Ex Parte Kleinsek

Board of Patent Appeals and Interferences

May 6, 2010

11711921 (B.P.A.I. May. 6, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DON A. KLEINSEK,
Appellant1
____________________

Appeal 2010-001935
Application 11/711,921
Technology Center 1600
____________________

Decided: May 6, 2010
____________________

Before CAROL A. SPIEGEL, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from an Examiner's final
rejection of all pending claims, claims 1-5 and 7-28. We have jurisdiction
under 35 U.S.C. § 134. We REVERSE.

1 The real party in interest is GERIGENE, LLC (Corrected Brief for Appellant,
filed 8 April 2009 ("Br."), 3).

Appeal 2010-001935
Application 11/711,921

I. Statement of the Case
The subject matter on appeal is directed to methods of treating a tissue
defect in a patient, such as wrinkles, depressed scars, and lip hyperplasia,
comprising introducing adipose (fat) cells at or near the site of the defect.
The adipose cells may be obtained from the patient (autologous) or from
another source of the same species (allogenic). Claims 1, 12, 16, 18, 19, 22,
and 24 are illustrative (Br. 47-50, emphasis added):
1. A method of treating a tissue associated with a defect in a
patient using autologous materials derived from the patient, the
method comprising: introducing a plurality of autologous
adipose cells to the tissue at, or proximal to, the defect of the
patient after the plurality of autologous adipose cells have been
cultured in vivo to expand the number of adipocyte cells in at
least one medium that comprises autologous serum.

12. The method of claim 1 wherein the tissue comprises
uscle tissue. m

16. A method of treating a tissue associated with a defect in a
patient, the method comprising: introducing a plurality of
isolated adipose cells to treat the defect of the patient after the
lurality of adipose cells have been isolated in vitro. p

18. The method of claim 16 wherein the cultured [sic,
isolated] adipose cells are expanded in vitro.[ ]2

19. The method of claim 16 wherein the cells are introduced
into the patient in a mixture with a filler material, wherein the
filler material, prior to mixing with the cells, comprises a
member of the group consisting of collagen, fibronectin,
fibrillin, laminin, elastin, glycosaminoglycan, exogenous
extracellular matrix, whole extracellular matrix, and
utologous extracellular matrix. a

2 Since claim 16 refers to "isolated" adipose cells and culturing is a known
means for expanding a cell population in vitro, we interpret claim 18 as
referring to "isolated" adipose cells.
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22. The method of claim 16 wherein the adipose cells
omprise undifferentiated mesenchymal cells. c

24. The method of claim 16 wherein the adipose cells are
allogenic.

The Examiner rejected claims 16-22 and 25-28 as unpatentable under
35 U.S.C. § 102(b) as anticipated by Billings3 or, in the alternative, under 35
U.S.C. § 103(a) as obvious over Billings in view of Oliver4 (Ans.5 5-7). The
Examiner has also rejected claims 1-5, 7-15, 23, and 24 as unpatentable
under 35 U.S.C. § 103(a) over the combined teachings of Billings, Smith,6
Gillis,7 Gruber,8 and Naughton9 (Ans. 7-11).
The Examiner also relies on the following rebuttal references:
Green,10 Nakajima,11 and Shigeno12 (Ans. 12, 17-19, 24, and 25).

3 Edmund Billings, Jr., and James W. May, Jr., Historical Review and
Present Status of Free Fat Graft Autotransplantation in Plastic and
Reconstructive Surgery, 83 PLASTIC AND RECONSTRUCTIVE SURGERY 368-
381 (1989), Br. Exh. E ("Billings").
4 U.S. Patent 4,919,664, Stimulation of Hair Growth, issued 24 April 1990,
to Oliver et al., Br. Exh. A (hereinafter "Oliver").
5 Examiner's Answer mailed 27 July 2009 ("Ans.").
6 Ulf Smith, Morphologic Studies of Human Subcutaneous Adipose Tissue In
Vitro, 169 ANATOMICAL RECORD 97-104 (1971), Br. Exh. P ("Ulf").
7 U.S. Patent 5,199,942, Method for Improving Autologous Transplantation,
issued 6 April 1993, to Steven Gillis, Br. Exh. B ("Gillis").
8 Gruber et al., Study on In Vitro Cultivation of Human Chondrocytes Using
Autologous Human Serum as a Medium Additive: Minimizing the Possible
Risk of Infection with Prion Disease Pathogens, 75 LARYNGO-RHINO-
OTOLOGY 105-108 (1996). This decision cites the English language
translation by FLS, Inc. of record, Br. Exh. K ("Gruber").
9 U.S. Patent 5,842,477, Method for Repairing Cartilage, issued 1 December
1998, to Naughton et al., Br. Exh. C ("Naughton").
10 Howard Green and Olaniyi Kehinde, Formation of Normally Differentiated
Subcutaneous Fat Pads by an Established Preadipose Cell Line, 101
JOURNAL OF CELLULAR PHYSIOLOGY 169-171 (1979) ("Green").
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A. Rejection of claims 16-22 and 25-28
As to claims 16-22 and 25-58, the Examiner found that Billings
teaches the use of cultured adipose cells and preadipocytes (including
undifferentiated mesenchymal cells) in human autologous transplantation to
treat tissue defects, such as scars and wrinkles (Ans. 6). The Examiner
found that cultured adipose cells inherently express an extracellular matrix
(hereinafter "ECM") containing fibronectin, collagen, and hyaluronic acid
and that some of these ECM materials would necessarily be introduced into
a patient along with the cultured adipose cells (id.). Thus, the Examiner
found the subject matter of claims 16-22 and 25-28 anticipated by Billings
(Ans. 5 and 7).
In the alternative, the Examiner concluded that the claimed method
would have been an obvious matter of culture design choice since Oliver
teaches removing cells from a culture while keeping the ECM intact and
whole, thereby allowing flexibility in the manner of processing and
administering the cellular composition (Ans. 7).
Appellant argues that Billings does not teach the use of "isolated"
adipose cells as required by claim 16, but rather that the use of preadipocytes
in a single cell suspension (see e.g., claim 28) is a subject "ripe for
investigation" (Br. 13-15). According to Appellant, Billings "teaches that
11 Nakajima et al., Adipose Tissue Extracellular Matrix: Newly Organized by
Adipocytes during Differentiation, 63 DIFFERENTIATION 193-200 (1998)
("Nakajima").
12 Yoichi Shigeno and Brian A. Ashton, Human Bone-Cell Proliferation In
Vitro Decreases with Human Donor Age, 77-B THE JOURNAL OF BONE AND
JOINT SURGERY 139-142 (1995) ("Shigeno").
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free fat transplantation is controversial, and unpredictable" (id. at 15,
original emphasis), a position that is confirmed by Ersek13 (id. at 16).
Appellant further argues that Billings does not teach in vitro
expansion of adipose cells as required by claim 18 (Br. 17) or the "mixing"
of isolated adipose cells with the filler material recited in claim 19 (id. at 18).
Appellant contends that one of ordinary skill in the art understands an
"undifferentiated mesenchymal cell" to refer to a cell at a stage where it can
differentiate into fibroblasts, adipose tissue, cartilage, tendon, bone, or
muscle cells, not to a pre-adipocyte per se and cites to Smith for support (Br.
19-20). Thus, Appellant argues that Billings does not teach using
undifferentiated mesenchymal cells as required by claim 22 (id.).
B. Rejection of claims 1-5, 7-15, 23, and 24
As to claims 1-5, 7-15, 23, and 24, the Examiner found that Billings
differs from the claimed invention in failing to culture the adipose cells in
the presence of autologous serum and in failing to use allogenic adipose
cells (Ans. 9). The Examiner found that Smith, Gruber, and Gillis each
teach culturing adipose tissue in the presence of human serum and that
Gruber teaches that use of fetal calf serum in cell cultures of autologous cells
present a potential risk of prion disease transmission (id. at 9-10). Therefore,
the Examiner concluded that it would have been obvious to culture the
human adipose cells of Billings in the presence of human (autologous)
serum, rather than fetal calf serum, in order to eliminate the risk of
transmission of prion disease to the human with a reasonable expectation of

