Ex Parte TIEN

Patent Trial and Appeal Board

Sep 18, 2017

13592839 (P.T.A.B. Sep. 18, 2017)

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.
13/592,839 08/23/2012 Der-Yang TIEN 3691CIP-3.960BS 9882
29141 7590 09/20/2017
Brundidge & Stanger, P.C./SLG
1925 BAT .TENDER AVENUE, STE. 560
Alexandria, VA 22314
EXAMINER
SIRIPURAPU, RAJEEV P
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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):
mail@brundidge-stanger.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DER-YANG TIEN
Appeal 2016-006947
Application 13/592,839
Technology Center 3700
Before JEFFREY N. FREDMAN, JOHN G. NEW, and TAWEN CHANG,
Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to a method
for managing pain of a pancreatic cancer patient. The Examiner rejected the
claims as indefinite and as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
Statement of the Case
Background
“Pain is the most common presenting symptom in patients with
various forms of cancer, especially patients with pancreatic cancer” (Spec.
120). “Often, the pain is unrelenting in nature with night-time pain often
being a predominant complaint” (id.). “The pancreas is innervated by nerve
1 Appellant identifies the Real Party in Interest as Der-Yang Tien. (Appeal
Br. 3).
Appeal 2016-006947
Application 13/592,839
networks that interact with both the parasympathetic and sympathetic
nervous systems so pancreatic cancer pain is felt at multiple and distant
sites” {id. 122).
Appellant’s claimed invention “provides for treating pancreatic cancer
of a patient by utilizing intravenous delivery of bleomycin in conjunction
with non-invasive excorporeal low frequency ultrasound to effectively
deliver bleomycin into pancreatic cancer tissues of the patient. Bleomycin is
very water soluble and thus penetrates the cell membrane with poor efficacy.
Thus, the low frequency ultrasound assists the bleomycin delivery into the
pancreatic tissue,” where it exerts its cytotoxic effects {id. 125).
The Claims
Claims 1, 4, 6—11, 14, and 16—20 are on appeal. Independent claim 1
is representative and reads as follows:
1. A method for managing pain of a pancreatic cancer
patient, the method comprising:
injecting bleomycin into a bloodstream of the pancreatic
cancer patient for a predetermined time period; and
administering excorporeal low frequency ultrasound to a
localized area of pancreatic cancer using an ultrasound unit
with a disk comprising eight symmetrically positioned low
energy transducers located on a peripheral of the disk, wherein
each of the transducers is 2 centimeters (cm) in diameter and
includes an aluminum contact surface, wherein the bleomycin
enters the localized area to manage pain of the pancreatic
cancer patient.
2
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The Issues2
A. The Examiner rejected claims 1, 4, 6—11, 14, and 16-20 under 35
U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite (Final Act. 4—5).
B. The Examiner rejected claims 1, 4, 6, and 7 under 35 U.S.C. § 103 as
obvious over Larkin,3 Duncan,4 Pharmacology,5 Urrutia,6 Unger,7 Do-huu,8
and Cimino9 (Final Act. 5—11).
C. The Examiner rejected claim 8 as obvious under 35 U.S.C. § 103 as
obvious over Larkin, Duncan, Pharmacology, Urrutia, Unger, Do-huu, and
Cimino as applied to claim 1 and in further view of Ellin10 (Ans. 11—13).
2 Appellant appeals the Examiner’s objection to the Drawings (Appeal Br.
5—6). However, the propriety of the Examiner’s objections relate to
petitionable matters and not to appealable matters. Objections to the
Drawings are petitionable matters under 37 C.F.R. § 1.181 to the Director of
the USPTO. See MPEP § 706.01; the “Board will not hear or decide issues
pertaining to objections and formal matters which are not properly before the
Board.” Accordingly, we will decline to address the objections of record.
3 Larkin et al., Effective Tumor Treatment Using Optimized Ultrasound-
Mediated Delivery of Bleomycin, 34 Ultrasound in Med. & Biol. 406—13
(2008).
4 Duncan et al., Direct Percutaneous Intratumoral Bleomycin Injection for
Palliative Treatment of Impending Quadriplegia, 25 AJNR Am. J.
Neuroradiology 1121-23 (2004).
5 Principios de Farmacologia, available at http://web.archive.org/
web/20050215034216/http://www.iqb.es/cbasicas/farma/farma04/b028.htm
(hereinafter “Pharmacology”).
