Ex Parte Kanamura et al

Board of Patent Appeals and Interferences

Jun 4, 2012

11501176 (B.P.A.I. Jun. 4, 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.
11/501,176 08/07/2006 Kiyoshi Kanamura 911162.439 4319
500 7590 06/04/2012
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
06/04/2012 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, TAKEHIKO MATSUMURA,
MIZUO NAKAYAMA, HIDERO AKIYAMA,
and AKIHIKO MATSUMURA
__________

Appeal 2011-004107
Application 11/501,176
Technology Center 3700
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
iontophoresis device. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2011-004107
Application 11/501,176

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Statement of the Case
Background
“Iontophoresis involves electrically driving an active agent that has
dissociated into positive or negative ions in solution by using a voltage to
transdermally transfer the active agent into a subject” (Spec. 1, ll. 8-10).
The Claims
Claims 1-30 are on appeal. Claim 1 is representative and reads as
follows:
1. An iontophoresis device, comprising:
at least one electrode assembly, the electrode assembly
including:
active agent ions; and
an electrode having a doping layer made of a material
effecting an electrochemical reaction due to doping or de-
doping of ions to administer at least some of the active agent
ions to a subject.

The issues

A. The Examiner rejected claims 1, 5-7, 10, 12, and 13 under 35 U.S.C. §
103(a) as obvious over Sun
1
and Tateishi
2
(Ans. 4-5).
B. The Examiner rejected claims 2-4, 8, 9, 11, and 14-30 under 35
U.S.C. § 103(a) as obvious over Sun, Tateishi, and Young
3
(Ans. 5-12).
A. 35 U.S.C. § 103(a) over Sun and Tateishi
The Examiner finds that Sun teaches “at least one electrode assembly,
(500, the device contains an electrode and the rest of the assembly) the

1
Sun et al., US 2007/0060862 A1, published Mar. 15, 2007.
2
Tateishi et al., US 2007/0139862 A1, published Jun. 21, 2007.
3
Young et al., US 7,054,682 B2, issued May 30, 2006.
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electrode assembly including active agent ions” (Ans. 4). The Examiner
finds that Sun “fails to disclose an electrode having a doping layer made of a
material effecting an electrochemical reaction due to doping or de-doping of
an ion” (id.). The Examiner finds that Tateishi “teaches an electrode having
a doping layer . . . made of a material effecting an electrochemical reaction
due to doping or de-doping of an ion” (id.).
The Examiner finds it obvious to “apply the electrode as taught in
[Tateishi], to improve the electrode assembly of [Sun] for the predictable
result of making the new electrode more effective and longer lasting” (id.).
Appellants contend that Sun “teaches devices and particular
characteristics of such devices suitable for use in treating skin conditions.
Sun does not disclose, suggest or discuss problems to be solved related to
transdermal delivery devices and their use” (App. Br. 17). Appellants
contend that as “described by Tateishi, doping/de-doping in fact occurs
within the conductive polymer composition, not in the electrode. Thus,
Tateishi thus does not disclose an electrode as having a doping layer”
(id. at 19).
Appellants contend that the “Office has provided no reasonable
motivation for combining the teachings of Tateishi with those of Sun” (id.).
Appellants contend that the
mere assertions by the Office that modification of the
transdermal delivery device of Sun according to the
teachings of Tateishi will improve the device of Sun by
providing a stable electrode body and a new electrode that is
more effective and longer lasting provide no articulated
reasoning and thus fail to support a legal conclusion of
obviousness

Appeal 2011-004107
Application 11/501,176

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(id. at 19-20).
The issue with respect to these rejections is: Does the evidence of
record support the Examiner’s conclusion that Sun and Tateishi render claim
1 obvious?
Findings of Fact
1. Sun teaches that “[i]ontophoresis enables enhanced as well as
better control of permeation rate of the ionic species into the skin” (Sun 1 ¶
0003).
2. Sun teaches that the “most common design of-an iontophoresis
device includes a power source (e.g., a battery), an electric control
mechanism, and two separate conductive electrodes. Each conductive
electrode is in contact with a separate electrolyte composition (with or
without an active agent” (Sun 1 ¶ 0004).
3. Sun teaches that “zinc ions are electrochemically generated by a
zinc anode in, or are subsequently added to, a topical composition. The
topical composition is then applied to the barrier membrane of the user for
the intended beneficial effects from the zinc ions and other active agents
present in the topical composition” (Sun 9 ¶ 0087).
4. Tateishi teaches “a redox capacitor, using a doping-dedoping
reaction of a conductive polymer” (Tateishi 1 ¶ 0001).
5. Tateishi teaches that a “composite body of an electrolyte and
electrodes used for redox capacitors, the composite body including at least
an ionic liquid and a conductive polymer, can be preferably used for a redox
capacitor in which the doping-dedoping reaction of the conductive polymer
is performed in the ionic liquid solution” (Tateishi 8 ¶ 0130).
Appeal 2011-004107
Application 11/501,176

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Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
“[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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
The Examiner reasons that “it would have been obvious to one of
ordinary skill in the art to apply the electrode as taught in T, to improve the
electrode assembly of S for the predictable result of making the new
electrode more effective and longer lasting” (Ans. 4).
However, while Sun is drawn to iontophoresis using an electrode,
Tateishi is drawn to “a redox capacitor, using a doping-dedoping reaction of
a conductive polymer” (Tateishi 1 ¶ 0001; FF 4) rather than to an electrode
itself. We agree with Appellants that in Tateishi’s device “doping/de-doping
in fact occurs within the conductive polymer composition, not in the
electrode. Thus, Tateishi thus does not disclose an electrode as having a
doping layer” (App. Br. 19). This diminishes the relevance of Tateishi to
Sun.
In addition, we agree with Appellants that the Examiner has provided
no reasoning why combining Sun and Tateishi will “improve the device of
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Sun by providing a stable electrode body and a new electrode that is more
effective and longer lasting” (App. Br. 20). That is, other than the
conclusory statement by the Examiner, the Examiner only points to
Tateishi’s statement that “the repetition stability of the doping-dedoping
reaction of the conductive polymer is improved” (Tateishi 1 ¶ 0011; Ans.
13).
However, Tateishi’s statement regarding the improvement of a redox
capacitor which requires the stability for repeated charging and discharging
cycles for energy storage and release does not reasonably apply to the
iontophoresis electrodes of Sun whose electrodes are simply used to
transport substances into a skin surface. There is no particular reason or
need for stability of charging and discharging for iontophoresis electrodes,
since these electrodes simply transfer energy, rather than serve as capacitors
or batteries as in doping-dedoping devices of Tateishi (FF 4-5).
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Sun and Tateishi render claim 1 obvious.
B. 35 U.S.C. § 103(a) over Sun, Tateishi, and Young
This rejection relies upon the underlying obviousness rejection over
Sun and Tateishi which we reversed above. Having reversed the obviousness
rejection over Sun and Tateishi for a failure to present a prima facie case of
obviousness, we necessarily reverse this obviousness rejection further
including Young as Young does not provide any reason to incorporate the
doping-dedoping element into iontophoresis electrodes.
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SUMMARY
In summary, we reverse the rejection of claims 1, 5-7, 10, 12, and 13
under 35 U.S.C. § 103(a) as obvious over Sun and Tateishi.
We reverse the rejection of claims 2-4, 8, 9, 11, and 14-30 under 35
U.S.C. § 103(a) as obvious over Sun, Tateishi, and Young.

REVERSED

cdc