Ex Parte 6,777,231 et al

Patent Trial and Appeal Board

Nov 26, 2013

95001592 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,592 04/01/2011 6,777,231 606512800500 8338
23460 7590 11/27/2013
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
PONNALURI, PADMASHRI
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
11/27/2013 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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIVERSITY OF PITTSBURGH OF THE COMMOMWEALTH
SYSTEM OF HIGHER EDUCATION
(Patent Owner and Appellant)

v.

CELLERIX
(Requester and Cross-Appellant)
____________

Appeal 2013-008103
Reexamination Control 95/001,592
US Patent 6,777,231 B1
Technology Center 3900
____________

Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal by the Patent Owner from the Patent
Examiner’s decision to reject claims 11 and 25; and the Third Party
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Requester’s cross-appeal from the Patent Examiner’s decision not to adopt
anticipation rejections of claims 11, 22, 25, and 28 in the above-identified
inter partes reexamination of US 6,777,231 B1. The Board’s jurisdiction for
this appeal is under 35 U.S.C. §§ 6(b), 134, and 315. We affirm the appeal.
We designate certain grounds in the cross-appeal as new grounds of
rejection under 37 C.F.R. § 41.77(b).

STATEMENT OF CASE
The patent in dispute in this appeal is US 6,777,231 B1 (“the ‘231
Patent”), which issued August 17, 2004. The claims of the patent are
directed to adipose-derived stem cells. According to the ‘231 Patent, a stem
cell is pluripotent cell that has the developmental capacity, when cultured
under the appropriate conditions, to differentiate into at least two discrete
developmental pathways (col. 18, ll. 10-12; col. 2, ll. 37-41 and 59-63). The
cells are derived from adipose tissue.
A request for inter partes reexamination under 35 U.S.C. §§ 311-318
and 37 C.F.R. §§ 1.901-1.997 for the ‘231 Patent was filed April 1, 2011 by
Third Party Requester, Cellerix S.A.1 (Request for Inter Partes
Reexamination 1). The Patent Owner in this appeal is University of
Pittsburgh of the Commonwealth System of Higher Education (Patent
Owner Appeal Br. 4, dated September 19, 2012).

1 TiGenix SAU is listed as the successor-in-interest of Cellerix SL, the party
who filed the Request for Inter Partes Reexamination (Respondent Br. 2,
dated October 19, 2012). Only the party originally requesting inter parte
reexamination is entitled to file a brief, or a party who is a privy. 37 C.F.R.
§ 41.60; 37 C.F.R. § 1.915(b)(8).
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An oral hearing was held October 9, 2013. A transcript of the
hearing will be entered into the record in due course.

CLAIMS
1. An isolated adipose-derived stem cell that can
differentiate into two or more of the group consisting of a bone
cell, a cartilage cell, a nerve cell, or a muscle cell.

6. The adipose-derived stem cell of claim 1, 3 or 4 which
can be cultured for at least 15 passages without differentiating.

11. The adipose-derived stem cell of claim 6, wherein the
cell can be cultured in DMEM and 5-15% serum without losing
the capacity to differentiate.

APPEAL
Claims 11 and 25 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description and enablement
requirements (RAN 7-10).
The interpretation of claims 11 and 25 are in dispute. We thus begin
the analysis with claim interpretation.

