Scott Boden et al.

Patent Trials and Appeals Board

Apr 1, 2021

2020003027 (P.T.A.B. Apr. 1, 2021)

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.
13/980,593 09/03/2013 Scott D. Boden 11071 US 8082
81100 7590 04/01/2021
Patent Manager
Emory University - Office of Tech Transfer
1599 Clifton Road NE, 4th Floor
1599-001-1AZ
Atlanta, GA 30322
EXAMINER
YU, HONG
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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):
krebel@emory.edu
ottip@emory.edu
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________________

Ex parte SCOTT D. BODEN and SREEDHARA SANGADALA
_________________

Appeal 2020-003027
Application 13/980,593
Technology Center 1600

Before JASON V. MORGAN, DEBORAH KATZ, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

KATZ, Administrative Patent Judge.
DECISION ON APPEAL

Appellant1 seeks our review2, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1–7, 9, 19–24, and 28–30. Claims 8
and 10–18 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.

1 We use the word “Appellant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party-in-interest as Emory University and United States
Government as Represented by the Department of Veterans Affairs.
(Appeal Br. 3.)
2 We consider the Final Office Action issued December 6, 2018 (“Final
Act.”), the Appeal Brief filed November 1, 2019 (“Appeal Br.”), the
Examiner’s Answer issued on January 16, 2020 (“Ans.”), the Reply Brief
filed March 16, 2020 (“Reply Br.”) in reaching our decision.
Appeal 2020-003027
Application 13/980,593

2
The Examiner rejects claims 9, 19–22, and 28–30 under 35 U.S.C.
§ 103(a) over Livne,3 Arnold,4 and Kolias.5 (See Final Act. 3–8; see Ans.
3.) The Examiner also rejects claims 1–7, 23, and 24 under 35 U.S.C.
§ 103(a) over Livne, Arnold, Kolias, and Soula.6 (Final Act. 9–11; see Ans.
3.)
In a new grounds of rejection presented in the Answer, the Examiner
rejects claims 1–7, 9, 19–24, and 28–30 under 35 U.S.C. § 112, second
paragraph, as being indefinite. (See Ans. 4.)
Appellant’s specification is directed to compositions to induce bone
formation and enhance the efficiency of bone morphogenic proteins
(“BMP”) in bone grafting. (Spec. ¶ 5.)
Appellant’s claim 1 recites:
A bone graft composition comprising a collagen matrix
and a 4-(phenoxy)-quinoline derivative having formula IA,

3 Livne and Srouji, U.S. Patent Application Publication 2003/0149437 A1,
published August 7, 2003.
4 Arnold et al., European Patent Application Publication 0 326 330 A2,
published August 2, 1989.
5 Kolias et al., U.S. Patent 6,124,374, issued September 26, 2000.
6 Soula et al., U.S. Patent Application Publication 2009/0291113 A1,
published November 26, 2009.
Appeal 2020-003027
Application 13/980,593

3
or salts thereof, wherein
X is NH or O;
R1, R2, R3, R4, R5, R6, R7, R8, R9, R10, and R11 are each
the same or different hydrogen, alkyl, halogen, nitro, cyano,
hydroxy, amino, mercapto, formyl, carboxy, alkanoyl,
carbamoyl, alkoxy, alkylthio, alkylamino, or (alkyl)2amino.

(Appeal Br. 20–21.) Independent claim 9 is drawn to a kit comprising a
4-(phenoxy)-quinoline derivative having formula IA as recited in claim 1
and independent claim 19 is drawn to a bone graft composition comprising a
hydrogel matrix and a 4-(phenoxy)-quinoline derivative having formula IA
as recited in claim 1. (See id. at 19.)
Appellant’s claims 25–27 were rejected as being obvious over the
prior art in the Final Action, but the Examiner withdrew these rejections in
the Answer. (See Ans. 3.) Claims 25–27 recite the graft of claim 1 or19,
but limit the bone graft composition to the species 4-(phenoxy)-quinoline
derivative is 4-(4-bromo-3-methylphenoxy )-6, 7-dimethoxyquinoline or
salts thereof, which Appellant refers to as “G8.” (See Appeal Br. 6, 21.)
We review the Examiner’s current rejections under 35 U.S.C. § 103
and § 112, second paragraph.
35 U.S.C. § 103
As the Examiner finds, Livne teaches a bone repair scaffold that is
impregnated with bone growth promoting agents, such as bone morphogenic
proteins, and with quinoline antibiotics. (See Livne ¶¶ 49–51, 71, 98; see
Final Act. 4.) Livne does not teach quinoline class antibiotics as recited in
Appellant’s claims. (See Final Act. 4.)
The Examiner finds that Arnold teaches a quinoline with a structure
within the scope of a 4-(phenoxy)-quinoline derivative having formula IA,
Appeal 2020-003027
Application 13/980,593

