Ex Parte Hood et al

Patent Trial and Appeal Board

Apr 16, 2013

11335911 (P.T.A.B. Apr. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte LEROY E. HOOD, MURIEL Y. ISHIKAWA,
EDWARD K. Y. JUNG, ROBERT LANGER,
CLARENCE T. TEGREENE, LOWELL L. WOOD JR.,
and VICTORY Y. H. WOOD
__________

Appeal 2011-008826
Application 11/335,911
Technology Center 3700
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a remote
controller for controlling a delivery device. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“[T]he present application relates to remotely controlled delivery
devices in which the concentration of a material in a fluid to be delivered
may be varied. Control signals may be carried between a remote controller
and a delivery device in an environment by electrical, magnetic, or
electromagnetic fields or radiation” (Spec. 6).
The Claims
Claims 1, 8-10, 13-18, 40, and 48-55 are on appeal. Claim 1 is
representative and reads as follows:
1. A remote controller for controlling a delivery device,
comprising:
an electromagnetic signal generator capable of
producing an electromagnetic control signal sufficient to
activate an electromagnetically responsive control element
of a delivery device located in an environment to change an
effective concentration of a primary material in a delivery
fluid within a fluid-containing structure of the delivery
device; and
an electromagnetic signal transmitter capable of
wirelessly transmitting the electromagnetic control signal to
the electromagnetically responsive control element of a
delivery device in an environment.

The issues
A. The Examiner rejected claims 1, 8-10, 13, 14, 49-52, 54, and 55 under
35 U.S.C. § 103(a) as obvious over Sheppard Jr.
1
and Uhland
2
(Ans. 4-6).

1
Sheppard Jr. et al., US 2002/0072784 A1, published Jun. 13,
2002.
2
Uhland, S., US 2004/0034332 A1, published Feb. 19, 2004.
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B. The Examiner rejected claims 15 and 16 under 35 U.S.C. § 103(a) as
obvious over Sheppard Jr., Uhland, and Malloy
3
(Ans. 6-7).
C. The Examiner rejected claims 17 and 48 under 35 U.S.C. § 103(a) as
obvious over Sheppard Jr., Uhland, and Erickson
4
(Ans. 7-8).
D. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as obvious
over Sheppard Jr., Uhland, Merry,
5
and Giroux
6
(Ans. 8-9).
E. The Examiner rejected claim 40 under 35 U.S.C. § 103(a) as obvious
over Sheppard Jr., Uhland, and Haim
7
(Ans. 9).
F. The Examiner rejected claim 53 under 35 U.S.C. § 103(a) as obvious
over Sheppard Jr., Uhland, and Gallagher
8
(Ans. 9-10).
G. The Examiner provisionally rejected claims 1, 40, and 55 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1, 59, and 60 of copending Application No.
11/335786 (Ans. 10-11).
A. 35 U.S.C. § 103(a) over Sheppard Jr. and Uhland
The Examiner finds that Sheppard Jr. teaches:
a remote controller for controlling a delivery device,
comprising: an electromagnetic signal generator ([0035]
electromagnetic source, [0055] RF generating source)
capable of producing an electromagnetic control signal
sufficient to activate an electromagnetically responsive
control element (element is taken as reservoir cap [0027],

3
Malloy, C., US 2007/0078445 A1, published Apr. 5, 2007.
4
Erickson, J., US 2004/0055648 A1, published Mar. 25, 2004.
5
Merry et al., US 2006/0149321 A1, published Jul. 6, 2006.
6
Giroux et al., US 2007/0074722 A1, published Apr. 5, 2007.
7
Haim et al., US 6,198,963 B1, issued Mar. 6, 2001.
8
Gallagher, R., US 5,523,746, issued Jun. 4, 1996.
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[0056], [0059]) of a delivery device located in an
environment to change an effective concentration of a
primary material in a delivery fluid within a fluid-containing
structure of the delivery device; and an electromagnetic
signal transmitter capable ([0056] RF wireless transmission)
of wirelessly transmitting the electromagnetic control signal
to the electromagnetically responsive control element of a
delivery device in an environment. Sheppard Jr. et al. teach
that the signal can be used to release a drug or expose
internal sensors

