Ex Parte Dobson

Patent Trial and Appeal Board

Sep 4, 2018

13899060 (P.T.A.B. Sep. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/899,060 05/21/2013 Geoffrey Phillip Dobson
26694 7590 09/06/2018
VENABLELLP
P.O. BOX 34385
WASHINGTON, DC 20043-9998
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.
36749-349400
(M50034067)
CONFIRMATION NO.
8426
EXAMINER
BROWE, DAVID
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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):
PTOMail@Venable.com
khauser@venable.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFREY PHILLIP DOBSON1
Appeal2017-008657
Application 13/899,060
Technology Center 1600
Before JEFFREY N. FRED MAN, CHRISTOPHER G. P AULRAJ, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
for reducing tissue damage, which have been rejected as obvious and for
non-statutory obviousness-type double patenting. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
A majority of open-heart surgeries involve arresting the heart for
periods ofup to three hours or more. Spec. 1-2. Stopping the heart for
1 Appellant identifies the Real Party in Interest as Hibernation Therapeutics,
A KF LLC. Br. 4.
Appeal2017-008657
Application 13/899,060
prolonged periods increases the likelihood that the heart will not recover
function. Id. The Specification describes a method for reducing organ
damage during periods of reduced activity such as cardioplegia. Spec. 2.
Claims 12-14 and 16-28 are on appeal. Claim 12 is illustrative and
reads as follows:
Claim 12. A method of reducing damage to a tissue,
organ or cell resulting from cardioplegia comprising
administering an additive composition comprising a potassium
channel opener/ agonist and/ or an adenosine receptor agonist,
together with a local anaesthetic and magnesium cations
wherein the composition is administered when reperfusing the
organ during the recovery phase of a surgical procedure.
The claims stand rejected as follows:
Claims 12-14, 16-22, 26, and 27 have been rejected on the grounds of
non-statutory obviousness type double patenting over claims 1---6, 9, 12-14,
and 16-19 of Dobson '814. 2
Claims 12-14, 16-23, 26, and 27 have been rejected under 35 U.S.C.
§ I03(a) as unpatentable over Dobson '145. 3
Claims 24 and 25 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Dobson '145 in view of Gao. 4
2 Dobson, US 6,955,814 Bl, issued Oct. 18, 2005 ("Dobson '814").
3 Dobson, WO 00/56145 Al, published Sept. 28, 2000 ("Dobson '145").
4 Gao et al., Cardioprotective Effects of Melatonin on Recovery of Rat
Donor Hearts after 12-Hour Preservation, 23 J. Huazhon Univer. Sci. Tech.
407 (2003) ("Gao").
2
Appeal2017-008657
Application 13/899,060
Claim 28 has been rejected under 35 U.S.C. § 103(a) as unpatentbale
over Dobson '145 in view of Takeuchi. 5
OBVIOUSNESS
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
claims 12-14, 16-22, 26, and 27 would have been obvious over Dobson
'145.
The Examiner finds that Dobson '145 discloses a method for reducing
damage to the heart resulting from cardioplegia comprising administering a
composition comprising adenosine, lidocaine, magnesium cations,
potassium, an antioxidant, and glucose. Final Act. 5---6. The Examiner finds
that Hobson '145 teaches that the composition is administered while
perfusing and reperfusing the heart during arrest as well as during the
recovery phase. Id. at 6. The Examiner concludes "It would have been
primafacie obvious for one of ordinary skill in the art at the time of the
present invention to employ the teachings of Dobson to devise Applicant's
presently claimed method." Id.
Appellant contends that Dobson '145 does not teach or suggest
administering the composition during reperfusion during the recovery phase
of a surgical procedure. Br. 17. Appellant contends that Dobson only
teaches administration during the arrest and maintenance phases and not
5 Takeuchi et al., Prolonged Preservation of the Blood-Perfused Canine
Heart with Glycolysis-Promoting Solution, 68 Ann. Thorne. Surg. 903
(1999) ("Takeuchi"O.
3
Appeal2017-008657
Application 13/899,060
during the recovery phase. Id.at 18. Appellant contends that Dobson '145 is
directed to minimizing damage during a heart attack or where the heart stops
because of a physically induced injury. Id. at 19--20. Appellant contends
that the claimed method produces unexpected results sufficient to overcome
a prima facie case of obviousness. Id. at 21-22.
Principles of Law