6 Urrutia, US 6,099,512, issued Aug. 8, 2000.
7 Unger et al., US 2001/0031740 Al, published Oct. 18, 2001.
8 Do-huu et al., US 4,586,512, issued May 6, 1986.
9 Cimino, US 6,350,245 Bl, issued Feb. 26, 2002.
10 Ellin et al., US 2006/0247601 Al, published Nov. 2, 2006.
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D. The Examiner rejected claims 9 and 10 under 35 U.S.C. § 103 as
obvious over Larkin, Duncan, Pharmacology, Urrutia, Unger, Do-huu, and
Cimino as applied to claim 1 and in further view of Wood11 (Ans. 13—14).
E. The Examiner rejected claims 11, 14, 16, and 17 under 35 U.S.C.
§ 103 as obvious over Larkin, Duncan, Pharmacology, Urrutia, Unger, Do-
huu, and Cimino (Ans. 15—21).
F. The Examiner rejected claim 18 under 35 U.S.C. § 103 as obvious
over Larkin, Duncan, Pharmacology, Urrutia, Unger, Do-huu, and Cimino as
applied to claim 11 and in further view of Ellin (Ans. 21—22).
G. The Examiner rejected claims 19-20 under 35 U.S.C. § 103 as obvious
over Larkin, Duncan, Pharmacology, Urrutia, Unger, Do-huu, and Cimino as
applied to claim 11 and in further view of Wood (Ans. 22—24).
A. 35 U.S.C. § 112, second paragraph
Claim 1 recites “an aluminum contact surface” (Appeal Br. 15
(Claims Appendix)).
The Examiner finds “[t]he specification does not provide sufficient
disclosure to allow a skilled artisan to know what the aluminum contact
surface is. It is unclear what the surface contacts. It is unclear what function
and shape the surface [sic]. Essentially, there is no disclosure regarding the
contact surface except the surface exists” (Final Act. 4—5). According to the
Examiner, the aluminum contact surface “could be an internal structure in
the transducer, a housing, a patient contact surface, or a myriad of other
portions of a complex ultrasound transducer that merely contacts another
11 Wood et al, US 2007/0167806 Al, published July 19, 2007.
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Application 13/592,839
portion. Consequently, a skilled artisan would have no idea what surface is
actually aluminum and what said surface contacts” (Ans. 3).
Appellant points to language in the Specification explaining that “the
ultrasound unit 406 administers ultrasound ... to a localized area of the
patient,” and contends that based on this description, “it is clear that the
transducer 408 comes in contact with the localized area of the patient”
(Appeal Br. 6 (citing Spec. 1 55)) (quotations omitted). Appellant further
notes in Figure 4, reproduced below, “lines moving from the circular end of
element 408 to the patient element 404” depict that the ultrasound transducer
contacts the patient (Reply Br. 3). Finally, Appellant argues that “‘the
aluminum contact surface’ describes the precise surface material of the
transducer 408 that comes in contact with the localized area of the patient
and that it is made out of or composed of aluminum” (Appeal Br. 6—7).
1
K40/)
404
J 4055
FIG. 4
We find that Appellant has the better position. “[T]he definiteness of
the language employed must be analyzed—not in a vacuum, but always in
light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art.” In re Moore, 439 F.2d 1232, 1235 (C.C.P.A.
1971). Here, we find that the term “aluminum contact surface,” as
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interpreted by a person of ordinary skill in the art and in light of the
teachings of the prior art, satisfies the definiteness requirement of § 112,
second paragraph.
The Specification discloses that “[the] ultrasound unit 406 administers
ultrasound ... to a localized area of the patient” (Spec. 1 55). Persons of
ordinary skill in the art would understand this language to mean that the
transducer of the ultrasound unit contacts the patient because ultrasound
devices were known to be operated in this manner. Larkin, for example,
teaches an ultrasound transducer “held against [a] tumor” and that “[cjontact
with tissue was maintained using an ultrasound gel” (Larkin at 407). Cimino
teaches an ultrasound transducer with a “focusing lens having a generally
concave surface for contact with the skin of [an] animal” as well as an
embodiment wherein “the focusing lens 18 may have suction ports 22 to
draw the skin of a patient into the focusing lens 18 to improve the coupling
of the ultrasonic vibratory energy to the patient” (Cimino col. 7,11. 18—21;
id. col. 8,11. 14—15).
