Ex Parte Akiyama et al

Board of Patent Appeals and Interferences

Jun 25, 2012

11522496 (B.P.A.I. Jun. 25, 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.
11/522,496 09/14/2006 Hidero Akiyama 911162.462 1444
500 7590 06/26/2012
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
SHUMATE, VICTORIA PEARL
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
06/26/2012 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 HIDERO AKIYAMA,
KIYOSHI KANAMURA, MIZUO NAKAYAMA,
TAKEHIKO MATSUMURA, and AKIHIKO MATSUMURA
__________

Appeal 2011-001714
Application 11/522,496
Technology Center 3700
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to an iontophoresis
device. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
“Iontophoresis involves using an electric potential to transdermally
drive dissociated active agent ions in solution through a biological interface
of a subject, transferring the active agent into the subject” (Spec. 1). One
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drawback of iontophoresis is that, depending on the ions present in the
electrolyte solution, electrode reactions may generate hydrogen gas, oxygen
gas, chlorine gas, or hypochlorous acid (id. at 2).
To address this issue Appellants disclose an iontophoresis device that
includes an ionic liquid electrolyte (see id. at 15). The Specification defines
“ionic liquid” as “a molten salt present as a liquid at or near room
temperature” (id. at 11).
Claims 1, 4-6, 9-11, 14, 15, 18, 23, and 24 stand rejected and appealed
(App. Br. 4). The claims have not been argued separately and therefore
stand or fall together. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 is representative and reads as follows:
1. An iontophoresis device, comprising:
an active electrode assembly comprising:
a first electrode supplied with an electric potential of a
first polarity;
an ionic liquid reservoir that holds an ionic liquid in contact
with the first electrode; and
an active agent reservoir placed on an outer surface with respect
to the ionic liquid reservoir, the active agent reservoir holding active
agent ions of the first polarity.

The sole rejection before us for review is the Examiner‟s rejection of
claims 1, 4-6, 9-11, 14, 15, 18, 23, and 24 under 35 U.S.C. § 103(a) as
obvious over Sage
1
and McEwen
2
(Ans. 3-4).
DISCUSSION
The Examiner found that Sage taught an iontophoresis device
configured substantially as recited in claim 1, including an ionic liquid, but

1
WO 97/48444 A1 (published December 24, 1997).
2
U.S. Patent App. Pub. No. 2002/0110739 A1 (published August 15, 2002).
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conceded that Sage did not “explicitly teach or disclose that the ionic liquid
is a molten salt as defined by the specification” (Ans. 4). To address that
deficiency, the Examiner cited McEwen as disclosing a variety of ionic
liquids meeting the definition in Appellants‟ Specification, and found that
those liquids “can be used as electrolytes” (id.).
The Examiner reasoned that an ordinary artisan would have
considered it obvious to “substitute the simple salt solutions used by Sage et
al with the molten salts of McEwen et al because these molten salts have
high thermal stability and reduced flammability (Abstract), making them
ideal candidates for applications that involve direct contact with a patient”
(id.).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

Appellants‟ arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner‟s conclusion that claim 1 would have
been prima facie obvious to an ordinary artisan. Specifically, we are not
persuaded that the Examiner erred in concluding that an ordinary artisan
would have considered it obvious to use McEwen‟s molten salts as the
electrolyte in Sage‟s iontophoresis device.
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court reaffirmed that “when a patent „simply arranges old elements with
each performing the same function it had been known to perform‟ and yields
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no more than one would expect from such an arrangement, the combination
is obvious.” Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273
(1976)).
The Court thus reaffirmed the obviousness of substituting one known
equivalent for another:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