4
as recited in Appellant’s claims. (See Final Act. 4–5, citing Arnold 2–3.)
Arnold teaches that these quinolines “have excellent plant fungicide
activity” and that some “also demonstrated insecticidal and miticidal
activity.” (Arnold 2:9–10.) The Examiner does not cite a teaching in
Arnold that the quinolines disclosed can be used in medical applications or
with animals.
The Examiner determines that it would have been obvious to a person
of ordinary skill to modify the bone repair composition taught by Livne by
using a quinoline as taught in Arnold to achieve a 4-(phenoxy)-quinoline
derivative having formula IA recited in Appellant’s claims because “Kolias
et al. teach quinoline being a broad spectrum antimicrobial agent in
agricultural and mammalian veterinary applications and for human (column
2, line 44–54).” (Final Act. 5.) Thus, the Examiner relies on Kolias for the
reason one would have modified the quinoline class antibiotics of Livne to
be a quinoline within the scope of Appellant’s claims.
Appellant argues, among other things, that Kolias teaches only that
8-hydroxyquinoline in copper complexes are antimicrobial agents, not that
quinolines in general are antimicrobial agents for human and veterinary use.
(See Appeal Br. 6.)
We agree with Appellant. Kolias teaches:
The use of antimicrobial agents generally is well known. U.S.
Pat. No. 4,766,113 to West et al., for example, discloses the use
of copper hydrate together with 8-hydroxy quinoline as a broad
spectrum antimicrobial agent in agricultural and mammalian
veterinary applications and for human use as well. U.S. Pat. No.
4,694,000 to Timmerran et al. discloses biocidal quinzoline and
isoquinoline derivatives including copper complexes thereof.
U.S. Pat. Nos. 2,745,832 to Roth et al. and 2,769,006 to
Appeal 2020-003027
Application 13/980,593

5
Kalberg disclose metal quinolates such as 8-hydroxy quinoline
and copper, calcium and magnesium salts thereof as useful
fungicidal actives.
(Kolias 2:44–54.) As Appellant argues, the teachings of Kolias cited by the
Examiner are limited to specific quinolines complexed with copper. Kolias
does not address the use of quinolines in general. We do not agree with the
Examiner that one of ordinary skill in the art would have been motivated by
the teachings of Kolias to use a quinoline as taught in Arnold in a bone graft
composition as taught in Livne.
Accordingly, we reverse the Examiner’s rejection of claims 1–3 as
being obvious over Livne, Arnold, and Kolias.
The Examiner also rejects claims 1–7, 23, and 24 under 35 U.S.C.
§ 103(a) over Livne, Arnold, Kolias, and Soula. (Final Act. 9–11; see Ans.
3.) Soula is cited for its teaching of a bone implant comprising cross-linked
hydrogel such as collagen or gelatin, combined with hydroxyapatite and
tricalcium phosphate and complexed with Bone Morphogenic Protein 2.
(See Final Act. 9.) The Examiner does not cite Soula as providing a reason
to use a quinoline of Arnold in a bone graft composition as taught in Livne.
Thus, for the reasons discussed above, we are not persuaded that the
combination of the teachings of Livne, Arnold, Kolias, and Soula would
have rendered obvious the compositions of Appellant’s claims 1–7, 23, and
24. We reverse the Examiner’s obviousness rejections under these grounds
as well.
35 U.S.C. § 112, second paragraph
The Examiner rejects claims 1–7, 9, 19–24, and 28–30 under 35
U.S.C. § 112, second paragraph, as being indefinite. (See Ans. 4.) The
Examiner points to the claim phrase “X is NH or O . . .” in independent
Appeal 2020-003027
Application 13/980,593

6
claims 1, 9, and 19, finding that this phrase renders the preambles of the
claims confusing because they recite “4-(phenoxy)-quinoline derivative
having formula IA” wherein X is an O as indicated by the “phenoxy” group,
not NH. (See Ans. 4.)
Appellant argues that because the claim preambles recite “derivative”
one of ordinary skill would understand that the O could be switched to an
NH group. (See Reply Br. 2.) Appellant points to the definition of
“derivative” in the Specification, wherein “[t]he derivative may be
structurally similar because . . . one or more atoms within the molecule are
switched, such as, but not limited to, replacing an oxygen atom with a sulfur
atom or replacing an amino group with a hydroxy group.” (Reply Br. 2,
quoting Spec. ¶ 39.)
In light of the definition of the term “derivative,” we are persuaded
that one of ordinary skill in the art would understand that the 4-(phenoxy)-
quinoline derivative having formula IA recited in Appellant’s claims could
have either an NH group or O as X. We are not persuaded that the claim
would be confusing or indefinite.
Accordingly, we reverse the Examiner’s rejection under 35 U.S.C.
§ 112, second paragraph.

Conclusion
Upon consideration of the record and for the reasons given, we
reverse the Examiner’s rejection.
In summary:
Appeal 2020-003027
Application 13/980,593

7
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
9, 19–22,
28–30
103 Livne, Arnold,
Kolias
9, 19–22,
28–30
1–7, 23, 24 103 Livne, Arnold,
Kolias, Soula
1–7, 23, 24
1–7, 9, 19–
24, 28–30
112,
second
paragraph
1–7, 9, 19–
24, 28–30
Overall
Outcome
1–7, 9, 19–
24, 28–30

REVERSED