The Specification further discloses that “[i]n one embodiment, a
contact surface of the at least two transducers is aluminum” (Spec. 1 53).
Again, persons of ordinary skill in the art would regard such language as
definite because ultrasound transducers were known to have aluminum and
other metallic contact surfaces. Cimino, for example, teaches an ultrasound
transducer with a focusing lens that contacts a patient and can be made of
“aluminum or stainless steel” (Cimino col. 6,11. 20-24; see also id. Fig. 1).
Accordingly, we find that claim 1 satisfies the definiteness
requirement of § 112, second paragraph, and reverse this rejection.
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B. 35 U.S.C. § 103(a)
The Examiner finds claim 1 obvious over the combination of Larkin,
Duncan, Pharmacology, Urrutia, Unger, Do-huu, and Cimino. The
Examiner relies on Larkin to teach “injecting bleomycin into the patient. . .
and administering excorporeal ultrasound to a localized area of the cancer
. . . wherein the bleomycin more readily enters the localized area to treat the
cancer of the patient” (Final Act. 5—6). The Examiner finds Duncan teaches
“bleomycin is used to manage pain of a cancer patient” and that
Pharmacology “also uses bleomycin to reduce pain” (Final Act. 6).
The Examiner finds Cimino discloses the claim limitation “wherein
each of the transducers . . . includes an aluminum contact surface” (Final
Act. 10). The Examiner finds it obvious to combine “Larkin with the further
teachings of Cimino because doing so would provide an integral lens and
driver structure capable of generating and focusing ultrasound of a specific
frequency. Further, Examiner notes that aluminum is a well known material
for transmitting ultrasound” (Final Act. 10)
The Examiner finds that Do-huu discloses the claim limitation “eight
symmetrically positioned low energy transducers located on a peripheral of
the disk” (Final Act. 9). The Examiner finds “Do-huu clearly indicates ... 8
elements numbered 25 in Fig. 6” and that “[a] skilled artisan would have
recognized each element as a transducer” (Final Act. 26). The Examiner
also finds it obvious “to provide symmetrically placed transducers with a
diameter, since such a modification would have involved a mere change in
the form or shape of a component” (Final Act. 9). The Examiner finds that
the limitation “wherein each of the transducers is 2 centimeters (cm) in
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diameter” would have been obvious as a matter of design choice (Final
Act. 9).
The issues with respect to this rejection are: Does the evidence of
record support the Examiner’s conclusion that:
(i) Larkin and Cimino render obvious the limitation in claim 1
“wherein each of the transducers . . . includes an aluminum contact surface”?
(ii) Larkin and Do-huu render obvious the limitation in claim 1
“eight symmetrically positioned low energy transducers located on a
peripheral of the disk”?
(iii) the limitation in claim 1 “wherein each of the transducers is 2
centimeters (cm) in diameter” would have been obvious?
(iv) the Examiner has provided reasons that render the claims
obvious over the combination of prior art?
Findings of Fact
1. Larkin teaches “optimization of the ultrasound conditions for
potentiation of the antitumor cytotoxic effects of intratumorally-
administered bleomycin in growing tumors” (Larkin 406, col. 2).
2. Larkin teaches: “Because the most effective antitumor effect of
bleomycin was seen with potentiation by ultrasound at a frequency of 1
MHz, an intensity of 3.5 W/cm2 and a 100% duty cycle for 2 min, we
investigated whether a lower ultrasound intensity or shorter duration of
exposure would produce comparable results” (Larkin 409, col. 2).
3. Larkin teaches effective tumor treatment wherein “[a] 1-MHz
ultrasound transducer (CRM-1) with a surface area of 5 cm2 (Rich-Mar
Corporation, Inola, OK, USA) was held against the tumor” (Larkin at 407).
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4. Larkin teaches “in-vivo optimization of the parameters of
ultrasound delivery to maximize the antitumor effect, and we have shown
this optimization to be applicable to the treatment of a diverse histologic
range of tumors” (Larkin 412, col. 2).
5. Larkin teaches “ultrasound-enhanced bleomycin as an
anticancer therapy may become a viable and advantageous treatment option
for patients with selected cancers” (Larkin 413, col. 1).
