Ex Parte Oliver et al

Patent Trial and Appeal Board

Jan 14, 2013

12314992 (P.T.A.B. Jan. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROY OLIVER and ROY GRANT
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Appeal 2012-001478
Application 12/314,992
Technology Center 1600
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Before DONALD E. ADAMS, FRANCISCO C. PRATS, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
implant composition. The Examiner has rejected the claims as anticipated.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
Claims 10-18 are on appeal (App. Br. 2).1 The claims have not been
argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(iv). Claim 10 is representative and reads as follows:
10. An implant composition comprising a biocompatible carrier
medium having dispersed therein solid or semi-solid particles of collagenous
material that are derived from a natural tissue material,
wherein said collagenous material preserves the original fiber
architecture and molecular ultrastructure of the natural tissue material from
which it is derived,
wherein said collagenous material is substantially free of non-fibrous
tissue proteins, glycoproteins, cellular elements, lipids or lipid residues,
wherein said collagenous material is non-cytotoxic; and
wherein said implant composition is capable of use as a component of
a paste, gel or an injectable solution.
Claims 10-18 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Wallace et al. (US 4,789,663, Dec. 6, 1988) (Ans. 5).
Appellants argue:
It is respectfully submitted that the processing of bone powder
using hydrochloric acid as in Wallace would disrupt the
collagen structure at the fiber fragment level of organization,
such that the original fiber architecture and molecular
ultrastructure of the collagen is not retained. The references
submitted herewith as Exhibits, and previously provided during
prosecution of the instant application, demonstrate the
disruption of structure that would occur if Wallace’s use of HCl
was, indeed, followed. As the collagen thus treated would
suffer structural damage, Wallace cannot anticipate the
presently recited implant composition, which recites that the

1 Claims 19 and 20 are also pending but have been withdrawn from
consideration (App. Br. 2).
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original fiber architecture and molecular ultrastructure of the
collagen is retained.
(App. Br. 7.)
ISSUE
Does the evidence support the Examiner’s conclusion that Wallace
discloses collagenous material that “preserves the original fiber architecture
and molecular ultrastructure of the natural tissue material from which it is
derived,” as recited in claim 10?
ANALYSIS
Wallace discloses:
“Bone collagen powder” (BCP) refers to a purified atelopeptide
preparation of collagen derived from demineralized bone. This
preparation consists essentially of collagen per se, and does not
contain metabolically active proteins. As it originates in bone,
it is composed of Type I collagen, and its molecular architec-
ture mimics the native 3-dimensional structure found in bone.
(Wallace, col. 6, ll. 4-10.) Wallace also discloses: “The resulting BCP is
novel. It consists essentially of Type I collagen which apparently retains the
original molecular architecture of the bone collagen and is free of the
telopeptides.” (Id. at col. 10, ll. 16-19.)
We understand that Wallace prepares BCP by exposing bone powder
to HCl (id. at col. 11, ll. 31-34). We also understand that Appellants have
presented references tending to show that HCl causes changes in the
structure of collagen (App. Br. 5-6). However, as noted by the Examiner,
the “references provided by Appellant[s] . . . do not set out the same
experimental conditions as set out by Wallace” (Ans. 6). In particular, the
Examiner noted, and Appellants do not dispute, that “[i]n the exhibit
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references, HCL is added directly to collagen, not the bone powder of the
Wallace et al reference” (id.). Thus, we agree with the Examiner that
Appellants’ evidence is insufficient to rebut the direct teaching in Wallace
that their BCP “apparently retains the original molecular architecture of the
bone collagen” (Wallace, col. 10, ll. 16-18).
CONCLUSION
The evidence supports the Examiner’s conclusion that Wallace
discloses collagenous material that “preserves the original fiber architecture
and molecular ultrastructure of the natural tissue material from which it is
derived.” We therefore affirm the anticipation rejection.
TIME PERIOD FOR RESPONSE
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

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