Claim interpretation
Claims 11 and 25 are drawn to an adipocyte-derived stem cell where
“the stem cell can be cultured in DMEM and 5-15% serum without losing
the capacity to differentiate.” The claims are dependent on claims 6 and 23,
respectively, which recite that the cells “can be cultured for at least 15
passages without differentiating.” Claims 6 and 23 are in turn dependent on
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independent claims that require that the adipocyte stem cell can differentiate
into two or more cell types selected from the group consisting of a fat cell, a
bone cell, a cartilage cell, a nerve cell, or a muscle cell. Under 37 C.F.R.
§ 1.75(c), claims “in dependent form shall be construed to include all the
limitations of the claim incorporated by reference into the dependent claim.”
Thus, claims 11 and 25 incorporate all the limitations of the claims they are
dependent on and must be capable of differentiating into two or more cell
types and of being cultured for at least 15 passages without differentiating.
The stem cells of claims 11 and 25 can be cultured in DMEM and 5-
15% serum “without losing the capacity to differentiate.” The latter phrase
is explained in the ‘231 Patent. According to the patent, “[a] stem cell is a
pluripotent cell that has the capacity to differentiate in accordance with at
least two discrete developmental pathways.” (‘231 Patent, col. 18, ll. 10-12;
emphasis added.) A cell that has differentiated along a “developmental
pathway” is one that differentiated into a given developmental phenotype
(id. at col. 6, ll. 25-33). “A developmental phenotype is the potential of a
cell to acquire a particular physical phenotype through the process of
differentiation.” (Id. at col. 18, ll. 3-5.) In other words, the “capacity to
differentiate” means the ability of the claimed stem cell to differentiate into
two or more of the cell types (a “physical phenotype”) selected from the
group consisting of a fat cell, a bone cell, a cartilage cell, a nerve cell, or a
muscle cell.
The stem cell, according to claims 11 and 25, “can be cultured in
DMEM and 5-15% serum without losing the capacity to differentiate,” i.e.,
without losing the ability to differentiate into two or more of a fat cell, a
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bone cell, a cartilage cell, a nerve cell, or a muscle cell. Although the term
“DMEM” is not defined in the ‘231 Patent, it would be understood to be
Dulbecco’s modified Eagle’s medium (see, e.g., Entenmann and Hauner,
Am. J. Physiol., 270 (Cell Physiol. 39): C1011-C1016, 1996; at C1011, col.
2).
The claim does not specify the length of time the cell can be cultured
in the DMEM and serum without losing the capacity to differentiate into a
specific cell type. However, it is argued by the Examiner and Requester that
claims 11 and 25 require the cell to have been cultured in the DMEM and
serum for 15 passages without losing the capacity to differentiate.
Without a recitation of a number of passages, the claim
language of Claims 11 and 25 is meaningless as it could cover
"culturing" the cells for five minutes in the claimed medium.
The only way that this cited section of the specification could
support Claims 11 and 25 is if the "without losing the capacity
to differentiate" is over the "at least 15 passages" of Claims 6
and 23 from which Claims 11 and 25, respectively, immediately
depend.
(Requester Resp’t Br. 3; filed October 19, 2012.)
The pertinent section of the ‘231 patent is reproduced below:
Desirably the cells can be cultured without differentiation using
standard cell culture media (e.g[.], DMEM, typically
supplemented with 5-15% (e.g., 10%) serum (e.g., fetal bovine
serum, horse serum, etc.). Preferably, the cells can be passaged
at least five times in such medium without differentiating, while
still retaining their developmental phenotype, and more
preferably, the cells can be passaged at least 10 times (e.g., at
least 15 times or even at least 20 times) without losing
developmental phenotype.
(‘231 Patent, col. 4, ll. 9-18.)
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Claims 6 and 23 refer to culturing for at least 15 passages without
differentiating. There is no recitation of the culture media. Claims 11 and
25 recite culturing in DMEM and 5-15% serum, but with no recitation of a
culture time period or number of passages. The language in claims 11 and
25 do not require the DMEM culture to be the same culturing as in claims 6
and 23. There is no antecedent basis which links the two claim limitations to
each other. The claims are not method claims, but rather are drawn to the
stem cells per se. The limitations of claims 6, 11, 23, and 25 recite the
capability of the cells, but do not require the steps to actually have been
carried out. The passaged reproduced above refers to culturing cells without
differentiation using DMEM supplemented with 5-15% media. Preferred
embodiments are described in which cells are passaged for at least five times
in such media, and more preferably at least 15 times, without losing
developmental potential. However, the reproduced passage does not require
that the claim be read to mean that the cell culture in DMEM and 5-15%
serum is done for 15 passages because the passage expressly describes less
preferable embodiments in which five or less of the passages are carried out
in the DMEM and serum.

Written description
With respect to claims 11 and 25, the Examiner found that the ‘231
Patent describes culturing cells without differentiating, but not without
losing the capacity to differentiate as recited in the claims (RAN 8). In other
words, cells can be cultured in a medium without differentiating, but this
does not mean that the cells still have retained the ability to differentiate
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after being cultures in the medium. The Examiner reached this conclusion
based on the interpretation that claims 11 and 25 require that the cell’s
capacity to differentiate must be the same at the beginning and end of the
culture and that this capacity was not described or tested in the ‘231 Patent
(id. at 9:14-16).
The passage reproduced above from column 4, lines 9-18, of the ‘231
Patent provides explicit written description for the phrase “the stem cell can
be cultured in DMEM and 5-15% serum without losing the capacity to
differentiate.” The passage refers to culturing in the DMEM “without
differentiating,” and preferably “without differentiating, while still retaining
their developmental phenotype” or “without losing developmental
phenotype.” “Developmental phenotype” is defined in the ‘231 Patent to
mean “the potential of a cell to acquire a particular physical phenotype
through the process of differentiation.” (‘231 Patent, col. 18, ll. 3-5.)
According to this passage, the cells can be cultured in the DMEM and serum
“without losing” their potential to differentiate into a particular cell type, or,
as recited in claims 11 and 25, “without losing the capacity to differentiate.”
Such passage provides a written description for the claim limitation.
The Examiner’s additional requirement that the capacity be tested at
the beginning and end of the culturing is not reasonable when read in the
context of the ‘231 Patent. It is true that the claim requires the cell not to
“lose” the capacity to differentiate, but that is in reference to its status as a
stem cell which is able to differentiate into one or more of a bone, cartilage,
nerve, or muscle. The patent does not define or describe this loss as a
reference to some measured ability of the cell to differentiate, if it even
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could be measured, at the beginning or end of culture, but would be
reasonably understood as a reference to the stem cell status as retaining the
potential (i.e., “capacity”) to differentiate.
Requester also contends that the claim is properly interpreted to mean
that the cell’s capacity must be the same after culturing as at the start of the
culturing step (Requester Resp’t Br. 5). However, the only support cited by
Requester for this construction is that the claim refers to the loss in “the
capacity to differentiate,” so it must be a reference to “the capacity” prior to
the culturing step for proper antecedent basis (id.) However, “the capacity
to differentiate” finds antecedent basis equally well in the stem cells upon
which the claim depends, e.g., the stem cell in claim 1 “that can differentiate
into two or more of the group consisting of a bone cell, a cartilage cell, a
nerve cell, or a muscle cell.” Support was not identified in the ‘231 Patent
for the interpretation that the capacity to differentiate was with reference to
before and after culture, rather than with reference to the stem cell’s
capacity, itself, the latter which is more consistent with what is described in
the patent as column 4, lines 9-18, reproduced above.