6. Duncan teaches “injection of 15 U of bleomycin produced
sufficient tumor shrinkage to relieve the pressure on the spinal cord and
thereby reverse some of the neurologic deficits and give adequate palliation
against recurrence of this problem for the remainder of the patient’s life”
(Duncan 1121, abstract). Duncan further teaches that after treatment “[n]o
further local neck pain was felt” (Duncan 1121, col. 2).
7. Pharmacology teaches: “Bleomycin has been designated an
orphan drug by the FDA for the treatment of pancreatic cancer”
(Pharmacology 1).
8. Cimino teaches an ultrasound transducer treatment device
where the “preferred materials for the focusing lens 18 are aluminum or
titanium” (Cimino 7:13—14).
9. Cimino teaches a “focusing lens having a generally concave
surface for contact with the skin of the animal and cooperating with the
acoustic assembly to deliver vibratory energy to the animal tissue” (Cimino
8:14—17).
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10. Figure 6 of Do-huu is reproduced below:
FIG. 6 illustrates a further possibility offered by the device
according to the invention. Each radiating ring of the plate 1
can in fact be subdivided into angular sectors 24, 25, and 26 by
means of segmented metallization layers 2 which are capable of
cooperating if necessary with radial grooves. The subdivision
of the rings increases from the center to the periphery as shown
in FIG. 6 in order to maintain the frequency of the elementary
piezoelectric emitters accurately centered on the selected
emission frequency.
(Do-huu 5:61 to 6:2).
11. Cimino teaches
This invention applies ultrasonic energy to the surface of a
patient with the ultrasonic energy focused at a distance below
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the surface and coupled to the patient through a coupling
medium, presumably a fluid, as shown in FIG. 1 of the
disclosure. As such, the transducer face, which has the lowest
ultrasonic energy intensity in a focused system, does not
contact the patient. In this invention the resonant vibratory
frequency of the device is determined by the thickness and
shape of the ultrasonic transducer. The method or technique
by which the low frequency ultrasonic vibratory energy is
generated is not disclosed. This invention does not include any
means to limit the tensile stresses generated in the piezoelectric
transducer
(Cimino 3:46—55 (emphasis added)).
12. The Examiner finds a “transducer is commonly used in the art
to mean either or both of an ultrasound device in its entirety or the individual
elements that comprise the entire device” (Ans. 4).
13. Do-Huu teaches the “radial width of the elementary annular
sources is chosen so as to be as close as possible to the pitch p in order to
obtain the maximum radiating surface area” (Do-Huu 3:37-40).
14. Unger teaches
Preferably, the ultrasound is in the frequency range of from
about 10 kilohertz to less than about 50 megahertz and at an
energy level of from about 200 milliwatts/cm2 to about 10
watts/cm2. While not intending to be bound to any particular
theory of operation, the ultrasound may assist in the delivery of
the compounds to the cells by inducing openings in the cell
membrane.
(Unger 1119).
15. Urrutia teaches “Intravenous fluid delivery systems are used by
medical personnel to provide nutrients and/or medication to a patient via a
vein in the patient’s arm” (Urrutia 1:14—16).
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Principles of Law
“[DJuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the [Specification.” In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000).
“If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” KSRInt’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 5—11; FF 1—15) and agree that
the claims are rendered obvious by Larkin, Duncan, Pharmacology, Urrutia,
Unger, Do-huu, and Cimino. We address Appellant’s arguments below.
(i) “each of the transducers . . . includes an aluminum contact
surface ”
Appellant contends that “Cimino does not teach or suggest a
transducer and makes no mention of a transducer at all” (Appeal Br. 9).
Appellant further contends that “the ‘aluminum’ that Cimino references is
not regarding the contact surface of the transducer but instead is in regards
to the housing, the rear and front drivers, and the lens” (id.).
We do not find this persuasive because Cimino refers to transducers
throughout the Specification (FF 11), and specifically teaches that the
focusing lens of the transducer has “a generally concave surface for contact
with the skin of the animal” (FF 9) and “preferred materials for the focusing
lens 18 are aluminum or titanium” (FF 8). Thus, not only does Cimino
discuss transducers, but Cimino specifically suggests that aluminum is one
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of two preferred materials for the focusing lens on the transducer that
contacts the skin of the patient (FF 8—11).
