Czernieki, Brian J. et al.

Patent Trials and Appeals Board

Dec 14, 2020

2020003214 (P.T.A.B. Dec. 14, 2020)

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.
13/635,075 03/07/2013 Brian J. Czerniecki 217874-0001-00-
US-567976
2656
55694 7590 12/14/2020
FAEGRE DRINKER BIDDLE & REATH LLP (DC)
1500 K STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005-1209
EXAMINER
JUEDES, AMY E
ART UNIT PAPER NUMBER
1644
NOTIFICATION DATE DELIVERY MODE
12/14/2020 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):
DBRIPDocket@faegredrinker.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BRIAN J. CZERNIEKI, BRIAN MCDEVITT,
SHUWEN XU, and GARY K. KOSKI
__________

Appeal 2020-003214
Application 13/635,075
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, DAVID COTTA, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
of generating an autologous antigen specific activated dendritic cell (DC) for
use in immunotherapy. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Real Parties in Interest as THE
TRUSTEES OF THE UNIVERSITY OF PENNSYLVANIA and
IMMUNORESTORATION, INC. (see Appeal Br. 1). We have considered
the Specification of Sept. 14, 2012 (“Spec.”); Final Office Action of Mar.
13, 2019 (“Final Action”); Appeal Brief of Oct. 15, 2019 (“Appeal Br.”);
Examiner’s Answer of Jan. 21, 2020 (“Ans.”); and Reply Brief of Mar. 23,
2020 (“Reply Br.”).

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Statement of the Case
Background
“Cancer research has seen significant advances” and “recent studies
suggest that dendritic cellular (DC) vaccines may impact patient survival”
(Spec. 1). “DCs are responsible for the induction, coordination and
regulation of the adaptive immune response and also serve to orchestrate
communication between effectors of the innate arm and the adaptive arm of
the immune system. These features have made DCs strong candidates for
immunotherapy” (id. 12).
DCs are ubiquitous in peripheral tissues, where they are
prepared to capture antigens. Upon antigen capture, DCs
process the antigen into small peptides and move towards
secondary lymphoid organs. It is within the lymphoid organs
that DCs present antigen peptides to naive T cells; thereby
initiating a cascade of signals that polarizes T cell
differentiation. Upon exposure, DCs present antigen molecules
bound to either MHC class I or class II binding peptides and
activate CDS+ or CD4+ T cells, respectively.
(id. 11). The Specification teaches a “system and method for cryopreserving
these activated DCs in a way that retains their ability to produce signals
critical to T cell function after thawing. As contemplated herein, the present
invention includes a variety of cryopreservation techniques and cryomedia,
as would be understood by those skilled in the art” (id. 25–26).
The Claims
Claims 1, 2, 4–8, and 31–37 are on appeal. Claim 1 is an independent
claim, is representative and reads as follows:
1. A method of generating an autologous antigen specific
activated dendritic cell (DC) for use in immunotherapy in a
subject, comprising:
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culturing monocytes obtained from the subject in the
presence of GM-CSF and IL-4 in a serum free media overnight
to generate a non-activated DC;
pulsing the non-activated DC with at least one antigen;
activating the non-activated DC pulsed with at least one
antigen in a serum free media with IFN-γ, and a TLR agonist
selected from the group consisting of bacterial
lipopolysaccharide (LPS), a TLR2 agonist, a TLR3 agonist, a
TLR4 agonist, a TLR8 agonist, and a TLR7/8 agonist to
generate an autologous antigen specific activated DC; and
cryopreserving the autologous antigen specific activated
DC about 6–8 hours after exposure to the TLR agonist or LPS in
cyromedium comprising 5–10% DMSO; wherein upon thawing
the autologous antigen specific activated DC for use in
immunotherapy in the subject produces an effective amount of
IL-12.
The Rejections
A. The Examiner rejected claims 1, 2, 4–8, and 31–35 under 35 U.S.C.
§ 103(a) as obvious over Czerniecki,2 Dohnal,3 Bosch,4 and Shankara5
(Final Act. 2–9).
B. The Examiner rejected claims 1, 2, 4–8, and 31–35 under 35 U.S.C.
§ 103(a) as obvious over Czerniecki, Dohnal, and Salazar6 (Final Act. 9–11).
C. The Examiner rejected claims 36 and 37 under 35 U.S.C. § 103(a) as
obvious over Czerniecki, Dohnal, Bosch, Shankara, Salazar, and Pogue-

