Ex Parte Marchosky

Board of Patent Appeals and Interferences

Aug 20, 2009

10071490 (B.P.A.I. Aug. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte J. ALEXANDER MARCHOSKY
____________

Appeal 2008-006234
Application 10/071,490
Technology Center 1600
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Decided: August 20, 2009
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Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REHEARING
Appellant requests a rehearing under 37 C.F.R. § 41.52(a)(1) of our
Decision entered January 23, 2009 (“Decision”) in which the written
description rejection of claims 97, 98, and 103-108 was affirmed.

Appeal 2008-006234
Application 10/071,490

Statement of the case
The appealed claims are directed to a composition for promoting the
growth and strengthening of bone “consisting essentially of” hyaluronic acid
or a salt of it (“HA”), cancellous bone (“CB”), demineralized bone matrix
(“DBM”), and non-decalcified bone matrix (“NDM”). Each component is
present in a specifically recited amount. Claim 104 was selected as
representative of the claimed subject matter.
The Patent Examiner had rejected the claims under 35 U.S.C. § 112,
first paragraph, for lack of written description. The Examiner took the
position that the claimed four-component composition “consisting
essentially” of HA, CB, DBM, and NBM in the recited amounts “was not
envisioned at filing” (Ans. 5). The Examiner explained:
While the specification . . . supports the general composition of
claim 104, the specific composition limited by the consisting
essentially of now recited in claim 104 is not envisioned. The
specific composition having the specific ranges as stated in the
claims additionally with the consisting essentially of was not
envisioned at filing. There is nothing in the specification
pointing to this specific combination of components and
amounts. Most of the disclosure includes growth factors.
(Id.)
The Examiner’s rejection was affirmed because there was insufficient
evidence to establish that the inventor invented the claimed four-component
composition. To satisfy the written description requirement, the
Specification must convey to persons of ordinary skill in the art that the
inventor was in possession of the claimed invention. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). In this case, the
Specification described a three-component composition of HA, CB, and
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DBM in the Summary of the Invention and claimed it (FF1). However, we
found:
[T]here is no explicit statement in the written description that
the inventor invented this same composition with NBM.
Appellant provides a reason as to why NBM might be added to
the three-component composition: because the Specification is
said to teach that the combination of NBM and DBM is an
alternative for DBM, alone (FF4; App. Br. 18). However, this
was stated in the context of describing an osteoinductive
material (FF3). There is no statement in the Specification that
this substitution should be made in a different composition
having only HA, CB, and DBM (FF1).
(Decision 7.)
Statement of the issues
Appellant seeks rehearing on the grounds that the Board overlooked
the legal standard for written description under § 112, first paragraph and
raised new grounds of rejection.

Analysis
Legal standard for Written Description
In affirming the Examiner’s written description rejection, we cited the
following legal principles as guidance:
To satisfy the written description requirement, the
inventor “must also convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was
in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563-64 (Fed. Cir. 1991). In describing the claimed
invention, there is no requirement that the wording be identical
to that used in the specification as long as there is sufficient
disclosure to show one of skill in the art that the inventor
“invented what is claimed.” Union Oil Co. of California v.
Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000).
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An applicant complies with the written description
requirement “by describing the invention, with all its claimed
limitations.” Lockwood v. American Airlines, Inc., 107 F.3d
1565, 1572 (Fed. Cir. 1997).
(Decision 3.)
On page 17 of the Appeal Brief, Appellant stated:
To comply with the written description requirement, “the
disclosure need only reasonably convey to persons skilled in the
art that the inventor had possession of the subject matter in
question.” Fujikawa v. Wattanasin, 93 F.3d 1559 (Fed. Cir.
1996) at p. 1570. Finding the same wording (ipsis verbis) used
in the claim is not necessary. Id. Thus, so long as a person “of
ordinary skill in the art would have understood the inventor to
have been in possession of the claimed invention at the time of
filing, even if every nuance of the claims is not explicitly
described in the specification, then the adequate written
description requirement is met.” In re Alton, 76 F3d 1168 (Fed.
Cir. 1996) at p.1175. “. . . [H]ow the specification accomplishes
this is not material.” Id. At p. 1172 (citing In re Wertheim, 541
F.2d 257,262 (C.C.P.A. 1976).”
As indicated by these passages, both the Board and Appellant
recognized it is unnecessary to use the same words in the claim that appear
in the Specification to comply with the written description requirement as
long as the Specification reasonably conveyed “possession” of the claimed
invention. Thus, it does not appear that our statement of the law conflicted
with Appellant’s.
Appellant faulted our Decision for stating “[t]here is no word-for-
word description of a composition consisting essentially of: 1) HA, 2) CB,
3) DBM, and 4) NBM as required by claim 104.” (Decision 6.) Based on
this statement, Appellant concluded we had misapplied the law. Appellant
stated: “Because there is no requirement for a word-for-word description of
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any claim, the Board based its decision on an erroneous standard . . .” (Req.
Reh’g 3).
We did not misapprehend the written description standard. As
evidenced by the Principles of Law section set forth in the Decision, we
correctly understood that “there is no requirement that the wording be
identical to that used in the specification as long as there is sufficient
disclosure to show one of skill in the art that the inventor ‘invented what is
claimed.’ Union Oil Co. of California v. Atlantic Richfield Co., 208 F.3d
989, 997 (Fed. Cir. 2000).” (Decision 3.)
Legal decisions are crafted after the decision-maker has made a
careful inquiry into the facts of the case and then applied the relevant
principles of law to the specific facts. Our statement about the absence of a
“word-for-word description” of claim 104 in the Specification was a fact. It
was specifically designated as Finding of Fact 6 in the section titled
“Findings of Fact.” There was no reason to confuse it as anything other than
a fact. Appellant has not even disputed the validity of this fact. Given the
absence of a word-for-word description in the Specification of the later
claimed subject matter of claim 104, we were compelled to consider whether
the Specification in other ways “convey[ed] to persons of ordinary skill in
the art that the inventor was in possession of the claimed invention.”
(Decision 7.) Appellant has not identified a defect in how we applied the
law to the facts.

