Ex Parte Luttropp et al

Patent Trial and Appeal Board

Jul 10, 2017

13120323 (P.T.A.B. Jul. 10, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/120,323 04/27/2011 David Luttropp 52759-215752 9173
23643 7590 07/12/2017
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
PATEL, PRANAV N
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
07/12/2017 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID LUTTROPP, MARKUS NEUBAUER, HELMUT
GEIGER, JUERGEN BEREITER-HAHN, PATRICK BAER, and
REINHOLD DEPPISCH1
(Applicant: DORIS DEPPISCH)
Appeal 2017-000739
Application 13/120,323
Technology Center 1700
Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and
AVELYN M. ROSS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
HOUSEL, Administrative Patent Judge, concurring.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Gambro Lundia AB.
Appeal Br. 2.
Appeal 2017-000739
Application 13/120,323
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1, 3—13 and 15—19. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. A method of culturing adherent renal cells comprising
providing a membrane comprising a copolymer of
acrylonitrile and sodium methallylsulfonate, and further
comprising polyethyleneimine, and heparin, and inoculating
the membrane with adherent renal cells.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Cadwell US 2003/0203478 A1 Oct. 30,2003
Moachon et al. US 2005/0045554 A1 Mar. 3, 2005
(hereafter “Moachon”)
Humes US 2005/0238687 Al Oct. 27,2005
THE REJECTIONS
1. Claims 1, 3—9, 13, 15, and 16 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Humes in view of Moachon.
2. Claims 10-12 and 17—19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Humes and Moachon, as applied to claims 8 and 9
above, and further in view of Cadwell.
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Application 13/120,323
ANALYSIS
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we reverse the Examiner’s
rejections for the reasons stated in the record by Appellants. We add the
following for emphasis.
Rejections 1 and 2
We agree with Appellants that there is insufficient motivation to
make the proposed modification to Humes because the proposed
modification to Humes would render Humes’ invention unsatisfactory for its
intended purpose, for the reasons stated by Appellants in the record. Appeal
Br. 3—8. Reply Br. 2-A.
Notably, the Examiner does not adequately resolve this point raised
by Appellants. The Examiner states that Moachon does not teach that
addition of polyethyleneimine to the membrane will create endotoxins, and
that one of ordinary skill in the art would know that endotoxins will only
retain at the membrane if endotoxins are present in the fluid to be filtered or
cells to be cultured. The Examiner states that if endotoxins are not present in
the medium or in the cells to be cultured, then there will not be endotoxins
retained at the membrane. Ans. 10. However, as pointed out by Appellants
in the Reply Brief, it is well known that, in patients in need of dialysis, the
kidney is constantly bombarded with endotoxins as a result of a failing renal
system. Reply Br. 3. Appellants submit that therefore a person of ordinary
skill in the art, designing an artificial kidney for late-stage renal failure
patients, would desire to avoid materials that would cause harmful
endotoxins to be retained on such a device. Appellants further submit that
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Application 13/120,323
therefore, a person of ordinary skill in the art, upon reading the teachings
regarding polyethyleneimine in Moachon, would not have been motivated to
add polyethyleneimine to a membrane if the person desired to avoid
retention of endotoxins on the membrane. We agree. “If the proposed
modification would render the prior art invention being modified
unsatisfactory for its intended purpose, then there is no suggestion or
motivation to make the proposed modification.” In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984).
In view of the above, we reverse Rejection 1. Because the Examiner
does not rely upon the additionally applied reference (Caldwell) in Rejection
2 to cure the stated deficiencies of Humes in view of Moachon, we also
reverse Rejection 2.
DECISION
Each rejection is reversed.
ORDER
REVERSED
HOUSEL, Administrative Patent Judge, concurring
Although I concur with my colleagues in the majority that the
Examiner has not established a prima facie case of obviousness for the
claimed subject matter, I write separately to raise several matters which
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Application 13/120,323
neither the Examiner nor the majority address. To begin, Appellants argue
that modification of Humes’ cell seeded hollow fiber bioreactor to include
polyethyleneimine (PEI) in the membrane as taught by Moachon would
render Humes’ bioreactor inoperable for its intended purpose because it
would then retain endotoxins harmful to the seeded cells. Appeal Br. 5—7.
As noted by Appellants and the majority, the Examiner fails to adequately
address this argument.
Nonetheless, there is no dispute on this record that the only difference
between Humes and claim 1 is the presence of PEI in the membrane. I note
that Moachon teaches that PEI may be added to one or both of the surfaces
of the membrane, thereby providing respective “one face” and “two face”
embodiments. Moachon || 29, 30, 37, and 38. In particular, for the “one
face” embodiment, Moachon teaches the face in direct contact with the
filtration or dialysis fluid may be treated with PEI to retain “endotoxins
which otherwise would pass in the blood by backfiltration.” Id. at 129.
Thus, Moachon is teaching that applying PEI to the surface of the membrane
opposite to the surface contacting blood to be filtered prevents endotoxins in
the filtration or dialysis fluid from backfiltering into the blood. In modifying
Humes’ bioreactor membrane with PEI, given that, as Appellants argue
(Appeal Br. 4), it was well known in the art to exclude endotoxins harmful
to Humes’ renal cells, it would have been obvious to have treated the surface
external or opposite to the renal cells to thereby prevent backfiltering
endotoxins to them. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(“A person of ordinary skill in the art is also a person of ordinary creativity,
not an automaton.”) Such a modification would retain endotoxins on the
side of the membrane opposite to the cells and prevent them from reaching
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the cells. Such a modification also would have a reasonable expectation of
successfully operating to achieve Humes’ purpose with the added benefit of
preventing backfiltering of endotoxins to the cells as Moachon teaches.
As the majority opinion determined, the Examiner failed to establish a
prima facie case of obviousness because the Examiner did not adequately
address Appellants’ argument that retaining endotoxins on Humes’
membrane would be harmful to the renal cells adhered thereto, thereby
rendering Humes inoperable for its intended purpose. However, the
Examiner did not consider the entirety of Moachon’s teachings, particularly
the “one face” embodiment which, in my view, would avoid retaining
endotoxins on the side of the membrane to which Humes’ renal cells are
adhered.
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