Philip J. Weintraub

Patent Trials and Appeals Board

Sep 9, 2019

14561193 - (D) (P.T.A.B. Sep. 9, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/561,193 12/04/2014 Philip J. Weintraub 6339.PWEI.NP 1692
27472 7590 09/09/2019
Durham Jones & Pinegar
P.O. Box 4050
SALT LAKE CITY, UT 84110
EXAMINER
CLARKE, TRENT R
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
09/09/2019 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):
ipmail@djplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP J. WEINTRAUB1
____________

Appeal 2019-001734
Application 14/561,193
Technology Center 1600
____________

Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
DEBORAH KATZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The claims in this appeal are directed to methods of identifying
expansion and regression in areas of first and second malignant cancer cell
colonies. The Examiner finally rejected the claims under 35 U.S.C. § 101 as
reciting a judicial exception to patent eligibility, under 35 U.S.C. § 112 as
lacking a written description, and under 35 U.S.C. § 103 as obvious.
Pursuant to 35 U.S.C. § 134, Appellant appeals the Examiner’s
determination that the claims are unpatentable. We have jurisdiction for the
appeal under 35 U.S.C. § 6(b). The Examiner’s decision is reversed. A new
ground of rejection is set forth pursuant to 37 C.F.R § 41.50(b).

1 The Appeal Brief (“Appeal Br.” entered June 7, 2018) lists Philip
Weintraub as the real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The Examiner rejected claims 1–9, 15, and 20 as follows:
1. Claims 1–9, 15, and 20 under 35 U.S.C. § 101 because the claimed
invention is directed to an abstract idea which is a judicial exception to
patent eligibility. Ans. 4.
2. Claims 1–9, 15, and 20 under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. Ans. 3.
3. Claims 1–9, 15, and 20 under 35 U.S.C. § 103 as obvious in view
of Kirsten Hattermann et al., The Chemokine CXCL16 Induces Migration
and Invasion of Glial Precursor Cells via its Receptor CXCR6, 39 MOL.
CELL. NEUROSCI., 133–41 (2008) (“Hattermann 2008”), N. G. Rainov et al.,
Characterization of a Canine Glioma Cell Line As Related to Established
Experimental Brain Tumor Models, 59(7) J. NEUROPATH. EXP. NEUROL.,
607–13 (2000) (“Rainov”), and Douglas Hanahan & Robert A. Weinberg,
The Hallmarks of Cancer, 100 CELL, 57–70 (2000) (“Hanahan”). Ans. 8.
Claim 1, the only independent claim on appeal, is reproduced below:
1. A method for identifying expansion in area of a colony of
first malignant cancer cells with commensurate regression in
area of a different colony of second malignant cancer cells in
the same area as the expansion of the colony of first malignant
cancer cells in an adjacent confrontation, comprising:
plating on a culture plate in a growth medium a colony of
first malignant cancer cells and a colony of second malignant
cancer cells on directly opposite sides of a midline adjacent one
another, wherein the colony of first malignant cancer cells and
the colony of second malignant cancer cells are of different
cancer types;
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culturing the colony of first malignant cancer cells and
the colony of second malignant cancer cells under conditions
sufficient to promote growth of the cancer cells;
measuring the area of expansion of the colony of first
malignant cancer cells across the midline into the area of the
colony of second malignant cancer cells that is accompanied by
regression of the second colony of malignant cancer cells from
the midline commensurate with the area of expansion of the
colony of malignant cancer cells.

