Ex Parte Wold

Patent Trial and Appeal Board

May 18, 2018

11573934 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/573,934 02/19/2007
32692 7590 05/22/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
ChadR. Wold
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
59759US005 8158
EXAMINER
DICKINSON,PAUL W
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
05/22/2018 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHAD R. WOLD 1
Appeal2017-006920
Application 11/573,934
Technology Center 1600
Before RICHARD M. LEBOVITZ, ELIZABETH A. LA VIER, and
RYAN H. FLAX, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a transdermal drug delivery
device. The Examiner rejected the claims as obvious under 35 U.S.C. § 103.
Appellant appeals the rejection pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1-7 and 9-20 are pending and stand rejected by the Examiner.
Claim 1, which is the only independent claim on appeal, reads as
follows:
1. A transdermal drug delivery device comprising:
1 The Appeal Brief ("Br.") 2 lists 3M Company (formerly known as
Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and
its affiliate 3M Innovative Properties Company of St. Paul, Minnesota, as
the real-parties-in-interest.
Appeal2017-006920
Application 11/573,934
a) a reservoir comprising a releasably stored dosage of a
pharmaceutically active agent;
and
b) a translucent film permitting the passage of visible light
in the range of 400 and 700 nanometers in relation to at least a
portion of the reservoir, wherein the translucent film comprises
at least one inorganic ultraviolet-absorbing compound,
wherein the average particle size of the inorganic
ultraviolet-absorbing compound is less than 100 nanometers.
In the Final Office Action, the Examiner rejected claims 1-7 and 9-20
as obvious under pre-AIA 35 U.S.C. § I03(a) as obvious in view of Tsuruda
et al. (US Pat. Appl. Pub. 2003/0149385 Al, publ. Aug. 7, 2003)
("Tsuruda"), Johnson et al. (US Pat. Appl. Pub. 2004/0219198 Al, publ.
Nov. 4, 2004) ("Johnson"), Roehrig et al. (US Pat. Appl. Pub. 2004/0202708
Al, publ. Oct. 14, 2004) ("Roehrig"), and Karvinen (US Pat. 5,443,811, iss.
Aug. 22, 1995) ("Karvinen"). Final Act. 2.
In the Examiner's Answer ("Ans."), the Examiner also included a
rejection of claims 1-7, 11, and 14--20 based on Tsuruda, Johnson, and
Roehrig. Ans. 2. This rejection was not set forth in the Final Office Action.
In explaining the basis of the rejection in the Answer, the Examiner did not
address the limitation in claim 1 of "the average particle size of the inorganic
ultraviolet-absorbing compound is less than 100 nanometers." Although it
appears that this limitation is disclosed in Karvinen, the Karvinen reference
was not cited by the Examiner in making this rejection. Final Act. 3--4. We
thus reverse this rejection.
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Appeal2017-006920
Application 11/573,934
REJECTION BASED ON TSURUDA,
JOHNSON, ROEHRIG, AND KARVINEN
Tsuruda describes a patch containing a drug, which the Examiner
found meets element a) of claim 1. Ans. 2. The Examiner also found that
the patch described in Tsuruda has a backing which serves as the film of
element b) of claim 1. Id. The Examiner found that Tsuruda teaches that the
backing comprises an inorganic ultraviolet-screening agent, which the
Examiner determined satisfies the limitation in element b) of claim 1 of "at
least one inorganic ultraviolet-absorbing compound." Id.
The Examiner found that Tsuruda does not describe its patch as
having "a translucent film permitting the passage of visible light in the range
of 400 and 700 nanometers." Ans. 2. To meet the "translucent" limitation,
the Examiner cited Johnson and Roehrig, each of which the Examiner found
to describe a translucent backing for a drug delivery device. Id. at 2-3. The
Examiner determined it would have been obvious to have used a translucent
backing in Tsuruda's patch because they are "common in the art for
transdermal drug delivery systems and have the advantage of being
transparent and less noticeable on the skin." Id. at 3.
Discussion
Appellant contends that "one [ of ordinary skill in the art]" would not
have modified Tsuruda by making its backing translucent because that
would have required "one ... to select a non-preferred backing in [Tsuruda]
(film), and then modify the film to a transparent backing, and then select an
inorganic ultraviolet absorbing compound." Br. 3.
This argument does not persuade us that the Examiner erred in finding
claim 1 to have been obvious to one of ordinary skill in the art. Tsuruda
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Appeal2017-006920
Application 11/573,934
teaches the patch backing can be made from a variety of materials that "can
be processed into a fabric, knit, non-woven fabric, film or the like." Tsuruda
,r 32. We have not been directed to persuasive evidence that a "film" is non-
preferred embodiment of the reference, and even if it were, Tsuruda still
teaches that all of the choices in its list of four are suitable backings for its
patch.
Tsuruda further teaches that "a stretchable backing is preferred."
Tsuruda ,r 32. This disclosure in Tsuruda is reasonably understood to
describe a property of the backing material, and a teaching that each of the
disclosed patch backings of fabric, knit, non-woven fabric, or film can be
made stretchable. Ans. 5. Appellant did not identify a reason as to why
"stretchable" would not apply to a film, making it a non-preferred
embodiment. Nonetheless, a non-preferred embodiment is not any less a
prior art disclosure than a preferred embodiment, but rather simply reflects
the inventor's liking of one suitable alternative for another.
Appellant also contends that "the modification to make [Tsuruda's
patch] transparent would arguable remove the ultraviolet absorbing
compound, which would then remove that protection from the films in
[Tsuruda]." Br. 3.
This argument does not persuade us that the Examiner erred. The
Examiner responded to this argument in the Answer:
Titanium dioxide, the UV absorber and metal oxide taught by
Tsurada [ sp. Tsuruda], could readily be incorporated into
translucent films. Roehrig teaches metal oxides are the typical
component of its translucent film (paragraph 21 ). Johnson
teaches incorporation of UV stabilizers (UV absorbers) into its
film (paragraph 24 ). This is a teaching that UV absorbers can
be incorporated into transparent films.
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Appeal2017-006920
Application 11/573,934
Ans. 5.
Appellant did not identify a defect in the Examiner's fact-finding nor
reasoning, and we find the Examiner's position to be supported by a
preponderance of the evidence.
CONCLUSION
For the foregoing reasons, the obviousness rejection of claim 1 based
on Tsuruda, Johnson, Roehrig, and Karvinen is affirmed. Claims 2-7 and 9-
20 were not argued separately and therefore fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The rejection of claims 1-7, 11, and 14--20 based on Tsuruda,
Johnson, and Roehrig is reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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