Examples
Examples 1 and 3 are relied upon by Patent Owner as supporting the
written description and enablement of claims 11 and 25. Requester, making
the same argument as the Examiner, states:
Example 1 does not indicate what cell’s capacity for
differentiation was before culturing for the one passage in
DMEM + 10% serum for differentiation into even a single cell
type, much less two cell types or all cell types into which the
cell can differentiate. Without such a comparison, one of skill in
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the art could not know if a cell or the cell population in
Example 1 lost its or their capacity to differentiate while
passaging in DMEM + 10% serum.
(Requester Resp’t Br. 7). Requester makes the same statement for Example
3 (Id.). However, this argument is not persuasive since neither the Examiner
nor Requester provided sufficient evidence that the claim should be
interpreted to require the developmental capacity be assessed at the
beginning and end of culture.
Requester further argues that the ‘231 Patent is ambiguous:
Example 3 describes that a clonal population of adipose derived
stem cells that was cultured in a "cloning medium" therefore
contained 16.7% serum (i.e., 2/3 media with 20% serum and
1/3 media with 10% serum) for more than 15 passages without
differentiating. The cells used in Example 3 were induced to
differentiate, but it is unclear when the cells were made to
differentiate – after they were passaged through a standard
medium 15 times, or just after the clonal lines were established
and frozen.
(Requester Resp’t Br. 8.)
The following is the relevant passage from the ‘231 Patent apparently
referred to by Requester:
The cells were cultured for more than 15 passages in cloning
medium and monitored for differentiation as indicated in
Example 1. The undifferentiated state of each clone remained
true after successive rounds of differentiation.
(Col. 15, ll. 55-58.) Thus, the ‘231 Patent expressly teaches differentiation
after 15 passages. Whether such cells were previously frozen after cloning,
and then passaged 15 times, is not pertinent to the question of whether the
patent describes and enables passaging cells 15 times and then obtaining that
at least one clone was “able to differentiate into bone, fat, cartilage, and
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muscle when exposed to the respective media.” (‘231 Patent, col. 15, ll. 61-
64.)

Enablement
It is also argued that is there is “nothing in the specification guiding
those of skill in the art to the particular conditions that would allow the
artisan to culture these cells for fifteen passages without losing the capacity
to differentiate.” (Requester Resp’t Br. 9) Requester contends “mere
description of assays for identifying adipose derived stem cells that retain
developmental phenotype is insufficient for one of skill in the art to
recognize that the inventors were in possession of the cells of claims 11 and
25.” (Id.)
We do not agree. Examples 1 and 3 both describe suitable culture
conditions which meet the claim limitations. In Example 1, cells are isolated
and cultured at 37°C in DMEM plus about 10% fetal bovine serum (col. 14,
ll. 3-5). These cells, as stated in Example 1,
were not identifiable as myocytes, adipocytes, chondrocytes,
osteocytes, or blood cells. These results demonstrate that the
adipose-derived cells express telomerase activity similar to that
previously reported for human stem cells.
(Col. 14, ll. 23-27.) Thus, the patent describes conditions in which the cells
can be cultured without differentiating.
Such cells also did not lose the capacity to differentiate after being
cultured in the DMEM plus about 10% fetal bovine serum. Following the
culture in the DMEM and serum, Example 1 describes culturing the stem
cells in different differentiation media to cause them to differentiate into
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various cell types, including adipocytes, osteocytes, and myocytes (col. 14, l.
28 to col. 15, l. 21).
Example 3 similarly describes culturing cells “for a few days as
indicated in Example 1” for “some rounds of cell division” (col. 15, ll. 39-
43). Afterwards, the cells were picked and cloned, grown to confluence, and
cultured for more than 15 passages (col. 15, ll. 41-58). The media these
cells were cultured in an amount of serum which was calculated to be 16.7%
serum (Requester Resp’t Br. 8), which is just slightly outside the claimed
rang of 5-15%. However, the cells were initially cultured in the Example 1
media which contains about 10% serum, and thus falls within the scope of
claims 11 and 25. Claim 6 and 23, which requires 15 passages, does not
require any specific media. After the 15 passages, the cells were exposed to
differentiation media.
It was observed that at least one of the clones was able to
differentiate into bone, fat, cartilage, and muscle when exposed
to the respective media, and most of the clones were able to
differentiate into at least three types of tissues.
(‘231 Patent, col. 15, ll. 61-65.)
Based on this disclosure, contrary to the Examiner’s and Requester’s
contentions, we find that the ‘231 Patent expressly describes conditions
under which stem cells are “cultured in DMEM and 5-15% serum without
losing the capacity to differentiate” (claims 11 and 25; Example 1 and 3);
and “cultured for at least 15 passages without differentiating” (claims 6 and
23; Example 3). Requester’s arguments are based on a misreading of the
claim to require that the 15 passages without differentiating to be under the
conditions of DMEM and 5-10% serum (Requester Resp’t Br. 8 and 11). As
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explained in the Claim interpretation section above, these are two
independent limitations.
Even so, the disclosure in Example 3 of first culturing cells in the 10%
serum medium of Example 1, followed by 15 passages in a media
comprising 16.7% serum, which is so close to 15% that we simply do not
see sufficient evidence that the claim limitations, even when read as the
Examiner and Requester did, are not enabled by such example.

Post-filing published evidence
Request contends there is post-filing published evidence of
unpredictability. Requester states “Guilak, Safwani, and Zhao all show that
basic media and culture conditions are not sufficient as the cells lose their
capacity to differentiate even after a few passages.” (Requester Resp’t Br.
9.) We address each publication below, beginning first with Requester’s
description of the post-filing date publication.