New grounds of rejection
Appellant contends that a new ground of rejection was stated because
the Board “raise[d] for the first time an artificial distinction between a three-
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and four-component composition in finding inadequate support in the
specification for claim 104.” (Req. Reh’g 3.)
Reference to the Specification disclosure of three and four component
compositions was made in the Finding of Fact section of the Decision (FF1,1
2, 5, & 6). We explained in the Decision why the claimed four component
composition “consisting essentially” of 1) HA, 2) CB, 3) DBM, and 4) NBM
was not supported by the as-filed Specification. Our discussion did not
constitute a new ground of rejection. The rejection was the same. We
merely elaborated on the Examiner’s explanation. As held in Hyatt v. Doll,
2007-1066 (Fed. Cir. decided Aug. 11, 2009): “The Board cannot be said to
have presented a new ground of rejection simply by elaborating on the
examiner’s rejection or by using different words.”
Appellant also stated that we erred because “the Board’s own findings
of fact describe compositions that include four components.” (Req. Reh’g 3-
4.) Apparently, Appellant was referring to Findings 2 and 3, which are
reproduced below for clarity:
2. A composition is described in the Summary of the Invention
having an osteoinductive material (b) that comprises: 1) DBM,
2) NBM, and 3) “with or without” HA (Spec. 4:9-10; 5:7-9).
This composition is also described on page 16, lines 6-9, of the
Specification (see FF4 below).

3. In addition to DBM, NBM, and HA, the composition (FF2)
can comprise CB (Spec. 4:12) and growth factors (id. at 4:1-9).

A composition is described in the Summary of the Invention as
“comprising” materials (a), (b), (c), and (d) (Spec. 4:1-20). Material (a)

1 The Findings of Fact (“FF”) appear in our original Decision.
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comprised growth factors. Finding of Fact 3 referred to the growth factors
in material (a) and referenced it on page 4, lines 1-9 of the Specification.
Material (b), an osteoinductive material comprising DBM, NBM, and HA,
was summarized in Finding of Fact 2. Material (c) was to scaffolding
material selected from a group that contained CA. Finding of Fact 3 referred
to the CA in material (c) and referenced it on page 4, line 12 of the
Specification.
Based on the evidence above, we do not dispute that the Specification
described a composition comprising material (b) (DBM, NBM, HA), the
growth factors of component (a), CB of material (c), as well as other
ingredients. See FF3, referencing the “composition” described in the
Summary of the Invention as containing other ingredients in addition to
DBM, NDM, and HA. However, claim 104 does not recite the term
“comprising,” but rather uses the phrase “consisting essentially of” which, as
pointed out by the Examiner, would exclude growth factors (Ans. 5).2
Therefore, while the Specification described compositions comprising HA,
CB, DBM, NBM, and growth factors, there is no indication from the
Specification that the inventors had conceived of a composition which
contained HA, CB, DBM, and NBM, but lacked growth factors.
The Specification also described and claimed a composition for
promoting growth and strengthening of bone that comprised: 1) HA, 2) CB,

2 “Consisting essentially” excludes ingredients that do not materially affect
the basic and novel properties of the claimed invention.” PPG Industries Inc.
v. Guardian Industries Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998)
(referenced in the Decision on page 3). Appellant did not dispute the
Examiner’s finding in the Answer that “consisting essentially of” would
exclude growth factors.
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and, 3) DBM (Spec. 5:27 to Spec. 6:3; Spec. 43; claim 56; FF1). This
composition is different from the materials (a) through (d) described on
pages 4-5 of the Specification and discussed above. Appellant stated that
NBM could be added to it as an alternative for DBM, alone (FF4; App. Br.
18). However, as stated in the Decision, the substitution was described in
the Specification “in the context of describing an osteoinductive material.”
(Decision 7.) There was no statement in the Specification that this
substitution should be made in the bone growth and strengthening
composition having only HA, CB, and DBM (Decision 7; see FF4).
Based on Appellant’s analysis, we concluded that Appellant had
invoked an improper standard for complying with the written description
requirement for a claim which was not disclosed in the original application -
as is the case here. “The question is not whether the Specification provides a
reason to have made the invention which is now claimed, but whether the
invention, with all its claimed limitations, is described in it. See Lockwood
v. American Airlines, Inc., 107 F.3d 1565, 1572 (1997).” (Decision 7-8.)
As subsequently stated by the Federal Circuit, the written description “need
not recite the claimed invention in haec verba but [it] must do more than
merely disclose that which would render the claimed invention obvious.”
ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1377
(Fed. Cir. 2009).

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Appeal 2008-006234
Application 10/071,490

Conclusion of Law
We have considered Appellant’s Request for Rehearing, but decline to
modify our original Decision entered January 23, 2009. The rehearing is

DENIED

cdc

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