Ex parte Hofmann

Board of Patent Appeals and Interferences

Feb 25, 2000

08328895 (B.P.A.I. Feb. 25, 2000)

Claims 1, 13 and 20 were amended subsequent to the final1
rejection.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GUNTER A. HOFMANN
____________
Appeal No. 1999-2539
Application No. 08/328,895
____________
ON BRIEF
____________
Before COHEN, NASE, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection (Paper No. 18, mailed March 27, 1998) of claims 1 to
3 and 5 to 22, which are all of the claims pending in this
application.1
Appeal No. 1999-2539 Page 2
Application No. 08/328,895
We REVERSE.
Appeal No. 1999-2539 Page 3
Application No. 08/328,895
BACKGROUND
The appellant's invention relates to the treatment of
ailments in humans and other mammals, and more particularly,
to an apparatus and method for in vivo delivering of
pharmaceutical compounds and genes into live cells of a
patient (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Marshall, III 4,906,576 Mar. 6,
1990
Chang 4,970,154 Nov. 13,
1990
Weaver et al. 5,019,034 May 28,
1991
(Weaver)
Claims 1 to 3 and 5 to 22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Weaver in view of Marshall
and Chang.
Appeal No. 1999-2539 Page 4
Application No. 08/328,895
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the first Office action (Paper
No. 4, mailed September 28, 1995) and the answer (Paper No.
26, mailed January 11, 1999) for the examiner's complete
reasoning in support of the rejection, and to the brief (Paper
No. 25, filed November 16, 1998) and reply brief (Paper No.
27, filed March 3, 1999) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1 to 3 and 5 to
Appeal No. 1999-2539 Page 5
Application No. 08/328,895
22 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
All the method claims on appeal include the step of
"providing an inductance device including an induction coil,
the induction coil comprising at least one conductor having
opposite ends adapted for connection to an electrical power
source and at least one turn forming a coil intermediate the
ends." Similarly, all the apparatus claims on appeal include
the limitation "induction means including an induction coil
Appeal No. 1999-2539 Page 6
Application No. 08/328,895
comprising at least one conductor having opposite ends adapted
for connection to an electrical power source and at least one
turn forming a coil intermediate the ends."
After reviewing the entire teachings of the applied prior
art, we find ourselves in agreement with the appellant (brief,
pp. 5-10) that even if the prior art were combined in the
manner set forth in the rejection under appeal it would not
provide the claimed invention. In that regard, the combined
teachings of the applied prior art do not teach or suggest "an
induction coil comprising at least one conductor having
opposite ends adapted for connection to an electrical power
source and at least one turn forming a coil intermediate the
ends" as recited in the claims under appeal. The examiner's
position that this induction coil limitation is met by the
electrodes disclosed in the applied prior art is without merit
for the reasons provided by the appellant in his brief.
Moreover, it is abundantly clear that the electrodes disclosed
in the applied prior art are not formed by "at least one
conductor having opposite ends adapted for connection to an
electrical power source."
Appeal No. 1999-2539 Page 7
Application No. 08/328,895
See, for example, W. L. Gore and Associates, Inc. v.2
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Additionally, we find ourselves in agreement with the
appellant that the applied prior art does not teach or suggest
a method or apparatus for in vivo introduction of molecules
into living blood cells of a patient. Absent the use of
impermissible hindsight , it is our view that it would not2
have been obvious at the time the invention was made to a
person having ordinary skill in the art to have combined the
applied prior art to meet the following limitations:
(1) applying time varying electric signals to the applied
inductance device to generate time varying magnetic
fields and repeatedly subject a quantity of blood flowing
past the preselected location in the selected blood
vessel to electric fields of a predetermined amplitude
and duration, induced by the time varying magnetic
fields, sufficient to make walls of preselected cells in
said quantity of blood transiently permeable to permit
the molecules to enter said preselected cells without
killing said cells (claim 1);
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Application No. 08/328,895
(2) means for applying time varying electric signals to
said induction coil for causing it to repeatedly generate
magnetic fields and induce electric fields of a
predetermined amplitude and duration sufficient to make
walls of preselected cells in blood flowing past the
preselected location in the blood vessel to be
transiently permeable to permit the molecules to enter
said preselected cells without killing said cells (claim
11); and
(3) applying a time varying electric signal to the
applied inductance device to generate time varying
magnetic fields and repeatedly subject tissue cells at
the preselected location in the selected tissue to induce
electric fields of a predetermined amplitude and duration
sufficient to make the walls of preselected cells in the
tissue transiently permeable to permit the molecules to
enter said preselected cells without killing said cells
(claim 21).
Appeal No. 1999-2539 Page 9
Application No. 08/328,895
For the reasons set forth above, the subject matter of
the claims under appeal would not have been suggested by the
applied prior art. Accordingly, the decision of the examiner
to reject claims 1 to 3 and 5 to 22 under 35 U.S.C. § 103 is
reversed.
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Application No. 08/328,895
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 3 and 5 to 22 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-2539 Page 11
Application No. 08/328,895
FRELING E. BAKER
BAKER MAXHAM JESTER & MEADOR
750 B STREET SUITE 2770
SAN DIEGO, CA 92101
APPEAL NO. 1999-2539 - JUDGE NASE
APPLICATION NO. 08/328,895
APJ NASE
APJ BAHR
APJ COHEN
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: Feb 16, 2000
FINAL TYPED: