Ex Parte Phillips

Patent Trials and Appeals Board

Feb 13, 2013

10946299 - (D) (P.T.A.B. Feb. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FRANK MARTIN PHILLIPS
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Appeal 2011-002743
Application 10/946,299
Technology Center 1600
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Before ERIC GRIMES, LORA M. GREEN, and ULRIKE W. JENKS,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of treating an intervertebral disc, which have been rejected for anticipation
and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses a method of treating a damaged inter-
vertebral disc in which “[l]ive, articular chondrocyte cells are harvested from
a non-critical location of a patient, cultured, and transplanted while still
viable into an affected intervertebral disc” (Spec. 3, ¶ 10).
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Claims 1-7 are on appeal. Claim 1 is representative and reads as
follows:
1. A method of treating a damaged intervertebral disc of a patient,
comprising:
identifying a location of a plurality of non-critical articular
chondrocyte cells within the patient;
harvesting a portion of the plurality of non-critical articular
chondrocyte cells; and
transplanting the portion of the plurality of non-critical articular
chondrocyte cells that are isolated and absent their extra-cellular matrix into
the damaged intervertbral disc.
I.
Issue
The Examiner has rejected claims 1 and 2 under 35 U.S.C. § 102(a) as
anticipated by Rahmat1 (Answer 4). The Examiner finds that claim 1
encompasses Rahmat’s method of harvesting costal cartilage, culturing
autologous chondrocytes, and injecting them into the discs of sheep, because
the Specification states that articular chondrocyte cells can be harvested
from the “costal area” (id. at 4-5).
Appellant contends that “‘articular’ implies a mobile joint. . . . Costal
cartilage is non-articular.” (Appeal Br. 7.) Appellant contends that,
although the Specification uses “[t]he term ‘costal area’ . . . as an example of
non-critical area that the articular chondrocyte cells may be harvested
from[,] . . . the term ‘costal area’ is simply defining an area to look for ‘non-
critical articular chondrocyte cells,’ and not defining a type of cell or that
costal cartilage is articular” (Reply Br. 8).

1 Rahmat et al., Autologous Chondrocyte Implantation in an Ovine Model of
Disc Degeneration, 86-B Issued Supp. 1 J. BONE JOINT SURG. 88 (2004).
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The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that a person of
ordinary skill in the art would interpret “non-critical articular chondrocyte
cells” to encompass cells derived from costal cartilage?
Findings of Fact
1. Rahmat discloses a study testing whether “transplantation of
autologous chondrocytes prevents degeneration of the intervertebral disc
following outer annular injury in an ovine model” (Rahmat 88, left col.).
2. Rahmat discloses that incisions were made in the discs of sheep
and “[c]ostal cartilage was harvested from the left twelfth rib of all animals.
Tissue was cultured.” (Id.)
3. Rahmat discloses that “[s]ix weeks later autologous cultured
chondrocytes were injected into the lower two alternate discs of all animals”
(id.).
4. Rahmat states that its results “show[ ] that cultured autologous
chondrocytes can remain viable long term in vivo. These preliminary results
suggest that these transplanted chondrocytes have the ability to retard and
possibly prevent disc degeneration.” (Id. at 88, middle col.)
5. The Specification states that
[u]nlike known approaches that require autologous nucleus
pulposus chondrocyte like cells obtained by aspiration or
biopsy of discs of a patient, articular chondrocyte[ ] cells may
be harvested from non-critical areas of a patient. Such non-
critical areas may include costal area, knees, or talus area.
Guidelines for tissue procurement including surgical technique
of removal are well described in the literature.
(Spec. 4, ¶ 15.)
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Principles of Law
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Analysis
We conclude that the Examiner has met the initial burden of
presenting a prima facie case that claim 1 is unpatentable based on Rahmat.
Rahmat describes a method in which a location of chondrocyte cells is
identified (costal cartilage), a plurality of chondrocyte cells is harvested (in
the form of costal cartilage), and a portion of cultured (i.e., isolated)
chondrocyte cells is transplanted into a damaged intervertebral disc.
Appellant argues, however, that the autologous chondrocyte cells
described by Rahmat are not “non-critical articular chondrocyte cells,” as
required by claim 1, because Rahmat’s cells are derived from costal
cartilage, while articular chondrocytes must come from articular cartilage,
which is only found in mobile joints (Appeal Br. 7).
This argument is not persuasive. It is true that, “in proceedings before
the PTO, . . . claim language should be read in light of the specification as it
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would be interpreted by one of ordinary skill in the art.” In re Sneed, 710
F.2d 1544, 1548 (Fed. Cir. 1983). Thus, it is possible that a person of
ordinary skill in the art would interpret the term “articular chondrocytes” to
require cells derived from articular cartilage rather than costal cartilage.
However, Appellant has provided no extrinsic evidence of how the
Specification would be interpreted by one of ordinary skill in the art. Our
interpretation of the Specification therefore must be based on the words of
the Specification itself: “articular chondrocyte[ ] cells may be harvested
from non-critical areas of a patient. Such non-critical areas may include
costal area, knees, or talus area.” (FF 5.)
We must presume that the Specification uses words according to their
ordinary meaning and that it was drafted according to the ordinary rules of
English grammar. In the context of the Specification’s usage, “such” means
“of the character, quality, or extent previously indicated or implied.”2 Thus,
the Specification’s statement that “articular chondrocyte[ ] cells may be
harvested from non-critical areas of a patient,” immediately followed by its
statement that “[s]uch non-critical areas may include costal area,” in its
ordinary meaning would be understood to mean that non-critical areas from
which articular chondrocyte cells may be harvested include the costal area.
Appellant has not pointed to persuasive evidence to support his
argument that the Specification’s use of “the term ‘costal area’ is simply
defining an area to look for ‘non-critical articular chondrocyte cells,’”
(Reply Br. 8), rather than stating that such cells can actually be found in

