Appeal 2007-0851
Application 10/385,213
body they contact” (id.). We conclude that the Examiner has set forth a
prima facie case that claim 31 would have been obvious.
Appellants argue that “Chien does not teach or suggest a topical
preparation, or a topical preparation in the form of a patch,” and that the
“Examiner has failed to provide evidence or reasoning why one skilled in
the art would be motivated to reconfigure Chien’s implantable device having
micro-sealed containers into a topical preparation in the form of a patch”
(Br. 16).
We are not persuaded by these arguments. As discussed above, Chien
describes implanting its composition “on the skin” (Chien, col. 1, ll. 30-32).
If implanted on the skin, it would cover a portion of the skin and administer
medication, i.e., the pharmaceutical, to tissue. Thus, we agree that the
composition described in Chien is a topical dressing that contains a patch.
We conclude that the Examiner has set forth a prima facie case that
claim 31 would have been obvious in view of Chien, Pfister, Powell, and
Webster’s Dictionary, which Appellants have not rebutted. We therefore
affirm the rejection of claim 31 under 35 U.S.C. § 103. Claims 32-35 fall
with claim 31.
SUMMARY
We reverse the obviousness rejection of claims 22-24 but affirm it
with respect to claims 1-20 and 25-41. Because our reasoning with regard to
claims 3-10 differs from that of the Examiner, we designate our affirmance
of the rejection of these claims as a new ground of rejection under 37 C.F.R.
§ 41.50(b) in order to give Appellants a fair opportunity to respond.
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