(Ans. 4). The Examiner finds that Uhland teaches that “microchip reservoirs
are used in conjunction with various mixers and pumps and release
molecules into carrier fluids within a fluid containing structures of a delivery
device, thereby the release of the molecules leads to a change in
concentration due to mixing” (Ans. 5).
The Examiner finds it obvious to “use the control element of
Sheppard Jr. et al. with a delivery device as in Uhland which would serve to
change an effective concentration of a material because Uhland teaches
using such remote controlled microchip devices allows for precise drug
delivery” (Ans. 5).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Sheppard Jr. and Uhland render the
claims obvious?
Findings of Fact
1. The Specification teaches that “the effective concentration of
the primary material will be the concentration of the first active form of the
primary material in the delivery fluid” (Spec. 17).
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2. The Specification teaches that “the delivery device may contain
a primary material (the material that is intended to be delivered to an
environment or other downstream location) in a delivery fluid” (Spec. 14).
3. The Specification teaches that the “primary material may be
distributed between a first active form (in which it is usable or active) and a
second form in which it is inactive, inaccessible, or otherwise unavailable or
unusable)” (Spec. 14).
4. Sheppard Jr. teaches that “[e]ach microchip device includes a
substrate having a plurality of reservoirs containing reservoir contents for
release or exposure” (Sheppard Jr. 2 ¶ 0026).
5. Sheppard Jr. teaches
An on-demand power and control system would include an
RF generating and a transmission source in an external
controller unit. The microchip device would include a
receiver coil (i.e. an inductor), an optional power converter
(rectifier, regulator), a power storage unit (e.g., a capacitor,
micro-battery), optional potentiostat or galvanostat circuitry
(if electric potential or current modulation is required), a
demultiplexer, a timer, and a microprocessor.

(Sheppard Jr. 5 ¶ 0055.)
6. Sheppard Jr. teaches that “[w]hen release from a particular
reservoir is desired, an RF signal is (wirelessly) transmitted to the reservoir-
containing microchip device” (Sheppard Jr. 5 ¶ 0056).
7. Sheppard Jr. teaches that “the microchip would receive power
from the RF transmitter and could release drug or expose internal sensors.
The position of release or exposure in the gastrointestinal tract would be
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controlled by the nature of the signal coming from the RF transmitter”
(Sheppard Jr. 7 ¶ 0064).
8. Sheppard teaches that the “delivery of the drug or other
molecule could be controlled by feedback from a biosensor located on or
near the microchip, and interfaced to the controller” (Sheppard 6 ¶ 0057).
9. Sheppard teaches that the “term „biosensor‟ includes, but is not
limited to, sensing devices that transduce the chemical potential of an
analyte of interest into an electrical signal” (Sheppard 5 ¶ 0051).
10. Uhland teaches that
the system further includes a mixing chamber in which the
carrier fluid and released drug are combined. As used herein,
unless otherwise indicated, a “mixing chamber” can be
essentially any structure in which a carrier fluid can be
temporarily contained, e.g., through which the carrier fluid
can flow, while the molecules from the microchip device
can contact the carrier fluid.

(Uhland 5 ¶ 0057.)
11. Uhland teaches that it “would be advantageous, however, to
adapt the precise control of molecule release provided by these microchip
devices into a variety of other applications” (Uhland 1 ¶ 0006).
12. Uhland teaches that “[r]elease from an active device can be
controlled by a preprogrammed microprocessor, remote control, or by
biosensors” (Uhland 1 ¶ 0007).
13. Uhland teaches an embodiment which “involves integrating one
or more drug delivery microchips into/onto a stent, such as a vascular stent”
(Uhland 8 ¶ 0095).