A. Guilak2
Contrary to Appellant’s assertion, the results from Guilak show
that one could not predict whether a given adipose derived,
stem cell clone would be able to differentiate into two or more
cell types. As shown by Guilak, after only 4 passages only
52% of clones were able to differentiate into two or three cell
types, while 29% of clones only differentiate into one cell type
and 19% of clones did not differentiate into any cell type (see
Guilak, Table 3). In other words, after only four passages, only
half of the cells met the claimed capacity to differentiate into at
least two different cell types.

2 Guilak et al., Journal of Cellular Physiology, 206, 229-237 (2006).
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(Requester Resp’t Br. 12.)
Guilak states: “Of the 63 colonies that reached passage 4 without
evidence of senescence, 45 colonies (15 colonies per donor) were selected
randomly to be induced for the multilineage differentiation assays.” (Guilak,
p. 232, col. 1, “Results”) Guilak did not assay beyond four passages. Table
3 of Guilak, as indicated by Requester, shows that after 4 passages 52% of
clones were able to differentiate into two or three cell types. While it may
be true that Guilak could not predict which clone would have retained the
capacity to differentiate into two or more cell types, such a prediction is not
necessary to enable claims 11 and 25. In fact, the ‘231 Patent does not
indicate that all the clones retained such capacity, but rather stated:
It was observed that at least one of the clones was able to
differentiate into bone, fat, cartilage, and muscle when exposed
to the respective media, and most of the clones were able to
differentiate into at least three types of tissues.
(‘231 Patent, col. 15, ll. 61-65.)
Example 3 clearly describes how to make clones and to test each one
for its capacity to differentiate (col. 15, ll. 42-67). The fact that many clones
might require testing after 15 passages to identify one with the capacity to
differentiate into two or cell types does not establish unpredictably, because
it would still be predictable that a cell with the claimed capability would be
obtained after routine screening, albeit at a low frequency.
Requester has not provided sufficient evidence to establish that the
screening required to select clones with the capacity to differentiate would
be anything more than routine to one of ordinary skill in the art following
the guidance set forth in the ‘231 Patent, particularly, as described in
Examples 1 and 3. Even “a considerable amount of experimentation is
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permissible,” as long as it is “merely routine” or the specification “provides
a reasonable amount of guidance” regarding the direction of
experimentation. Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342,
1360-61 (Fed. Cir. 1998) (internal quotation omitted).

B. Safwani3
Safwani teaches that decline of the stemness genes expression
decreased the multilineage potential of ASCs (adipose derived
stem cells) in long-term culture. (Safwani, p. 269 bottom of left
column). Appellant incorrectly claims that this does not mean
that long term culture results in ASCs that have lost the
capacity to differentiate. (Appeal Brief at 24.) Safwani's
teaching shows that ASCs cultured for more than 10 passages
lose their potential to differentiate. Safwani tested the ability of
the ASCs to differentiate into osteogenic lineage cells,
adipogenic lineage cells and neurogenic lineage cells. Safwani
used the same methods to assess the capacity to differentiate as
recited in the specification of the ‘231 patent. Using the same
method suggested by Appellant, Safwani found that the ASCs
all lost capacity to differentiate after 15 passages (or even after
as few 10 passages). (Safwani, sections 3.5 to 3.7.)
(Requester Resp’t Br. 13; emphasis added.)
We have reviewed sections 3.5 to 3.7 and do not find support for
Requester’s statement “that the ASCs all lost capacity to differentiate after
15 passages (or even after as few 10 passages)” (id. at 13; emphasis added).
For example, Safwani teaches:
3.5. Adipogenic differentiation of ASCs in long-term culture
The differentiated ASCs were indicated by the presence of lipid
droplets, which was stained with Oil Red O. The presence of