13 Robert A. Ersek, Transplantation of Purified Autologous Fat: A 3-Year
Follow-Up Is Disappointing, 87 PLASTIC AND RECONSTRUCTIVE SURGERY
219-227 (1991), Br. Exh. H ("Ersek").
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success based on the known use of human serum in adipose cell culture
taught by Smith, Gruber, and Gillis (id. at 10). In addition, the Examiner
found that Naughton teaches adding ECM proteins to cell preparations and
using allogenic cells for transplantation (id. at 10-11). Thus, the Examiner
concluded that "the combined teachings of Billings, Smith, Gillis, Gruber
and Naughton render obvious the claimed invention" (id. at 11).
Appellant argues that
(i) adipocyte treatment of patients is an unpredictable art,
(ii) Appellant proceeded against conventional wisdom and
succeeded,
(iii) successful use of autologous serum for culturing a particular
cell type is unpredictable,
(iv) the prior art has rejected the Examiner's proffered rationale of
using autologous serum to control prion disease transmission,
(v) none of Gruber, Gillis, Smith, and/or Naughton provide a
reasonable expectation of success using autologous serum with autologous
adipose cells because Gruber, Gillis, and Naughton are using different cell
types and Smith does not use autologous serum, and
(vi) assuming arguendo that Gruber's chondrocytes were predictive
for adipocytes, Gruber teaches that the chondrocytes lose their phenotype
and, therefore, their intended function (Br. 22-23). In essence, Appellant
argues that there can be no prima facie case of obviousness because there is
no reasonable expectation of success. Appellant relies on ten (10) references
to support his position, i.e., an Associated Press Article,14 Freshney I,15

14 CNN.com, HEALTH Study: Stem Cell Lines Contaminated, downloaded 3
February 2005 from
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Sogn,16 Oppenlander,17 Zhao,18 Koller,19 Choi,20 Brittberg,21 Shah,22 and
Stute23 (Br. 24-33), as well as discussing the teachings of Gruber, Gillis,
Naughton, and Smith (id. at 32-39). Appellant additionally relies on
http://www.cnn.com/2005/HEALTH/01/23/stem_cells.ap/, Br. Exh. D ("AP
Article").
15 R. Ian Freshney, CULTURE OF ANIMAL CELLS: A Manual of Basic
Technique, 3rd ed., 5, 100-101, and 253-255, Wiley-Liss, Inc., New York,
NY (1999), Br. Exh. I ("Freshney I").
16 John A. Sogn and Susan Jackson, Long Lived Nonadherent Rabbit
Macrophages Obtained From Spleen Cell Cultures, 19 IN VITRO 90-98
(1983), Br. Exh. Q ("Sogn").
17 Barbara K. Oppenlander and Douglas C. Dooley, Serum-Free Expansion
of CD34NEG Cord Blood Cells Is Enhanced by Low Levels of Fetal Bovine
Serum but Not Autologous Serum, 100 BLOOD Abstract No. 5249 (November
2002), Br. Exh. N ("Oppenlander").
18 Zhao et al., Serum-free Culture of Dendritic Cells from Patients with
Chronic Myeloid Leukemia In Vitro and Estimation of Their Cytotoxicity,
115 CHINESE MEDICAL JOURNAL 1296-1300, abstract only (2002), Br. Exh. S
("Zhao").
19 Koller et al., Alternatives to Animal Sera for Human Bone Marrow Cell
Expansion: Human Serum and Serum-Free Media, 7 JOURNAL OF
HEMATOTHERAPY 413-423 (1998), Br. Exh. L ("Koller").
20 Choi et al., The Effect of Serum on Monolayer Cell Culture of Mammalian
Articular Chondrocytes, 7 CONNECTIVE TISSUE RESEARCH 105-112 (1980),
Br. Exh. G ("Choi").
21 Brittberg et al., Treatment of Deep Cartilage Defects in the Knee with
Autologous Chondrocyte Transplantation, 331 THE NEW ENGLAND JOURNAL
OF MEDICINE 889-895 (1994), Br. Exh. F ("Brittberg").
22G. Shah, Why Do We Still Use Serum in the Production of
Biopharmaceuticals? 99 DEVELOPMENTAL BIOLOGY STANDARDS 17-22
(1999), Br. Exh. O ("Shah").
23 Stute et al., Autologous Serum for Isolation and Expansion of Human
Mesenchymal Stem Cells for Clinical Use, 32 EXPERIMENTAL HEMATOLOGY
1212-1225 (2004), Br. Exh. R ("Stute").
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Malpeli24 and Freshney II25 to support his position that chondrocytes are
unusual, atypical cells which are not suitable predictors for the behavior of
other cell types (Br. 39-41).
Appellant reiterates the patentability arguments made for claims 18,
19, and 22 vis-à-vis claims 2, 7, 8, and 15 (id. at 41-45).
Finally, Appellant argues that none of Billings, Smith, Gillis, Gruber,
or Naughton teach or suggest treating a defect in muscle tissue as required
by claim 12 (Br. 44) or use of allogenic cells as required by claim 24 (id. at
45-46).
Appellant has provided the same patentability arguments for (I)
claims 1, 3-5, 9-11, 13, 14, and 23; (II) claims 2, 7, 8, 15, and 19; (III) claim
12; (IV) claims 16, 17, 20, 21, and 25-28; (V) claim 18; (VI) claim 22; and,
(VII) claim 24. An argument which merely points out what a claim recites is
not considered an argument for separate patentability of the claim.26 37
C.F.R. § 41.37(c)(1)(vii). Therefore, we decide this appeal on the basis of
claims 1, 12, 16, 18, 19, 22, and 24. Id.
Based upon the positions of Appellant and the Examiner, the
dispositive issues before us are:

