Ex Parte Truncale et al

Patent Trial and Appeal Board

Jun 23, 2016

11081103 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111081,103 03/16/2005
67395 7590 06/27/2016
GREENBERG TRAURIG (NJ)
500 CAMPUS DRIVE, SUITE 400
P.O. BOX677
FLORHAM PARK, NJ 07932
FIRST NAMED INVENTOR
Katherine Ann Gomes Truncate
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.
103248-010906 4614
EXAMINER
LANDAU, SHARMILA GOLLAMUDI
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
njdocket@gtlaw.com
ramosh@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATHERINE ANN GOMES TRUNCALE and
ARTHUR A. GERTZMAN 1
Appeal2013-010537
Application 11/081, 103
Technology Center 1600
Before DONALD E. ADAMS, RICHARD J. SMITH, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
composition comprising a cartilage-growth enhancing material and a matrix.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Musculoskeletal
Transplant Foundation. (Br. 2.)
Appeal2013-010537
Application 11/081,103
STATEMENT OF THE CASE
Claims on Appeal
Claims 31-34 and 36-42 are on appeal. (Claims Appendix, Br. 16-
17.) Independent claim 31 is illustrative and reads as follows:
31. A composition comprising a cartilage-growth enhancing material
including minced hyaline cartilage particles, which are allogenic to a
recipient, and a matrix, which includes a carrier.
Examiner's Rejections
1. Claims 31-34 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Stone I, 2 in light ofFelt. 3 (Ans. 4--5.)
2. Claims 31-34, 39, and 40 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Stone II, 4 in light of Felt. (Id. at 5---6.)
3. Claims 31-34 and 36 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Sedgwick,5 in light of Felt. (Id. at 6-7.)
4. Claims 31-34 and 39--42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Atala. 6 (Id. at 7-8.)
5. Claims 36-38 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Atala and Grande. 7 (Id. at 8-9.)
The claims in the respective rejections are not separately agued, and
we limit our discussion to claim 31 for Nos. 1--4 and claim 36 for No. 5.
2 Stone et al., US 5,624,463, issued Apr. 29, 1997 ("Stone I").
3 Felt et al., US 6,306,177 Bl, issued Oct. 23, 2001 ("Felt").
4 Stone, US 6,110,209, issued Aug. 29, 2000 ("Stone II").
5 Sedgwick et al., Studies into the influence of carrageenan-induced
inflammation on articular cartilage degradation using implantation into air
pouches, BR. J. EXP. PATH. 66, 445-53 (1985) ("Sedgwick").
6 Atala et al., US 5,516,532, issued May 14, 1996 ("Atala").
7 Grande, US 4,846,835, issued July 11, 1989 ("Grande").
2
Appeal2013-010537
Application 11/081,103
FINDfNGS OF FACT
We adopt as our own the Examiner's findings and analysis concerning
the scope and content of the prior art. The following findings are included
for emphasis and reference convenience.
FF 1. The Specification states that "[a ]rticular cartilage (hyaline cartilage)
consists primarily of extracellular matrix." (Spec. 1, 11. 16-17.)
FF 2. The Examiner finds that Sone I teaches "minced articular cartilage"
and that its "composition is allogeneic to every cow, sheep, or pig that was
not the source of the tissue." (Ans. 4--5, citing Stone I col. 8, 11. 62---65.)
FF 3. The Examiner finds that the plain meaning of "carrier" is "a usually
inactive substance that serves as a vehicle for an active substance." (Final
Act. 8 4, citing Reference U. 9)
FF 4. The Examiner finds that Stone I teaches mixed articular cartilage
made by processing tendons in water, an inactive substance that contains
cartilage and is a matrix/carrier. (Ans. 5, citing Stone I col. 10, 11. 63-67.)
FF 5. The Examiner finds that natural articular cartilage inherently contains
a glycosamine matrix. (Id., citing Felt col. 13, 11. 8-11.) Appellants do not
dispute this finding.
FF 6. The Examiner finds that Stone II teaches a cartilage defect
composition comprising crushed articular cartilage and a matrix or carrier,
that is "allogeneic to every cow, sheep, or pig that was not the source of the
tissue," and that promotes cartilage growth in a recipient. (Id. at 5---6, citing
Stone II col. 3, 11. 2-12, col. 5, 11. 50-54, and claims 1-3, 6, and 7.)
8 Office Action dated May 18, 2012.
9 WEBSTER'S COLLEGE DICTIONARY (Random House), 209 (1991)
("Reference U").
3
Appeal2013-010537
Application 11/081,103
FF 7. The Examiner finds that Sedgwick teaches a composition comprising
"finely minced cartilage that is suitable for implantation in a subject that is
allogeneic to the cartilage," and washing the cartilage in medium 199 (a
carrier). (Id. at 6, citing Sedgwick 446.)
FF 8. The Examiner finds that Atala teaches repair of tissue defects using
ground articular cartilage (hyaline cartilage), and that the ground cartilage is
mixed with alginate, a polymeric carrier, to yield a composition. (Id. at 7,
citing Atala col. 5, 11. 6-15, 29--55, col. 8, 11. 49-51, col. 8, 1. 65---col. 9, 1. 2.)
DISCUSSION
Issue-Anticipation
Whether a preponderance of evidence of record supports the
Examiner's finding of anticipation under 35 U.S.C. § 102(b ).
