Ex Parte Kanamura et alDownload PDFBoard of Patent Appeals and InterferencesJul 31, 201211501672 (B.P.A.I. Jul. 31, 2012) Copy Citation 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. 11/501,672 08/08/2006 Kiyoshi Kanamura 911162.438 5394 500 7590 08/01/2012 SEED INTELLECTUAL PROPERTY LAW GROUP PLLC 701 FIFTH AVE SUITE 5400 SEATTLE, WA 98104 EXAMINER HOLLOWAY, IAN KNOBEL ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 08/01/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte KIYOSHI KANAMURA, NOBUHARU KOSIBA, MIZUO NAKAYAMA, TAKEHIKO MATSUMURA, HIDERO AKIYAMA, and AKIHIKO MATSUMURA __________ Appeal 2011-007123 Application 11/501,672 Technology Center 3700 __________ Before DONALD E. ADAMS, ERIC GRIMES, and ULRIKE W. JENKS, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of all pending claims directed to an iontophoresis device. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-007123 Application 11/501,672 2 STATEMENT OF THE CASE Claims 1-33, 35-38 and 53-55 are on appeal, 1 and can be found in the Claims Appendix of the Appeal Brief (App. Br. 48-55). The claims are directed to an iontophoresis device comprising a polarized electrode, where the polarized electrode is made up of an electrical double layer including a conductive material. Claims 1, 7, 16, and 53-55 are independent claims. Claim 16 is representative of the claims on appeal, and reads as follows: 16. An iontophoresis device, comprising: an electrode assembly comprising a polarized electrode, the polarized electrode comprising an electrical double layer, the electrical double layer including activated carbon. Each of the other independent claims also is directed to an iontophoresis device comprising a polarized electrode. The following grounds of rejection are before us for review: I. The Examiner has rejected claims 1-3, 6, 8-9, 16-19, and 32-33 under 35 U.S.C. § 103(a) as unpatentable over Sun 2 in view of Tateishi. 3 II. The Examiner has rejected claims 4, 10, 20-21, 24, and 27-28 under 35 U.S.C. § 103(a) as unpatentable over Sun in view of Sasaki. 4 1 Although the Examiner states (Ans. 2) that claims 1-38, 40, 43, and 45-55 are pending and rejected, as Appellants have pointed out (App. Br. 4), the Examiner has provided no basis for rejecting claims 40, 43, or 45-52. In addition, none of the rejections in the Answer includes claim 34. 2 Sun et al., US 2007/0060862 A1, published Mar. 15, 2007. 3 Tateishi et al., US 2007/0139862 A1, published Jun. 21, 2007. 4 Sasaki et al., US 2006/0260955 A1, published Nov. 23, 2006. Appeal 2011-007123 Application 11/501,672 3 III. The Examiner has rejected claims 5, 11-14, and 35-38 under 35 U.S.C. § 103(a) as unpatentable over Sun in view of Young. 5 IV. The Examiner has rejected claims 7 and 15 under 35 U.S.C. § 103(a) as unpatentable over Sun. V. The Examiner has rejected claims 22-23, 25-26, 29-31 and 53- 55 under 35 U.S.C. § 103(a) as unpatentable over Sun in view of Sasaki and Young. ISSUE The Examiner found that Sun disclosed an iontophoresis device comprising an electrode containing a conductive material. (Ans. 3.) The Examiner admits that Sun did not disclose a polarized electrode (Ans. 4, 5, 12) or an electrode containing active carbon (Ans. 5). The Examiner found that Tateishi disclosed a polarized electrode. (Ans. 4.) The Examiner concluded that “it would have been obvious to one of ordinary skill in the art to apply the electrode as taught in T[ateishi], to improve the device of Sun for the predictable result of making it more effective.” (Ans. 4.) Appellants assert that “in the context of Tateishi, faster charging and any increased effectiveness relate to electrical storage in a rechargeable power source . . . not to the delivery of active agent ions by application of an electromotive force.” (App. Br. 23-24.) It was not explained “how one would combine Tateishi's electrode composite body with improved doping/de-doping characteristics and repetition stability in electrical storage applications and Sun's device having an electrode and a carrier material for 5 Young et al., US 2007/0100274 A1, published May 3, 2007. Appeal 2011-007123 Application 11/501,672 4 transdermal delivery of active agent to improve the efficiency of the delivery device.” (App. Br. 25.) In Appellants’ words, “it is not clear how combining the teaching of Tateishi with those of Sun would predictably improve effectiveness. The