24 Malpeli et al., Serum-Free Growth Medium Sustains Commitment of
Human Articular Chondrocyte through Maintenance of Sox9 Expression, 10
TISSUE ENGINEERING 145-155 (2004), Br. Exh. M ("Malpeli").
25 R. Ian Freshney, CULTURE OF ANIMAL CELLS: A Manual of Basic
Technique, 4th ed., 367-368, Wiley-Liss, Inc., New York, NY (2000), Br.
Exh. J ("Freshney II").
26 Appellant lists sixteen claim groupings (Br. 6-7). However, many of these
separately grouped claims are not argued separately, e.g., "Group 17: Claim
28 (suspension)" (Br. 7) is argued as being patentable for the same reasons
discussed with respect to claim 16, "bearing in mind that it differs in scope
from claim 16 and has further reasons for patentability" (id. at 20).
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Does the evidence of record establish that Billings is a nonenabling
reference, i.e., does Billings describe the subject matter of claim 16
sufficiently to have placed it in the possession of a person of ordinary skill in
the field of the invention?
Does the evidence of record establish a reasonable expectation of
success of treating tissue associated with a defect by introducing isolated
adipose cells after the adipose cells have been isolated in vitro as recited in
claim 16?
Has the Examiner articulated a sound basis for culturing adipocytes in
media supplemented with autologous serum in place of other animal serum
as required by the method of claim 1?
Does the evidence of record establish a reasonable expectation of
successfully expanding autologous adipocytes in vitro in a culture medium
supplemented with autologous serum and of successfully treating a tissue
associated with a defect by introducing expanded autologous adipocytes at
or near the tissue defect as required by claim 1?
II. Findings of Fact
The following findings of fact ("FF") are supported by a
preponderance of the evidence of record.
A. The 921 application
[1] According to the 921 application ("Spec."), the practice of cosmetic
and reconstructive surgery often uses various injectable materials to
augment and/or repair defects of subcutaneous or dermal tissue to
obtain an aesthetic result (Spec. 2:20-22).
[2] Surgical correction of various defects have been accomplished by
initial removal and subsequent re-implantation of excised adipose
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tissue either by injection or by a larger scale surgical implantation
(Spec 7:17-22).
[3] However, large scale repairs, e.g., breast reconstruction, are said to be
limited by the amount of adipose tissue which may be excised from
the patient (Spec. 8:2-3).
[4] According to the 921 application,
in a preferred embodiment, the present invention utilizes
the surgical engraftment of autologous adipocytes which
have been cultured on a solid support typically derived
from … collagen or isolated extracellular material. The
culture may be established from a simple skin biopsy
specimen and the amount of adipose tissue which can be
subsequently cultured in vitro is not limited by the
amount of adipose tissue initially excised from the
patient. [Spec. 8:6-11.]

[5] Typically, adipocytes are mechanically or enzymatically
disaggregated (i.e., isolated) from adipose tissue derived from a
biopsy specimen, seeded onto a collagen gel matrix or a cultured
extracellular matrix, grown until near-confluence, gently scraped from
the matrix surface, and then expanded using tissue culture techniques
used for propagating undifferentiated mesenchymal cells to increase
the number of adipose cells (Spec. 23:9-17; 18:1-2).
[6] According to the 921 application, "[a]lthough adipocytes, prior to the
storage of lipid, resemble fibroblasts, it is likely that they arise
directly from undifferentiated mesenchymal tissue" (Spec. 15:21-24).
B. Adipogenesis
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[7] It is known in the art that adipogenesis is a sequential process, see e.g.,
Dani27 Figure 1 reproduced below.

Figure 1 of Dani illustrates the process of adipogenesis.
C. The applied prior art
1. Billings
[8] Billings summarized the history of autologous free fat grafts (adipose
transplants) as follows:
Free fat graft autotransplantation for soft-tissue
replacement has been a neglected subject in recent years.
In a review of the literature, investigations of the various
uses of free fat autotransplantation in animals and
humans provide an understanding of the problems
associated with the use of fat as a free graft. Results of
free fat autotransplantation were found to be quite
unpredictable, with wide variations in the resulting bulk
of the graft. Microscopic studies of this behavior led to
controversy as to whether the graft ultimately was made
of surviving graft adipocytes (cell survival theory) or
host adipocytes (host replacement theory). Studies
revealed a "fibroblast-like" mesenchymal cell within
adipose tissue that was believed to be an immature

27 C. Dani, Embryonic Stem Cell-Derived Adipogenesis, 165 CELLS TISSUES
ORGANS 173-180 (1999) ("Dani") (copy enclosed).
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adipocyte precursor or preadipocyte. Further
characterization of the preadipocyte and its complete
differentiation was accomplished using tissue-culture
techniques. These investigations provide evidence of the
dynamic nature of adipose tissue that strongly supports
the cell survival theory and gives explanation to the
unpredictable behavior of free fat autografts. Many
conditions treated by plastic surgeons require soft-tissue
augmentation. Autogenous [i.e., autologous] adipose
tissue is the most appropriate and natural replacement
material. With new culturing techniques, preadipocytes
in a single cell suspension may provide an injectable
soft-tissue replacement. This subject appears ripe for
investigation. [Billings 376 SUMMARY, emphasis
added.]

[9] Billings concluded that
[i]t is possible that preadipocytes grown in tissue
culture could be a useful autotransplantable material in the
treatment of a variety of soft-tissue defects. The
preadipocyte is a "fibroblast-like" cell of mesenchymal
origin that can be assumed to have greater resistance to
trauma than mature adipose tissue laden with lipid. When
reimplanted as an autogenous graft in pellet form or
injected, the preadipocytes differentiate and mature to
become normal-sized adipocytes and form a "fat pad" at
the site. [Billings ¶ bridging 375-376, reference notes
omitted.]

[10] Billings further concluded that
[a] single-cell suspension of preadipocytes from a
patient grown in tissue culture might be used as a
injectable autogenous transplant to treat soft-tissue
deficiency in the same patient. This might provide an
unlimited amount of soft-tissue replacement that could
be tailored through multiple injections. It seems likely
that further investigation into this area will prove
fruitful. [Billings 376 ¶ 2, emphasis added.]

