Ex Parte Buchalter

Board of Patent Appeals and Interferences

Jun 15, 2011

11237438 (B.P.A.I. Jun. 15, 2011)

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.
11/237,438 09/28/2005 Gilbert Buchalter 2106-0 7919
23869 7590 06/15/2011
HOFFMANN & BARON, LLP
6900 JERICHO TURNPIKE
SYOSSET, NY 11791
EXAMINER
BECKHARDT, LYNDSEY MARIE
ART UNIT PAPER NUMBER
1613
MAIL DATE DELIVERY MODE
06/15/2011 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 GILBERT BUCHALTER
__________

Appeal 2011-001931
Application 11/237,438
Technology Center 1600
__________

Before TONI R. SCHEINER, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
physiologically compatible conductive agent. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-
in-part.

Appeal 2011-001931
Application 11/237,438

2
Statement of the Case
The Claims
Claims 1-28 are on appeal. Claims 1 and 8 are representative and read
as follows:
1. A physiologically compatible conductive
agent for veterinary use consisting essentially of:
(a) a long chain water-soluble ionic
polymeric thickening agent selected from the
group consisting of a copolymer of methyl vinyl
ether and maleic anhydride, carboxy
polymethylene polymer, and mixtures thereof,
present in an amount from about 0.05wt.% to
about 10wt.%, wherein the thickening agent has a
Brookfield Viscosity (CPS) of from about 1,000 to
about 1,000,000 at 1wt.% concentration in water
neutralized with an alkaline agent;
(b) an unbranched or branched alcohol
having from 1 to about 4 carbon atoms present in
an amount up to about 70wt.%; and
(c) the balance water;
wherein the physiologically compatible
conductive agent has a pH from about 3.5 to about
11.5.

8. A physiologically compatible conductive
agent for veterinary use consisting essentially of:
(a) a long chain water-soluble ionic
polymeric thickening agent selected from the
group consisting of a copolymer of methyl vinyl
ether and maleic anhydride, carboxy
polymethylene polymer, and mixtures thereof,
present in an amount from about 0.05wt.% to
about 10wt.%, wherein the thickening agent has a
Brookfield Viscosity (CPS) of from about 1,000 to
about 1,000,000 at 1wt.% concentration in water
neutralized with an alkaline agent;
Appeal 2011-001931
Application 11/237,438

3
(b) a surface tension reducing amount of a
surfactant; and
(c) the balance water;
wherein the physiologically compatible
conductive agent has a pH from about 3.5 to about
11.5.

The issue
The Examiner rejected claims 1-28 under 35 U.S.C. § 103(a) as
obvious over Buchalter,
1
Dellagatta,
2
and Bremer
3
(Ans. 3-7).
The Examiner finds that Buchalter teaches that the “composition that
is applied to the conductivity gap is comprised of a polymer thickener
selected from a copolymer of methyl vinyl ether and maleic acid, and a
carboxy polymethylene polymer” (Ans. 4). The Examiner finds that the
“Brookfield Viscosity of the thickening agent is 1000 to 100,000 at 1 wt%
aqueous concentration . . . . The primary thickening agent, carboxy
polymethylene polymer, is neutralized with sodium or potassium hydroxide”
(id.).
The Examiner finds that Dellagatta teaches “a composition that is
swabbed onto the skin prior to the application of a therapeutic ultrasound”
(id. at 5). The Examiner finds that “[a]pproximately 10 wt% of isopropanol
is used in the composition. Isopropanol is preferred in the solution because
of its aseptic properties, increase to shelf life, and enhancement of
penetration by fluidizing lipid barriers to the skin” (id.).

