Ex Parte Morrissey et al

Patent Trial and Appeal Board

Aug 3, 2016

12582595 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/582,595 10/20/2009
23713 7590 08/05/2016
Lathrop & Gage LLP (GS)
4845 PEARL EAST CIRCLE SUITE 201
BOULDER, CO 80301
FIRST NAMED INVENTOR
JAMES H. MORRISSEY
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
535404: 126-1 lA US 4941
EXAMINER
BRADLEY, CHRISTINA
ART UNIT PAPER NUMBER
1675
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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):
BOULDERIP@LathropGage.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES H. MORRISSEY, STEPHANIE A. SMITH,
ROBERTO DOCAMPO, and NICOLA J. MUTCH 1
Appeal2014-002028
Application 12/582,595
Technology Center 1600
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
ULRIKE W. JENKS, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
method of stopping bleeding by applying a polyphosphate compound to a
wound. The Examiner rejects the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the Real Party in Interest is The Board of
Trustees of the University of Illinois. (App. Br. 2.)
Appeal2013-002028
Application 12/582,595
STATEMENT OF THE CASE
Claims 21-252 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief. Claim 21 is representative of the claims on
appeal, and reads as follows:
21. A method of stopping or slowing bleeding from a wound,
comprising contacting blood from the wound at the site of the
wound with a composition comprising (i) polyphosphate
(polyPn), wherein n is at least 25, and (ii) a pharmaceutical
earner.
Appellants seek review of the following rejections:
I. Claims 21, 22, and 25 under 35 U.S.C. § 103(a) as unpatentable
over Kim3 (Ans. 2; Final Act. 4'5 2-3); and
II. Claims 23 and 24 under 35 U.S.C. § 103(a) as unpatentable
over Kim in view of Ooms6, Tipton7, Sporn8, and Gibbins9 (Ans. 2; Final
Act. 4--5).
2 The rejection of claims 28 and 29 is withdrawn by the Examiner (Ans. 2).
3 Kim et al., US 2001/0043951 Al, published Nov. 22, 2011 ("Kim").
4 Office Action mailed Oct. 22, 2012.
5 We note that the Final Action also contains provisional nonstatutory
obviousness-type double patenting rejections over copending U.S.
application No. 12/680,947 now issued as a patent (Smith et al., US
8,821,861 B2, issued Sept. 2, 2014) and U.S. application No. 12/740,762
(Notice of Abandonment mailed April 23, 2014). The Examiner withdrew
these rejections in in the Advisory Action mailed Apr. 5, 2013 in light of the
terminal disclaimer filed in the application.
6 Ooms et al., US 4,874,766, issued Oct. 17, 1989 ("Ooms").
7 Tipton et al., US 5,632,727, issued May 27, 1997 ("Tipton").
8 Sporn et al., US 5,705,477, issued Jan. 6, 1998 ("Sporn").
9 Gibbins, US 6,355,858 Bl, issued Mar. 12, 2002.
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Appeal2013-002028
Application 12/582,595
I. Obviousness over Kim
The Examiner takes the position that Kim teaches "a method of
contacting a wound with polyphosphate to promote wound healing" (Ans. 3;
Final Act. 2).
[T]he Examiner concedes that there is insufficient evidence to
establish that the limitation "contacting blood from the wound
at the site of the wound" is inherently met by the prior art, the
claimed methods[, however,] are obvious over Kim et al. The
prior art offers no reason to avoid contacting blood from the
wound at the site of the wound with the disclosed
polyphosphate compositions. Bleeding must occur at some
point during the procedure disclosed in Kim et al. and the prior
art offers no reason to avoid applying the polyphosphates while
bleeding is still present.
(Ans. 3; see also Final Act. 3 ("the Kim et al. reference is silent as to
whether or not the rat wounds were still bleeding at the time of at least the
first polyP administration").
Appellants contend that the Examiner erroneously shifted the burden
of proof to the Appellants (App. Br. 9). Appellants contend the "the Final
Office Action does not provide any evidence showing that the procedure in
Kim et al. would have resulted in the polyPn solution necessarily having
contacted blood" (id. at 6).
We find that Appellants have the better position. The "examiner bears
the initial burden of presenting a prima facie case of obviousness." In re
Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011). Kim recites the
following procedure:
After being anesthetized, four rats were wounded to a
length of 5-6 cm on their back with an operating knife. Only
one suture was made in the central portion of each wound, after
which a 4% aqueous solution of a mixture of polyphosphates
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Appeal2013-002028
Application 12/582,595
with average chain lengths of 18 and 28 monomers in the
proportions of 50:50 was sufficiently coated to the wound three
times a day for three days.
(Kim i-f 34). The Examiner concedes that the reference is silent with respect
whether the rat wounds were bleeding at the time of first application of the
polyP solution. We agree with the Examiner's assessment of the reference.
Because the Examiner concedes there is no way to tell whether the
wound was bleeding at the time of polyP application it does not necessarily
follow that the application of the composition to the wound is contacting
blood from the wound that still needs to clot or slow bleeding. "Inherency[]
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal quotation
marks omitted).
We find that the evidence does not support the Examiner's conclusion
that Kim renders obvious the method of stopping or slowing bleeding from a
wound. We therefore, reverse the rejection on appeal.
II. Obviousness over Kim, Ooms, Tipton, Sporn, and Gibbins
Claims 23 and 24 depend directly from claim 21. The rejection of
claims 23 and 24 relies upon the underlying rejection of Kim, discussed
above, wherein Kim is relied upon to address the limitation of providing a
method of stopping or slowing of bleeding from a wound by applying
polyphosphate (see Ans. 3--4; Final Act 2-3). The additional references of
Ooms, Tipton, Sporn, and Gibbins that are directed to providing evidence of
solid supports and using sterile compositions do not, however, address the
underlying issue in claim 21 that the prior art of Kim fails to teach a method
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Appeal2013-002028
Application 12/582,595
of stopping or slowing of bleeding from a wound by applying
polyphosphate. Therefore, having reversed the underlying rejection over
claim 21, we also reverse this rejection for the same reasons.
SUMMARY
We reverse the rejection of claims 21, 22, and 25 under 35 U.S.C.
§ 103(a) over Kim.
We reverse the rejection of claims 23 and 24 under 35 U.S.C. § 103(a)
over Kim in view of Ooms, Tipton, Sporn, and Gibbins.
REVERSED
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