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[11] Among the sites treated by free fat autografts noted by Billings is the
temporalis muscle (Billings 368 ¶ 3).
2. Oliver
[12] Oliver teaches a method for stimulating hair growth using cultured
human scalp lower follicular dermal cells which are preferably
removed from the culture system without using enzymes, thereby
leaving the cell membranes and attached ECM in substantially non-
degraded, relatively adhesive form (Oliver col. 2, ll. 35-47).
3. Smith
[13] Smith teaches culturing a 3 mm x 3 mm x 1 mm piece of human
adipose tissue (an explant) in Parker medium 199 with or without
added human serum (Smith 98, col. 1, ¶¶ 3-4).
[14] Outgrowths of fibroblast-like cells were noted in explants cultured in
the presence of added serum, but not in explants cultured in the
absence of serum (Smith 99, col. 2, ¶¶ 2-3). However, the serum
fraction responsible for stimulating the growth of the fibroblast-like
cells was not known (id. at 103, col. 2, ¶ 1).
[15] According to Smith, samples of adipose tissue cultured for 30 weeks
in Parker medium 199 supplemented with greater than 5% added
serum maintained a morphology that compared well to that of freshly
excised specimens (Smith abstract; 102, col. 1, ¶ 2).
[16] Smith also teaches using collagenase to isolate adipose cells from
adipose tissue in order to determine individual cell sizes (Smith 98,
col. 2, ¶ 1).
4. Gillis
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[17] Gillis teaches methods of improving hematopoietic progenitor blood
cell transplants comprising (a) obtaining the progenitor cells from a
patient, e.g., from bone marrow or peripheral blood, (b) expanding the
progenitor cells ex vivo in the presence of selected growth factors, and
(c) administering the expanded progenitor cells to the patient in
conjunction with or following cytoreductive therapy (Gillis col. 3, ll.
12-28).
[18] Preferred expansion media include minimal essential medium, Hanks
medium, McCoys medium, and RPMI 1640 minimal essential
medium, each supplemented with autologous serum and possibly
antibiotics (Gillis col. 5, ll. 27-37).
[19] Fetal bovine serum ("FBS") was substituted for autologous serum in
experiments where the expanded cells were not readministered to their
original donors (Gillis col. 8, ll. 11-15).
5. Gruber
[20] According to Gruber, in vitro cultivation could become a significant
source of autologous material increasingly needed for reconstructive
surgery (Gruber 2, penultimate ¶).
[21] Gruber teaches a method of cultivating cartilage tissue comprising
isolating cells (chondrocytes) from donor tissue and amplifying them,
first in a monolayer culture and then in a three-dimensional culture
system (Gruber 2, last ¶).
[22] Fetal calf serum ("FCS") was added to both the monolayer and three-
dimensional cultures (Gruber 3, ¶ 1).
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[23] Gruber teaches that FCS may be infected with prions which may
transmit diseases, e.g., bovine spongiform encephalopathy, scrapie,
and Creutzfeldt-Jakob disease (Gruber 3, ¶ 2).
[24] According to Gruber, it was not only possible to substitute autologous
human serum for the FCS in the culture system, but also about 80% of
the cultures showed higher proliferation rates (Gruber 7, ¶ 2).
[25] Gruber concluded that growing human chondrocytes in a monolayer
culture using DMEM (Dulbecco's minimal essential medium)
supplemented with 10% human serum was feasible and avoided the
potential risk of infection with disease-transmitting prions (Gruber 10
¶¶ 2-3).
6. Naughton
[26] Naughton teaches methods of making and/or repairing cartilage in
vivo comprising (a) implanting a biocompatible, nonliving three-
dimensional scaffold structure, in combination with
periosteal/perichondrial tissue, at the site of cartilage damage or loss,
and (b) administering a preparation of chondrocytes and/or other
stromal cells, e.g., chondrocyte progenitor cells, to the site of the
implant (Naughton col. 1, ll. 5-15; col. 3, ll. 60-4:10).
[27] Preferably, the periostial/perichondrial tissue and stromal cells are
from the patient's own tissues or from cells of fetal origin ("universal
donor") to minimize the risk of immunological rejection (Naughton
col. 9, ll. 21-29; col. 10, ll. 62-67; col. 13, ll. 28-31).
D. Appellant's rebuttal evidence28