1
Buchalter, US 4,002,221, issued Jan. 11, 1977.
2
Dellagatta, US 5,954,675, issued Sep. 21, 1999.
3
Bremer et al., US 4,693,711, issued Sep. 15, 1987.
Appeal 2011-001931
Application 11/237,438

4
The Examiner finds it obvious “to add isopropanol to the gel taught by
[Buchalter] because it has aseptic properties, increases shelf life and
enhances penetration by fluidizing lipid barriers to the skin as taught by
[Dellagatta]” (Ans. 5).
Appellant contends that “the present invention is not obvious over
Buchalter in view of Dellagatta and Bremer et al. because the combination
of references does not teach or suggest appellant’s composition containing
both an unbranched or branched alcohol having from 1 to about 4 carbon
atoms and a physiologically compatible conductive agent” (App. Br. 6).
Appellant contends that the
Examiner’s combination of references teaches only a two-
step method of applying an alcohol prior to applying a
therapeutic ultrasound composition. The Examiner’s
combination of references does not teach appellant’s
invention of an alcohol compatibly incorporated into a
physiologically compatible conductive agent. Appellant’s
composition allows the practitioner to conduct the
ultrasound in a one-step method.

(Id.)
Appellant contends that the “Examiner cites no reference teaching or
suggesting that it would have been obvious to add the isopropanol of
Dellagatta to the gel taught by Buchalter. In the absence of such teachings
by the cited references, the Examiner cannot assert that it would have been
obvious to add the isopropanol of Dellagatta to the gel taught by Buchalter”
(id. at 8).
Appeal 2011-001931
Application 11/237,438

5
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the combination of Buchalter,
Dellagata, and Bremer render claim 1 obvious?
Findings of Fact
1. Buchalter teaches “a gel which is resistant to body perspiration
and which has a broad range of uses in electrical and ultrasonic applications”
(Buchalter, col. 2, ll. 40-42).
2. Buchalter teaches that the gel is composed of thickeners which
“are water soluble and have outstanding gel properties. Examples of
polymeric thickeners include those selected from the group consisting of a
copolymer of methyl vinyl ether and maleic acid, and corboxy [sic] poly-
methylene polymer” (Buchalter, col. 2, ll. 46-51).
3. Buchalter teaches that the “concentration of the auxiliary
thickening agent in the gel formulation is generally from 1/1000 of l% to
3%, preferably 1/100 of 1% to 1% and most about 1/20 of 1% to ⅓ of 1%”
(Buchalter, col. 3, ll. 16-19).
4. Buchalter teaches that “the viscosities of the primary thickening
agents which can be used in the invention vary from a Brookfield Viscosity
(CPS -centipoises per second) (20 rpm) of approximately 1000 to 100,000 at
1 wt.% aqueous concentration, preferably 15,000 to 90,000 and most
preferably 18,000 to 80,000” (Buchalter, col. 4, ll. 14-19).
5. Buchalter teaches that “[a]lkaline agents, such as alkali metal
hydroxides and certain organic amines may be used to neutralize the primary
thickening component of the inventive composition. Sodium and potassium
hydroxides are preferred” (Buchalter, col. 5, ll. 26-29).
Appeal 2011-001931
Application 11/237,438

6
6. Dellagatta teaches that:
Methyl nicotinate, when swabbed onto the skin prior to the
application of therapeutic ultrasound, produces a surprising
enhancement of the effect of the ultrasound treatment,
making it possible to use less power and to apply the
ultrasound over a shorter interval, and requiring no
significant waiting time for the nicotinic acid ester to take
effect.

(Dellagatta, abstract.)
7. Dellagatta teaches that
Isopropyl alcohol is preferably present in the methyl
nicotinate solution because of its antiseptic properties, to
increase the shelf life of the swab stick, to aid in cleansing
the surface of the skin, and to enhance the penetration of the
methyl nicotinate into the skin by fluidizing the lipid barriers
in the skin.

(Dellagatta, col. 2, ll. 58-63).
8. Dellagatta teaches that to “be effective, the amount of isopropyl
alcohol in the solution should be at least 10% by weight based on the total
weight of the solution” (Dellagatta, col. 2, ll. 63-65).
9. Dellagatta teaches that “[i]mmediately after the area is swabbed
with the methyl nicotinate solution, a coupling agent is applied to the same
area and an ultrasonic transducer is brought into contact with the defined
area through the coupling agent” (Dellagatta, col. 3, ll. 2-5).
10. Bremer teaches that “surfactants such as sodium dioctyl
sulfosuccinate have been found which used with sodium chloride
electrolytes will provide a surface tension reduction sufficient to provide the
proper wetting of the membrane material.” (Bremer, col. 9, ll. 60-64.)
Appeal 2011-001931
Application 11/237,438