1. REJECTION BASED ON 101
The Examiner found that the claims are directed to “abstract ideas”
which are judicial exceptions to patent eligibility under 35 U.S.C. § 101.
Ans. 4.
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs, Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If it is determined that the claims are directed to an ineligible concept, then
the second step of the two-part analysis is applied in which it is asked
“‘[w]hat else is there in the claims before us?’” Id. The Court explained
that this step involves
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a search for an “ ‘inventive concept’ ” – i.e., an element or
combination of elements that is “sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.”
Alice, 573 U.S. at 217–18 (citing from Mayo, 566 U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (Jan. 7, 2019)
(“2019 Guidelines”). This guidance provides direction on how to implement
the two-part analysis of Mayo and Alice.
The 2019 Guidelines implements the first step of the Alice/Mayo test
as Step 2A. 84 Fed. Reg. at 51 (col. 1). Step 2A, Prong One, of the 2019
Guidelines, looks at the specific limitations in the claim to determine
whether the claim recites a judicial exception to patent eligibility. 84 Fed.
Reg. at 54 (“1. Prong One”). In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. at 54 (“2. Prong Two”).
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If the exception is not integrated into a practical application, then as in
the Alice/Mayo framework, Step 2B of the 2019 Guidelines asks whether
there is an inventive concept to ensure that the patent is significantly more
than a patent on the ineligible concept, itself. 84 Fed. Reg. 56. In making
this determination, it must be considered whether specific limitations or
elements recited in the claim “that are not well-understood, routine,
conventional activity in the field, which is indicative that an inventive
concept may be present” or whether the claim “simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” 84 Fed. Reg. at 56.
With these guiding principles, we proceed to determine whether the
claimed subject matter in this appeal is eligible for patent protection under
35 U.S.C. § 101. As explained below, we agree with the Examiner that
claim 1 recites an abstract idea, but we disagree with the Examiner’s
analysis that the claim as a whole is directed to an abstract idea.

Step 2A, Prong One
In Step 2A, Prong One, of the 2019 Guidelines, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, i.e., whether the claim is an abstract
idea, law of nature, or natural phenomenon. The Examiner found that the
claim recites an abstract idea and therefore is ineligible for a patent.2 Ans. 5.

22 It does not appear that the Examiner considered whether the claims recite
a law of nature, e.g., under Funk Brothers Seed Co. v. Kalo Inoculant Co.,
333 U.S. 127, 130 (1948).
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We first address whether the claim recites an abstract idea. The 2019
Eligibility Guidance identifies three groupings identified as abstract ideas.
84 Fed. Reg. at 52. The Examiner found that the subject matter of the claim
fits into grouping “(c) Mental process—concepts performed in the human
mind[] (including an observation, evaluation, judgment, opinion). The
Examiner found:
Specifically, the [claimed] method is drawn to identifying
expansion in area of a colony of cells, a mental step, and
comprises comparing the area of the first malignant cell colony
with the area of a second malignant cell colony to see if their
expansion and regression, respectively, are commensurate –
also a mental step.
Ans. 5.
The first step of claim 1 comprises “plating” malignant cells on a
culture plate. The second step of the claim comprises “culturing” the cells
on the plate under conditions to promote their growth. Both of these steps
involve physical, concrete manipulations to the cells. The third and last step
of the claim comprises “measuring the area of expansion” of the malignant
cells. We agree with the Examiner that such a step can be considered to be a
mental process because it involves a mental observation about how much
area on the plate the malignant cells have expanded by their growth. Thus,
as found by the Examiner, the claim recites an abstract idea.

Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Guidance asks whether there
are additional elements that integrate the exception into a practical
application. The claim recites “plating” and “culturing” steps, which are
concrete manipulations carried out on cells for the purpose of performing a
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confrontation assay where two cell types are faced off on a culture dish to
determine their relative growth properties. See, e.g., Hattermann 2008,
Hattermann 2011, and Nygaard (full citations below). Once the plating and
culturing steps are accomplished, and the confrontation assay is completed,
the claim further requires the mental step of observing the result of the
recited manipulative steps. The mental step is therefore integrated into a
practical application because it is merely an observation performed after the
manipulative steps of the confrontation assay and unnecessary to carry the
assay out.
The Examiner did not explain how the recitation of a single step in the
claim in which an observation is made about the growth of cells plated on a
culture plate transforms the claim as a whole into a patent-ineligible abstract
idea. The Examiner dismissed the plating and culturing steps as “well-
understood, routine and conventional steps” (Ans. 5), but the steps of plating
and culturing cells constitute the core of the claim and a practical
application into which the mental process is integrated. In the Examiner’s
analysis, any method involving physical, manipulative steps would be an
“abstract idea” if an observation was made about the outcome of performing
such steps.
For the foregoing reasons, we reverse the Examiner’s determination
that the claims are directed to patent ineligible subject matter under 35
U.S.C. § 101.