(ii) “eight symmetrically positioned low energy transducers located
on a peripheral of the disk”
Appellant contends that “Do-huu merely discloses three elementary
emitters (elements 24, 25, and 26) and therefore does not disclose ‘eight
symmetrically positioned low energy transducers located on a peripheral
of the disk’ as recited by the claimed invention” (Appeal Br. 10). Appellant
further contends that “elements 24 and 25 of Figure 6 are not symmetrically
positioned” and that “elements 24, 25, and 26 in Do-huu each represent a
separate ring” (Reply Br. 3—4).
We are unpersuaded by Appellant’s arguments. Do-huu teaches
“subdivision of the rings,” which in the case of element 25 results in eight
ultrasound transducers which are positioned in radial symmetry in the same
ring of a disk or plate, as shown in Figure 6 (FF 10). We agree with the
Examiner that the individual lines emanating from each “subdivision” are
reasonably interpreted as emphasizing that each subdivision is a separate
transducer (FF 10). As the Examiner notes, and Appellant does not rebut,
the term “transducer is commonly used in the art to mean either or both of an
ultrasound device in its entirety or the individual elements that comprise the
entire device” (FF 12).
We note that simply because the transducer element of Do-Huu also
includes additional transducers is irrelevant, because the claimed kit uses the
“comprising” transitional phrase that is “inclusive or open-ended and does
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not exclude additional, unrecited elements or method steps.” Georgia-
Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999).
(Hi) “each of the transducers is 2 centimeters (cm) in diameter”
Appellant contends that “Do-huu does not teach or suggest that the
transducers are each 2 cm in diameter” (Appeal Br. 10—11) and that the
claimed transducers, having a diameter of 2 cm, provide the advantage of
“enabl[ing] a focal zone that is safe for patients” (id. at 10).
We are unpersuaded by Appellant’s arguments. We agree with the
Examiner that that the size of the ultrasound transducer is an optimizable
parameter as shown by Do-huu’s teaching that the radial width of the
transducers is optimized to the pitch (FF 13), and that a skilled artisan would
vary the size of a transducer—including to a diameter of 2 cm—based on
factors such as costs, application, target, and safety concerns such as surface
bums (see Ans. 6). Moreover, Larkin teaches an ultrasound transducer with
“a surface area of 5 cm2” (FF 3), reasonably similar to the approximately 3
cm2 surface area naturally resulting from a 2 cm diameter (applying the
grade school equation of area = n times radius (1/2 of diameter) squared, the
transducer area of a 2 cm diameter device is n (l)2 or approximately 3.14
cm2). We find this difference between the claimed invention and prior art to
be within the range of optimization that would be employed by a skilled
artisan, and accordingly find that the claim limitation “wherein each of the
transducers is 2 centimeters (cm) in diameter” would have been routine
experimentation. “[WJhere the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.” In re Alter, 220 F.2d 454, 456 (CCPA 1955)
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(iv) Reasons to combine
Appellant contends that “the Examiner has failed to support th[e]
combination [of cited prior art] by providing some teaching, suggestion,
or motivation, in the prior art that would have led one of ordinary skill to
modify the prior art references or to combine prior art reference teachings to
arrive at the claimed invention” (Appeal Br. 11). Instead, Appellant alleges
that the “Examiner has merely identified a ‘shared advantage (e.g. an
advantage that the recited claimed invention shares with the invention ‘as
combined’ from the seven prior art references)” (id.). However, according
to Appellant, “the Examiner has failed to provide any evidence that the
‘shared advantage’ actually might have motivated one skilled in the art to
combine the seven prior art references and arrived at the recited claimed
invention” (id. at 12). Rather, Appellant argues that “the Examiner’s ‘shared
advantage’ test cannot qualify as a ‘reason to make the combination’
under KSR because any combination that would arrive at an invention will
always and necessarily share the same advantages as the claimed invention”
(id. (emphasis original)). As such, “the Examiner’s shared advantage test
. . . does not have the requisite rational underpinning since it cannot
differentiate between obvious and nonobvious combinations” (id. at 12—
13).
The Examiner states that he “has provided reasons well known in the
art why a skilled artisan would have combined the cited references”
(Ans. 6). “Further, it is of little consequence that Examiner’s reasons are
similar to Appellant’s reasons. Rather, because many of Examiner’s
rationales culled from the prior art are the same as Appellant’s strongly
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indicates that the claimed subject matter was obvious and predictable” (id. at
6—7 (emphasis original)). Moreover, “reliance on a large number of
references in a rejection does not, without more, weigh against the
obviousness of the claimed invention,” and in any event, in this case “many
of the references are redundant and have been included in the rejection for
the sake of thoroughness and for completeness” (id. at 7 (citing In re
Gorman, 933 F.2d 982 (Fed. Cir. 1991)).
