list recited within claim 110. The Examiner has therefore not satisfied the burden of presenting a prima facie case of anticipation for claim 110. Claims 111 and 119 Appellants contend that “there is no teaching, and the Examiner failed to point to one, of ‘wherein the reaction produces a material that has a Appeal 2011-009284 Application 11/272,524 13 beneficial effect on the organism or a local portion thereof’ or ‘wherein the reaction destroys, traps, or sequesters a material from the body of the organism that is harmful to the organism or a portion thereof’” (App. Br. 39). The Examiner finds that “the production of oxygen radicals converted into a signal to activate the detection of a hemostasis disturbance as a beneficial effect” (Ans. 14). We find that Appellants have the better position. The Examiner has not established that the oxygen radicals themselves have any beneficial effects on the organism. In addition, oxygen radicals do not represent a material in the body of the organism which is removed, but rather result from illumination of photosensitizers in Kraus’s device (FF 9). Claim 116 Appellants contend that “the Examiner failed to demonstrate evidence of (or even allege that Kraus discloses) ‘wherein the reaction device includes a valve configured to modify the flow of fluid into or out of the reaction region responsive to a change in at least one dimension of the remotely activatable control element’” (App. Br. 49). We agree with Appellants. We note that Kraus does teach a valve, since Kraus teaches that the “measurement unit comprises discrete measurement chambers which can be individually closed off by valves and can be used just once, and also a pump apparatus connected to the cannula” (Kraus, col. 5, ll. 39-42; FF 5). However, Kraus does not teach that the valve is responsive to the change of a dimension of anything, including a Appeal 2011-009284 Application 11/272,524 14 remotely activatable control element, nor is there evidence that the valve itself changes dimension in Kraus. Conclusion of Law The evidence of record supports the Examiner’s conclusion that Kraus anticipates claims 1, 45, 102, 103, 105, 109, 112, and 115. Pursuant to 37 C.F.R. § 41.37(c)(1), claims 21, 101, 107, 113, 118, and 120 also fall as these claims were not argued separately. The evidence of record does not support the Examiner’s conclusion that Kraus anticipates claims 104, 106, 108, 110, 111, 114, 116, 117, and 119. B. 35 U.S.C. § 102(e) over Herman The Examiner finds that Herman teaches: a reaction device comprising: a body structure adapted for positioning in a body of an organism (figure 1); a reaction region located in or on the body structure including a first material configured to influence a chemical reaction (figure 1 external cap 20a [0096]); and a remotely activatable control element operably coupled to the body structure and responsive to an electromagnetic field control signal to modify one or more of the rate or kinetics of the chemical reaction [0096]. (Ans. 8). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s finding that Herman anticipates claims 1 and 22? Findings of Fact 10. Herman teaches that: In one embodiment, the device includes a substrate having a two-dimensional array of discretely spaced reservoirs Appeal 2011-009284 Application 11/272,524 15 arranged therein, a drug formulation contained in the reservoirs, anode reservoir caps covering a semi-permeable membrane for each of the reservoirs, cathodes positioned on the substrate near the anodes, and means for actively controlling disintegration of the reservoir caps. The means includes a power source and circuitry to control and deliver an electrical potential; the energy drives a reaction between selected anodes and cathodes. Upon application of a potential between the electrodes, electrons pass from the anode to the cathode through the external circuit causing the anode material (reservoir cap) to oxidize and dissolve into the surrounding fluids, exposing and releasing the drug formulation. The microprocessor directs power to specific electrode pairs through a demultiplexer as directed by an EPROM, remote control, or biosensor. (Herman 8 ¶ 0096). 11. Figure 1 of Herman is reproduced below: “FIG. 1 is a cross-sectional and perspective view of one embodiment of a device body with reservoirs and reservoir caps for opening by electrothermal ablation” (Herman 2 ¶ 0019). Appeal 2011-009284 Application 11/272,524 16 12. Herman teaches that the drugs may include enzymes (Herman 9 ¶ 0105). Analysis Appellants contend that: There is no teaching, and the Examiner has pointed to none, in paragraph [0096] of Herman of both “a reaction region located in or on the body structure, the reaction region including a first material configured to influence a chemical reaction” and “a remotely activatable control element operably coupled to the body structure and responsive to an electromagnetic field control signal to modify one or more of the rate or kinetics of the chemical reaction,” as recited in claim 1. (App. Br. 