2. WRITTEN DESCRIPTION REJECTION
The Examiner found that the Specification as originally filed does not
describe the limitation of claim 1:
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measuring the area of expansion of the colony of first malignant
cancer cells across the midline into the area of the colony of
second malignant cancer cells that is accompanied by
regression of the second colony of malignant cancer cells from
the midline commensurate with the area of expansion of the
colony of malignant cancer cells.
Ans. 4.
The Examiner states that the Specification describes both the
expansion and regression of cells as “possible offensive and defensive
behaviors cells may show,” but not where the expansion of the first colony
of cells is accompanied by regression of the second colony of cells as recited
in the last clause of claim 1. Ans. 19.
The Examiner’s position is not supported by a preponderance of the
evidence.
To satisfy the written description requirement of 35 U.S.C. § 112, the
inventor must “convey with reasonable clarity to those skilled in the art that,
as of the filing date sought” they were “in possession of the invention.” Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (emphasis
omitted). “One shows that one is ‘in possession’ of the invention by
describing the invention, with all its claimed limitations . . . .” Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis and
internal citation omitted). In describing the claimed invention, there is no
requirement that the wording be identical to that used in the specification as
long as there is sufficient disclosure to show one of skill in the art that the
inventor “invented what is claimed.” Union Oil Co. v. Atlantic Richfield
Co., 208 F.3d 989, 997 (Fed. Cir. 2000) (internal quotations and citation
omitted). The written description “need not recite the claimed invention in
haec verba but [it] must do more than merely disclose that which would
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render the claimed invention obvious.” ICU Med., Inc. v. Alaris Med. Sys.,
Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009). Thus, as long as a person “of
ordinary skill in the art would have understood the inventor to have been in
possession of the claimed invention at the time of filing, even if every
nuance of the claims is not explicitly described in the specification, then the
adequate written description requirement is met.” In re Alton, 76 F.3d 1168,
1175 (Fed. Cir. 1996).
In this case, Appellant provided adequate evidence that the
Specification discloses the claimed limitation, namely, “measuring the area
of expansion of the colony of first malignant cancer cells . . . into the area of
the colony of second malignant cancer cells that is accompanied by
regression of the second colony of malignant cancer cells . . . commensurate
with the area of expansion of the colony of malignant cancer cells.” For
example, Appellant cited the following written descriptive support from the
Specification for this limitation:
In another aspect of the invention, the area over which
the first and second colony of malignant cancer cells is plated is
selected such that the relative differences in growth over the
course of culturing can be readily ascertained. For example, in
some embodiments, the colony of first malignant cancer cells
and the colony of second malignant cancer cells plated each
cover an area that is substantially equal. Plating about an equal
number of cells, plated over about an equal area, generally
simplifies the comparison of territorial expansion or regression,
without the need to normalize the data for purposes of
determining which cell line is expanding or regressing.
Spec. ¶ 44 (emphasis added).