2 B. Czerniecki et al., Targeting HER-2/neu in Early Breast Cancer
Development Using Dendritic Cells with Staged Interleukin-12 Burst
Secretion, 67 Cancer Res. 1842–52 (2007).
3 A. Dohnal et al., Comparative evaluation of techniques for the
manufacturing of dendritic cell-based cancer vaccines, 13 J. Cell. Mol. Med.
125–35 (2009).
4 Bosch, WO 2004/053072 A2, published June 24, 2004.
5 Shankara et al., WO 99/46984 A1, published Sept. 23, 1999.
6 Salazar et al., WO 2009/040413 A2, published Apr. 2, 2009.
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Caley7 (Final Act. 11).
A. 35 U.S.C. § 103(a) over Czerniecki, Dohnal, Bosch, and Shankara
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that Czerniecki,
Dohnal, Bosch, and Shankara render the claims obvious?
Findings of Fact
1. Czerniecki teaches the use of “HER-2/neu DC1 vaccines to
improve prognosis and act as adjuncts to breast-conserving surgical
strategies” (Czerniecki 1851, col. 1). Figure 1, panel A of Czerniecki is
reproduced below:

Figure 1. Preparation of HER-2/neu–pulsed-DC1 vaccines. A,
peripheral blood monocytes were obtained by combined
leukapheresis and elutriation. The monocytes were cultured in

7 Pogue-Caley et al., US 2009/0053251 A1, published Feb. 26, 2009.
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SFM [serum free medium] with GM-CSF and IL-4 overnight.
The next day, immature dendritic cells (iDC) were pulsed in
separate wells with one of six HER-2/neu MHC class II–
derived peptides. IFN-γ was added later in the day, and the
following morning, LPS was added to complete maturation of
DC1. . . . The DC1 were harvested, release criteria were met,
and 10 to 20 million HER-2/neu–pulsed DC1 were
administered . . . .
(Czerniecki 1845).
2. Figure 1, panel B of Czerniecki is reproduced below:

Figure 1, panel “B, schematic of proposed affect of HER-2/neu–pulsed DC1
on the cellular immune response. Primed DC1 produce IL-12 and present
MHC class II peptides to CD4pos T cells” (Czerniecki 1845).
3. The Examiner acknowledges that “Czerniecki et al. does not
teach cryopreserving and thawing the mature dendritic cells” (Final Act. 2).
4. Figure 1A of Dohnal also shows the process of generating
activated dendritic cells, followed by freezing as reproduced below:
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“Fig. 1 Dendritic cell (DC) manufacturing. (A) Flow chart of the standard
operating procedure (SOP) for the manufacturing of a cancer vaccine”
(Dohnal 128). Dohnal also teaches growth of monocytes in “CellGro DC
medium,” a serum-free medium that was “supplemented with 1000 U/ml
human GM-CSF and 300 U/ml human IL-4” (Dohnal 126, col. 2).

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5. Dohnal teaches optimized “maturation with LPS/IFN-γ together
with the DC freezing step after 6 hours . . . . The viability of DCs at those
concentrations was higher than 80%. Freezing after 6 hrs of maturation did
not affect the surface expression of DC maturation markers, IL-12 secretion
and the viability of the DCs” (Dohnal 130, col. 1).
6. Dohnal teaches: “We could demonstrate that freezing of smDCs
[semi-mature stage DCs] generated with elutriated monocytes did not impair
the immune phenotype, IL-12 secretion or the viability of DCs also at high
LPS concentrations up to 1000 ng/ml” (Dohnal 133, col. 2).
7. Shankara teaches “compositions and methods relating to
freezing and thawing viable and functional dendritic cells” (Shankara 1:11–
12).
8. Shankara teaches:
The ability to store mature and precursor DCs for extended
periods of time will be useful for: (1) clinical protocols in
which multiple DC administrations are required; (2) providing a
continuous source of autologous DCs for protracted preclinical
studies; and (3) ex vivo generation of cytotoxic T lymphocytes
against tumor antigens by educating naive immune effector
cells, preferably from peripheral blood lymphocytes, with DCs
transduced with a gene encoding the antigen of interest.
(Shankara 2:24–30).
9. Shankara recognizes “long-term storage of APCs, especially
dendritic cells, has proven difficult” and finds “a need exists for a method to
freeze and thaw DCs that does not hamper viability and functionality of the
cells. This invention satisfies this need and provides related advantages as
well” (Shankara 3:4–6).
10. Shankara teaches the “freezing media is approximately 30%
human-derived serum and/or plasma and approximately 10% of an agent
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that prevents ice crystal formation during freezing, e.g., DMSO” (Shankara
3:20–22).
11. Figures 6A and 6D of Shankara are reproduced below:

