11932032 (B.P.A.I. Jul. 30, 2012)

Ex Parte Nyhart

Board of Patent Appeals and InterferencesJul 30, 2012

11932032 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ELDON H. NYHART JR. ____________ Appeal 2010-008227 Application 11/932,032 Technology Center 3700 ____________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008227 Application 11/932,032 2 STATEMENT OF THE CASE Eldon H. Nyhart Jr. (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20. We have jurisdiction over this appeal under 35 U.S.C. § 6. We AFFIRM. THE INVENTION Appellant’s invention relates to an apparatus for releasing a compound into an intravenous environment, such as during intravenous drug administration. Spec., para. [0002] and figs. 2 and 3. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A tube including: an interior surface; an exterior surface; a matrix material attached to the interior surface, the matrix including a cavity allowing fluid flow therethrough; and a first compound releasably attached to the matrix, the matrix being formed from a material having properties that cause the first compound to be released from the matrix upon introduction of light energy to the tube. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Sinofsky US 4,878.492 Nov. 7, 1989 Hukins US 5,201,724 Apr. 13, 1993 Lindall US 5,470,307 Nov. 28, 1995 Ron US 5,651,979 Jul. 29, 1997 Appeal 2010-008227 Application 11/932,032 3 Altman US 6,086,582 Jul. 11, 2000 Rosenthal US 6,524,274 B1 Feb. 25, 2003 The following rejections are before us for review: I. The Examiner rejected claims 1, 4-12, 17 and 18 under 35 U.S.C. § 103(a) as unpatentable over Lindall and Hukins. II. The Examiner rejected claims 2, 3, 14, 15 and 19 under 35 U.S.C. § 103(a) as unpatentable over Lindall, Hukins and Rosenthal. III. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as unpatentable over Lindall, Hukins and Ron. IV. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as unpatentable over Lindall, Hukins and Sinofsky. V. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as unpatentable over Lindall, Hukins and Altman. OPINION Rejection I Appellant argues the rejection under 35 U.S.C. §103(a) of claims 1, 4- 12, 17 and 18 together as a group. Br. 4-5. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we have selected claim 1 as the representative claim to decide the appeal, with claims 4-12, 17 and 18 standing or falling with claim 1. Independent claim 1 requires “a matrix material attached to the interior surface” of the tube. Br., Claims Appendix. Appellant argues that (1) Lindall discloses that therapeutic agents (matrix material) are not protected by an exterior sheath; and (2) placing therapeutic agents (matrix Appeal 2010-008227 Application 11/932,032 4 material) on the interior surface of Lindall’s catheter device, as shown in Hukins, would enclose and protect the therapeutic agents (matrix material) by an exterior sheath of the catheter, which is against the teachings of Lindall. Br. 4-5. We understand Appellant’s argument to be that Lindall teaches away from the proposed combination. At the outset, we are not persuaded by Appellant’s argument because mere differences between two references is insufficient to establish that such references "teach away" from any combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, obviousness does not require that all the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, the Examiner has cited Hukins merely to show that “it is well-known in the art of catheters to form a drug eluting coating on the interior surface of a catheter.” Ans. 4. Furthermore, while Lindall may disclose a drug delivery system for therapeutic agents (matrix material) that differs from that of Hukins, Lindall in no way criticizes, discredits, or otherwise discourages modifying the location of the therapeutic agents (matrix material) to the interior surface of the catheter, as proposed by the Examiner. As such, we agree with the Examiner’s position: Lindall does not disclose any criticality to locating the coating on the exterior surface of the catheter as opposed to the interior surface. In other words, Lindall does not teach away from such a combination as Lindall does not Appeal 2010-008227 Application 11/932,032 5 recite that such a configuration would not work or shouldn’t be attempted. Ans. 13-14. Hence, we find that Lindall does not teach away from the proposed combination. Accordingly, for the foregoing reasons, the rejection of independent claim 1 and of claims 4-12, 17 and 18, which fall with claim 1, as unpatentable over Lindall and Hukins is sustained. Rejections II-V Appellant indicates that claims 2, 3, 13-16, 19 and 20 stand or fall with the rejection of claims 1, 4-12, 17 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Lindall and Hukins. Br. 5-6. Accordingly, we shall also sustain Rejections II-V. DECISION The decision of the Examiner is affirmed as to claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls