Broderick, Kate et al.

Patent Trials and Appeals Board

Jul 28, 2020

2019004037 (P.T.A.B. Jul. 28, 2020)

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.
13/581,700 08/29/2012 Kate Broderick VGX0118 US 7275
144212 7590 07/28/2020
Inovio Pharmaceuticals
660 W Germantown Pike
Suite 110
Plymouth Meeting, PA 19462
EXAMINER
WILSON, LARRY ROSS
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
07/28/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
US.Patents@inovio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KATE BRODERICK, FENG LIN,
JAY MCCOY, STEPHEN V. KEMMERER, and
RUNE KJEKEN
____________________

Appeal 2019-004037
Application 13/581,700
Technology Center 3700
____________________
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–21. We have jurisdiction under 35 U.S.C.
§ 6(b). The Board held an oral hearing on July 22, 2020.
We REVERSE.
According to Appellant, the “invention relates to dual depth
electroporation devices capable of electroporating both muscle tissue and

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Inovio Pharmaceuticals, Inc. as the
real party in interest. Appeal Br. 3.
Appeal 2019-004037
Application 13/581,700

2
skin tissue in a single application.” Spec., Abstract. Below, we reproduce
claim 1 as illustrative of the appealed claims.
1. A dual depth electroporation device capable of
electroporating both muscle tissue and skin tissue in a single
application, comprising:
an electrical pulse generator;
an array in electrical communication with said electrical
pulse generator, said array having a first set of electrodes and a
second set of electrodes;
wherein the first set of electrodes is for intramuscular
delivery of a first electrical pulse, the first set of electrodes
having a length of about 10 mm to about 35[]mm, and wherein
the second set of electrodes is for intradermal delivery of a
second electrical pulse, the second set of electrodes having a
length of about 0.01[]mm to about 4[]mm,
and wherein the array is configured such that the first set
of electrodes is positioned for intramuscular delivery at the
same time the second set of electrodes is positioned for
intradermal delivery.
Appel Br., Claims App.
REJECTION AND PRIOR ART
The Examiner rejects claims 1–21 under 35 U.S.C. § 103 as
unpatentable based on Zhang et al. (US 2006/0084938 A1, published
Apr. 20, 2006) (“Zhang”), Draghia-Akli et al. (US 2008/0091135 A1,
published Apr. 17, 2008) (“Draghia-Akli”), and Pachuk
(US 2010/0323001 A1, published Dec. 23, 2010).

Appeal 2019-004037
Application 13/581,700

3
ANALYSIS
As set forth above, independent claim 1 recites, in relevant part:
1. A dual depth electroporation device capable of
electroporating both muscle tissue and skin tissue in a single
application, comprising:
. . . an array in electrical communication with [an]
electrical pulse generator, said array having a first set of
electrodes and a second set of electrodes;
wherein the first set of electrodes is for intramuscular
delivery of a first electrical pulse, . . . and wherein the second
set of electrodes is for intradermal delivery of a second
electrical pulse . . .,
and wherein the array is configured such that the first set
of electrodes is positioned for intramuscular delivery at the
same time the second set of electrodes is positioned for
intradermal delivery.
Appeal Br., Claims App.
We assume arguendo that the Examiner is correct that Zhang discloses
an array with first and second sets of electrodes. See Answer 6 (“Zhang
teaches an array having a first set of electrodes and a second set of
electrodes in Fig[ure] 8 which shows an array of electrodes where 3
electrodes on the left form the first set of electrodes[,] and 3 electrodes on
the right form the second set of electrodes, thereby satisfying the claimed
structure of the array.”). The Examiner seems to find that Zhang discloses
an embodiment in which the array’s first set of electrodes is for
electroporating muscle, while the array’s second set of electrodes is for
electroporating skin. See id. (“Zhang also shows that the electrodes are used
for intradermal and/or intramuscular electroporation.”) (emphasis added)
(citations omitted). Such a finding seems to be at odds, however, with the
Examiner’s finding that Zhang does not disclose that the array is configured
Appeal 2019-004037
Application 13/581,700

4
such that the first set of electrodes is positioned for intramuscular delivery at
the same time the second set of electrodes is positioned for intradermal
delivery. See id. (“Zhang[] . . . [does not disclose that] the array is
configured such that the first set of electrodes is positioned for intramuscular
delivery at the same time the second set of electrodes is positioned for
intradermal delivery.”). Nonetheless, based on our review of the portions of
Zhang that the Examiner cites in the Final Office Action and Answer, it
appears that Zhang discloses one or more embodiments for electroporating
skin, and one or more embodiments for electroporating muscle, but no
embodiments for electroporating both skin and muscle. See Final Action 2–
3; see, e.g., Answer 4–6.
However, according to the Examiner, Pachuk discloses an array that is
configured such that a first set of electrodes is positioned for intramuscular
delivery at the same time the array’s second set of electrodes is positioned
for intradermal delivery. See Answer 6. Specifically, the Examiner finds
that “Pachuk teaches that simultaneous electroporation of skin and muscle
cells can be accomplished with electroporation ([Final] Office Action . . .
citing Pachuk [¶] 58).” Id. The relevant sentence on which the Examiner
relies states that Pachuk’s “invention encompasses delivery regimens where
dsRNAs or nucleic acid vectors expressing the same are delivered to both
skin cells and muscle cells simultaneously or sequentially.” Pachuk ¶ 58
(emphasis added). It is not clear that this portion of Pachuk discloses an
array that is configured such that its first set of electrodes is positioned for
intramuscular delivery at the same time the array’s second set of electrodes
is positioned for intradermal delivery, however. Appeal Br. 5–6. It may be,
for example, that Pachuk contemplates using two different electroporation
Appeal 2019-004037
Application 13/581,700

5
devices on two different areas of the body, simultaneously. Further, the
Examiner does not otherwise support adequately, based on this portion of
Pachuk, that it would have been obvious to modify Zhang to provide an
array configured such that the array’s first set of electrodes is positioned for
intramuscular delivery at the same time the array’s second set of electrodes
is positioned for intradermal delivery.
Consequently, we do not sustain the Examiner’s obviousness rejection
of independent claim 1. The remaining claims depend from, or otherwise
include the same recitation as that discussed above with respect to, claim 1.
Thus, we also do not sustain the Examiner’s obviousness rejection of
claims 2–21.
CONCLUSION
We REVERSE the Examiner’s obviousness rejection of each of the
claims.
In summary:

REVERSED
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–21 103 Zhang, Draghia-Akli,
Pachuk
1–21