“Figure 6, panels A through E, graphically show CTL assay results of fresh
DCs and DCs thawed at different time points” (Shankara 4:29–30). “As
shown in Figure 6, Applicants did not see any decrease in the ability of DCs
to present antigen (over a period of time in frozen storage)” (Shankara
49:13–15).
12. Bosch teaches “DCs can be preserved, e.g., by cryopreservation
either before maturation or following partial maturation prior to
administration to a patient. Cryopreservation agents which can be used
include but are not limited to dimethyl sulfoxide (DMSO)” (Bosch 12:11–
14).
13. Bosch teaches, in Example 2, that:
bone marrow cells following red cell lysis were incubated with
murine GM-CSF (200 U/ml) and IL-4 (200 U/ml) in RPMI
1640 supplemented with 10% fetal bovine serum for 13 - 14
days, with addition of fresh media with cytokines after 3 and 7
days. To obtain partially matured dendritic cells, the cells were
exposed to a 400-fold dilution of inactivated Bacillus Calmette-
Guerin (BCG) that had activity of 0.5 - 1 x 106 colony forming
units per milliliter prior to inactivation, and to 500 units of
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murine interferon gamma (IFN-γ) per milliliter.
(Bosch 16:22–27).
14. Bosch teaches that the Example 2 cells, after partial maturation
were “washed and viably frozen in 10% dimethyl sulfoxide (DMSO) in
liquid nitrogen storage” (Bosch 16:29–30).
Principles of Law
The Examiner has the initial burden of establishing a prima facie case
obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). It is important to provide “a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
We adopt the Examiner’s findings of fact and conclusion of law (see
Final Act. 2–9, FF 1–14). We agree that the cited prior art renders the
claims obvious. We address Appellant’s arguments below.
Appellant contends:
Changing one or more of the variables in the process of making
mature dendritic cells, as will be detailed below, provides no
reasonable expectation of success, and thus no obvious result.
Procedural differences in generating DCs produces cells with
different characteristics and abilities. The procedures and
materials in the various cited references are not the same.
(Appeal Br. 5). Appellant contends “Dohnal summarizes the complex
procedures and cell differences that illustrate and support why the claims are
nonobvious over the combination of art as alleged by the Examiner. As
stated succinctly by Dohnal, variables have impact on the ultimate DCs
produced” (Appeal Br. 6).
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We find this argument unpersuasive because it fails to address the
teachings of the references. Czerniecki’s method of generating activated
dendritic cells is identical to that recited in claim 1 (FF 1), including the
ability to produce an effective amount of IL-12 (FF 2), with the exception
that Czerniecki does not disclose the claimed cryopreservation step (FF 3).
Thus, the DCs produced by Czerniecki would be identical to those of claim
1. Therefore, to the extent that other processes would result in different
dendritic cells, that argument is unpersuasive because the Examiner relies
upon the dendritic cell generating process of Czerniecki that falls fully
within the teachings of claim 1.
The only differences between Czerniecki and claim 1 is that
Czerniecki does not discuss freezing activated dendritic cells, including the
timing of freezing and details of the cryomedium.
The Examiner cites a number of references to evidence a desire for
freezing dendritic cells (FF 6, 8, 12) and that a cryomedium containing about
10% DMSO was well known for such cell freezing (FF 10, 14). Dohnal,
like Czerniecki, also teaches a virtually identical process for generating
activated dendritic cells to that of claim 1, differing only in the incubation
time in the culturing step (FF 4). Dohnal also teaches to freeze dendritic
cells and explains that “[f]reezing after 6 hrs of maturation did not affect the
surface expression of DC maturation markers, IL-12 secretion and the
viability of the DCs” (FF 5; cf. FF 6).
Thus, the weight of the evidence demonstrates the obviousness of
freezing the dendritic cells of Czerniecki generated by a process
encompassed by claim 1 (FF 1, 2, 4), after 6 hours of maturation (FF 5)
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using 10% DMSO (FF 10, 14), for purposes such as clinical protocols (FF
8).
Appellant contends that
Czerniecki fails to teach the limitations of independent claims 1
and 35 of: (1) the timing of when to cryopreserve the cells (i.e.
6-8 hours after exposure to the TLR agonists or LPS); (2) a
cryomedium having 5-10% DMSO; and (3) that upon thawing
the cells can produce an effective amount of IL-12; and (4)
Czerniecki makes confusing mention of the use of IL-4 in the
reference, such that it is unclear whether it was indeed used.
(Appeal Br. 7–8).
We find this argument unpersuasive for several reasons. First, the