54). We are not persuaded. Herman teaches a device which is composed of a structure (FF 11) where a drug formulation is contained in reservoirs (FF 10). These reservoirs are reasonably interpreted as “reaction regions” and the Herman expressly teaches that the drug formulations may comprise enzymes which inherently function to catalyze, and therefore influence, chemical reactions (FF 12). Herman teaches reservoir caps which are “remotely activatable” and which are coupled to the body structure and which respond to an electromagnetic signal by rupturing (FF 10). As above, interpreting the phrase “rate or kinetics of the chemical reaction” in claim 1 in light of the Specification, we conclude this phrase is reasonably satisfied where the control element acts so that “reactant molecules 32 may move into reaction device 20 and participate in a reaction at reaction region 30” (Spec. 7; FF 2). After rupturing, the drug formulation and reactants may initiate chemical reactions through movement of environmental reactant molecules Appeal 2011-009284 Application 11/272,524 17 into the reservoir as well as the movement of reservoir reactants into the environment. Since the reaction region simply must be “operably coupled” to the body structure, the claim is open to reaction regions within the device or adjacent or near the device which are operably coupled by the release of reactants from the reservoirs. Conclusion of Law The evidence of record supports the Examiner’s finding that Herman anticipates claims 1 and 22. C. 35 U.S.C. § 102(e) over Coppeta The Examiner finds that Coppeta teaches a reaction device comprising a body structure adapted for positioning in an environment (figure 10, ref no. 20); a remotely activatable control element operably coupled to the body structure and responsive to input of energy from an electromagnetic control signal to modify one or more of the rate or kinetics of the chemical reaction (cap is connected to electrical leads which change the temperature [0131]; and a reaction region formed on or including at least a portion of the remotely activatable control element, the reaction region including a first material configured to influence a chemical reaction (figure 10 reaction region reservoir cap 18, which is made of material capable of influencing a chemical reaction [0129] wherein the remotely activatable control element is configured to be heated or cooled by action of the electromagnetic field control signal [0012; 0083]. (Ans. 8-9). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s finding that Coppeta anticipates claim 124? Appeal 2011-009284 Application 11/272,524 18 Findings of Fact 13. Coppeta teaches that the “means for accelerating comprises a magnetic field source and the reservoir contents comprises magnetic microparticles. For example, the reservoir contents can include a gel that expands upon subjection to a magnetic flux” (Coppeta 1 ¶ 0012). 14. Coppeta teaches that the “reservoir cap could include any material that can be disintegrated or permeabilized in response to an applied stimulus (e.g., electric field or current, magnetic field, change in pH, or by thermal, chemical, electrochemical, or mechanical means)” (Coppeta 11 ¶ 0129). 15. Figure 1 of Coppeta is reproduced below: “FIG. 1 is a cross-sectional view of one embodiment of a device for accelerated release, which comprises a shape memory alloy spring and a Appeal 2011-009284 Application 11/272,524 19 push plate for driving drug formulation out of a reservoir” (Coppeta 2 ¶ 0018). 16. Coppeta teaches that: The reservoir cap is operably (i.e., electrically) connected to an electrical input lead and to an electrical output lead, to facilitate flow of an electrical current through the reservoir cap. When an effective amount of an electrical current is applied through the leads and reservoir cap, the temperature of the reservoir cap is locally increased due to resistive heating, and the heat generated within the reservoir cap increases the temperature sufficiently to cause the reservoir cap to be electrothermally ablated and ruptured. (Coppeta 11 ¶ 0131). Analysis Coppeta teaches a body structure which may be positioned in an environment (FF 15). Coppeta teaches a reservoir with a “remotely activatable control element”, here a reservoir cap, which is responsive to electric current (FF 16). Coppeta teaches that the reservoir cap (“remotely activatable control element”) can be heated by resistive heating due to the electric current, here the “electromagnetic control signal.” Appellants contend that “the Examiner failed to demonstrate objectively-verifiable evidence of where paragraph [0131] of Coppeta discloses that the ‘electro-thermal ablation technique’ is a chemical reaction” (App. Br. 61). We are not persuaded. As already discussed above, interpreting the phrase “rate or kinetics of the chemical reaction” in claim 124 in light of the Specification, we conclude this phrase is reasonably satisfied where the control element acts so that “reactant molecules 32 may move into reaction