7
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).
An invention
composed of several elements is not proved obvious merely
by demonstrating that each of its elements was,
independently, known in the prior art…. [I]t can be
important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
Claim 1
In our opinion, this is a close case regarding claim 1. Buchalter
teaches a conductive agent which satisfies elements a) and c) of claim 1 (FF
1-5). Dellagatta teaches the use of isopropanol in a solution that is applied
to the skin prior to ultrasound treatment, and teaches specific advantages for
the incorporation of isopropanol into the nicotinate solution (FF 6-8).
Bremer is not cited for this limitation (see Ans. 5).
However, Dellagatta does not teach incorporation of the isopropanol
into the coupling agent, which is the component in Dellagatta equivalent to
the gel of Buchalter, but rather teaches the isopropanol is added along with
the methyl nicotinate solution, and then the gel is applied after that solution
was swabbed onto the skin (FF 9).
Appeal 2011-001931
Application 11/237,438

8
The Examiner must “identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.” KRS, 550 U.S. at 418. The reason
identified by the Examiner to add isopropanol to the gel is because “it has
aseptic properties, increases shelf life and enhances penetration by fluidizing
lipid barriers to the skin” (Ans. 5). However, there is no indication that the
gel of Buchalter is used for penetration of agents into the skin, rather this is a
function of the methyl nicotinate solution used by Dellagatta.
To the extent that the Examiner points to Buchalter to teach
isopropanol, Buchalter teaches that “[l]ow molecular weight monohydric
alcohols are not generally desirable because they tend to evaporate too
rapidly. But they can be used in minor proportions to replace a part of the
water” (Buchalter, col. 4, l. 66 to col. 5, l. 2). Thus, while not precisely
teaching that monohydric alcohols such as isopropanol cannot be used,
Buchalter clearly states that these alcohols are not desirable. Buchalter’s
statement that these alcohols evaporate too rapidly undercuts the logic of
“increased shelf life” as a reason to incorporate these alcohols.
We conclude that the rejection of claim 1 is based on impermissible
hindsight reconstruction of the claimed subject matter.
Claim 8
As with claim 1, Buchalter teaches a conductive agent which satisfies
elements a) and c) of claim 1 (FF 1-5). Bremer teaches that “surfactants
such as sodium dioctyl sulfosuccinate have been found which used with
sodium chloride electrolytes will provide a surface tension reduction
Appeal 2011-001931
Application 11/237,438

9
sufficient to provide the proper wetting of the membrane material.” (Bremer,
col. 9, ll. 60-64; FF 10.)
The Examiner finds it obvious “to add dioctyl sulfosuccinate, also
called bis(2-ethylhexyl)sulfosuccinate sodium salt, to the gel taught by
[Buchalter] because of the surface tension reduction, proper wetting and
improved permeability taught by” Bremer (Ans. 5-6).
The Examiner notes that “Appellant has presented no arguments
directed to the Bremer reference . . . . Appellant’s arguments are all directed
to the inclusion of an unbranched or branched alcohol having from about 1
to about 4 carbon atoms. Independent claims 8 and 22 (and dependent claims
9-14 and 21-28) do not contain limitations directed to unbranched or
branched alcohol” (Ans. 9).
We agree with the Examiner that Appellant has presented no
arguments regarding claims 8-14 and 22-28. The Examiner has provided
fact based reasoning which is not rebutted or addressed by Appellant.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the combination of Buchalter, Dellagata, and Bremer render claim 1
obvious.
The evidence of record does support the Examiner’s conclusion that
the combination of Buchalter, Dellagata, and Bremer render claim 8
obvious.
SUMMARY
In summary, we reverse the rejection of claims 1-7 and 15-21 under
35 U.S.C. § 103(a) as obvious over Buchalter, Dellagatta, and Bremer.
Appeal 2011-001931
Application 11/237,438

10
We affirm the rejection of claim 8 under 35 U.S.C. § 103(a) as
obvious over Buchalter, Dellagatta, and Bremer. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 9-14 and 22-
28, as these claims were not argued separately.

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-IN-PART

JNF
EG
TRS

cdc