Id. at 421.
Here, it is undisputed that Sage describes a device having all of the
features required by claim 1, except that the electrolytes described by Sage
as contacting its electrodes (see Sage 42) does not include an ionic liquid in
the form of a molten salt, as claim 1 requires by way of the definition of
“ionic liquid” in the Specification (Spec. 11). As the Examiner pointed out,
however, and is again undisputed, the molten salt ionic liquids required by
claim 1 were known in the art to be useful as battery electrolytes to conduct
current in the same way as Sage‟s electrolytes, when in contact with an
appropriate electrode (see McEwen, e.g. at [0013], [0045]).
Thus, on the current record, the Examiner has advanced evidence that
an ordinary artisan would have recognized McEwen‟s liquids as being
capable of functioning as electrolytes in the same manner as Sage‟s
electrolytes, and Appellants have promulgated no evidence suggesting that
finding is unreasonable. A preponderance of the evidence therefore supports
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the Examiner‟s finding that an ordinary artisan would have considered
McEwen‟s electrolytes to be functional equivalents of Sage‟s electrolytes. A
preponderance of the evidence therefore also supports the Examiner‟s
conclusion that an ordinary artisan would have considered it obvious to
substitute McEwen‟s electrolytes for Sage‟s.
We acknowledge, as Appellants argue (see App. Br. 13-15), that while
the Examiner found that the relatively high thermal stability and low
flammability of McEwen‟s electrolytes (see McEwen, abstract) would have
prompted an ordinary artisan to use them in Sage‟s device, the Examiner did
not clearly identify any specific teaching of a flammability or heat problem
in Sage‟s devices. We also acknowledge the differences between the lithium
ion batteries described by McEwen (McEwen [0007]) and the iontophoretic
devices described by Sage (Sage, abstract).
However, as our reviewing court‟s predecessor has stated, “[e]xpress
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA
1982); see also In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997)
(“Because the applicants merely substituted one element known in the art for
a known equivalent, this court affirms [the rejection for obviousness].”).
Thus, as the Examiner argues (Ans. 5-6), because an ordinary artisan
would have recognized the electrolytes of Sage and McEwen as being
functional equivalents, the artisan would have considered it obvious to
substitute one for the other. See also KSR, 550 U.S. at 421 (“When there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.”).
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Moreover, as the Examiner points out, McEwen provides a general
teaching that its electrolytes are suitable not only for battery applications,
but also “other applications requiring ionically conductive medium, that
have reduced flammability compared to prior art devices” (McEwen [0013]
(emphasis added)). We are not persuaded that it was unreasonable for the
Examiner to find, even in the absence of a specific teaching to that effect in
the prior art, that it would be desirable to use heat stable materials with low
flammability in a device that is applied to the skin, such as Sage‟s.
As to the assertion that an ordinary artisan would have recognized that
“time, expense and/or manufacturing changes [would be] required to
substitute the ionic liquids or molten salts of McEwen for the aqueous
electrolytes in the device of Sage” (App. Br. 16), as the Federal Circuit has
noted, “[t]hat a given combination would not be made by businessmen for
economic reasons does not mean that persons skilled in the art would not
make the combination because of some technological incompatibility. Only
the latter fact would be relevant.” In re Farrenkopf, 713 F.2d 714, 718 (Fed.
Cir. 1983).
We are also not persuaded, as Appellants argue (App. Br. 18-21), that
McEwen is non-analogous art to the present invention, or to Sage. It may be
true that rechargeable lithium ion batteries and iontophoretic apparatuses are
different devices.
However, as noted above, McEwen itself recognizes the usefulness of
its electrolytes in applications beyond merely batteries (McEwen [0013]
(“The invention is directed improved electrolytes for application in electrical
storage devices, such as batteries and capacitors, electrochromic display and
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other applications requiring ionically conductive medium, that have reduced
flammability compared to prior art devices.” (emphasis added).)
Moreover, even if a reference is in a different field of endeavor than
the invention, the reference is not non-analogous art if it is “is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (internal quotations omitted).
As in the claimed invention, and in Sage, McEwen describes
electrolyte compositions that provide an ionically conductive medium
suitable for contact with electrodes. As the Examiner thus reasonably found
that McEwen‟s compositions were reasonably pertinent to problems
involved in Appellants‟ iontophoretic devices, as well as Sage‟s, we are not
persuaded that McEwen is non-analogous art as to the present in invention.
Compare, In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed.
Cir. 2007) (citing In re Paulsen, 30 F.3d 1475, 1481 (Fed. Cir. 1994)):
[A]n inventor considering a hinge and latch mechanism for
portable computers would naturally look to references
employing other “housings, hinges, latches, springs, etc.” which
in that case came from areas such as “a desktop telephone
directory, a piano lid, a kitchen cabinet, a washing machine
cabinet, a wooden furniture cabinet, or a two-part housing for
storing audio cassettes.”

As to Appellants‟ argument that the non-analogousness of McEwen to
Sage and the instant invention is supported by the divergent classifications in
the U.S. and international schemes, such evidence “is inherently weak . . .
because considerations in forming a classification system differ from those
relating to a person of ordinary skill seeking solution for a particular
problem.” In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982).
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Thus, given that McEwen describes a composition that an ordinary
artisan would have recognized as being useful in devices such as described
by Sage, we are not persuaded that McEwen is non-analogous art to the
present invention, even assuming they were known to have different
classifications.
Appellants also argue that the Examiner did not use the term “ionic
liquid” exclusively as defined in Appellants‟ Specification (App. Br. 21-22).
However, as discussed above, when evaluating claim 1 in light of the prior
art, the Examiner applied the definition set forth in the Specification, as
evidenced by the undisputed fact that McEwen‟s ionic liquids meet that
definition.
In sum, for the reasons discussed, Appellants‟ arguments do not
persuade us that the preponderance of the evidence fails to support the
Examiner‟s prima facie case of obviousness as to claim 1. As Appellants
point to no evidence directed to secondary considerations of non-
obviousness, we affirm the Examiner‟s obviousness rejection as to claim 1.
As the remaining claims were not argued separately, they fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We affirm the Examiner‟s rejection of claims 1, 4-6, 9-11, 14, 15, 18,
23, and 24 under 35 U.S.C. § 103(a) as obvious over Sage and McEwen.

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TIME PERIOD
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

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