3 Safwani et al., Biotechnology and Applied Biochemistry, 58(4), 261270
(2011).
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lipid droplets decreased very much at P20 (Fig. 6B) compared
with P5 (Fig. 6A).
(Safwani, p. 266.)
Thus, at P20, or passage 20, Safwani describes a decline in adipogenic
differentiation as shown by the decrease in lipid droplets in the cells, but
Safwani did not describe a complete loss in capacity to differentiate into
adipocytes. Genes expression of adipocyte genes also decreased at passage
15 (P15) (Safwani, p. 266 describing expression of PPARγ and AP2), but
Safwani did not state such decline in expression meant “that the ASCs all
lost capacity to differentiate after 15 passages” as alleged by Requester.
With respect to osteogenic potential, Safwani teaches:
3.6. Osteogenic potential of ASCs in long-term culture
Morphologically, calcium deposition indicated by Alizarin Red
stain can be observed in differentiated cells at all passages. This
showed that ASCs have the ability to differentiate into
osteogenic cells but this ability reduced at later passage as there
was less calcium deposition at P20 (Fig. 7B) compared with P5
(Fig. 7A).
(Safwani, p. 266.)
Safwani states that the ASCs have the ability to differentiate into
osteogenic cells at all passages, although Safwani acknowledges that this
capacity diminishes at later passages. Safwani, contrary to Requester’s
statement, does not indicate that the ASCs had lost all capacity to
differentiate after 15 passages.
3.7. Neurogenic differentiation of ASCs in long-term culture
Immunostaining of differentiated ASC using β-III tubulin
antibody showed the presence of β-III tubulin, which was
indicated by brown precipitation in the cytoplasm of the cells at
P5 (Fig. 8A) and P20 (Fig. 8B) . . . There were no significant
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changes in the morphology of differentiated ASCs at P10 and
P15. However, data from qRT-PCR showed that Nestin
decreased significantly at P15 . . . and P20 . . . after induction
compared with P5 . . . β-III tubulin showed only modest
decrease in expression at P10, P15, and P20 with no significant
changes in expression after induction . . .
(Safwani, p. 266.)
As indicated in the above passage, the ASCs – in addition to retaining
the capacity to differentiate into adipogenic and osteogenic cells, also were
capable of differentiating into neurogenic cells after 15 passages (“There
were no significant changes in the morphology of differentiated ASCs at P10
and P15”).
We cannot agree with Requester that Safwani evinces “that the ASCs
all lost capacity to differentiate after 15 passages (or even after as few 10
passages.).” Nonetheless, we do not disagree that Safwani showed that the
potential of ASCs to differentiate declined with the number of passages.
However, there is no indication that cells completely lost their ability to
differentiate at 15 and 20 passages, just that the cells showed changes in
growth and gene expression associated with the differentiated state, making
them less desirable for clinical use. That Safwani was able to routinely test
for differentiation indicates that it would not require undue or excessive
experimentation to identify clones after 15 passages which retained the
ability to differentiate into two or more cell types. Safwani, themselves, did
not disbelieve results that cells could be passaged as many as 30 times,
militating against the conclusion that Safwani teaches unpredictability in the
field.
From our data, ASCs showed a decline of growth rate in long-
term culture where the changes were most obvious at P20. They
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also started to lose the fibroblast-like morphology in long-term
culture, especially at P15 and P20. ASCs have a more flattened
and larger morphology, which is akin to senescent cells. These
changes in the cell morphology at later passage may affect the
ASC potential and efficacy for clinical use as serial passaging
has been reported to alter the growth kinetics of ASCs [ ].
However, several studies have demonstrated that ASCs can be
expanded up to P30 [ ]. The difference in results may be
associated with the seeding density of cells at initial passage
(Po) and the age of the donors [ ].
(Safwani, p. 268.)

C. Zhou4
Zhou shows that adipose derived stem cells have a lower
capacity to differentiate at passage 5 for some cell types, but a
higher capacity to differentiate for other cell types. Based on
these results, it is clear that Zhou shows the unpredictability of
differentiation potential when adipose derived stem cells are
cultured with DMEM and 5-15% serum for only 5 passages.
(Requester Resp’t Br. 14.)
It is unclear what Requester means by “the unpredictability of
differentiation potential” used to characterize Zhou’s results. Zhou
expressly acknowledges that ASCs can differentiate into three cell types
after culture up to 15 passages: “Although it has been demonstrated that
human ASCs can maintain their adipogenic, chondrogenic, and osteogenic
potential in long-term culture (up to 15 passages), it is not guaranteed that a
satisfactory level of differentiation is achievable in later passages.” (Zhou,
p. 1; emphasis added.) Thus, Zhou does not express doubt that ASCs can be

4 Zhou et al., Cells Tissues Organs, 195(5), 414-27 (2011) (copy in file is
numbered pages 1-12).
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obtained after 15 passages. Consistent with Guilak, Safwani, and the
inventor’s own disclosure in the ‘231 Patent, the robustness of the cells may
decline after long-term culture, but there is no evidence that routine
screening could not be used to obtain those clones which retain the capacity
to differentiate into at least two cell types. Indeed, it appears that both Zhou
and Safwani acknowledge and provide evidence that at least some cells after
routine screening were capable of differentiating after 15 passages, cutting
against the conclusion of unpredictability.

D. Summary
These post-filing date published studies were for the most part aimed
at identifying cells for use in clinical studies. For example, as stated by
Zhou (p. 12): “The success of utilizing stem cells in tissue-engineering
applications is highly dependent on maintaining a satisfactory level of
differentiation potential after extensive in vitro expansion.” Thus, while
cells cultured for 15 passages may not be desirable for tissue-engineering
applications because of the gradual loss of growth and differentiation
potential, stem cells with the capacity to differentiate into two or more cell
times were still isolatable using routine screening as evidenced by Example
3 of the ‘231 patent, Safwani (p. 268 as quoted above), and Zhou (p. 1 as
quoted above).

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Summary
We reverse the Examiner’s determination that claims 11 and 25 do not
comply with the written description and enablement requirements of 35
U.S.C. § 112, first paragraph.

CROSS-APPEAL
Requester cross-appeals the Examiner’s decision not to adopt the
follow rejections (Requester Appeal Br. 3-4):
1. Claims 11, 22, 25, and 28 under 35 U.S.C. § 102(b) as inherently
anticipated by Hauner.5
2. Claims 11, 22, 25, and 28 under 35 U.S.C. § 102(b) as inherently
anticipated by Van.6
3. Claims 11, 22, 25, and 28 under 35 U.S.C. § 102(b) as inherently
anticipated by Zilberfarb.7
Claims 11, 22, 25, and 28 are dependent claims, each of which recites
the same limitation that the stem cells “can be cultured in DMEM and 5-
15% serum without losing the capacity to differentiate.” Claims 11 and 25
depend ultimately on independent claims 1, 3, and 4 which stand rejected as
inherently anticipated by Hauner (RAN 15) and Zilberfarb (RAN 23).
Patent Owner did not appeal these rejections. Claims 22 and 28 depend
ultimately on independent claims 12, 14, and 15 which stand rejected as
inherently anticipated by Hauner (RAN 11), Van (RAN 12), and Zilberfarb
(RAN 13). Patent Owner did not appeal these rejections.