28 The 921 application was filed February 28, 2007 and is a continuation of
application 09/632,581, filed August 3, 2000, which is a continuation of
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1. Ersek
[28] According to Ersek, "[t]ransplantation of autologous fat is an old idea
that has recently gained new interest" (Ersek 219, ¶ bridging cols. 1-2).
[29] Ersek reports treating over a hundred patients by (a) obtaining
autologous fat by blunt liposuction, (b) straining and rinsing the fat,
and (c) injecting the "cleansed" fat into the patient (Ersek 219, col. 2,
¶ 2; 221, col. 1, ¶ 2 and col. 2, ¶ 2).
[30] Ersek concluded that autologous fat transplantation "is very much an
experimental technique, one that must be pursued with extreme
caution" (Ersek 226, first full sentence).
[31] According to Ersek, "[w]hile further efforts to define transplantation
methods should be encouraged, my discouraging results with viable
autologous fat transplant methods are leading me in other directions,"
i.e., implanting biocompatible, non-degradable inert substances (Ersek
226, last ¶).
2. Shah
[32] According to Shah, growing cells in vitro requires culture conditions
that mimic in vivo conditions with respect to temperature, pH, oxygen
and carbon dioxide concentration, osmolarity, and nutrition (Shah 17,
¶ 1).
application 09/003,378, filed January 6, 1998, which claims benefit under 35
U.S.C. § 119 of the February 20, 1997 filing date of provisional application
60/037,961. Accordingly, Ersek, Sogn, Choi, and Brittberg were published
prior to the earliest possible filing date for the 921 application, while the AP
Article, Freshney I and II, Oppenlander, Zhao, Koller, Shah, Stute, and
Malpeli were published thereafter.
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[33] Eukaryotic cell cultures are generally supplemented with animal
serum, e.g., 10% FBS, horse serum, and even human serum (for some
fastidious human cell lines), because serum provides unidentified, but
essential factors needed for efficient cell growth (Shah abstract; 17, ¶
2 – 18, ¶ 3).
[34] Shah discusses known advantages and disadvantages of using serum,
e.g., while it is an almost universal growth supplement effective with
most types of cells, it also raises safety, reproducibility, and cost
concerns (Shah 18, ¶¶ 1-2).
[35] According to Shah, attempts to replace serum with serum free
substitutes have been disappointing for a number of reasons, including
the difficulty of finding non-animal derived replacement components,
the cost of optimizing a serum-free medium for a cell line, and the
need for formulations that are cell-line specific (Shah 20, last ¶; 22, ¶
1).
3. Freshney I
[36] According to Freshney I, there is evidence of cellular phenotypic and
genotypic instability as a result of variations in culture conditions,
selective overgrowth of constituents of the cell population, and
genomic variation during evolution of a cell line from a primary
culture and during subsequent maintenance as a cell line or purified
cell strain (Freshney I 253, col. 1, ¶ 2).
[37] As a result, a finite cell line should be grown to between the 5th and
10th population doubling to create sufficient bulk for freezing, while
continuous cell lines should be cloned and the appropriate clone
selected and grown up for freezing (Freshney I 254, col. 2, ¶ 2).
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[38] Furthermore, in view of the expected variation between batches of
serum, resulting from different methods of preparation, sterilization,
storing, age, and animal stocks, it is important to select a batch of
serum, use it for as long as possible, and replace it with one as similar
as possible (Freshney I 255, col. 1, ¶ 3).
[39] Alternatively, the best method of eliminating serum variation is to
convert to a serum-free medium, which may be costly and time-
consuming (Freshney I 255, col. 1, ¶ 4).
4. Choi
[40] Choi reports that its findings reinforce the statement that optimal
conditions for culturing mammalian chondrocytes must be determined
for each species individually and underscore the importance of the
particular sera employed in studies of the growth and phenotypic
expression of cultured chondrocytes and in interpreting the findings
based on them (Choi 111, last ¶).
[41] Specifically, according to Choi, "there is much variation in the
response of three species of cultured articular chondrocytes – rabbit,
human, and dog – to a range of types and concentrations of sera"
(Choi 105, ¶ 1).
[42] For example, human chondrocyte cultures have been improved by
using explants (small pieces of tissues) rather than dissociation
methods (which provide isolated cells) for initiating cultures and by
using human sera following priming or initial supplementation with
FCS (Choi 111, ¶ bridging cols. 1-2).
5. Malpeli
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[43] Malpeli also teaches that serum is a common supplement for in vitro
cell cultures (Malpeli 152, col. 2, ¶ 1).
[44] Malpeli reports that serum interferes with the maintenance of
chondrogenic phenotype commitment and differentiation potential,
likely through the loss of Sox9 expression (which specifies the
chondrogenic lineage) (Malpeli abstract; ¶ bridging 152-153).
[45] "More important[ly], serum is a 'nonphysiological' medium for
chondrocytes" (Malpeli 153, col. 1, ¶ 2).
[46] Malpeli discloses a serum-free growth medium that sustains
commitment of human articular chondrocytes through maintenance of
Sox9 expression (Malpeli abstract; 146, ¶ bridging cols. 1-2; 150, col.
2, ¶ 2 – 151, col. 2, ¶ 2; 153, col. 1, ¶ 2 – col. 2, ¶ 3).
6. Brittberg
[47] Brittberg performed autologous chondrocyte transplants using
cartilage that was arthroscopically obtained, minced, digested with
collagenase, washed, resuspended in culture medium supplemented
with 15% autologous serum, and transplanted (Brittberg abstract; 890
"Isolation and Culture of Chondrocytes").
[48] According to Brittberg, autologous chondrocytes and serum were used
to minimize potential side effects and the likelihood of transmitting
infectious disease (Brittberg 894, col. 1, ¶ 3).
[49] Further according to Brittberg, the culturing procedure increased the
number of initially isolated chondrocytes 10 to 20 times; and, a
fraction of the culture cells were able to reexpress their phenotype
after using procedures known to facilitate the production of a cartilage
matrix (Brittberg 894, col. 1, ¶ 4).
19
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7. Freshney II
[50] Freshney II states that chondrocytes are "highly specialized cells of
mesenchymal origin that are responsible for synthesis, maintenance,
and degradation of the cartilage matrix" (Freshney II ¶ bridging 367-
368).
[51] According to Freshney II, articular chondrocytes cultured in a
monolayer divide rapidly, become fibroblastic, and lose their
biochemical characteristics (Freshney II ¶ bridging 367-368).
[52] Freshney II also exemplifies a growth medium supplemented with
10% FCS (Freshney II 368, col. 1, ¶ 4).
8. Stute
[53] According to Stute, one of the major hurdles to clinical use of human
mesenchymal stem cells is the biosafety of the FCS used for their
culture (Stute abstract; 1213, col. 1, ¶ 2).
[54] Stute investigated the feasibility of replacing FCS in media with
autologous human serum based on the theory that autologous serum
contains all of the growth factors and substances necessary for the
isolation and expansion of human mesenchymal stem cells (Stute
abstract; 1213, col. 1, ¶ 3).
[55] Stute concluded that 10% autologous serum appeared as good as 10%
FCS in terms of isolation and expansion, while 1% and 3% autologous
serum appeared inferior (Stute abstract; 1223, col. 1, last ¶).
[56] Stute further concluded that 10% autologous serum appeared superior
to the other serum conditions with respect to osteogenic (bone growth)
differentiation (Stute abstract; 1223, col. 1, last ¶).
9. the AP Article
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[57] According to the AP article, "people have always been concerned
about the possibility that something deleterious might be transferred
from feeder cells to stem cells" (AP Article 1, last full sentence).
[58] Researchers reported that human embryonic stem cells available for
research are contaminated with nonhuman molecules from the culture
medium used to grow the cells (AP Article title).
[59] Specifically, the stem cells are contaminated by a sialic acid, Neu5Gc,
which human cells are unable to make (AP Article 2, ¶¶ 5-6).
[60] According to the researchers, growing stem cells in human serum
selected for low amounts of anti-Neu5Gc antibodies reduced, but did
not eliminate, the immune response (AP Article 2, ¶ 9).
10. Oppenlander
[61] According to Oppenlander, the proliferation of peripheral blood
CD45NEG cells, but not umbilical cord blood CD45NEG cells, in
serum-free medium suggests that the cells have different requirements
for survival and/or growth (Oppenlander abstract).
[62] Oppenlander added various combinations of growth-modulating
factors to serum-free medium to assess their ability to enhance
proliferation (Oppenlander abstract).
[63] In some cases, media were further supplemented with 10% autologous
cord blood or FBS (Oppenlander abstract).
[64] Oppenlander found that adding FBS enhanced the ability of cord
blood CD34NEG cells to form colonies in methylcellulose and to
generate uncommitted CD34POS cells in liquid culture for up to two
weeks (Oppenlander abstract, last two sentences).
11. Koller
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[65] According to Koller, human hematopoietic cell cultures are
traditionally carried out in media supplemented with both 10% FBS
and 10% horse serum (Koller 416, col. 1, last ¶).
[66] Specifically, serum contains cofactors that potentiate the effect of
growth factors (Koller 420, col. 2, ¶ 2).
[67] Koller found that the horse serum could be eliminated from the
medium without loss of performance if the FBS was increased to 20%
(Koller 416, col. 2, ¶ 1).
[68] Unfortunately, FBS may contain adventitious contaminants, e.g.,
infectious agents (Koller 421, col. 1, ¶ 2).
[69] Koller also found that human plasma and serum, from both
autologous and allogeneic sources, supported less than 50% of the
culture output as compared with animal sera-containing media (Koller
421, col. 1, ¶ 3).
[70] Although use of autologous human serum eliminates concerns
regarding the transmission of known and unknown human infectious
agents, "generation of autologous serum for cell expansion protocols
is undesirable and has significant limitations from a manufacturing,
regulatory, and quality assurance perspective, particularly as the scope
of cell expansion therapy increases" (Koller 421, col. 1, ¶ 3).
12. Sogn
[71] According to Sogn, rabbit splenocytes proliferate in media containing
high levels (10%) of FBS, but not in media supplemented with either
horse serum or autologous serum (Sogn abstract; 96, col. 1, ¶ 1).
13. Zhao
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[72] According to Zhao, dendritic cells from patients with chronic myeloid
leukemia expand better in serum-free medium containing the
cytokines (1) stem cell factor, (2) granulocyte colony-stimulating
factor, (3) tumor necrosis factor alpha, and (4) interleukin-4, than in
serum-free medium containing only cytokines (2)-(4) (Zhao Methods
& Results).
[73] Results with serum-free medium were not significantly different from
results of medium containing FCS, but results from medium
containing autologous serum were inferior to medium containing FCS
or serum-free medium containing cytokines (Zhao Results).
E. Examiner's rebuttal evidence29
1. Green
[74] According to Green, cells of an established mouse preadipocyte cell
line, 3T3, differentiated into adipose cells with a rather low frequency
when their growth in culture slowed or arrested (Green 169, ¶ 1).
[75] Green selected from sublines that underwent differentiation into
adipose cells with a much higher frequency (Green 169, ¶ 1).
[76] Cells of one of these sublines, 3T3-F442A, were (a) cultured and
harvested by trypsinization when they were nearly confluent or
confluent, but before appreciable adipose conversion had begun, and
(b) injected into mice in a suspension of medium, giving rise to
typical fat pads (Green 169, ¶ 2).
2. Nakajima