Examiner’s rejection is not for anticipation over Czerniecki, but rather for
obviousness over Czerniecki, Dohnal, Bosch, and Shankara. Second, as
discussed above, Figure 1, panel A of Czerniecki clearly suggests a process
for generating dendritic cells identical to that recited in claim 1, beginning
by culturing monocytes in the presence of GM-CSF and IL-4 in SFM (serum
free medium) overnight, pulsing these cells with antigen and then activating
the dendritic cells with IFN-γ and LPS (FF 1). Czerniecki also teaches
release of IL-12 by the cells (FF 2). While Appellant is correct that
Czerniecki does not teach the timing or cryomedium for freezing the
dendritic cells, Dohnal teaches that 6 hours after treatment with LPS is a
known timing for freezing dendritic cells without disturbing IL-12 secretion
(FF 5) and Bosch and Shankara teach the use of 10% DMSO in freezing
media for dendritic cells (FF 10, 12–14).
We also are not persuaded by Appellant’s contention that an artisan
would have ignored Czerniecki’s disclosure of IL-4 in Figure 1, panel A and
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would have limited their review of Czerniecki to “the ‘Materials and
Methods’ section of the paper to replicate the experiment” (Appeal Br. 8).
“All the disclosures in a reference must be evaluated, including
nonpreferred embodiments . . . and a reference is not limited to the
disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651
(CCPA 1972). Here, not only does Czerniecki teach an embodiment using
IL-4, but Dohnal also teaches the treatment of dendritic cells with IL-4 and
GM-CSF at the same step for the same purpose (FF 4), further suggesting
the use of IL-4 to the ordinary artisan. Thus, the ordinary artisan would
have had reason to include IL-4 in order to follow both the method disclosed
in Figure 1 of Czerniecki and the method disclosed by Dohnal in generating
activated dendritic cells.
Appellant contends “Claim 35 is identical to claim 31 but recites
‘consisting essentially of.’ There is no requirement of either Her-2/neu
MHC class II ECD and ICD peptides as suggested in Czerniecki, and which
would be excluded from claim 35 as ‘non-essential’” (Appeal Br. 7).
We do not find this argument persuasive because the Specification’s
definition of “consisting essentially of” suggests “excluding other elements
of any essential significance to the combination” (Spec. 18:5–6). However,
Appellant does not identify a disclosure in the Specification that identifies
which elements are the essential to claim 35. The particular components of
Czerniecki suggested by Appellant as excluded are antigens, and claim 35
broadly encompasses “at least one antigen.” The plain reading of claim 35
would therefore indicate that the MHC class II and ICD peptides fall directly
within the scope of claim 35 because they are the antigens used by
Czerniecki in the “pulsing the non-activated DC with at least one antigen”
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step. Claim 35 broadly encompasses any antigens and does not exclude the
antigens of Czerniecki.
Appellant contends
Varying all the parameters listed in all the references, when the
references in fact teach away from varying the parameters or
ignoring the criticality of those parameters is no more than
throwing “metaphorical darts at a board filled with
combinatorial prior art possibilities” as stated by the Federal
Circuit. . . . [T]he three secondary references cited by the
Examiner require one to ignore too many possible parameter
variations and choices to lead to prima facie obviousness.
(Appeal Br. 10).
We are not persuaded. As already discussed, Czerniecki teaches an
almost identical process for generating dendritic cells as required by the
claims. The only parameters an ordinary artisan would have needed to
address to arrive at the claimed method – based on the desire for freezing
these cells disclosed by Shankara and Dohnal – would have been the timing
of the freezing and the cryomedium used. All of the prior art that discloses
particular cryomedium for freezing dendritic cells, Shankara and Bosch,
teach medium including 10% DMSO. Thus, no selection of any parameter
is necessary to reach the DMSO range recited in claim 1.
As to the timing of freezing, Dohnal specifically identifies 6 hours as
a time frame after treatment with LPS that “did not affect the surface
expression of DC maturation markers, IL-12 secretion and the viability of
the DCs” (FF 5). Dohnal identifies the “maturation with LPS/ IFN-γ
together with the DC freezing step after 6 hrs” as “optimized” (FF 5). Here
again, even if other specific freezing protocols are disclosed in the prior art,
selection of Dohnal’s optimized freezing protocol for cells prepared by an
approach virtually identical to that of Czerniecki is not a “metaphorical dart”
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but rather is the pursuit of known options from a finite number of