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Principles of Law
The Supreme Court has emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
As noted by the Court in KSR, “[a] person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id. at 421. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
Analysis
Claim interpretation is at the heart of patent examination because
before a claim is properly interpreted, its scope cannot be compared to the
prior art. In this case, Appellants contend that the “Examiner
mischaracterized the recitation of „to change an effective concentration of a
primary material in a delivery fluid within a fluid-containing structure of the
delivery device‟ by asserting that „the release of the molecules leads to a
change in concentration due to mixing‟” (App. Br. 24). Thus, Appellants
and the Examiner dispute the meaning of the phrase “change an effective
concentration of a primary material in a delivery fluid within a fluid-
containing structure of the delivery device” as recited in claim 1.
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
art in the light of the Specification. Therefore, we first turn to the
Specification to interpret this phrase.
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The Specification teaches that “the effective concentration of the
primary material will be the concentration of the first active form of the
primary material in the delivery fluid” (Spec. 17; FF 1). The Specification
teaches that “the delivery device may contain a primary material (the
material that is intended to be delivered to an environment or other
downstream location) in a delivery fluid” (Spec. 14; FF 2). While the
Specification teaches an embodiment where the “primary material may be
distributed between a first active form (in which it is usable or active) and a
second form in which it is inactive, inaccessible, or otherwise unavailable or
unusable)” (Spec. 14; FF 3), the Specification clearly uses the word “may”
and not “must” or “will” or even “is” to describe the relationship of the
primary material to its distribution between a first and second form, and
therefore does not explicitly define the primary material as anything other
than the active material. See University of Pittsburgh v. Hedrick, 573 F.3d
1290, 1296 (Fed. Cir. 2009) (“The specification may impart a definition that
differs from a term‟s ordinary meaning only when it demonstrates „an intent
to deviate from‟ that meaning.” (emphasis added).)
We therefore find that the broadest reasonable interpretation of the
phrase “change an effective concentration of a primary material in a delivery
fluid within a fluid-containing structure of the delivery device” encompasses
any change in the concentration of the active material in delivery fluid
within the device, including the simple addition of the active material to a
delivery fluid, since this addition would necessarily result in an increase in
the “effective concentration” as required by claim 1.

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Claim 1
Sheppard teaches “an RF generating and a transmission source”
(Sheppard Jr. 5 ¶ 0055; FF 5) where “[w]hen release from a particular
reservoir is desired, an RF signal is (wirelessly) transmitted to the reservoir-
containing microchip device” (Sheppard Jr. 5 ¶ 0056; FF 6). As the
Examiner finds, Sheppard “does not specifically disclose changing the
concentration of a material in a delivery fluid within a fluid containing
structure of the device” (Ans. 4).
Uhland teaches an implantable drug delivery system where
the system further includes a mixing chamber in which the
carrier fluid and released drug are combined. As used herein,
unless otherwise indicated, a “mixing chamber” can be
essentially any structure in which a carrier fluid can be
temporarily contained, e.g., through which the carrier fluid
can flow, while the molecules from the microchip device
can contact the carrier fluid.

(Uhland 5 ¶ 0057; FF 10.) Uhland teaches that “[r]elease from an active
device can be controlled by . . . remote control” (Uhland 1 ¶ 0007; FF 12).
Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that the ordinary artisan would have reasonably
found it obvious to combine the remote control of Sheppard for drug release
in an implantable microchip device with the microchip device and mixing
chamber of Uhland since Uhland teaches that it “would be advantageous,
however, to adapt the precise control of molecule release provided by these
microchip devices into a variety of other applications” (Uhland 1 ¶ 0006; FF
11). Such a combination is merely a “predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.
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Appellants contend that “there is no suggestion in the Examiner-cited
portion of Uhland to consider a concentration of the drug in the carrier fluid
prior to mixing, since the drug is not even in contact with the carrier fluid”
(App. Br. 24).
We are not persuaded. As we discussed in the claim interpretation
above, claim 1 simply requires any change in concentration of the active
material to result from the combination of Sheppard and Uhland. Claim 1
does not require that there is some amount of the drug in the carrier fluid
prior to mixing as suggested by Appellants. “[L]imitations are not to be read
into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
Appellants contend that the Examiner‟s
assertion amounts to a mere conclusory statement regarding
a generalized combination of the microchip of Sheppard and
the device of Uhland as a whole, and is therefore legally
insufficient to demonstrate that it would have been obvious
to combine the disclosure of Sheppard with the disclosure of
Uhland in an attempt to achieve the recitations of
Appellant‟s claim 1.