29 Green and Shigeno were published prior to the earliest possible filing date
for the 921 application, while Nakajima was published thereafter.
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Application 11/711,921

[77] According to Nakajima, an exponentially growing cloned
preadipocyte cell line (BIP) derived from Japanese Black cattle
produced type I, II, III, IV, V, and VI collagens, laminin, and
fibronectin in an in vitro culture system (Nakajima abstract; 198, col.
1, ¶ 1).
[78] The cell culture system contained Dulbecco's modified Eagle medium
supplemented with 10% FBS (Nakajima 194, col. 1, ¶ 4).
3. Shigeno
[79] Shigeno cultured marrow-free, washed bone fragments in media
supplemented with either 10% autologous serum or 10% FCS
(Shigeno 139, col. 2, ¶¶ 2-3).
[80] According to Shigeno,
[f]etal calf serum, a standard supplement for
in vitro culture media, is rich in growth factors. It is
therefore interesting that autologous serum
supported greater cell division than did fetal calf
serum and that the relative efficiencies of the two
sera did not change with age. This suggests that
changes in the systemic or local availability of
growth factor are not the cause of age-related
changes in bone-cell proliferation. [Shigeno 142,
last ¶.]

III. Discussion
A. Legal principles
1. claim construction
A claim is given its broadest reasonable construction consistent with
the specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
2. anticipation
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Anticipation requires that each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). If a prior art
reference does not expressly set forth a particular element of the claim, that
reference still may anticipate if that element is "inherent" in the disclosure of
the reference. Id. Inherency, however, may not be established by
probabilities. Id., citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). It
is also well settled that "the reference must be enabling and describe the
applicant's claimed invention sufficiently to have placed it in the possession
of a person of ordinary skill in the field of the invention." In re Paulsen, 30
F.3d 1475, 1478-79 (Fed. Cir. 1994).
3. obviousness
An invention is obvious if "the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a
whole would have been obvious … to a person having ordinary skill in the
art to which said subject matter pertains." 35 U.S.C. § 103. The factual
inquiries underlying obviousness include (1) the scope and content of the
prior art, (2) the differences between the prior art and the claims at issue, (3)
the level of ordinary skill in the art at the time the invention was made, and
(4) any objective evidence of non-obviousness. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966).
A rejection for obviousness must include “articulated reasoning with
some rational underpinning to support the legal conclusion.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006). "For obviousness under § 103, all that is required is a
reasonable expectation of success." In re O’Farrell, 853 F.2d 894, 903-04
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(Fed. Cir. 1988). Expectation of success is assessed from the perspective of
a person of ordinary skill in the art, at the time the invention was made. Life
Techs., Inc. v. Clontech Labs., Inc., 224 F.3d 1320, 1326 (Fed. Cir. 2000).
B. Claim construction
We begin by construing the terms adipose cells, adipocyte cells,
adipocytes, preadipocytes, isolated adipose cells, and mesenchymal cells.
Mesenchymal cells are multipotent stem cells that can differentiate
into a variety of cell types, first as precursor "blast" cells and ultimately as
mature (terminal) cells, including cartilage cells (chondrocytes), fat cells
(adipocytes), muscle cells (from myoblasts), and bone cells (from ostoblasts)
(see e.g., FF 7). Adipoblasts are fibroblast-like cells for which no specific
genetic markers have been identified so far (id.). Differentiation of an
adipoblast into a preadipocyte (preadipose cell) is associated with genes
such as A2Col6 and lipoprotein lipase LPL (id.). Differentiation continues
from the preadipocyte to the terminally differentiated adipocyte (adipose cell
or fat cell) and is associated with genes such as α-FABP, GPDH, and leptin
(id.; see also Spec. 15:17). The adipocyte synthesizes and accumulates lipid
(fat) (Spec. 16:7-11).
An isolated adipocyte is an adipocyte which has been mechanically or
enzymatically dissociated from adipose tissue as a single cell (see e.g., FF 5
and 16). Thus, a suspension of isolated adipocytes cannot be an excised
piece of adipose tissue per se (explant).
B. Analysis
1a. Rejection of claims 16-22 and 25-28 under § 102 over
Billings

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Appellant argues that Billings does not teach the use of isolated
adipose cells as required by claim 16 (Br. 13-14). In particular, Appellant
argues that Billings is not an enabling reference (id.).
In response, the Examiner points to Billings' "use of a single-cell
suspension of preadipocytes … as an injectable autologous transplant to treat
soft-tissue deficiency … (page 376, first full paragraph)" (Ans. 12).
According to the Examiner, "Billings provides references to specific culture
studies … (page 374), thus demonstrating that all the necessary tools are
available to those of skill in the art to carry out the suggested method" (id.).
The Examiner relies on Green for support (id.).
The method of claim 16 requires, in relevant part, introducing a
plurality of isolated adipose cells into a patient to treat a tissue defect after
the plurality of adipose cells have been isolated in vitro. Billings teaches
that a single-cell suspension of preadipocytes might provide an injectable
soft-tissue replacement, a subject ripe for investigation which will likely
prove fruitful with further investigation (FF 8 and 10). The Examiner has
not explained how the "tools" taught by Billings would have put one of
ordinary skill in the art in possession of the method of claim 16. For
example, the Examiner has not explained how (and which) culture
conditions disclosed by Billings would have allowed isolated preadipocytes
to differentiate into functional adipocytes (adipose cells) or how and when to
isolate the adipocytes from the culture for use as claimed. "One shows that
one is 'in possession' of the invention by describing the invention, with all its
claimed limitations, not that which makes it obvious." Lockwood v.
American Airlines Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed.
Cir. 1997).
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Further, Green is directed to use of a selected subclone of a cloned
preadipocyte cell line (FF 74-76). Freshney I teaches that cellular
phenotypic and genotypic instability occurs during evolution of a cell line
from a primary culture and during subsequent maintenance as a cell or
purified cell strain (FF 36). Again, the Examiner has not explained how
Green relates to Billings, e.g., does Green use the same culture conditions
disclosed by Billings and, if so, would Green's results reasonably have been
expected to be comparable with those obtained from a primary culture.
Absent a fully articulated explanation, we must reverse the rejection
of claim 16, as well as claims 17-22 and 25-28 dependent thereon, under §
102(b) as anticipated by Billings because the evidence of record fails to
establish that Billings is an enabling reference.
1b. Rejection of claims 16-22 and 25-28 under § 103 over
Billings in view of Oliver