In another aspect, the present invention may further
include means for quantitating the extent or degree of dominant
behavior associated with territorial expansion of a dominant cell
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type. For example, in one embodiment the culture plate may
comprise unit markers for scoring the area of expansion of the
dominant malignant cancer cells. Such unit markers may be in
either standard U.S. measurement units (such as inches) or
metric units (cm). The unit markers may comprise vertical
and/or horizontal line markers, marked to enable visibility and
measurement of the area of expansion of a dominant cell type
(or area of regression of a submissive cell type).
Spec. ¶ 46 (emphasis added).
As indicated in the passages reproduced above, the Specification
expressly teaches plating cells so “relative differences in growth” can be
observed, indicating that the behavior of both cells on the plate are observed.
Spec. ¶ 44. In this same paragraph, it is disclosed that the plating procedure
“simplifies the comparison of territorial expansion or regression,” indicating
that both expansion and regression can be accomplished at the same time.
Id. The plates are marked to enable measurement of these behaviors. Spec.
¶ 46. The Specification, thus, demonstrates that the inventor had possession
of the concept of measuring expansion of cells and the accompanying
regression of cells.
Figure 5, reproduced below, provides written descriptive support for
the concept that the regression is commensurate with expansion as required
by the claim.
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FIG. 5 shows a culture dish, illustrating various offensive
behaviors of a dominant cancer cell line (diagonal hatched lines
region) expanding into another cancer cell line territory (dotted
region), and also illustrating a defensive behavior of a cancer
cell line (dotted region) partially retreating behind a backline.
Spec. ¶ 19.
Figure 5 shows that one cell type (hatched lines) has expanded across
a midline into the region of another cell type (dotted region) which regresses
in response, providing support for the limitation “regression of the second
colony of malignant cancer cells from the midline commensurate with the
area of expansion of the colony of malignant cancer cells.”
In sum, one of ordinary skill in the art would understand that when the
cells of one type cross the midline and invade cells of a second type, the first
cell type has expanded and the second cell type has regressed. This is
illustrated in Figure 5 reproduced above. The Specification describes
measuring both expansion and regression of the cell colonies. Spec. ¶¶ 44,
46. Consequently, we conclude that the inventor had possession of the
claimed subject matter at the time of the invention.
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The written description rejection of claim 1, and dependent claims
2–9, 15, and 20 is reversed.

