Ex Parte Argenta et al

Patent Trial and Appeal Board

Dec 31, 2015

10161076 (P.T.A.B. Dec. 31, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/161,076 0610312002
110 7590 12/31/2015
DANN, DORFMAN, HERRELL & SKILLMAN
1601 MARKET STREET
SUITE 2400
PHILADELPHIA, PA 19103-2307
Louis C. Argenta
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.
0101-P02915USO/DRP 1461
EXAMINER
THANH, QUANG D
ART UNIT PAPER NUMBER
3771
MAILDATE DELIVERY MODE
12/31/2015 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 PATENT TRIAL AND APPEAL BOARD
Ex parte LOUIS C. ARGENTA, MICHAEL J. MORYKW AS,
and LAWRENCE X. WEBB
Appeal2013-010343
Application 10/161,076
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a non-
final rejection of claims 1--45, 96-98, 103-107, and 112-153. Non-Final
Act. 1 (Office Action Summary). Claims 46-95, 99-102, and 108-111 have
been canceled. App. Br. 20 (Claims App.). We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.
Appeal2013-010343
Application 10/161,07 6
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to an apparatus and method for
promoting directed tissue growth, and more particularly to an apparatus and
method for providing directed tissue growth within a host matrix through the
application of reduced pressure to the tissue to be grown." Spec. 1: 2-5.
Independent apparatus claim 1 is illustrative of the claims on appeal and is
reproduced below:
1. An appliance for administering a reduced pressure
treatment to promote directed growth of replacement bone
tissue at a site of damaged bone tissue comprising:
(a) a cover adapted to cover and enclose the site of the
damaged bone tissue and adapted to maintain reduced pressure
at the site of the damaged bone tissue;
(b) a seal adapted to seal the cover about the site of the
damaged bone tissue;
( c) reduced pressure supply for cooperation with the
cover to supply the reduced pressure beneath the cover; and
( d) a porous bone substitute material located between the
site of the damaged bone tissue and the cover, the bone
substitute material having an open-cell structure sufficiently
porous to facilitate distribution of reduced pressure to the site of
the damaged bone tissue to promote bone tissue growth at the
site of the damaged bone tissue within the bone substitute
material as replacement bone tissue in continuity with the
damaged bone tissue.
REFERENCES RELIED ON BY THE EXAMINER
Dunn
Lytinas
Orgill
Johnson
Argenta 1
us 5,717,030
US 6,491,693 Bl
US 2003/0108587 Al
US 7,070,584 B2
US 7,198,046 Bl
1 Hereinafter "Argenta '046."
2
Feb. 10, 1998
Dec. 10, 2002
June 12, 2003
July 4, 2006
Apr. 3, 2007
Appeal2013-010343
Application 10/161,07 6
. ')
Argenta"" US 7,216,651 B2 May 15, 2007
THE REJECTIONS ON APPEAL
Claims 1--45, 96-98, 103-107, 112, 113, 115-130, and 138-141 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Johnson, Lytinas,
and Dunn. 3
Claims 114, 121, 124, 127, 142-144, 152, and 153 are rejected under
35 U.S.C. § 103(a) as unpatentable over Lytinas, Dunn, and Johnson.
Claims 131-137 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Johnson, Lytinas, Dunn, and Orgill.
Claims 145-151 are rejected under 35 U.S.C. § 103(a) as unpatentable
over L ytinas, Dunn, Johnson, and Orgill.
Claims 1--45, 96-98, 103-107, 112-130, 139-144, 152, and 153 are
rejected on the ground of nonstatutory obviousness-type double patenting as
unpatentable over claims 1-125 of Argenta '651 in view ofLytinas, Dunn,
and Johnson.
Claims 1--45, 96-98, 103-107, 112-130, 139-144, 152, and 153 are
rejected on the ground of nonstatutory obviousness-type double patenting as
2 Hereinafter "Argenta '651."
3 Although the Examiner indicates that claim 138 is rejected (see Non-Final
Act. 1 (Office Action Summary)), claim 138 is not included in any ground of
rejection. Claim 138 depends from claim 128 and calls for the tissue growth
medium to comprise "a synthetic resorbable material." App. Br. 35 (Claims
App.). This recitation is similar claim 152 which depends from independent
claim 142. App. Br. 37 (Claims App.). The Examiner included claim 152 in
the same rejection as claim 142, and we believe the Examiner similarly
intended to include claim 138 in the same ground of rejection as claim 128.
Accordingly, we treat this rejection to include claim 138.
3
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Application 10/161,07 6
unpatentable over claims 1--45 of Argenta '046 in view of Lytinas, Dunn,
and Johnson.
ANALYSIS
The rejection of claims 1-45, 96--98, 103-107, 112, 113, 115-130, and 138-
141 as unpatentable over Johnson, Lytinas, and Dunn
Appellants argue claims 1--45, 96-98, 103-107, 112, 113, 115-130,
and 138-141 as a group. App. Br. 4--17. We select independent claim 1 for
review with claims 2--45, 96-98, 103-107, 112, 113, 115-130, and 138-141
standing or falling with claim 1. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv) (2014 ).
Appellants do not refute the Examiner's findings regarding the
teachings of Johnson, Lytinas, and Dunn, but rather argue that Lytinas
"teaches away" from the claimed invention. See App. Br. 4--17; Reply Br.
2-3. According to Appellants:
Lytinas states that the use of the device and method results in
the formation of "neoplastic" tissues, i.e., "neoplastic bone
trabiculi [sic]," (id.. col. 4, line 4), "neoplastic osteo-beams,"
(id., col. 4, line 14 ), "neoplastic ossified tissue," (id., col. 4, line
15), and "neoplastic osteobeams," (id., col. 4, line 17). The
person having ordinary skill in the art, at the time of the
invention in view of the formation of such "neoplastic" tissues
(i.e., tumors), would avoid a technique that causes tumors.
App. Br. 7. In support of this argument, Appellants submit two Declarations
by Thomas W. Bauer, M.D., Ph.D. filed August 16, 2011 (hereafter "Bauer