Alternatively, the Examiner concluded that the claimed method would
have been "an obvious design choice based on the fact that there are
methods known in the art of cell therapy to remove cells from a culture
while keeping the extracellular matrix intact and whole as described by
Oliver et al (column 2 lines 35-47) thus allowing flexibility in the manner of
processing and administering the cellular composition" (Ans. 7).
Appellant argues that the combined teachings of Billings and Oliver
"do not amount to the required evidence of a reasonable expectation of
success" (Br. 15). Appellant relies on Billings and Ersek as evidence of
unpredictability (Br. 15-17).
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In response, the Examiner offers Green as a rebuttal reference to
support her position "that the art of transplanting suspensions of adipocytes
is not as unpredictable as Appellant asserts" (Ans. 12).
Here, Billings expressly teaches that free fat graft autotransplantation
for soft-tissue replacement is problematic and "results … were found to be
quite unpredictable" (FF 8). Although Billings suggests that new culturing
techniques might allow single cell suspensions of preadipocytes to be used
as an injectable autologous transplant to treat soft-tissue defects (FF 8 and
10), Billings did not provide insight on what such new culture techniques
might entail. Oliver does not provide any further insight because Oliver
involves culturing hair cells (FF 12) and the evidence of record establishes
that growing cells in vitro requires culture conditions that mimic in vivo
conditions for those particular cells (see e.g., FF 32, 40, and 61). Rather
than explaining the relevance of Oliver, the Examiner directed our attention
to Green (Ans. 12).
However, while Green is directed to use of a selected subclone of a
cloned murine preadipocyte cell line (FF 74-76), Green is problematic for at
least the reasons discussed above regarding enablement for anticipation.
Furthermore, since the rejection is based on the combined teachings of
Billings and Oliver, the Examiner cannot now rely on Green to overcome the
deficiencies of Billings and/or Oliver.
Turning to Appellant's rebuttal evidence, Ersek mechanically isolated
at least some adipocytes and injected them into a patient (FF 29) and
essentially found the method ineffective (FF 31). Thus, Ersek's
characterization of and experience with autologous fat transplantation as
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"very much an experimental technique" is consistent with Billings’ findings
of unpredictability (FF 30).
A conclusion of obviousness which is not supported by sufficient
factual findings and/or clearly articulated reasoning cannot be sustained.
Therefore, we reverse the rejection of claim 16, and its dependent claims 17-
22 and 25-28, under § 103 over the combined teachings of Billings and
Oliver because the evidence of record fails to establish a reasonable
expectation of success.
For completeness, we note the following:
As to claim 18, for the reasons given above, the Examiner has
similarly failed to explain how Billings' invitation to further experimentation
and/or variety of disclosed culture techniques on page 374 would have
provided one of ordinary skill in the art with a reasonable expectation of
success.
As to claim 19, its plain language requires introducing the isolated
adipose cells in essentially a carrier matrix or "filler material" of
extracellular matrix. To the extent that Oliver teaches removing cells from a
culture system without disassociating them, i.e., using enzymes (FF 12),
Oliver teaches away from using "isolated" cells as required by claims 16 and
19. Further, the Examiner reasons that since adipocytes require a surface to
attach to during their culture whereupon they deposit ECM proteins and
Billings does not teach removing the matrix, it is reasonable to conclude that
ECM proteins would be in the suspensions collected from cultures and used
for injection (Ans. 14). However, the Examiner appears to be reading
limitations from the Specification into the claims (see e.g., FF 5). The
adipocytes could just as easily be grown on feeder cells (see e.g., Spec. 23:9)
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and the evidence of record suggests that cultured cells are often washed and
resuspended in clean culture medium before injection (see e.g., FF 47 and
76; accord FF 29 and 57).
As to claim 22, we agree with Appellant that a preadipocyte is not an
undifferentiated mesenchymal cell (see claim construction supra and FF 7).
To summarize, we reverse the rejection of claims 16-22 and 25-28
under § 103 over the combined teachings of Billings and Oliver.
2. Rejection of claims 1-5, 7-15, 23, and 24 under § 103
over the combined teachings of Billings, Smith, Gillis,
Gruber, and Naughton