3. REJECTION BASED ON HATTERMANN 2008
Claim 1 comprises “plating” two populations of malignant cancer
cells on opposite sides of a midline on a culture plate. The claim further
recites “culturing” the cells under conditions to promote growth. The last
step of the claim comprises “measuring the area of expansion of the colony
of first malignant cancer cells across the midline into the area of the colony
of second malignant cancer cells.” The expansion is recited in the claim to
be “accompanied by regression of the second colony of malignant cancer
cells from the midline commensurate with the area of expansion of the
colony of malignant cancer cells.”
The Examiner found that Hattermann 2008 describes a “confrontation
assay,” the same type of assay as claimed in which two different cell
populations are plated on a culture plate adjacent and opposite from each
other along a midline. Ans. 9–10.
The Examiner found that, in its confrontation assay, Hattermann 2008
uses “U343 glioma cells which are a malignant cancer cell line and GPC
cells which are invasive immortalized cells.” Ans. 10. Appellant disputed
the Examiner’s finding that the cells are malignant cancer cells as required
by claim 1. Appeal Br. 13–14. In response, the Examiner further cited
Rainov and Hanahan as evidence that the cells used by Hattermann meet the
definition of malignant cells, designating it as a new ground of rejection.
Ans. 10.
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Appellant responded to the new ground of rejection in the Reply
Brief, but did not challenge the Examiner’s determination that the cells
plated in Hattermann 2008 meet the claimed limitation of “malignant cancer
cells.” See Reply Br. 8. We, therefore, consider this argument to be waived.
See MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”)
§ 1205.02 (9th Ed., Rev. 08.2017, Jan. 2018) (“If a ground of rejection stated
by the examiner is not addressed in the appellant’s brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it.”); see also In re Berger, 279 F.3d 975, 984 (Fed. Cir.
2002) (in which the Board affirmed an uncontested rejection of claims under
35 U.S.C. § 112, second paragraph, and on appeal the Federal Circuit
affirmed the Board’s decision and found that the appellant had waived his
right to contest the indefiniteness rejection by not presenting arguments as to
error in the rejection on appeal to the Board).
In the Reply Brief, Appellant argues that the rejection is “clearly
erroneous” because the cited prior art references do not describe the claim
limitation of
measuring the area of expansion of the colony of first
malignant cancer cells across the midline into the area of the
colony of second malignant cancer cells that is accompanied by
regression of the second colony of malignant cancer cells from
the midline commensurate with the area of expansion of the
colony of malignant cancer cells.
Reply Br. 8–9.
We agree with Appellant that the Examiner did not establish that
Hattermann 2008 describes the recited limitation. Hattermann 2008
discloses a spheroid confrontation model using U343 glioma cells and an
immortalized glial precursor cell line (“GPC”) (Hattermann 2008, 139 (in
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section titled “Tissue samples and cell cultures”); 140 (in section titled
“Spheroid confrontation model”)). Hattermann 2008 reported that soluble
chemokine CXCL16, produced by U343 glioma cells, induced the migration
of the GPC cells into the glioma cells. Hattermann 2008, 137. To
differentiate between the cell types, Hattermann 2008 labels the GPC cells
with a green fluorescent dye and the U343 glioma cells with a red dye.
Hattermann 2008, 137 (right col.) Hattermann 2008 found:
After 24 h of co-incubation green-labeled CXCR6-GPC
were detected as single cells or in small groups within the red-
labeled spheroid of glioma cells producing soluble CXCL16.
Hattermann 2008, 137 (right col.)
Based on this observation, Hattermann 2008 concluded that “CXCR6
mediates migration and invasion of GPC into a three-dimensional network
of CXCL16-producing cells.” Hattermann 2008, 137 (right col.).
Figure 4 of Hattermann 2008 shows the migration of GPC into the
glioma cells. In the legend to Figure 4, Hattermann 2008 states that “[a]fter
24 h in 10% fetal calf serum, green CXCR6-cells invaded the red CXCL16-
producing spheroids.” Hattermann 2008, 137. Hattermann 2008 further
describes the “proliferation, migration and invasion of GPC . . . induced by
soluble CXCL16.” Id. at 138 (right col.). However, none of these
disclosures show cellular regression accompanying expansion as required
by all the rejected claims.
The Examiner cited Figure 4 on page 137, the section titled “Tissue
samples and cell cultures” on page 139, and the section titled “Spheroid
confrontation model”) on page 140 as describing “regression of the second
colony of malignant cancer cells from the midline commensurate with the
area of expansion of the colony of malignant cancer cells.” Ans. 9. The
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Examiner did not point to specific disclosure where Hattermann 2008
describes cellular regression accompanying expansion. We have reviewed
these sections, and are in agreement with Appellant, that there is no express
disclosure that Hattermann 2008 measured “expansion” of the GPC cells
“accompanied by regression” of the U343 glioma cells as required by the
claim.
Because the Examiner did not meet the burden3 of establishing that
each limitation of the claim is disclosed or suggested by Hattermann,
Rainov, and Hanahan, the obviousness rejection of claim 1, and dependent
claims 2–9, 15, and 20 is reversed.

NEW GROUND OF REJECTION
In the rejection based on 35 U.S.C. § 101, the Examiner identified six
publications (Golembieski, Nygaard, Wartenberg, Hattermann 2011, Vinci,
and Dolznig) for their disclosure of confrontation assays between two cell
types. Ans. 5–7. The Examiner cited these publications to establish that the
claimed steps of “plating colonies adjacent to each other (i.e. on directly
opposite sides of a midline), culturing and measuring the areas of expansion
and regression are well-understood, routine and conventional steps.” Ans. 7.
Nygaard4 describes co-culture of glioblastoma multiforme (“GBM”)
and fetal rat brain cell aggregates (“BCAs”). Nygaard, Abstract. Nygaard