(App. Br. 26.)
We are not persuaded. The Examiner has relied upon sound, fact
based reasoning to explain why the ordinary artisan would have chosen to
combine the teachings of Sheppard and Uhland. The Examiner has even
provided a teaching in Uhland that the mixing chamber provides more
precise control of drug delivery and should therefore be incorporated in
other devices (FF 11) which serves as a specific reason and motivation to
combine these teachings. Appellants have provided no evidence or
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argument which explains why the reason and motivation of the Examiner are
insufficient.
Claim 8
Appellants contend that the “Examiner failed to demonstrate where
the Examiner-cited portion of Sheppard discloses that the controller of
Sheppard includes „a signal input adapted for receiving a feedback signal
corresponding to one or more parameters sensed from the environment‟
(App. Br. 27-28).
The Examiner finds that “the biosensors are capable of measuring
signals within the patient (Sheppard [0051]). The Examiner finds that as the
sensor can measure or analyze the presence, absence, or change in a
chemical or ionic species this corresponds to at least chemical activity”
(Ans. 12).
We find that the Examiner has the better position. Consistent with the
Specification, the term “environment” simply refers to the location of the
device, as the Specification teaches that “[e]xemplary environments include
a body of an organism, a body of water or other fluid, or an enclosed volume
of a fluid” (Spec. 6). Therefore, a device such as Sheppard‟s which is
implanted in a human body will sense the “environment” within the body of
a human organism.
Sheppard teaches that the “delivery of the drug or other molecule
could be controlled by feedback from a biosensor located on or near the
microchip, and interfaced to the controller” (Sheppard 6 ¶ 0057; FF 8). In
consonance with this, Uhland teaches that “[r]elease from an active device
can be controlled by a preprogrammed microprocessor, remote control, or by
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biosensors” (Uhland 1 ¶ 0007; FF 11). Thus, both Sheppard and Uhland
teach that the delivery microchips may contain biosensors which receive
feedback signals from the environment in which they are implanted and
which interface with remote controllers (FF 8, 11).
Claims 9, 10, 50
Appellants contend that “the Examiner failed to demonstrate where
the Examiner-cited portion of Sheppard or Uhland discloses or suggests
„wherein the feedback signal corresponds to the concentration or chemical
activity of a chemical in the environment‟” (App. Br. 29). Appellants also
contend that “the Examiner failed to demonstrate where the Examiner-cited
portion of Sheppard discloses or suggests „wherein the electromagnetic
control signal is produced based at least in part upon the feedback signal
corresponding to one or more parameters sensed from the delivery device‟ . .
. as recited in claim 10” (App. Br. 31).
The Examiner finds that “as the sensor can measure or analyze the
presence, absence, or change in a chemical or ionic species this corresponds
to at least chemical activity” (Ans. 12). The Examiner also finds that as “the
controller responds to the feedback from the biosensor by adjusting delivery
as needed the electromagnetic control signal is based on the feedback from
the sensor” (Ans. 12).
We find that the Examiner has the better position. Sheppard teaches
that the “term „biosensor‟ includes, but is not limited to, sensing devices that
transduce the chemical potential of an analyte of interest into an electrical
signal” (Sheppard 5 ¶ 0051; FF 9). Thus, the biosensor signal will
necessarily measure the analyte in terms of presence in an ability to induce a
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signal, which signal is at least a rough measure of concentration. This
addresses the limitations of both claims 9 and 50.
With regard to claim 10, Sheppard teaches that the “delivery of the
drug or other molecule could be controlled by feedback from a biosensor
located on or near the microchip, and interfaced to the controller” (Sheppard
6 ¶ 0057; FF 8). This feedback from the biosensor which controls drug
delivery precisely addresses the requirement of claim 10 for a signal
produced based upon feedback of a sensed parameter in the implanted
device (FF 8).
Claims 13-14
Appellants contend that the “Examiner failed to demonstrate where
the microprocessor of Uhland is disclosed in the Examiner-cited portion of
Uhland as generating an electromagnetic control signal sufficient to activate
electromagnetically responsive control elements based upon the plurality of
signals” (App. Br. 35).
The Examiner finds that “as multiple cartridges and microchips can be
used and that signals (plural) are used to individually control the multiple
microchips (Uhland [0089]), it would be obvious to one of ordinary skill that
the controller would be equipped with multiple inputs to receive the
individual signals from the multiple microchips” (Ans. 12).
We find that the Examiner has the better position. Claims 13 and 14
are drawn to the use of a plurality of devices. Uhland teaches an
embodiment which “involves integrating one or more drug delivery
microchips into/onto a stent, such as a vascular stent” (Uhland 8 ¶ 0095; FF
13). “It is well settled that the mere duplication of parts has no patentable
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significance unless a new and unexpected result is produced.” In re Harza,
274 F.2d 669, 774 (CCPA 1960). Appellants do not identify any new or
unexpected result which would occur due to the use of two of the microchips
of Sheppard and Uhland rather than the use of a single microchip.
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Sheppard Jr. and Uhland render the claims obvious.
B. 35 U.S.C. § 103(a) over Sheppard, Uhland, and Malloy
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Sheppard, Uhland, and Malloy
render claims 15 and 16 obvious?
Findings of Fact
14. Malloy teaches that:
Optionally at 310, the controller 96 decrypts and/or decodes
the received signal. For example, the controller may decrypt
the signal using use a private key previously provided by the
active agent delivery device 10 to other active agent delivery
devices, or using a generic private key common to an
number of active agent delivery devices. The controller 96
may decode the information using any suitable decoding
methods or structures currently know or later developed.
Such methods and/or structures are commonly known in the
telecommunications industry (TDMA, FDMA, CDMA), and
may, for example, include up and/or down mixers.