5 Hauner et al., J. Clin. Invest., 84, 1663-1670, 1989.
6 Van et al., J. Clin. Invest., 58(3), 699-704, 1976.
7 Zilberfarb et al., J. Cell Science, 110, 801-807, 1997.
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Hauner
The Examiner found that Hauner described the claimed “adipose-
derived stem cell” (RAN 11 and 15), but not one that “can be cultured in
DMEM and 5-15 % serum without losing the capacity to differentiate.” (Id.
at 11). Hauner contains the following pertinent teachings:
FF1. Hauner describes the isolation of stromal-vascular cells from
adipose tissue obtained from human subcutaneous abdominal deposits
(Hauner, p. 1663, col. 2 under “Methods.”)
FF2. Fibrous material and blood vessels were dissected from the
adipose tissue, the tissue was cut into pieces, and digested with collagenase
(id. at 1164, col. 1).
FF3. The tissue was subjected to several steps to remove erythrocytes
and mature adipocytes, plated out into culture dishes, and further treated to
remove white blood cells and cellular debris (id.)
FF4. The cells were cultured in media of DME/Ham’s F-12 medium
comprising 10% fetal calf serum (FCS)(id.).
FF5. After plating, cells “were completely devoid of lipid droplets as
assessed by Oil Red O staining and measurement of triacylglycerol content,”
the markers utilized to assess the presence of mature adipocytes (id. at p.
1666, col. 1).
FF6. Cells were subsequently exposed to a medium which caused
them to accumulate lipid droplets and develop an adipocyte-like morphology
(id.)
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FF7. In addition, GPDH activity, another marker of adipocytes,
“remained below the detection limit from day 0 to day 4 [after exposure to
the differentiation medium], became measurable at day 8 and sharply
increased . . .” (id. at p. 1666, col. 1-2).
FF8. Hauner found that longer exposure to serum lead to a loss in
differentiation capacity (id. at p. 1666, col. 2).
FF9. Table II shows that, as incubation time increased in a serum-
containing medium of DME and 10% serum, the capacity of the cells to
produce the adipocyte marker GPDH upon exposure to differentiation
medium decreased (id. at p. 1667). GPDH expression decreased from 658 (4
hours in serum) to 55 (180 hours in serum) after a first subculture and, after
second subculture” GPDH was not detected (“ND”) in cells (id.)

Discussion
A “prior art reference may anticipate without disclosing a feature of
the claimed invention if that missing characteristic is necessarily present, or
inherent, in the single anticipating reference.” SmithKline Beecham Corp. v.
Apotex Corp., 403 F.3d 1331, 1343 (Fed. Cir. 2005). “[W]hen the PTO
shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
In this case, Hauner’s isolation procedure differs from the procedure
in the ‘231 Patent. Hauner describes deriving adipocyte precursor cells
from subcutaneous abdominal deposits (FF1), while the cells in the ‘231
Patent are from a liposuction aspirate (‘231 Patent, col. 13, ll. 49-56). In the
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‘231 Patent, the “aspirate was strained to separate associated adipose tissue
pieces from associated liquid waste. Isolated tissue was rinsed” with buffer
and then subjected to collagenase treatment (id. at col. 13, ll. 52-57). Thus,
while adipose tissue was used in each instance and treated with collagenase
(FF2), Hauner’s tissue was obtained from deposits (FF1), while the patent’s
from an aspirate. Hauner determined whether the precursor cells were able
to differentiate into adipocytes (FF5 and FF6), but not into other cell types.
However, the Winter8 publication, coauthored by Hauner and following
Hauner’s protocol, isolated cells from the same source as Hauner and found
the cells were also able to differentiate into chondrogenic, osteogenic, and
myogenic lineages.
FF10.
In addition to bone marrow, periosteum [ ], muscle [ ],
and adipose tissue (20,21) [reference 20 is Hauner] appear to be
sources of mesenchymal stem cells. Subcutaneous adipose
tissue is a particularly attractive reservoir for progenitor cells,
because it is easily accessible, rather abundant, and self-
replenishing. A multipotent progenitor cell population, which
we refer to herein as adipose tissue-derived stromal cells
(ATSC), is derived after collagenase digestion from adipose
tissue [ ]. These cells can be induced to differentiate toward the
adipogenic, chondrogenic, osteogenic, and myogenic lineages
[ ].
(Winter, p. 419, col. 1; emphasis added.)
FF11. Winters isolated the ATSC “according to the method described
by Hauner” (Winter, p. 419, col. 2).
FF12. Winter induced differentiation in these cells and determined
gene expression of genes specific for adipogenic, osteogenic, and

8 Winter et al., Arthritis & Rheumatism, 48(2), 418-429 (2003).
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chondrogenic lineages, and found evidence that ATSC could differentiate
adipogenic, osteogenic, and chondrogenic lineages (Winter, p. 422-423),
although differentiation was not complete for the chondrogenic lineage (id.
at p. 424 and 426).
F13.
The isolation and expansion protocols applied in this study
yielded ~99% pure cell populations, according to staining with
common surface markers [ ] . . . We were able to obtain highly
homogeneous BMSC and ATSC populations that were negative
for CD34 and von Willebrand factor (data not shown).
(Winter, p. 426, col. 2.)
FF14. Winter teaches that its cells “were cultured in Dulbecco's
modified Eagle's medium (DMEM) supplemented with 10% FCS” (Winter,
p. 419, col. 2, “Cell isolation and cultivation”) and then induced to
differentiate (id., “Induction of differentiation”)
Thus, Winter shows that its stem cells isolated by Hauner’s procedure
(FF11) were capable of differentiating into at least osteogenic, and
chondrogenic lineages (FF12), providing sufficient evidence that the cells
had the same developmental capacity as those claimed which were isolated
from lipoaspirate.