Appeal 2011-009284 Application 11/272,524 20 device 20 and participate in a reaction at reaction region 30” (Spec. 7; FF 2). After rupturing, the drug formulation and reactants may initiate chemical reactions through movement of reactant molecules into the reservoir. Appellants contend that “[t]here is no teaching, and the Examiner failed to point to one, in paragraphs [0012] and [0083] of Coppeta of ‘wherein the remotely activatable control element is configured to be heated or cooled by action of the electromagnetic control signal’” (App. Br. 62). We are not persuaded. We agree with the Examiner that the “the material of the cap is remotely activatable to cause a change in dimension and allow the valve to open” (Ans. 17). Regarding the heating and cooling of the cap by an electromagnetic signal, Coppeta teaches that when “an effective amount of an electrical current is applied through the leads and reservoir cap, the temperature of the reservoir cap is locally increased due to resistive heating, and the heat generated within the reservoir cap increases the temperature sufficiently to cause the reservoir cap to be electrothermally ablated and ruptured” (Coppeta 11 ¶ 0131; FF 16). Thus, Coppeta teaches that the cap, a remotely activatable control element, is responsive to input of electric current, an electromagnetic signal, and is configured to be heated by that signal (the electric current) (FF 16). Appellants contend that “the Examiner combines two separate embodiments of Coppeta in an attempt to achieve the recitations of claim 124” (App. Br. 63). We are not persuaded. The Examiner simply identifies two alternative components, either of which reasonably satisfies the claim requirement for a “remotely activatable control element”. The first Appeal 2011-009284 Application 11/272,524 21 alternative, a “gel that expands upon subjection to a magnetic flux” (Coppeta 1 ¶ 0012; FF 13), represents a control element that is “operably coupled” to a source which is responsive to a magnetic flux and which will then influence the reaction of the reservoir components. The second alternative, discussed already, is the reservoir cap which can be heated to release the reservoir contents (FF 16). The Examiner does not need to combine these embodiments but simply identifies two alternative embodiments, either of which satisfies the claim requirements for a “remotely activatable control element”. Conclusion of Law The evidence of record supports the Examiner’s finding that Coppeta anticipates claim 124. D. 35 U.S.C. § 103(a) over Coppeta and Biscup The Examiner relies upon Coppeta for the device as discussed above, but finds that Coppeta “fails to disclose a remote control signal source configured to generate an electromagnetic control signal” (Ans. 10). The Examiner finds that “Biscup discloses a remote control signal source configured to generate an electromagnetic control signal sufficient to activate the remotely activatable control element to produce a desired rate or kinetics of the chemical reaction” (Ans. 10). The Examiner finds it obvious to “use a remote generator and transmitter in the device of Coppeta et al. because Biscup teaches remote signal generators and transmitters are used to activate the release of a substance and further Coppeta et al. already teaches delivering a magnetic field from a remote control” (Ans. 10-11). Appeal 2011-009284 Application 11/272,524 22 The issue with respect to this rejection is: Does the evidence of record support the Examiner’s finding that Coppeta and Biscup render claims 83, 100 and 121-123 obvious? Principles of Law The Supreme Court has emphasized that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. Findings of Fact 17. Biscup teaches “one or more mechanical and/or electrical devices that at least partially cause and/or control the release of one or more substances from the screw, nail or post” (Biscup 4 ¶ 0019). 18. Biscup teaches that “components connected to the screw, nail or post, includes an electromagnetic wave transmitter and/or receiver which can send and/or receive signals in the form of electromagnetic waves” (Biscup 5 ¶ 0020). 19. Biscup teaches that “the mechanical and/or electrical device can open and/or close one or more access openings, and/or cause one or more substances to flow into and/or out of one or more cavities” (Biscup 5 ¶ 0019). Appeal 2011-009284 Application 11/272,524 23 20. Biscup teaches that “the parameters for allowing and/or causing the release of one or more substances can be altered by reprogramming (e.g., new data, additional data, new source code, additional source code, etc.) during the healing process” (Biscup 5 ¶ 0019). 