(Malloy 7 ¶ 0092.)
15. Malloy teaches that the “transmission can employ any known or
later developed protocol, including: time division multiple access (TDMA),
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frequency division multiple access (FDMA), code division multiple access
(CDMA), spread spectrum, and/or BLUETOOTH®” (Malloy 7 ¶ 0086).
Analysis
Claim 15
Appellants contend that “[n]owhere has the Examiner shown where
the Examiner-cited portion of Malloy discloses „channel allocation
hardware or software configured to allocate usage of the plurality of
transmission channels for the transmission of the electromagnetic control
signal to selected delivery devices of the plurality of delivery devices‟ . . . as
recited in claim 15” (App. Br. 39).
The Examiner finds that “signals (plural) are used to individually
control the multiple microchips (Uhland [0089]) multiple transmission
channels are used for the signals. TDMA, FDMA, and CDMA are all known
types of allocation means” (Ans. 13).
We find that the Examiner has the better position. Claim 15 simply
requires channel allocation hardware or software, but the Specification
provides no specific teachings whatsoever explaining details about such
channel allocation hardware or software. Consequently, Appellants‟
Specification is reasonably relying upon the prior art to enable such channel
allocation. See Edwards Lifescience Ag v. CoreValve, Inc., 699 F.3d 1305,
1309 (Fed. Cir. 2012) (“[A]n applicant for a patent need not expressly set
forth in his specification subject matter which is commonly understood by
persons skilled in the art.”) However, if no details are set forth, the
Examiner reasonably can rely upon the prior art, such as Malloy, to
demonstrate that a variety of software techniques are known for channel
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allocation (FF 14-15). The Examiner reasonably finds it obvious to allocate
channels since that prevents conflict between telecommunication devices
(see Ans. 7).
Claim 16
Appellants do not provide any separate arguments for claim 16,
simply arguing that it “is believed allowable due to its dependence on an
allowable base claim and due to distinct subject matter” (App. Br. 40).
Since we have found claim 1 obvious for the reasons given above, we also
affirm the Examiner‟s rejection of this claim.
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Sheppard, Uhland, and Malloy render claims 15 and 16 obvious.
C. 35 U.S.C. § 103(a) over Sheppard, Uhland, and Erickson
The Examiner finds that “Sheppard Jr. et al. teach a remote controller
substantially as claimed. Sheppard Jr. et al. does not specifically teach
authentication hardware” (Ans. 7). The Examiner finds that “Erickson
teaches a drug delivery device which uses authentication method to limit
access to the dose control and prevent communication with unauthorized
users ([0052])” (Ans. 7). The Examiner also finds that “Sheppard Jr. et al.
does not specifically disclose the nature of the electromagnetic signal
generator” (Ans. 8). The Examiner finds that “Erickson teaches that
microprocessors are used to provide electromagnetic control signals
([0059])” (Ans. 8).
The Examiner finds it obvious “to perform an authentication
procedure in the device of Sheppard Jr. et al. because Erickson teaches
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authentication hardware to increase device safety by preventing
unauthorized users from tampering with the device” (Ans. 8). The Examiner
also finds it obvious to “generate an electromagnetic control signal in the
device of Sheppard Jr. et al. using a microprocessor because Erickson
teaches that such are proven successful in the art for providing
electromagnetic signals” (Ans. 8).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s finding that Sheppard, Uhland, and Erickson render
claims 17 and 48 obvious?
Findings of Fact
16. Erickson teaches that the dose control module “may also
include security instructions 48. These security instructions can include
encryption algorithms or authentication methods such as device
identification numbers to limit access to the functionality, of the dose control
module 30. Communications with unauthorized devices may be ignored or
limited in their access to alter prescriptions” (Erickson cols. 3-4 ¶ 0052).
17. Erickson teaches that “the microprocessor 72 may provide
electromagnetic signals to valves, directing the opening and closing of those
valves using a pulse amplitude and width controller 88 and switch matrix
90” (Erickson 4 ¶ 0059).
Analysis
Claim 17
Appellants contend that there “is no teaching, and the Examiner failed
to point to any, in the Examiner-cited portion of Erickson of „the remote
controller is configured to produce activation of the electromagnetically
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responsive control element of an authenticated delivery device but not the
electromagnetically responsive control element of a non-authenticated
delivery device,‟ as recited in claim 17” (App. Br. 41).
We are not persuaded. Erickson teaches the inclusion of security
instructions into the dose control module, which represent software in a
controller, that permit access only to authorized devices and reject access by
unauthorized devices (FF 16). This reasonably satisfies the requirement of
claim 17 for a controller “configured” to permit activation only by an
“authenticated” delivery device since the claim requires no specific modes
(FF 16).
Claim 48
Appellants rely upon overcoming the primary rejection of claim 1,
contending that “[c]laim 48 directly depends from claim 1, and is believed
allowable due to its dependence on an allowable base claim and due to
distinct subject matter” (App. Br. 43).
Since we already have found claim 1 to be obvious for the reasons
given above, we find that the sound, fact based reasoning of the Examiner
properly sets forth a prima facie case of obviousness for claim 48 as well
(see Ans. 7-8).
Conclusions of Law
The evidence of record supports the Examiner‟s finding that
Sheppard, Uhland, and Erickson render claims 17 and 48 obvious.
D. 35 U.S.C. § 103(a) over Sheppard, Uhland, Merry, and Giroux
Appellants contend that “the Examiner failed to establish the
motivation of one of ordinary skill in the art to combine the disclosure of
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Merry with the disclosures of Sheppard and Uhland” (App. Br. 44).
Appellants contend that the “Examiner‟s reliance on the rote desire to
„ensure proper device usage‟ as alleged motivation to combine the
references is entirely without any factual support whatsoever” (App. Br. 45).
Appellants contend that “because a desire to „ensure proper device usage‟ is
ubiquitous to those of ordinary skill in the art, it is not a unique basis for
asserting that in the instant situation Sheppard, Uhland, Merry, and Giroux
would have been obvious to combine” (App. Br. 46).
The Examiner finds that “Sheppard Jr. et al. teach a remote controller
substantially as claimed. Sheppard Jr. et al. do not specifically disclose an
interrogation signal generator, transmitter, receiver, or detection circuitry.
However, Merry et al. teaches an RFID detector and tag system used to track
a device ([0076]) including generating, transmitting, receiving, and detection
components” (Ans. 8). The Examiner finds that “Giroux et al. teaches using
an RFID tag to identify a device and further sending a signal to allow for
operation of the device and set parameters for delivery ([0030], [0031],
[0033], [0034])” (Ans. 8-9). The Examiner finds it obvious to “use an RFID
tag system in the device of Sheppard Jr. et al. as in Merry et al. and Giroux
et al. as such would increase safe usage of the device by assuring that the
correct medication is being properly dispensed” (Ans. 9).
We find that the Examiner has the better position. Giroux teaches an
“intelligent ID tag (e.g., RFID tag . . . associated with a medicament . . .
whereby „validation‟ (e.g., authorization, activation of the medicament or
particle delivery function of the device) is afforded allowing the
atomizer/nebulizer to operate” (Giroux 2 ¶ 0030). Giroux also teaches that
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“once a medicament (e.g., pharmaceutical composition) is recognized and
accepted (e.g., validated), the intelligent device will set a „go‟ or „no-go‟
„flag‟ in the system that will either allow it to operate or not” (Giroux 2 ¶
0031). These teachings expressly support the Examiners reason to combine,
which is that intelligent RFID tags can assist in the proper delivery of
medicines from medical devices such as those of Sheppard and Uhland, as
well as those of Merry and Giroux (see Ans. 9).
We find Appellants argument that a “unique basis” is required for
obviousness to be inconsistent with Federal Circuit precedent. Specifically,
in DyStar, the court recognized that
an implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
combination of references results in a product or process that
is more desirable, for example because it is stronger,
cheaper, cleaner, faster, lighter, smaller, more durable, or
more efficient.

DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006). This “technology-independent”
motivation is precisely what the Examiner is relying upon in the instant case,
where accurate delivery of medicines is a technology-independent reason to
improve an apparatus such as the implantable devices of Sheppard and
Uhland with the RFID devices of Merry and Giroux.
E. 35 U.S.C. § 103(a) over Sheppard, Uhland, and Haim
Appellants contend that “[n]owhere does the Examiner establish the
Examiner-cited portion of Haim as describing or suggesting that static
electromagnetic signals are equivalent to rotating electromagnetic signals or,
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21
in particular, that either of static or rotating electromagnetic fields may be
used controlling a delivery device” (App. Br. 48).
The Examiner finds that “Haim et al. teach that static and rotating
electromagnetic fields are art recognized equivalent signals” (Ans. 9).
We find that the Examiner has the better position. Haim teaches that
“measurement of the parameter vector is based on one or more signals
transmitted to and/or from the sensor, which is fixed to the tube. Such
signals could be ultrasound waves, ultraviolet waves, radio frequency (RF)
waves, static or rotating electromagnetic fields, laser beams, etc.” (Haim,
col. 4, ll. 27-34). We conclude that Haim‟s teaching that signals include
either static or rotating electromagnetic fields is prima facie evidence that
these are equivalent signal transmission means. Appellants have provided
no evidence to rebut this prima facie equivalence, instead simply arguing a
burden which the Examiner has reasonably shifted based upon the evidence
in Haim.
F. 35 U.S.C. § 103(a) over Sheppard, Uhland, and Gallagher
The Examiner provides sound fact-based reasoning for combining
Sheppard, Uhland, and Gallagher (Ans. 9-10). We adopt the fact finding
and analysis of the Examiner as our own. Appellants‟ arguments are
directed at the obviousness rejection over Sheppard and Uhland which we
affirmed above. Therefore, consistent with the rejection which we affirmed
above, we affirm this rejection for the reasons stated by the Examiner.

