Ex Parte Malessa

Board of Patent Appeals and Interferences

Oct 27, 2010

10557562 (B.P.A.I. Oct. 27, 2010)

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.
10/557,562 11/21/2005 Ralf Malessa GIL-16291 1639
7609 7590 10/27/2010
RANKIN, HILL & CLARK LLP
23755 Lorain Road - Suite 200
North Olmsted, OH 44070-2224
EXAMINER
SAMALA, JAGADISHWAR RAO
ART UNIT PAPER NUMBER
1618
MAIL DATE DELIVERY MODE
10/27/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RALF MALESSA
__________

Appeal 2010-009082
Application 10/557,562
Technology Center 1600
__________

Before DEMETRA J. MILLS, MELANIE L. MCCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
process for the manufacture of alginate-containing porous shaped articles.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-009082
Application 10/557,562

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The Patent Examiner rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Claims 52-57, 61-63, and 72-78 are on appeal. Claims 52, 62, and 63
are representative and read as follows:
52. A process for the manufacture of alginate-containing porous shaped
articles comprising:
(a) contacting one or more salts of a polyvalent metal ion and a
multidentate complexing anion with an aqueous solution of a water-soluble
alginate,
(b) adding acid to the aqueous solution to decrease the solution pH to
less than 6, thereby increasing the available concentration of the polyvalent
metal ion in the alginate solution to form a flowable aqueous alginate
composition,
(c) pouring the flowable aqueous alginate composition into a mold,
and
(d) drying the aqueous alginate composition to form a porous shaped
article.

62. The process of claim 52 further comprising, prior to (c), the addition
of a further component selected from the group consisting of cosmetic
substances, medical substances, hydrocolloid-forming polymers, cosmetic
adjuvants and medical adjuvants.

63. The process of claim 62, wherein the further component is selected
from the group consisting of a polysaccharide, hyaluronic acid or a salt
thereof, carboxymethylcellulose or a salt thereof, urea, squalane, and
combinations thereof.

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The Examiner rejected the claims under 35 U.S.C. § 103(a) as
unpatentable over Scherr,2 Mahoney I,3 and Mahoney II.4
Claims 53-57, 61-63, and 72-76 have not been argued separately and
therefore stand or fall with claim 52. 37 C.F.R. § 41.37(c)(1)(vii).

OBVIOUSNESS
The Issue
The Examiner’s position is Scherr disclosed a process for making a
water-insoluble, alginate sponge or foam product that meets the limitations
of instant independent claims, except for the acid addition step. (Ans. 4-5).
The Examiner also found that Scherr did not disclose the addition of a
further component “selected from the group consisting of a polysaccharide,
hyaluronic acid or a salt thereof, carboxymethylcellulose or a salt thereof,
urea squalene, and combinations thereof,” as recited in dependent claim 63.
(Id. at 5).
The Examiner found that Mahoney I disclosed a process for preparing
alginate rope comprising the preparation of a mixed salt alginate whereby
some of the insolubilizing cations of the alginate fibers are replaced by
solubilizing cations “by treating sequentially with an acid and a source of a
cation capable of forming a water soluble alginate.” (Ans. 5). The
Examiner found that Mahoney I taught that calcium and zinc cations and

2 US Patent No. 5,718,916 issued to George H. Scherr, Feb. 17, 1998.
3 US Patent No. 5,976,439 issued to Peter M. J. Mahoney et al., Nov. 2,
1999.
4 US Patent No. 6,023,008 issued to Peter M. J. Mahoney et al., Feb. 8,
2000.

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salts thereof, such as chlorides and sulfates are capable of forming the water
insoluble alginate salts. (Id.). Additionally, the Examiner found that
Mahoney I disclosed using an acid bath in the conversion procedure for
treatment with a suitable acid and a solubilizing cation, during which the pH
of the bath should be in the range of 1 to 3. (Id.). According to the
Examiner, Mahoney I disclosed that its alginate rope product exhibits greatly
improved structural integrity which is advantageous in handling the dressing
before application to a wound, and in many cases making removal from a
deep wound site easier. (Id. at 5-6).
The Examiner found that Mahoney II disclosed preparing wound
dressings comprising a fibrous alginate pad and an adhesive layer. (Id. at 6).
In particular, the Examiner found that Mahoney II taught that hyaluronic
acid and other suitable medicaments can be incorporated into the alginate
fibers comprising its pads. (Id.).
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to modify
Scherr’s process “to include the addition of dilute acid to maintain the pH of
the aqueous solution and … [the addition of a] polysaccharide such as
hyaluronic acid…, [and] combine it with the alginate wound dressing rope
and alginate wound dressing pad as taught by Mahoney [I and II]” to yield
the instantly claimed invention. (Id.). The Examiner reasoned that the
skilled artisan would have been motivated to combine the references because
Scherr taught compositions of alginate product having utility in various
medical, dental and surgical applications, while retaining their integrity in or
on tissues over extended periods of time. (Id. at 6-7).
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Appellant contends that a skilled artisan would not have been
motivated to combine the references because “there is no commonality
therebetween….” (App. Br. 12). In particular, Appellant asserts that unlike
Scherr, “the Mahoney patents relate to fibrous alginate products, and not
porous or molded products.” (Id.). Additionally, Appellant asserts that in
contrast to the present invention, “[n]either Mahoney I nor Mahoney II
discloses the preparation of insoluble alginate materials as instantly
claimed….” (Id. at 13). According to Appellant, “the Mahoney patents
teach the formation of a soluble alginate by the addition of acid.” (Id. at 16).
The issue with respect to this rejection is whether the record supports
the Examiner’s conclusion that the cited references would have made the
claimed process obvious.

Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references. (See Ans. 3-7).
2. Mahoney I stated that “mixed salt alginates exhibit a further
advantage associated in the employ of alginates in wound treatment, in that
such mixed salt alginates having improved solubility in water or wound
exudate matter form a protective and useful gel like structure that results
over time, and is beneficial to the wound healing process.” (Mahoney I col.
1, ll. 21-27).

Principles of Law
“[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but when the
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‘improvement’ is technology-independent and the combination of references
results in a product or process that is more desirable for example because it
is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more
efficient.” Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” In re Clay,
966 F.2d 656, 658-9 (Fed. Cir. 1992).

Analysis
We are not persuaded by Appellant’s arguments that a person of
ordinary skill in the art at the time the invention was made would not have
been motivated to combine the teachings of the prior art, as the bases for this
contention are not supported by the record. To begin, commonality between
the references existed in that each reference was directed to alginate-
containing products for use in wound healing applications. While Scherr’s
alginate products were formed in a mold, whereas the Mahoney products
comprised fibrous alginates, these references are in the same field of
endeavor and address the same problem. See Clay, 966 F.2d at 658-59.
Further, Appellant has not established with persuasive evidence that a skilled
artisan would have expected the Examiner’s proposed combination of these
references to result in a process that prevented the formation of a molded
product.
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Appellant asserts that a skilled artisan would not be motivated to
combine the step of adding an acid in Scherr’s process because “the
Mahoney patents teach the formation of a soluble alginate by the addition of
acid.” (App. Br. 16.) The process of changing the calcium alginate to form
a mixed salt alginate is called conversion. The mixed salt alginate has
improved solubility over the calcium alginate form. (Mahoney I, col. 1, ll.
20-35.) The Examiner relied upon Mahoney I for teaching the preparation
of a mixed salt alginate by sequentially treating with an acid (col. 2, ll. 48-
62). (See FF-1). Appellant asserts that this process in Mahoney I converted
insoluble alginate to soluble alginate. (App. Br. 15-16). We disagree that
Mahony converted all the insoluble alginate to the soluble form. As the
Examiner explained, Mahoney I taught that during acid treatment, the pH
should be carefully controlled to avoid removal of more than the desired
percentage of calcium i.e., insolubilizing cation. (Ans. 8). Also as the
Examiner correctly explained, Mahoney I disclosed that its process provided
alginate rope comprising 90:10 Ca:Na mixed salt alginate fibers. (Id.). We
find that Mahoney I’s disclosure of mixed salt alginate fibers having that
ratio of insolubilizing cations to solubilizing cations described water
insoluble fibers. The Examiner pointed to Scherr’s method for controlling
the rate of alginate precipitation, i.e., using a sequestering agent. (Ans. 4,
citing Scherr col. 8.) Both references thus addressed the problem of
controlling alginate solubility and were pertinent to each other. See Clay,
966 F.2d at 659 (“[a] reference is reasonably pertinent if . . . it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem”). By disclosing
a way to control alginate solubility as needed or desired, Mahoney I
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provided motivation for adding acid to Scherr’s process. See Dystar, 464
F.3d at 1366 (“the ‘evidence’ of motive will likely consist of an explanation
of the well-known principle or problem-solving strategy to be applied”).
The Examiner cited Mahoney II for its process of preparing alginate-
containing products that added hyaluronic acid as a medicament, meeting the
limitation of instant dependent claim 63. (FF-1). The record supports the
obviousness of adding that step to Scherr’s process, as Scherr expressly
disclosed that other medicinal agents may be incorporated into the alginate
mixture prior to pouring it into a mold. (See id.).
For these reasons, we find that Appellant’s contentions are not
supported by the record.

CONCLUSION OF LAW
The record supports the Examiner’s conclusion that the cited
references would have made the claimed process obvious.

SUMMARY
We affirm the rejection of claims 52-57, 61-63, and 72-78 under
35 U.S.C. § 103(a) as unpatentable over Scherr, Mahoney I, and Mahoney
II.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Appeal 2010-009082
Application 10/557,562

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