21. The Specification teaches that the “valve may be formed in its entirety by the remotely activatable control element . . . If the remotely activatable control element forms all or a part of a valve structure or system, it may modify the rate or kinetics of the reaction occurring in the reaction device by modifying the flow of fluid into or through the reaction device” (Spec. 23). Analysis Claim 83 Appellants contend that “ the Examiner failed to demonstrate, using objectively-verifiable evidence or detailed explanation based on evidence, how the Examiner-proffered combination of Coppeta and Biscup discloses or suggests each and every recitation of claim 83” (App. Br. 71). We are not persuaded. Appellants argument lacks any specificity as to what is absent from the Examiner’s prima facie case of obviousness. The Examiner reasonably relies upon Coppeta to teach the reaction system comprising a reaction device, a reaction region, a first material, and a remotely activatable control element which inherently modifies the rate or kinetics of a chemical reaction as discussed in the anticipation rejection above (See also FF 13-16). The Examiner reasonably finds that Biscup teaches a device which also releases pharmaceutical components from a reservoir implanted into a patient (FF 17) and which may be controlled by Appeal 2011-009284 Application 11/272,524 24 electromagnetic wave transmitters and receivers (FF 18-19). We agree with the Examiner that incorporation of these remote control signal sources or electromagnetic transmitters and receivers of Biscup into the device of Coppeta would have reasonably been obvious. Such a combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. Claim 100 Appellants contend that the “Examiner failed to provide any detailed explanation as to how paragraph [0121] cures the defects of Coppeta as already admitted by the Examiner” (App. Br. 72). We are not persuaded. Biscup teaches software, specifically that “the parameters for allowing and/or causing the release of one or more substances can be altered by reprogramming (e.g., new data, additional data, new source code, additional source code, etc.) during the healing process” (Biscup 5 ¶ 0020; FF 19). Biscup also teaches hardware which is involved in the process (FF 17-19). Therefore, Biscup reasonably satisfies the requirement for both software and hardware which control the signal (FF 17-20). Claim 121 Appellants contend that there “is no teaching or suggestion, and the Examiner failed to point to one, in paragraph [0083] of Coppeta of ‘wherein the remotely activatable control element includes’ a ‘magnetically active material’” (App. Br. 74). We are not persuaded. Claim 121 simply requires that a remote activatable control agent includes, among many choices, a “magnetically active material” or an “electrically active material”. The reservoir caps of Appeal 2011-009284 Application 11/272,524 25 Coppeta which are heated by electric current until rupture are reasonably interpreted as an “electrically active material” (FF 16). Similarly, the gel material which is magnetically responsive is reasonably interpreted as a “magnetically active material” (FF 13). Claim 123 Appellants contend that “the Examiner failed to point to a single disclosure or suggestion in the Examiner-cited portion of Coppeta of a ‘valve responsive to a change in at least one dimension of the remotely activatable control element and configured to modify the flow of fluid into the reaction region’” (App. Br. 76). The Examiner finds that “the reaction system includes a valve responsive to a change in at least one dimension of the remotely activatable control element” (Ans. 11-12). We find that Examiner have the better position. The Specification teaches that the “valve may be formed in its entirety by the remotely activatable control element . . . If the remotely activatable control element forms all or a part of a valve structure or system, it may modify the rate or kinetics of the reaction occurring in the reaction device by modifying the flow of fluid into or through the reaction device” (Spec. 23; FF 21). Thus, the valve may be entirely composed of the remote control element, and Coppetta teaches an embodiment where the barrier layer remote control component is entirely dissolved to permit entry of reactants (FF 14), which reasonably represents a change in the dimension of the barrier layer, and thus the remote activatable control element. Appeal 2011-009284 Application 11/272,524 26 Conclusion of Law The evidence of record supports the Examiner’s finding that Coppeta and Biscup render claims 83, 100, 121, and 123 obvious. Pursuant to 37 C.F.R. § 41.37(c)(1), claim 122 also falls as this claim was not argued separately. SUMMARY In summary, we affirm claims 1, 21, 45, and 101-103, 105, 107, 109, 112, 113, 115, 118, and 120 under 35 U.S.C. § 102(b) as anticipated by Kraus. We reverse the rejection of claims 104, 106, 108, 110, 111, 114, 116, 117, and 119 under 35 U.S.C. § 102(b) as anticipated by Kraus. We affirm the rejection of claims 1 and 22 under 35 U.S.C. § 102(e) as anticipated by Herman. We affirm the rejection of claim 124 under 35 U.S.C. § 102(e) as anticipated by Coppeta. We affirm the rejection of claims 83, 100, and 121-123 under 35 U.S.C. § 103(a) as obvious over Coppeta and Biscup. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART lp Copy with citationCopy as parenthetical citation