2011 Deel.") and August 17, 2012, respectively. 4 See App. Br. (Evidence
App.). In particular, Dr. Bauer states:
4. A person of ordinary skill in the art in (sic) would
understand that the term "neoplastic" describes a tumor. The
4 This latter 2012 Declaration, which acknowledges that "a neoplasm could
be benign" (see i-f 2), is otherwise a re-affirmation of the earlier Declaration.
4
Appeal2013-010343
Application 10/161,07 6
relevant pages of Dorland's Illustrated Medical Dictionary for
the 1981, 1994, 2000, and 2003 editions (attached hereto as
Exhibit B) are evidence of the accepted medical definitions of
"neoplastic" and "neoplasm", which for two decades
consistently defined a "neoplasm" as a "new and abnormal
growth", "called also tumor. " As a result, a person of ordinary
skill in the art in 1981 - 2002 knew that a neoplasm was a
tumor and further would have understood that Lytinas expressly
and repeatedly states that the Lytinas' device and method create
tumors or abnormal growths.
5. Based on my knowledge, training, and experience, I
can attest that a person of ordinary skill in the art would NOT
use a device or method like that of Lytinas which creates
neoplasms in his or her patients - rather, they would A VOID
the use of such a device or method.
Bauer 2011 Deel., p.2, i-fi-14--5.
To begin, we are instructed that a teaching away requires a reference
to actually criticize, discredit, or otherwise discourage investigation into the
claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
\Ve are further guided by instn.1ctions from our reviewing court that "[ w ]e
will not read into a reference a teaching away from a process where no such
language exists." DyStar Textilfarben GmbH & Co. Deutsch/and KG v. CH
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
In the matter before us, L ytinas discloses a method of stimulating
bone regeneration comprising the step of applying a vacuum for a length of
time. See Lytinas generally. Based on "histological photographs of the
examined bone," Lytinas finds evidence of "neoplastic osteo-beams" and
"neoplastic ossified tissue." Lytinas 4: 11-22. Lytinas thus concludes "that
the method of the invention induced bone regeneration as detected by" this
activity. Lytinas 4:23-26. Consequently, as opposed to criticizing,
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Application 10/161,07 6
discrediting, or otherwise discouraging the use of reduced pressure to
promote bone growth, Lytinas expressly encourages such a method.
Appellants' position, as indicated above, is that Lytinas' disclosure of
neoplastic tissue is equated to or synonymous with tumorous growth. See
App. Br. 8; Bauer 2011 Deel., p. 2, i-f 4; Reply Br. 3, 5. Each definition
relied on by Appellants and referenced by Dr. Bauer defines the term
"neoplastic" (i.e., the term used in Lytinas) as "pertaining to or like a
neoplasm; pertaining to neoplasia." App. Br. (Evidence, App., Exhibit B.).
These same dictionaries further define "neoplasm" as "any new and
abnormal growth; specifically a new growth of tissue in which the growth is
uncontrolled and progressive (see neoplasia)." App. Br. Evidence, App.
(Exhibit B). These definitions also indicate that neoplasms may be
malignant as "distinguished from benign." App. Br. Evidence, App.
(Exhibit B). Thus, although the term "neoplasm" may refer to unwanted
malignant or tumorous growth, this is not always the case.
As Appellants indicate, Lytinas teaches neoplastic tissue growth. See
App. Br. 6-7; Reply Br. 3; see also Lytinas Figures 1-5 and Lytinas 4:1-26
referenced supra. As previously indicated, based on evidence of neoplastic
growth, Lytinas concludes that "the method of the invention induced bone
regeneration." Lytinas, 4:23-26. Hence, Lytinas employs the term
"neoplastic" to mean new and abnormal bone growth; and there is no
indication in Lytinas that such bone growth is to be avoided. Accordingly,
while the Bauer 2011 Deel. has been considered, the definition therein
equating neoplastic growth with tumors is not fully consistent with its
dictionary definition, or how this term is employed in Lytinas.
6
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Application 10/161,07 6
As such, and given that Lytinas expressly teaches the use of a vacuum
to promote bone growth (Lytinas 2: 17-22), we are not persuaded by
Appellants that Lytinas teaches away from using reduced pressure to
regenerate bone. 5 Accordingly, Appellants' contentions are not persuasive
that the Examiner erred in relying on the teachings of Lytinas. Also,
Appellants do not argue that the Examiner's additional reliance on the
teachings of Johnson or Dunn are misplaced or in error. See App. Br. 4--17;
Reply Br. 1-7. Thus, in view of the record presented, we sustain the
Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Johnson, Lytinas, and Dunn. We also sustain claims 2--45, 96-98,
103-107, 112, 113, 115-130, and 138-141, which fall with claim 1.
The remaining rejections
Regarding the remaining rejections, including those pertaining to
double-patenting, Appellants rely on "the reasons stated above" or "the
reasons already presented above." App. Br. 17-18. Such arguments are not
persuasive. We sustain each of these rejections in accordance with our
analysis supra.
DECISION
The Examiner's rejections of claims 1--45, 96-98, 103-107, and 112-
153 are affirmed.
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).
5 Furthermore, Appellants' focus on "speculation" by the Examiner (see
Reply Br. 2-7) is not persuasive that Lytinas fails to disclose using a
vacuum to induce neoplastic growth for bone regeneration.
7
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Application 10/161,07 6
tkl
AFFIRMED
8