Ex Parte Nyhart

Board of Patent Appeals and Interferences

May 10, 2012

11931729 (B.P.A.I. May. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ELDON H. NYHART, JR.
__________

Appeal 2011-002256
Application 11/931,729
Technology Center 3700
__________

Before TONI R. SCHEINER, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
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Application 11/931,729

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STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. A method for providing a compound into a flowing fluid, comprising:
providing a section of tubing;
providing a matrix material bonded to an interior of the tubing; and
providing a compound captured in the matrix material; the compound
being releasable from the matrix material upon application of energy to the
matrix material.

The following grounds of rejection are before us for review:
I. Claims 1-9 and 11-15 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Lindall
1
and
Hukins
2
(Ans. 3). As Appellant only argues claim 5 separately
(App. Br. 5), claims 2-4, 6-9 and 11-15 stand or fall with claim 1.
II. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Lindall and Hukins as
further combined with Rosenthal
3
(Ans. 5).
III. Claims 16-20 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Lindall and Hukins as
further combined with Altman
4
(Ans. 5).
We affirm-in-part.

1
Lindall, US 5,470,307, issued Nov. 28, 1995.
2
Hukins et al., US 5,201,724, issued Apr. 13, 1993.
3
Rosenthal et al., US 6,524,274 B1, issued Feb. 25, 2003.
4
Altman et al., US 6,086,582, issued Jul. 11, 2000.
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Application 11/931,729

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ANALYSIS
As to Rejection I, we adopt the Examiner‟s finding and conclusions as
our own. In summary, the Examiner finds that Lindall discloses all of the
limitations of claim 1, except for teaching that the matrix and compound are
located on the interior surface of the tubing (Ans. 3-4). The Examiner cites
Hukins as evidence that it is well known in the art to coat the interior of a
catheter with a beneficial material (id. at 4). The Examiner concludes that it
would have been obvious to the ordinary artisan to place the matrix and
compounds of Lindall on the interior surface of the catheter as described by
Hukins because such an arrangement would not alter the function of the
device, that is, moderated drug delivery via a catheter (id. at 5).
Appellant argues that “Lindall cites as a „distinct‟ object that his
therapeutic agents are not protected by an exterior sheath (col. 3, lines 25-
30),” and thus placing the medicaments on the interior of the catheter “is
directly incompatible with this „distinct‟ objective‟” (App. Br. 3).
According to Appellant, the entire discussion of Lindall is about “„exposed
coatings,‟” thus the combination suggested by the Examiner “is wholly
against the teachings of Lindall” (id. at 4).
We have carefully considered Appellant‟s arguments, but do not find
them convincing. In determining whether obviousness is established by
combining the teachings of the prior art, “the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). In addition, a
reference disclosure is not limited only to its preferred embodiments, but is
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available for all that it discloses and suggests to one of ordinary skill in the
art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
In this case, Lindall is drawn to “catheters capable of applying a
chemical compound such as a drug or similar therapeutic agent to a remotely
located tissue site through a restricted passage, and particularly to a low
profile catheter system which utilizes light energy to selectively release that
chemical compound” (Lindall, col. 1, ll. 8-13). According to Lindall:
Exposed coatings generally require some type of sheath
or shield that is removed from the catheter prior to the coating
being melted or released. The sheath and any connections
required to physically manipulate the sheath greatly increase the
profile of the catheter, and limit the variety of applications for
which such systems can be used. Moreover, the binders or
adhesives used to formulate these coatings can account for the
majority of their volume, and significantly dilute the
concentration of the therapeutic agent.

(Id. at col. 2, ll. 59-67.) Lindall teaches it is “a[n] . . . object of this
invention to design . . . [a] catheter system . . . that . . . utilizes light energy
to selectively release . . . [a] therapeutic agent . . . . such that a relatively
large volumes of concentrated therapeutic agent may be delivered by the
catheter without a carrier, and that such therapeutic agents need not be
diluted by a carrier or protected by an exterior sheath” (id. at col. 3, ll. 20-
30.)
Thus, while Lindall teaches that the matrix and therapeutic agent is on
the exposed surface, we agree with the Examiner that it would have been
obvious to use the matrix and therapeutic agent on the interior of a catheter
as the ordinary artisan would understand that the system of Lindall could be
used to selectively deliver a therapeutic agent by using light energy to
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release that agent to wherever it is needed, by using either the interior or the
exterior of the catheter. And as found by the Examiner and not disputed by
Appellant, Hukins is evidence that it is well known in the art to coat the
interior of a catheter with a beneficial material.
To the extent that Appellant is arguing that Lindall teaches away from
the combination, we note that “in general, a reference will teach away if it
suggests that the line of development flowing from the reference‟s
disclosure is unlikely to be productive of the result sought by the applicant.”
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Lindall teaches that its
system is used so that the therapeutic agents need not be diluted by a carrier
or protected by an exterior sheath. But, the ordinary artisan would
understand that placing the matrix and therapeutic agent on the interior of
the tubing would still allow for delivery of the therapeutic agent, and also
gain the advantage of not being diluted by a carrier.
As to claim 5, Appellant argues that the Examiner infers that Lindall
teaches varying wavelength, intensity, and time, but that is an error to find
that “such teachings inherently teach providing light energy based upon a
fractally-based pattern” (App. Br. 5).
Claim 5 specifies that the compound is releasable from the matrix
upon irradiation by a laser (see claim 3 upon which claim 5 is dependent),
wherein the irradiation is in a fractally-based pattern. The Examiner notes
that the language is only functional language, thus “the device of the prior
art need only be capable of achieving that function” (Ans. 8). The Examiner
further finds that:
Lindall teaches that the rate of release of the compound can be
controlled by the quantity of light energy released. The
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examiner notes that quantity of light released is dependent upon
wavelength, intensity, and time. Thus, Lindall effectively
teaches the use of the laser in a pulsed fashion, and the
examiner notes that it would then be capable of producing
pulses in a fractally-based pattern.

(Id.)
The Examiner‟s reason is that because Lindall teaches that the release
of a compound can be controlled by the quantity of light energy released,
that necessarily requires the use of a pulsed laser, which is then capable of
producing pulses in a fractally-based pattern. This is not an inherency
argument, since the Examiner does not find that the laser necessarily
produces irradiation in a fractally based pattern.
“Rejections 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). The
Examiner‟s reasoning, however, is too conclusory to pass the Kahn test, and
we are thus compelled to reverse the rejection as to claim 5.
As to Rejections II and III, Appellant asserts that the rejections stand
or fall with the rejection of claim (App. Br. 6), and thus the rejections are
affirmed for the reasons set forth with respect to the rejection of claim 1.

Appeal 2011-002256
Application 11/931,729

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SUMMARY
The rejection of claims 1-9 and 11-15 under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Lindall and Hukins is
affirmed as to claims 1-4, 6-9 and 11-15, but is reversed as to claim 5.
The rejection of claim 10 under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Lindall and Hukins as further combined with
Rosenthal is affirmed.
The rejection of claims 16-20 under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Lindall and Hukins as further
combined with Altman is affirmed.

TIME PERIOD FOR RESPONSE
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

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