2 See www.merriam-webster.com/dictionary/such, accessed Feb. 8, 2013.
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costal cartilage. Appellant has not, for example, pointed to any source of
articulating cartilage that is found in the costal area.
In summary, Appellant has not provided persuasive evidence to show
that a person of ordinary skill in the art would interpret the Specification’s
paragraph 15 to have anything other than its ordinary meaning, which is that
non-critical articular chondrocyte cells can be harvested from the costal area.
Nor has Appellant provided evidence that a person of ordinary skill in the art
would have interpreted the “costal area” to exclude costal cartilage.
Conclusion of Law
Based on the evidence of record, we conclude that a preponderance of
the evidence supports the Examiner’s conclusion that a person of ordinary
skill in the art would interpret “non-critical articular chondrocyte cells” to
encompass cells derived from costal cartilage.
II.
The Examiner has rejected claims 3-7 under 35 U.S.C. § 103(a) as
obvious based on Rahmat in view of either Luyten3 (claims 3-5), Ganey4
(claim 6) or Peterson5 (claim 7) (Answer 5-8). The Examiner finds that
Rahmat discloses the method of claim 1 and concludes that the other cited
references would have made obvious the additional limitations of dependent

3 Luyten et al., US 2002/0147329 A1, Oct. 10, 2002.
4 Ganey et al., Disc Chondrocyte Transplantation in a Canine Model: A
Treatment for Degenerated or Damaged Intervertebral Disc, 28 SPINE 2609-
2620 (2003).
5 Peterson, Technique of Autologous Chondrocyte Transplantation,
1 TECHNIQUES IN KNEE SURGERY 2-12 (2002).
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claims 3-7 (id.). We adopt the Examiner’s findings regarding the scope and
content of the prior art, and the Examiner’s conclusion that the dependent
claims would have been obvious based on the cited references.
Appellant argues that none of Luyten, Ganey, or Peterson disclose the
limitations that are missing from Rahmat (Appeal Br. 8-9). These arguments
are not persuasive because, for the reasons discussed above, we conclude
that claim 1 reads on the method disclosed by Rahmat.
SUMMARY
We affirm all of the rejections of record.
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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