Office only provides as possible improvements [such as] faster charging and faster delivery of medication.” (App. Br. 23.) FINDINGS OF FACT FF1. Sun disclosed a device comprising conductive electrodes for delivering active agents to the skin (Sun 4, ¶ 0047.) The electrodes were placed in two separate compartments and were in ionic communication with each other by completing the circuit through the skin. The advantage of using two separate compartments is that it allows active agents of opposite charge to be delivered in essentially the same carrier. (Id.) FF2. Sun disclosed the use of a battery as a power source (Sun 5, ¶ 0051) as well as the use of a galvanic couple electrode as a power source (Sun 5, ¶ 0052). FF3. Sun disclosed reactive conductive electrodes where the electrode itself experiences a change in its chemical composition while the electric current passes through the electrode (Sun 7, ¶ 0077). The metallic ions are released by the anode into the carrier and delivered to the barrier membrane [e.g. skin] where the metallic ions may serve therapeutic benefits. (Id.) FF4. Sun disclosed inert conductive electrodes, where the electrode itself does not undergo a change in its chemical composition. The electrochemical process at the surface of the anode generates oxidizing agents such as Appeal 2011-007123 Application 11/501,672 5 oxygen and chlorine-containing oxidizing agents. (Sun 8, ¶ 0079) These by-products have antimicrobial activity. (Id.) FF5. Tateishi disclosed that “the electric double layer capacitor disadvantageously has an extremely small energy density compared with the secondary battery.” (Tateishi 1, ¶ 0003). FF6. Tateishi disclosed a polarized electrode made of a conductive polymer/carbon composite body (Tateishi 6, ¶ 0089). Tateishi disclosed a method of preparing the polarized electrode for use in an electric double layer capacitor (Tateishi 6, ¶ 0079). FF7. Tateishi discloses that its electrical double layer capacitor was “an effort for increasing the capacitance of an electric double layer capacitor using a pseudo-capacitance and for improving the repetition stability of the pseudo-capacitance” (Tateishi 3, ¶ 0037). FF8. Sasaki disclosed improving the oxygen reduction activity of a gas diffusion electrode. (Sasaki 2, ¶ 0014.) Oxygen was supplied from the gas diffusion side and was subjected to reduction reaction on the oxygen reduction catalyst fixed to the reaction layer. (Sasaki 2, ¶ 0083.). FF9. Young disclosed that the electrodes may comprise a galvanic couple that can be used with or without secondary power source. (Young 5, ¶ 0037- 0038.) The anodic electrode was electrochemically oxidizable, and the cathodic electrode was electrochemically reducible. Silver (anode) and silver chloride (cathode) are preferred because they are non-toxic to the body. (Young 4, ¶ 0035.) Appeal 2011-007123 Application 11/501,672 6 PRINCIPLES OF LAW “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies” in the cited references. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). ANALYSIS I. Obviousness over Sun in view of Tateishi The Examiner takes the position that “it would have been obvious to one of ordinary skill in the art to apply the electrode as taught in T[ateishi], to improve the device of Sun for the predictable result of making it more effective.” (Ans. 4, 5) Sun disclosed an iontophoresis device for the delivery of active agent to the skin (FF1). The Examiner admits that Sun does not disclose a polarized electrode (Ans. 4, 5, 12). Tateishi teaches a polarized electrode (FF6). The Examiner asserts that the Tateishi “modification results in an improved capacitance and therefore an improved transport profile in the device of Sun.” (Ans. 12-13.) Appellants contend that the Examiner has not shown that “combining the teachings of Tateishi with those of Sun would predictably improve effectiveness” (App. Br. 23). Appellants point out that “in the context of Appeal 2011-007123 Application 11/501,672 7 Tateishi, faster charging and any increased effectiveness relate to electrical storage in a rechargeable power source, in particular to repetition stability, not to the delivery of active agent ions by application of an electromotive force via an electrode of an iontophoresis device” (id. at 23-24). Appellants argue that “it is not clear that increased speed of delivery would correspond to improved effectiveness in [Sun’s] device” (id. at 24). After reviewing the evidence, we agree with Appellants that the Examiner has not set out a prima facie case. The Examiner has not provided any persuasive reasoning why the ordinary artisan would use a polarized electrode in Sun’s device. A rejection for obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Examiner asserts that use of a polarized electrode of Tateishi “would allow for faster charge, and therefore faster delivery of medication.” (Ans. 5.) Tateishi is silent with regard to delivery of medicine. The Examiner has not explained how improved capacitance, in other words the ability to store an electrical charge, can improve a device that requires electromotive force to administer products across a barrier. The Examiner has not explained how the improved storage of the electrical charge using the capacitor of Tateishi translates into an improved operation of the device of Sun. The disadvantage of an electric double layer capacitor is that is has only a small energy density (FF5); Tateishi discloses that its invention addresses this disadvantage (FF7). The Examiner asserts that the combination would result in power savings (Ans. 12) but has not pointed to evidence supporting this Appeal 2011-007123 Application 11/501,672 8 assertion or explained were these power savings come into effect during the operation of Sun’s device. Nor has the Examiner provided evidence or sound technical reasoning to support the conclusion that “faster delivery of medication” (Ans. 4) would be recognized by those skilled in the art to be “an improved transport profile” (id. at 12) in the context of Sun’s device. We find that the Examiner has not provided a sound rational to combine Sun and Tateishi to arrive at the instantly claimed invention. II. Remaining obviousness rejections The Examiner has rejected independent claim 7 and dependent claims 4, 5, 10-15, 20-31, 35-38, and 53-55 as obvious based on Sun alone (Ans. 9), Sun in view of Sasaki (Ans. 6), Sun in view of Young (Ans. 7), or Sun in view of Sasaki and Young (Ans. 10). Independent claim 7, like each of the other independent claims, requires a polarized electrode (see App. Br. 48-55 (Claims Appendix)). Appellants argue that none of Sun, Sasaki, or Young discloses a polarized electrode (App. Br. 25, 30, 33-34, 38). After reviewing the evidence, we agree with Appellants that the Examiner has not set out a prima facie case. The combination of references needs to teach or suggest all the limitations including the polarized electrode set out in the independent claims. “Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious.” In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). Although the Examiner finds (Ans. 9), contrary to his finding in the rejection based on Sun and Tateishi (Ans. 4), that Sun actually teaches a Appeal 2011-007123 Application 11/501,672 9 polarized electrode, we agree with Appellants that it does not. The Examiner cites element 200 of Sun, which Sun describes as an electrode assembly that includes a carrier layer, a conductive electrode, and a backing layer (Sun 15, ¶ 0150). Sasaki did not disclose a polarized electrode. (App. Br. 30.) Sun did not disclose a polarized electrode. (Ans. 4, 5, 12.) Young did not disclose a polarized electrode. (App. Br. 33.) Because the “polarized electrode” limitation, a requirement in all independent claims, is not contained in the references, and the Examiner has not explained why it would have been obvious, we cannot sustain a rejection for obviousness based on Sun, Sun in view of Sasaki, Sun in view of Young, or Sun in view of Sasaki and Young and reverse these rejections. SUMMARY The rejection claims 1-3, 6, 8-9, 16-19, and 32-33 under 35 U.S.C. § 103(a) as unpatentable over Sun in view of Tateishi is reversed. The rejection of claims 4, 10, 20-21, 24, and 27-28 under 35 U.S.C. § 103(a) as unpatentable over Sun in view of Sasaki is reversed. The rejection of claims 5, 11-14, and 35-38 under 35 U.S.C. § 103(a) as unpatentable over Sun in view of Young is reversed. The rejection of claims 7 and 15 under 35 U.S.C. § 103(a) as unpatentable over Sun is reversed. The rejection of claims 22-23, 25-26, 29-31 and 53-55 under 35 U.S.C. § 103(a) as unpatentable over Sun in view of Sasaki and Young is reversed. Appeal 2011-007123 Application 11/501,672 10 REVERSED alw Copy with citationCopy as parenthetical citation