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G. Double patenting
We summarily affirm the obviousness-type double patenting rejection
since no arguments were presented. See Manual of Patent Examining
Procedure § 1205.02 (“If a ground of rejection stated by the examiner is not
addressed in the appellant‟s brief, that ground of rejection will be summarily
sustained by the Board.”); See also In re Berger, 279 F.3d 975, 984 (Fed.
Cir. 2002) (in which the Board affirmed an uncontested rejection of claims
under 35 U.S.C. 112, second paragraph, and on appeal the Federal Circuit
affirmed the Board's decision and found that the appellant had waived his
right to contest the indefiniteness rejection by not presenting arguments as to
error in the rejection on appeal to the Board).
SUMMARY
In summary, we affirm the rejection of claims 1, 8-10, 13, 14, 49-52,
54, and 55 under 35 U.S.C. § 103(a) as obvious over Sheppard Jr. and
Uhland.
We affirm the rejection of claims 15 and 16 under 35 U.S.C. § 103(a)
as obvious over Sheppard Jr., Uhland, and Malloy.
We affirm the rejection of claims 17 and 48 under 35 U.S.C. § 103(a)
as obvious over Sheppard Jr., Uhland, and Erickson.
We affirm the rejection of claim 18 under 35 U.S.C. § 103(a) as
obvious over Sheppard Jr., Uhland, Merry, and Giroux.
We affirm the rejection of claim 40 under 35 U.S.C. § 103(a) as
obvious over Sheppard Jr., Uhland, and Haim.
We affirm the rejection of claim 53 under 35 U.S.C. § 103(a) as
obvious over Sheppard Jr., Uhland, Merry, and Gallagher.
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23
We affirm the rejection of claims 1, 40, and 55 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1, 59, and 60 of copending Application No. 11/335786.

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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