Claim 6
Claim 11 depends on claim 6 which recites that cells “can be cultured
for at least 15 passages without differentiating.” Patent Owner contends:
Hauner explicitly discloses at Table II that cells cultured for
two passages (“second subculture”) in DME/Ham's F-12
medium (1:1, vol./vol.) supplemented with 10% FCS did not
differentiate (“ND”). See also p. 1666 right column (“ . . . a
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nearly complete loss of differentiation capacity was observed
(Table II)”. This explicit disclosure strongly suggests that
Hauner failed to isolate adipose-derived stem cells that can be
cultured in DMEM and 5-15% serum without losing the
capacity to differentiate, as claimed.
(Patent Owner Resp’t Br. 6, filed October 19, 2012.)
It is true that Hauner found that culture in serum leads to a loss in
differentiation capacity (FF8 and FF9). However, the statement that there
was a “nearly complete loss of differentiation capacity” refers to the cells in
Table II which had been cultured for 180 hours in serum-containing media
(FF9). In contrast, after only 4 hours in serum, the cells were not said to
have lost such capacity and showed 658 units of GPDH expression as
compared to 55 GPDH units after first subculture (FF9). Claim 6 does not
require that all 15 passages were accomplished in serum. Thus, Patent
Owner’s argument is not supported by sufficient evidence since the “nearly
complete loss” referred to long-term culture in serum which is not required
by claim 6.
In addition to this, Requester provided an experimental report
(“Vivotecnia” dated March 23, 2011) in which cells were isolated according
to Hauner’s protocol, passaged in media comprising serum, and then tested
for cell markers expressed by human mesenchymal cells (Vivotecnia, pp. 7,
15, and 16). Vivotecnia reported that, after 15 passages in the culture media,
cells expressed the cell surface markers of human mesenchymal stem cells
(id. at 21). Vivotecnia also reported: “Cells exhibited a fibroblast-like
morphology, and the morphology and appearance of the cultures was
constant throughout the study.” (Id. at 22.)
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Relying on a declaration by Farshid Guilak, Ph.D. (“Declaration of
Farshid Guilak” dated August 31, 2011), Patent Owner contends that the
data in Vivotecnia does not prove that cells are stem cells because other or
additional markers would be needed to reach a definitive determination
(Guilak Decl. ¶¶ 39-41). The evidence supports Dr. Guilak’s position.
Nonetheless, the pattern of cell marker expression and cell morphology
described in Vivotecnia are consistent with the cells being stem cells.
Hauner also used a surrogate marker for developmental capacity, measuring
GPDH expression in Table II as a surrogate for adipocyte differentiation
(FF7-FF9), so the use of markers to assess developmental capacity was
acceptable in the prior art as a test for developmental capacity.
Dr. Guilak criticized Winters and Vivotecnia, testifying that there
were differences from Hauner in the isolation protocols that could have
resulted in different populations of cells (Guilak Decl. ¶¶ 28 and 30). To
support this position, Dr. Guilak cited several publications said to describe
differences in cells markers and yields, depending upon the isolation
protocol. We do not discount Dr. Guilak’s testimony that differences in
protocols might result in differences in the cell populations. Nonetheless,
Winter’s and Vivotecnia describe populations of cells isolated by roughly
the same technique as Hauner and starting with the same tissues. The most
credible explanation is that Winter and Vivotecnia isolated the same cell
populations since both studies, carried out by scientists, resulted in cells with
the same developmental capacities. Indeed, the fact that two independent
studies produced stem cells is evidence that following Hauner’s protocol
necessarily results in the claimed stem cells. To the extent there were
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differences in the protocols, evidently the scientists in Winter and
Vivotecnia did not consider these differences to be consequential otherwise
they would not characterized their experiments as following Hauner’s stem
cell derivation procedure.
Dr. Guilak’s testimony, while scientifically based, is speculative in
that it is not based on any data demonstrating significant differences in the
differentiation potential of cells from slightly different protocol and provides
little evidence that the cells originally obtained by Hauner were different
from those which Winter and Vivotecnia tested and assayed. Indeed, in
Guilak’s own scientific publication, he acknowledges that Hauser isolated
adult stem cells: “With age, adult stem cells appear to become more
restricted in their potential, demonstrating less efficient conversion to an
adipocytic phenotype (Hauner et al., 1989).”

“cultured in DMEM and 5-15% serum”
We interpreted the requirement of claim 11 (and others) that the cells
“can be cultured in DMEM and 5-15% serum” to require that the cells be
cultured in such media for any length of time and not require it be for the
full 15 passages recited in claim 6. We rejected the Examiner’s
interpretation that claim 11 required that all 15 passages be carried out in the
DMEM and the 5-15% serum media because it was not the broadest
reasonable interpretation of the claim when read in light of the ‘231 Patent
specification.
Hauner explicitly teaches culturing cells in media that falls within the
scope of claim 11 (FF4). Such cells were cultured in the serum-containing
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media “without losing the capacity to differentiate” as recited in claim 11.
Specifically, cells cultured in DME medium comprising 10% fetal calf
serum (FF4) were able to differentiate into adipocytes (FF6). Winter
showed that cells, derived using Hauner’s protocol and cultured in DMEM
and 10% serum, differentiated into three lineages (FF12 and FF14). Thus,
there is sufficient evidence that the requirements of claim 11 are met by
Hauner.