Principles of Law
A claim is anticipated if a prior art reference discloses every limitation
of the claimed invention, either explicitly or inherently. In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997).
Analysis
Rejection No. 1
The Examiner finds that Stone I, in light of Felt, discloses every
limitation of claim 31. (Ans. 4--5.) Appellants argue that Stone I "is
directed to a dry prosthetic articular cartilage device" that "does not include
any matrix that includes a carrier." (Br. 9.) Furthermore, according to
Appellants, the fact that Stone I teaches that tendons are minced in water
"does not mean that a composition of 'hyaline' cartilage in a carrier has been
created." (Id.) According to Appellants, "[t]he collagen in tendon is
4
Appeal2013-010537
Application 11/081,103
primarily Type I, while the collagen in hyaline cartilage is primarily Type
II." (Id.)
We are not persuaded by Appellants' arguments. Stone I teaches
minced articular cartilage (hyaline cartilage), which is allogenic to a
recipient, a matrix, and a water carrier. (FF 1-5.) Moreover, Appellants'
unsupported statement regarding collagen in tendon does not support the
proposition that hyaline cartilage is not present in tendon.
Rejection No. 2
The Examiner finds that Stone II, in light of Felt, discloses every
limitation of claim 31. (Ans. 5---6.) Appellants argue that Stone II "teaches
an autologous implant material, rather than an allogenic implant material."
(Br. 10-11.)
We are not persuaded by Appellants' argument. Claim 31 is directed
to a composition, not a method for use of the composition. (Br. 16.)
Furthermore, Stone II teaches a crushed articular cartilage, which is
allogenic to a recipient, and a matrix/carrier. (FF 6.)
Rejection No. 3
The Examiner finds that Sedgwick, in light of Felt, discloses every
limitation of claim 31. (Ans. 6-7.) Appellants argue that Sedgwick's
cartilage "is not a composition of cartilage particles with a carrier" since
"[ m ]erely washing cartilage pieces with water does not create a composition
of cartilage particles with a carrier." (Br. 11.)
We are not persuaded by Appellants' argument. Sedgwick teaches
minced cartilage that is allogenic to a recipient, and that is washed in
5
Appeal2013-010537
Application 11/081,103
medium 199, a carrier. (FF 7.) Medium 199 is described as containing 100
units/ml penicillin and 100 µg/ml streptomycin. (Sedgwick 446.)
Conclusion
A preponderance of the evidence of record supports the Examiner's
finding that claim 31 is anticipated by
(a) Stone I, in light of Felt. Claims 32-34 were not argued separately and
fall with claim 31;
(b) Stone II, in light of Felt. Claims 32-34, 39, and 40 were not argued
separately and fall with claim 31 ; and
(c) Sedgwick, in light of Felt. Claims 32-34 and 36 were not argued
separately and fall with claim 31.
Issue-Obviousness
Whether a preponderance of evidence of record supports the
Examiner's conclusion of obviousness under 35 U.S.C. § 103(a).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
Rejection No. 4
The Examiner concluded that, based on the teachings of Atala (FF 8),
claim 31 would have been obvious to a person of ordinary skill in the art.
(Ans. 7-8.) Moreover, we find that the Examiner has satisfied the burden of
showing "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." See KSR, 550 U.S. at 418.
6
Appeal2013-010537
Application 11/081,103
Appellants' argue that Atala discloses "demineralized ground bone or
cartilage particles used as a bulking agent" and "fails to disclose or suggest
that such ... particles have cartilage-growth enhancing properties." (Br.
12.) We are not persuaded. As the Examiner points out, the plain meaning
of "enhance" is "to intensify" or "to improve." (Ans. 12, citing Reference
U.) Moreover, Atala expressly teaches use of its material "for repair of soft
or hard tissue defects," thereby suggesting use of its material for cartilage
growth enhancement. (See Atala col. 9, 11. 1-2.)
Rejection No. 5
The Examiner concluded that claims 36-38 would have been obvious
based on Atala and Grande. (Ans. 8-9.) Appellants rely on their argument
regarding Atala set forth above and further argue that Grande similarly does
not disclose or suggest particles having cartilage-growth enhancing
properties. (Br. 13.) Because Atala suggests that its ground articular
cartilage has such properties (see above), we affirm the rejection of claim
36. Claims 37 and 38 were not argued separately and fall with claim 36.
Conclusion of Law
A preponderance of evidence of record supports the Examiner's
conclusion that claim 31 is obvious under 35 U.S.C. § 103(a). Claims 32-34
and 39--42 were not argued separately and fall with claim 31.
A preponderance of evidence of record supports the Examiner's
conclusion that claim 36 is obvious under 35 U.S.C. § 103(a). Claims 37
and 38 were not argued separately and fall with claim 36.
SUMMARY
We affirm the rejections of all claims on appeal.
7
Appeal2013-010537
Application 11/081,103
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
8