Ex Parte Kanamura et al

Board of Patent Appeals and Interferences

Jul 31, 2012

11501672 (B.P.A.I. Jul. 31, 2012)

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.
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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.
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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.
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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
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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.)
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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
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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
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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
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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.
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REVERSED

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