“isolated”
Claim 11, through its dependency on claim 1, requires the cells to be
isolated. According to Patent Owner, Hauner’s cells are heterogeneous and
do not satisfy the definition of “isolated,” which means “in an environment
substantially free of other cellular or extracellular materials found in adipose
tissue.” (Patent Owner Resp’t Br. 9.)
This definition of “isolated” was accepted by the District Court
in the Markman Order in connection with the inventorship
litigation concerning the present ‘231 patent and subsequently
affirmed by the Federal Circuit. See University of Pittsburgh of
the Commonwealth System of Higher Education v. Marc H
Hedrick et al. Case No. CV 04-9014 (CBM) (AJWJx) (Central
District of California 2008) (page 12), affirmed 573 F.3d 1290,
91 USPQ2d 1423 (Fed. Cir. 2009).
(Id.)
As indicated by Patent Owner, the district court did not appear to have
independently construed the term “isolated,” but rather stated: “At oral
argument, Plaintiffs conceded to use Defendants’ construction of ‘isolated.’
Accordingly, ‘isolated’ should be construed as ‘in an environment
substantially free of other cellular or extracellular materials found in adipose
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issue.’” Patent Owner Resp’t Br., Related Proceedings App’x, Tab A,
University of Pittsburgh of the Commonwealth System of Higher Education
v. Marc H Hedrick et al., Case No. CV 04-9014 (CBM) (AJWJx), at 12
(C.D. Cal. Feb. 13, 2007) (Order Denying in Part and Granting in Part
Plaintiff’s and Defendants’ Motions for Construction of the Claims). Thus,
the court accepted the construction with no apparent investigation as to its
proper meaning in the context of the ‘231 Patent. Patent Owner says that the
district court’s definition of “isolated” was “affirmed” by the Federal
Circuit. However, we have reviewed the Federal Circuit decision at 573
F.3d 1290 and cannot find where the term “isolated” was construed.
During reexamination, the PTO must give the terms in a claim their
broadest reasonable construction consistent with the specification. In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Suitco
Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010); In re Abbott Diabetes
Care Inc., 696 F.3d 1142 (Fed. Cir. 2012). We are thus obligated to
construe the term “isolated” as it would be understood by one of ordinary
skill in the art in light of the ‘231 Patent specification.
The term “isolated” appears to have been used most frequently in the
‘231 Patent in its ordinary meaning: “to separate (something, such as a
chemical) from another substance: to get (something) or an amount of
(something) that is not mixed with or attached to anything else.”9 For
example, the ‘231 patent refers to “isolation of adipose tissue from the
source animal” (‘231 Patent, col. 3, ll. 9-12) and “final isolation” of the cells
from the tissues (id. at col. 4, ll. 7-8). In each case, the cells were separated

9 http://www.merriam-webster.com/dictionary/isolate
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from the source of which they were originally part. The cells can be further
isolated, e.g., by cloning, but the term “isolated” is not limited to such a state
(id. at col. 4, ll. 60-63). Based on this disclosure in the ‘231 Patent and its
ordinary meaning, we interpret “isolated” to mean that the cells have been
separated from the source animal tissue from which they are derived.
Hauner describes cells which were separated out from adipose tissue
obtained from human subcutaneous abdominal deposits, and separated from
erythrocytes, mature adipocytes, and other cellular debris (FF1-FF3). A cell
obtained by Hauner’s protocol is thus an “isolated adipose-derived stem
cell” as the term “isolated” would be understood by one of ordinary skill in
the art upon reading the ‘231 Patent specification.
The same analysis for claim 11 applies to claim 22, since both claims
recite the limitation of “wherein the cell can be cultured in DMEM and 5-
15% serum without losing the capacity to differentiate.”

“substantially homogenous”
Claims 25 and 28 are drawn to a “substantially homogenous
population of adipose-derived stem cells.” The ‘231 Patent Specification
does not define “substantially homogenous” or provide a value of how many
stem cells in a population would be considered “substantial.” Nevertheless,
Winter teaches that cells isolated according to Hauner’s protocol results
“yielded ~99% pure cell populations” which were characterized as “highly
homogeneous” (FF13), evidence that Hauner’s cell populations are
“substantially homogenous.” We therefore conclude there is sufficient
evidence that the requirements of claims 25 and 28 are met by Hauner.
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Summary
For the foregoing reasons, we reverse the Examiner’s determination
that claims 11, 22, 25, and 28 are anticipated under 35 U.S.C. § 102(b) by
Hauner. A reversal of an examiner’s determination not to adopt a rejection
constitutes a new ground of rejection. 37 C.F.R. § 41.77(b).
We shall not reach the rejections over Van and Zilberfarb since they
involve the same claims found to be unpatentable over Hauner.

NEW GROUND OF REJECTION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.77(b) which provides that “[a]ny decision which includes a
new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review.” Correspondingly, no portion of the decision is
final for purposes of judicial review. A requester may also request rehearing
under 37 C.F.R. § 41.79, if appropriate, however, the Board may elect to
defer issuing any decision on such request for rehearing until such time that
a final decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …
Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the patent owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
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Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R. §
41.77(e) for reconsideration and issuance of a new decision by the Board as
provided by 37 C.F.R. § 41.77(f).

AFFIRMED; 41.77(B)

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PATENT OWNER:
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731

THIRD PARTY REQUESTER:
ROBERT A. SALTZBERG
MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANCISCO, CA 94105-2482

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