Ex Parte Wang et alDownload PDFPatent Trial and Appeal BoardSep 16, 201612975589 (P.T.A.B. Sep. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/975,589 12/22/2010 27777 7590 09/20/2016 JOSEPH F SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 FIRST NAMED INVENTOR Yi-Lan Wang 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. ETH5614USNP 5807 EXAMINER DA VIS, DEBORAH A ART UNIT PAPER NUMBER 1655 NOTIFICATION DATE DELIVERY MODE 09/20/2016 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): jnjuspatent@corus.jnj.com lhowd@its.jnj.com pairjnj@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YI-LAN WANG and XINTIAN MING1 Appeal2014-006948 Application 12/975,589 Technology Center 1600 Before ERIC B. GRIMES, ROBERT A. POLLOCK, and JACQUELINE T. HARLOW, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a hemostatic preparation, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. STATEMENT OF THE CASE Claims 1-10 are on appeal. Claim 1 is the only independent claim and reads as follows: 1. A topical hemostatic preparation comprising: an extract of the rhizomes of Golden Moss, 1 Appellants identify the Real Party in Interest as Ethicon, Inc. (Br. 3.) Appeal2014-006948 Application 12/975,589 a gelatin, and a saline solution. DISCUSSION The Examiner has rejected claims 1-8 under 35 U.S.C. § 103(a) as obvious based on Wu2 and Wolff. 3 (Ans. 2.) The Examiner has rejected claims 1-10 under 35 U.S.C. § 103(a) as obvious based on Wu and Saferstein.4 (Ans. 4.) The same issue is dispositive for both rejections. The Examiner finds that Wu teaches that the "rhizome hairs of Cibotium barometz is an anti-inflammatory and can be used as a poultice on wounds to stop bleeding." (Id. at 2.) "Cibotium barometz is another name for Golden Moss." (Id. at 3.) The Examiner also finds that Wu teaches "active compounds ... isolated from an aqueous ethanol extract from the rhizomes of Cibotium barometz." (Id. at 2.) The Examiner finds that Wolff teaches "a hemostatic bleeding control composition ... [that] preferably comprises an absorbable gelatin and a saline solution." (Id. at 3.) Similarly, the Examiner finds that Saferstein teaches "a hemostatic collagen paste composition ... compris[ing] a saline solution and a hemostatic enhancing amount of thrombin and glycerol which is dissolved in the composition to achieve long term stability." (Id. at 4.) 2 Wu et al., The constituents of Cibotium barometz and their permeability in the human Caco-2 monolayer cell model, 125 Journal of Ethnopharmacology 417--422 (2009). 3 Wolff US 7,923,431 B2, issued April 12, 2011. 4 Saferstein et al., US 4,891,359, issued January 2, 1990. 2 Appeal2014-006948 Application 12/975,589 The Examiner concludes that "both Wu et al. and Wolff teach hemostat agents to stop bleeding wounds and thus it would be obvious to further add or combine compositions that are useful for the same purpose." (Id.) Similarly, the Examiner concludes that it would have been obvious "to further include glycerol taught by Saferstein et al. in the composition (hemostatic) of Wu et al. because it achieved long term stability in hemostatic compositions." (Id. at 5.) Appellants argue that Wu "notes that the yellow hairs on the rhizomes [of Golden Moss] have been used in poultices to stop bleeding" (Br. 6) but "to the extent Wu contemplates using the Golden Moss as a hemostatic agent; the material is not an extracted material, but the 'hairs' in a poultice" (id. at 7). Appellants argue that there is no evidence showing that the compounds extracted by Wu have hemostatic activity and "[t]herefore, the record lacks any basis for one to reasonably expect that an extract from the Golden Moss, as opposed to the hairs of Golden Moss, could be combined with gelatin and saline to produce a topical hemostatic preparation." (Id.) We agree with Appellants that the cited references do not support a prima facie case of obviousness. Both rejections cite Wu as disclosing an extract from rhizomes of Golden Moss containing compounds with hemostatic activity. This finding is not supported by the evidence. Wu discloses that "[t]he rhizome of Cibotium barometz is anti- inflammatory" and "[t]he yellow hairs on the rhizomes are used in poultices on wounds to stop bleeding." (Wu 417, right col.) Wu discloses that "[t]he dried rhizomes removed [sic] the smaller roots and yellow hairs of Cibotium barometz (7 kg) were powdered and extracted with 70% aqueous ethanol." 3 Appeal2014-006948 Application 12/975,589 (Id. at 418, left col.) Wu states that column chromatography (CC) "separations from 70% aqueous ethanol extract of dried rhizomes of Cibotium barometz have led to the isolation of: three sesquiterpenes ... and an unusual orthoester spiropyranosyl derivative of proto-catechuic acid." (Id. at 419, right col.) Wu states that the intestinal permeability of three of the compounds was tested in an in vitro model system; one was found to be well-absorbed and two were found to be poorly absorbed. (Id. at 422, left col.) Wu does not disclose that any of the compounds isolated from its ethanol extract, or the ethanol extract itself, has any hemostatic activity. It states that the yellow hairs on the rhizomes of Golden Moss have been used to stop bleeding, but it also states that its extract was derived from "dried rhizomes removed [sic] the smaller roots and yellow hairs." (Id. at 418, left col.) Wu also states that "[t]he rhizomes are harvested at the end of the growing season, the smaller roots and yellow hairs are removed then the rhizomes are chipped into slices and dried for later use." (Id. at 41 7, right col.) Thus, we understand Wu to say that its extract was derived from rhizomes from which the yellow hairs had been removed. Only the yellow hairs are disclosed to have hemostatic use. In view of these disclosures, we agree with Appellants that Wu would not have made obvious the use of an extract of the rhizomes of Golden Moss in a hemostatic composition. We therefore reverse both of the rejections on appeal. REVERSED 4 Copy with citationCopy as parenthetical citation