11369962 (B.P.A.I. Mar. 28, 2011)

Ex Parte Shepard

Board of Patent Appeals and InterferencesMar 28, 2011

11369962 (B.P.A.I. Mar. 28, 2011)

MOD PTOL-90A (Rev.06/08) APPLICATION NO./ CONTROL NO. FILING DATE FIRST NAMED INVENTOR / PATENT IN REEXAMINATION ATTORNEY DOCKET NO. 11/369,962 03/08/2006 David O. Shepard EXAMINER LEAVITT, MARIA ART UNIT PAPER NUMBER DICKSTEIN SHAPIRO LLP 1825 EYE STREET NW WASHINGTON, DC 20006-5403 1633 MAIL DATE DELIVERY MODE 03/29/2011 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte DAVID O. SHEPARD __________ Appeal 2010-007954 Application 11/369,962 Technology Center 1600 __________ Before DEMETRA J. MILLS, ERIC GRIMES, and FRANCISCO C. PRATS, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-007954 Application 11/369,962 2 STATEMENT OF CASE The following claim is representative. 6. A method of osteochondral repair, comprising the steps of: creating a recipient socket in bone; removing an osteochondral core from a graft, the osteochondral core being configured to fit the recipient socket; placing the osteochondral core in a centrifuge system and subjecting the core to centrifugation to obtain a centrifuged core; subjecting the centrifuged osteochondral core to a solution comprising autogenous growth factors; and inserting the centrifuged core into the recipient socket. Cited References Bobic et al. US 5,919,196 Jul. 6, 1999 Auge, II US 6,547,794 B2 Apr. 15, 2003 Yuntao CN 1569249 Jan. 26, 2005 Grounds of Rejection 1. Claims 6, 8-14 and 20-22 are rejected under 35 U.S.C. § 103(a) for obviousness over Bobic in view of Yuntao and Auge. FINDINGS OF FACT The findings of fact are set forth in the Answer at pages 4-13. Discussion ISSUE The Examiner concludes that in view of the benefits of treating bone grafts and implants by removing grease and proteins (e.g., filtered articles) by centrifugation to obtain a sterile, non contaminant graft as a finished product prior to bone implantation as taught by Appeal 2010-007954 Application 11/369,962 3 Yuntao, it would have been prima facie obvious for one of ordinary skill in the art to modify the method of preparing the articular cartilage/ bone cores transplants of Bobic et al., to include the active step of centrifugation of the osteochondral core, in order to process allogeneic bone graft to obtain a sterile, non contaminant graft as a finished product before insertion into a bone socket. In addition, it would have been prima facie obvious for the skilled artisan, to subject the centrifuged osteochondral core to a solution comprising growth factors as taught by Auge et al., in order to promote or simulate the fusing of the centrifuged osteochondral core in the recipient socket. Further, based on the detailed teachings of the Bobic, Yuntao and Auge publications, and the high level of skill in the medical art of grafting, the skilled artisan would have had a reasonable expectation of success in generating a method for osteochondral repair by the combination of the following teachings: (i) transplantation of articular cartilage/ bone cores in knees, (ii) sterilizing a bone graft by the step of centrifugation to remove filtered articles, and (iii) adding soluble growth factors to promote, stimulate, or induce various healing properties of the centrifuged osteochondral core in order to achieve the predictable result of a final donor core less antigenic and with significant modulation of the healing process for insertion into the receiving socket. (Ans 7.) Appellant argues that Bobic, Yuntao and Auge do not disclose or suggest “removing an osteochondral core from the graft” wherein the core is configured to fit a recipient socket, or “subjecting the centrifuged osteochondral core to a solution comprising autogenous growth factors,” as claimed. Appellant argues that Yuntao teaches against Bobic because Yuntao removes soft tissue and cartilage while Bobic preserves the hyaline cartilage in the bone harvesting procedure. Appeal 2010-007954 Application 11/369,962 4 The issue is: Does the cited evidence support the Examiner’s conclusion of obviousness? PRINCIPLES OF LAW “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. ANALYSIS The Examiner argues that Yuntao complements the teachings of Bobic by disclosing the removal of grease and proteins of allogenic bone specimen for bone transplantation material by several cycles of centrifugation before obtaining the final product. (Ans. 5.) Appellant argues that Yuntao teaches against Bobic because Yuntao removes soft tissue and cartilage while Bobic preserves the hyaline cartilage in the bone harvesting procedure. (Reply Br. 4.) We find Appellant has the better argument. Bobic indicates that after insertion, the osteochondral core insert is brought flush anatomically, and the graft is pressed such that the surface of the graft comes into flush Appeal 2010-007954 Application 11/369,962 5 alignment with the normal articular cartilage surrounding the recipient repair site. (Col. 3, ll. 30-35.) Thus the cartilage is maintained in the bone harvesting procedure of Bobic. The Examiner has not explained why one of ordinary skill in the art desiring to preserve the cartilage as in the bone harvesting procedure of Bobic would perform a bone-treating and centrifugation procedure as in Yuntao which removes soft tissue, such as protein and fats (Yuntao translation page 4). The obviousness rejection is therefore reversed. CONCLUSION OF LAW The cited references do not support the Examiner’s obviousness rejection. REVERSED DJM cdc