3 An examiner bears the initial burden of presenting a prima facie case of
obviousness. In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011).
4 Svein J.T. Nygaard et al., Dynamic Determination of Human Glioma
Invasion In Vitro, 89 J. NEUROSURG., 441–47 (1998).
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discloses that the GBM cells infiltrated the BCAs cells and progressively
destroyed them:
We scored the aggressiveness of the tumors by measuring the
remaining BCA volume. Using this as a parameter, it was
shown that the tumor spheroids progressively destroyed the
BCAs in a linear fashion and, from the results provided, it is
most likely that the disintegration of normal brain tissue is
complete after approximately 200 hours of coculture.
Nygaard 444–45 (“Discussion”).
Nygaard also discloses variation in the different tumors studied:
As indicated in Fig. 2 and Table 2, considerable variation
in BCA destruction was observed between the different tumor
specimens. The tumor spheroid grown from Case 14 destroyed
BCA at the highest rate and those grown from Cases 8 and 13
to the least extent (Table 2).
Nygaard 444 (left col.).
Nygaard explains that the destruction of the BCA cells by the GBM
tumor cells is likely a result of destructive proteinases produced by the
tumor cells. Nygaard 445. Nygaard also discloses that the overall
destruction “likely . . . represents a reflection of an imbalance between
several proteases and their inhibitors.” Id.
Hattermann 20115 discloses that spheroid confrontation assays can be
performed using different cell types and for the purpose of determining the
influence of proteases:
Therefore, we developed an easy three-dimensional migration
model using spheroids of different (or also the same) cell types.
For this purpose, cells are differentially fluorescently labelled,

5 Kirsten Hattermann et al., Spheroid Confrontation Assay: A Simple
Method to Monitor the Three-Dimensional Migration of Different Cell
Types In Vitro, 193 ANNALS OF ANAT., 181–84 (2011).
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spheroids of one or both cell types are formed and confronted to
each other. This spheroid-confrontation assay has the following
advantages: it is easy to perform, inexpensive, monitors the
chemotactic gradient as well as the influence of matrix proteins
and cell-cell-adhesion. Neutralizing antibodies or inhibitors can
be used to determine the specificity of chemotactic
factors/receptors, the influence of proteases, and the effects of
cell adhesion molecules.
Id. at 181 (right col.) (emphasis added).
Hattermann 2011 used glioma cells in some assays, but reasonably
suggests to one of ordinary skill in the art performing other types of cell
studies using other cell types:
Typical results of spheroid formation and confrontation
are depicted in Fig. 1. Either single cell suspensions (here
glioma-invading macrophages/microglial cells) or spheroids of
a different cell type (here glial precursor cells) can be
confronted to the “homing” spheroids (here glioma cells).
Although this approach with fluorescent-labelled cells has been
mostly used to study the migration/invasion into tumour
spheroids (Golembieski et al., 1999; Mohanam et al., 2002;
Oxmann et al., 2008; Held-Feindt et al., 2010), it can also be
applied for other types of studies, e.g. invasion of inflammatory
cells or developmental studies (Hattermann et al., 2008).
Id. at 183 (right col.) (emphasis added).
It would have been obvious to one of ordinary skill in the art to use
two different GBM or malignant cell types in a confrontation assay to
determine the relative “influence of proteases.” Hattermann 2011. Nygaard
specifically teaches that tumors vary in their destructive ability. Nygaard
444 (left col.). Nygaard also teaches that the balance of proteases and
inhibitors produced by one cell type is a factor in its destructive ability.
Nygaard 445. Hattermann 2008, as discussed above, used two malignant
cell types in a confrontation assay, but did not measure their relative
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destructive abilities. One of ordinary skill in the art would have had reason
to perform the confrontation assay using two different GBM tumors and/or
malignant cell types to determine the relative destructive ability of each.
The following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b) is set forth.
Claim 1 is rejected under 35 U.S.C. § 103 as obvious in view of
Nygaard, Hattermann 2011, and Hattermann 2008. We leave it to the
Examiner to determine the obviousness of dependent claims 2–9, 15, and 20
based on Nygaard, Hattermann 2011, and Hattermann 2008, and any other
additional prior art publications, including those cited by the Examiner in the
35 U.S.C. § 101 rejection.

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
Appeal 2019-001734
Application 14/561,193

19
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b).

REVERSED; 37 C.F.R. § 41.50(b)