We find that the Examiner has the better position. Regardless of
whether Appellant’s alleged “shared advantage test” is actually valid, it does
not find support in the record. Appellant provides one example of the
Examiner’s alleged error under its “shared advantage test”:
For example, when combining the Larkin and Duncan
references, the Examiner states the shared advantage of how the
combination of references ‘would reduce pain and treat the
patient at the same time, thus reducing the number of drugs
needed to effectively manage cancer in a patient” (Appeal Br.
12).
In this example, Appellant contends that “the Examiner has failed to
provide any evidence that the ‘shared advantage’ actually might have
motivated one skilled in the art to combine the seven prior art references”
(id.). However, we find that the reasons cited by the Examiner and
identified as a shared advantage by Appellant—i.e., reducing pain and
treating the patient at the same time, thus reducing the number of drugs
needed to effectively manage cancer in a patient—constitute a reason for
combining the cited prior art references, consistent with the requirement that
“it can be important to identify a reason that would have prompted a person
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of ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR, 550 U.S. at 418.
Moreover, we perceive no error based on the number of references
cited by the Examiner. “The criterion ... is not the number of references,
but what they would have meant to a person of ordinary skill in the field of
the invention.” In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991) (affirming
an obviousness rejection based on thirteen references).
In this case, the cited references pertain to the same subject matter as
the claimed invention, i.e., ultrasound technology and the use of bleomycin
for treating cancer. Larkin in particular involves treating cancer using both
bleomycin and ultrasound technology (FF 1—5). Moreover, the cited prior
art pertains to the same problems the inventor of the claimed invention was
attempting to solve, e.g., inhibiting tumor growth (FF 1—5), managing
pancreatic cancer (FF 7), managing pain (FF 6), and improving intracellular
drug delivery (FF 14). For these reasons, we find that a person of ordinary
skill in the art would have regarded the references cited by the Examiner as
relevant to the claimed invention. Moreover, we agree with and adopt the
Examiner’s reasons for combining the cited prior art references in support of
the obviousness rejections (Ans. passim).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
evidence of record support the Examiner’s conclusion that: (i) Farkin and
Cimino render obvious the limitation in claim 1 “wherein each of the
transducers . . . includes an aluminum contact surface”; that (ii) Farkin and
Do-huu render obvious the limitation in claim 1 “eight symmetrically
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positioned low energy transducers located on a peripheral of the disk”; that
(iii) the limitation in claim 1 “wherein each of the transducers is 2
centimeters (cm) in diameter” would have been obvious; and that (iv) the
Examiner has provided reasons that render the claims obvious over the
combination of prior art.
SUMMARY
In summary, we reverse the rejection of claims 1, 4, 6—11, 14, and 16—
20 under 35 U.S.C. § 112, second paragraph, as indefinite.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Larkin, Duncan, Pharmacology, Urrutia, Unger, Do-huu, and
Cimino. Claims 4, 6, and 7 fall with claim 1.
We affirm the rejection of claim 8 as obvious under 35 U.S.C. § 103
as obvious over Larkin, Duncan, Pharmacology, Urrutia, Unger, Do-huu,
Cimino, and Ellin.
We affirm the rejection of claims 9 and 10 under 35 U.S.C. § 103 as
obvious over Larkin, Duncan, Pharmacology, Urrutia, Unger, Do-huu,
Cimino, and Wood.
We affirm the rejection of claims 11, 14, 16, and 17 under 35 U.S.C.
§ 103 as obvious over Larkin, Duncan, Pharmacology, Urrutia, Unger, Do-
huu, and Cimino.
We affirm the rejection of claim 18 under 35 U.S.C. § 103 as obvious
over Larkin, Duncan, Pharmacology, Urrutia, Unger, Do-huu, Cimino, and
Ellin.
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We affirm the rejection of claims 19 and 20 under 35 U.S.C. § 103 as
obvious over Larkin, Duncan, Pharmacology, Urrutia, Unger, Do-huu,
Cimino, and Wood.
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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