The method of claim 1 comprises treating a tissue defect by obtaining
adipocytes, expanding the number of adipocytes in vitro in at least one
culture medium containing autologous serum, and then introducing the
expanded adipocytes into the tissue at or near the defect. The Examiner
found that Billings teaches the subject matter of claim 1, but for teaching
culturing the autologous adipocytes in medium containing autologous serum
(Ans. 9). The Examiner found that Smith, Gruber, and Gillis each teach
culturing adipose tissue in the presence of human serum and that Gruber
teaches that supplementing cell cultures of autologous cells with FCS runs
the risk of prion disease transmission (id. at 9-10). Therefore, the Examiner
concluded that it would have been obvious to culture human adipocytes in
the presence of autologous human serum, instead of FCS, to eliminate the
risk of transmission of prion disease to the human with a reasonable
expectation of success based on the known use of human serum in adipose
cell culture taught by Smith, Gruber, and Gillis (id. at 10).
The Examiner also found that Billings failed to disclose use of
allogenic (not autologous) adipose cells as required by claim 24 (Ans. 9).
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The Examiner found that Naughton teaches adding ECM proteins to cell
preparations and using allogenic cells for transplantation (id. at 10-11). The
Examiner concluded that the combined teachings of Billings, Smith, Gillis,
Gruber and Naughton rendered the claimed invention obvious (id. at 11).
We find the Examiner's articulated reason for culturing adipocytes in
media supplemented with autologous serum in place of other animal serum
to have a sufficient factual basis and Appellant's argument to the contrary
unpersuasive. Appellant's own rebuttal evidence teaches or suggests using
autologous serum for the same reason asserted by the Examiner. To wit,
Brittberg expressly teaches using autologous chondrocytes and serum to
minimize potential side effects and the likelihood of transmitting infectious
disease (FF 48) and Koller teaches that use of autologous human serum
eliminates concerns about transmitting infection (FF 70).
As to Appellant's argument that the applied prior art fails to teach or
suggest treating a defect in muscle tissue (Br. 44), we agree with the
Examiner (Ans. 26) that Billings teaches treating defects in muscle tissue,
e.g., in the temporalis muscle (FF 11). Therefore, this argument is not
persuasive of patentability because it is factually inaccurate.
We also note that both claims 23 and 24 depend from independent
claim 16, not from independent claim 1 -- a fact not overlooked by the
Examiner (Ans. 8). A dependent claim includes all of the limitations of the
independent claim from which it depends. By failing to address independent
claim 16 in this rejection, the Examiner has failed to address all of the
limitations of dependent claims 23 and 24. Obviousness requires a
suggestion of all limitations in a claim. In re Royka, 490 F.2d 981, 985
(CCPA 1974). Moreover, claim 16 has not been shown to be unpatentable
32
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over Billings for the reasons given above. Therefore, we summarily reverse
the rejections of claims 23 and 24 under § 103 over Billings, Smith, Gillis,
Gruber, and/or Naughton.
Thus, the dispositive issue before us is whether a reasonable
expectation of success exists in the Examiner's prima facie conclusion of
obviousness, i.e., whether one of ordinary skill in the art would have had a
reasonable expectation of successfully expanding autologous adipocytes in
vitro in a culture medium supplemented with autologous serum and of
successfully treating a tissue associated with a defect by introducing
expanded autologous adipocytes at or near the tissue defect. According to
Appellant, no reasonable expectation of success exists. Appellant relies on
Billings, Ersek, the AP Article, Freshney I and II, Sogn, Oppenlander, Zhao,
Koller, Choi, Brittberg, Shah, and Stute to support its position, as well as
arguing asserted defects of the applied prior art (Br. 21-41). We find
Appellant's arguments persuasive.
First, as to expanding autologous adipocytes in culture media
containing autologous serum, the evidence of record establishes that
growing cells in vitro requires culture conditions that mimic in vivo
conditions for those particular cells (see e.g., FF 32, 40, and 61). The
evidence also establishes that culture media are typically supplemented with
serum, such as 10% FCS or 10% FBS, to provide unidentified, but essential
factors needed for cell growth (see e.g., FF 33, 34, and 43). However, serum
may also be "nonphysiological" for certain cell types and may contain
factors which interfere with the cell's phenotype and differentiation (see e.g.,
FF 44-45). In some cases, only a fraction of cultured cells are able to
reexpress their phenotype and then only after taking additional corrective
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steps (see e.g., FF 49 and 42). In other cases, autologous serum
supplementation may be more effective in culturing some cell types (see e.g.,
FF 55-56 and 69). For example, Sogn disclosed that rabbit splenocytes
proliferate in media containing 10% FCS but not in media supplemented
with either horse serum or autologous serum (FF 71). Thus, based on the
evidence of record, one of ordinary skill in the art would reasonably have
concluded that not all cell types and serum-supplemented media are
mutually interchangeable for expanding cells. Hence, the successful
expansion of cells in culture supplemented with autologous serum is
evidently both cell type and serum species specific. Consequently, we agree
with Appellant that the teachings of Gillis (hematopoietic progenitor cells
(FF 17)) and Gruber (chondrocytes (FF 21)) have not been shown to be
predictive of the behavior of adipocytes expanded under various culture
conditions.
The Examiner points out that Smith successfully cultured adipocytes
in media containing human serum (Ans. 17). The Examiner also maintains
that "Naughton clearly indicates that connective tissue cells such as
chondrocytes and adipocytes [from stromal cells] are seeded together onto a
scaffold for implantation … [implying] that the two cell types are capable of
growth under the same conditions" (Ans. 21).
However, as pointed out by Appellant (Br. 23), Smith does not use
autologous human serum and, analogous to use of other animal serum (see
e.g., FF 38), one of ordinary skill in the art would have had a reasonable
basis for expecting variation between batches of human serum, e.g.,
concentration and/or type of unidentified growth factors found therein.
Furthermore, it is unclear what effect such variation would have had on the
34
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claimed method. Moreover, the Examiner did not substantively challenge
Appellant's contention that "Smith … did not report any increase in adipose
cell number" (Br. 37). At best, the Examiner responded that "Billings …
suggest[s] that … Smith is predictive of success as far as expanding
adipocytes" (Ans. 20) without explaining why or how. Thus, Smith is of
little, if any, probative value.
Regarding Naughton, Appellant argues that co-culture conditions are
not predictive of other culture conditions because one cell type or feeder
cells may provide important factors vital to the culture of the other cell type
(Br. 38-39). Notably, Naughton discloses culturing in the presence of,
preferably autologous, periosteal/perichondrial tissue (FF 26-27). The
Examiner did not substantively respond to Appellant's argument, e.g., by
explaining whether autologous periosteal/perichondrial tissue and
autologous serum would have reasonably been expected to provide the same
growth factors. Therefore, we accord Naughton little, if any, probative value.
As to a reasonable expectation of successfully treating tissue defects
with autologous adipocyte transplants, on balance the evidence of record
also weighs in favor of unpredictability. Billings expressly characterizes
free fat autotransplantation as "quite unpredictable" (FF 8) and invites
further experimentation in the area (FF 8 and 10). Ersek characterizes
autologous fat transplantation "very much an experimental technique" (FF
30) and has chosen to pursue "other directions" (FF 31). Green uses
specially selected sublines of an established mouse preadipocyte line for
transplantation (FF 74-76) and Freshney I reasonably suggests that cloning
and maintaining cell lines produce genomic variation from the parent
(primary) culture (FF 36).
35
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Therefore, based on the foregoing, we reverse the rejection of claims
1-5, 7-15, 23, and 24 under § 103 over the combined teachings of Billings,
Smith, Gillis, Gruber, and Naughton.
C. Conclusion
We reverse the rejection of claims 16-22 and 25-28 under § 102(b) as
anticipated by Billings. On balance, the evidence of record establishes that
Billings is a non-enabling reference because Billings does not describe the
subject matter of claim 16 sufficiently to have placed it in the possession of
a person of ordinary skill in the field of the invention.
We reverse the rejection of claims 16-22 and 25-28, under § 103 over
the combined teachings of Billings and Oliver. On balance, the evidence of
record, while establishing a reason to combine the teachings of the
references, also establishes that fat cell transplantation of is an unpredictable
technique which lacks a reasonable expectation of success. In particular, the
evidence of record fails to establish a reasonable expectation of success of
treating tissue associated with a defect by introducing isolated adipose cells
after the adipose cells have been isolated in vitro.
Finally, we reverse the rejection of claims 1-5, 7-15, 23, and 24 under
§ 103 over the combined teachings of Billings, Smith, Gillis, Gruber, and
Naughton. The Examiner has articulated a sound basis for culturing
adipocytes in media supplemented with autologous serum in place of other
animal serum as required by the method of claim 1. However, the evidence
of record fails to establish a reasonable expectation of successfully
expanding autologous adipocytes in vitro in a culture medium supplemented
with autologous serum and of successfully treating a tissue associated with a
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defect by introducing expanded autologous adipocytes at or near the tissue
defect as required by claim 1.
IV. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 16-22
and 25-28 as unpatentable under 35 U.S.C. § 102(b) as anticipated by
Billings or, in the alternative, under 35 U.S.C. § 103(a) as obvious over
Billings in view of Oliver is REVERSED; and,
FURTHER ORDERED that the decision of the Examiner to reject
claims 1-5, 7-15, 23, and 24 as unpatentable under 35 U.S.C. § 103(a) over
the combined teachings of Billings, Smith, Gillis, Gruber, and Naughton is
REVERSED.
REVERSED

enc: C. Dani, Embryonic Stem Cell-Derived Adipogenesis, 165 CELLS
TISSUES ORGANS 173-180 (1999)

cdc

DON A. KLEINSEK, PH.D.
5582 BANTRY LANE
FITCHBURG, WI 53711

37
Application/Control No.

11/711,921
Applicant(s)/Patent Under
Reexamination
Kleinsek, Don A.
Notice of References Cited
Examiner

Laura Schuberg
Art Unit

1600

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Christian Dani, Embryonic Stem Cell-Derived Adipogenesis, 165 Cells Tissues Organs 173-180 (1999).

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U.S. Patent and Trademark Office
PTO-892 (Rev. 03-98) Notice of References Cited Part of Paper No. 16
Reproduced with permission of the copyright owner. Further reproduction prohibited without permission.
Embryonic Stem Cell-Derived Adipogenesis
Christian Dani
Cells Tissues Organs; 1999; 165, 3-4; ProQuest Health and Medical Complete
pg. 173
Reproduced with permission of the copyright owner. Further reproduction prohibited without permission.
Reproduced with permission of the copyright owner. Further reproduction prohibited without permission.
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Reproduced with permission of the copyright owner. Further reproduction prohibited without permission.
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