In proceedings before the Patent and Trademark Office,
the Examiner bears the burden of establishing a prima facie
case of obviousness based upon the prior art. '[The Examiner]
can satisfy this burden only by showing some objective
teaching in the prior art or that knowledge generally available to
one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.' The patent
applicant may then attack the Examiner's prima facie
determination as improperly made out, or the applicant may
present objective evidence tending to support a conclusion of
nonobviousness.
In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992)
Analysis
We have considered the parties' arguments and find that Appellant
has the better position. The Examiner has not shown that Dobson '145
teaches or suggests administration of the claimed composition while
reperfusing the organ during the recovery phase of a surgical procedure.
Because Dobson '145 does not teach or suggest all on the limitations of the
claim, and the Examiner has not shown that a person of ordinary skill would
4
Appeal2017-008657
Application 13/899,060
otherwise incorporate the missing limitations into the method taught by
Dobson '145, we determine that a prima facie case of obviousness has not
been made. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
The Examiner contends that Dobson '145 teaches that administration
of the composition can occur "before, during, or following a cardiovascular
intervention" such as open heart surgery. Ans. 12. The Examiner argues
that reperfusion of the organ occurs after surgery and thus falls within the
teaching of Dobson '145 that the administration occur following
intervention. Id. Alternatively, the Examiner contends that Dobson '145
teaches that administration can occur at any point during the open-heart
surgery which would include the recovery phase. Id. Finally, the Examiner
contends that Dobson '145 expressly teaches administration to protect the
heart from reperfusion injury.
We have considered the Examiner's arguments and find them
unpersuasive.
As Appellant has demonstrated, one skilled in the art would consider
the reperfusion stage to be part of an open-heart procedure and not an event
which follows the procedure. Br. 18-19; Dobson Deel. ,r 7. We agree with
Appellant that the teaching on Dobson '145 relating to administration
following intervention does not teach or suggest the claimed method. Br.
13.
With respect to Dobson '145 teaching that the administration can be
administered at any time during the procedure, we agree with Appellant that
a proper reading of Dobson '145 would lead one skilled in the art to
administer the composition either during the arrest or maintenance phases of
5
Appeal2017-008657
Application 13/899,060
the surgery and not during the reperfusion phase. Br. 18. For example, in
example 1 of Dobson '145, the composition recited in the claims was only
administered during the arrest and maintenance phases and not during
reperfusion. Dobson' 145 16-17.
With respect to Dobson '145 expressly teaching administration to
prevent reperfusion injury, the teaching regarding reperfusion injury related
to reperfusion after a blot clot has been dissolved and not with respect to
perfusion that occurs as part of open-heart surgery. Dobson '145, 5 at 11. 7-
11. The Examiner has not shown any teaching in Dobson '145 or in the
other references that a teaching with respect to administration of the
composition following blood clot removal would lead one skilled in the art
to use the composition during reperfusion during open-heart surgery or
another surgical procedure.
Conclusion of Law
We conclude that a preponderance of the evidence does not support
the Examiner's conclusion that claims 12-14, 16-23, 26, and 27 would have
been obvious over Dobson' 145.
The remaining rejections under 35 U.S.C. § 103(a) rely on the same
teachings of Dodson '145. For the reasons stated above, we reverse those
rejections.
OBVIOUSNESS-TYPE DOUBLE PATENTING
Appellant and the Examiner agree that overcoming the rejections
under 35 U.S.C. § 103(a) over Dobson '145 would also overcome the double
patenting rejection. As discussed above, we have reversed the rejections
6
Appeal2017-008657
Application 13/899,060
based on Dobson '145. Br. 16. Therefore, we also reverse the rejection for
obviousness-type double patenting.
SUMMARY
We reverse the rejections under 35 U.S.C. § 103(a).
We reverse the rejection for non-statutory obviousness-type double
patenting.
REVERSED
7