possibilities. And given Dohnal’s teaching that this protocol preserves IL-12
levels (FF 5–6), the “record shows that a skilled artisan would have had a
resoundingly ‘reasonable expectation of success’ in deriving the claimed
invention in light of the teachings of the prior art.” In re Kubin, 561 F.3d
1351, 1361 (Fed. Cir. 2009).
As to the cryomedium, Shankara teaches that inclusion of 10%
DMSO as an “agent that prevents ice crystal formation during freezing” (FF
10) and Bosch teaches freezing in a medium containing 10% DMSO (FF
14). These teachings provide both a reason to use the claimed cryomedium
as well as a reasonable expectation of success in doing so.
As to teaching away, Appellant does not identify any teaching in the
prior art that criticizes, discredits, or otherwise discourages freezing 6 hours
after LPS treatment or freezing in 10% DMSO. Therefore, the prior art does
not teach away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.”).
Appellant contends “the Examiner disregards what [Bosch] teaches as
a whole . . . the freezing procedures and success obtained by the inventors in
[Bosch] is directed to an entirely different cell, a partially mature dendritic
cell that has not been pulsed with or exposed to antigen” (Appeal Br. 11).
Appellant also contends that Bosch
teaches at least 11 different options and suggests the results
from all the different options would be equivalent. It is unclear
how a POSITA was supposed to choose GM-CSF and IL-4 per
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the claims or GM-CSF and IL-4 from Czerniecki while
disregarding the other 10 allegedly equivalent possibilities. . . .
The monocyte culturing step of [Bosch] is further
distinguishable for the length of culture. While the monocytes
are cultured in GM-CSF and IL-4 as claimed and taught in
Czerniecki, the monocytes in [Bosch] are cultured for 5 days
and not overnight.
(Id. at 12).
We are not persuaded for several reasons. As already discussed, the
ordinary artisan, interested in freezing the dendritic cells of Czerniecki, and
also informed by Dohnal regarding the factors necessary to culture, pulse,
and activate those cells, would have relied on Bosch for its general teachings
regarding the cryomedium necessary for freezing cells such as Czerniecki’s
activated dendritic cells (FF 1, 2, 5, 6, 12). And while Bosch does teach 5
days culture, Czerniecki teaches the “monocytes were cultured in SFM
[serum free medium] with GM-CSF and IL-4 overnight” (FF 1). Thus, the
ordinary artisan interested in using Czerniecki’s process for generating
therapeutic anticancer vaccines would not have relied upon a different
process taught by Bosch.
And even if Bosch was relied upon, selection from 11 different
options does not render the claim unobvious. Simply because the prior art
“discloses a multitude of effective combinations does not render any
particular [option] less obvious.” Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989). Indeed, in Petering, the CCPA found that
“each compound within the limited class [of 20 compounds]. . . has been
described in a printed publication within the meaning of 35 U.S.C. § 102(b),
and that it is of no moment that each compound is not specifically named or
shown by structural formula in that publication.” In re Petering, 301 F.2d
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676, 682 (CCPA 1962). Here, under § 103(a) obviousness, the disclosure of
11 species is reasonably found to render each of these species obvious.
Further, to the extent that Czerniecki’s process represents an
optimized process, Dohnal teaches that a virtually identical process is an
optimized process (FF 5) and Czerniecki states “this vaccination strategy has
yielded very high rates of T-cell sensitization against both peptide and tumor
targets and generated complement-fixing, tumor-lytic antibodies”
(Czerniecki 1843, col. 1). “[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456
(CCPA 1955).
Appellant contends the Koski Declaration8
describes the lack of predictability regarding cryopreservation
of dendritic cells at ¶¶ 12-43. Different methods of dendritic
cell production yield cells having different characteristics. Dr.
Koski discusses the reference by Feuerstein et al. (2000),9
detailing that dendritic cells produced using different maturing
cocktails had differences in survival and also required
optimized freezing procedures. Koski Declaration, ¶¶ 15-16.
US 2004/02537421 also emphasizes that the maturing stimulant
employed prior to freezing plays an important role in the
survival of the cells. Koski Declaration, ¶17. A POSITA
would have been aware of these issues.
(Appeal Br. 13).
We have considered Dr. Koski’s Declaration but do not find it
persuasive of unobviousness. Dr. Koski relies upon Feuerstein (see Koski

8 Declaration of Dr. Gary Koski, dated Aug. 9, 2018.
9 Feuerstein et al., A method for the production of cryopreserved aliquots of
antigen-preloaded, mature dendritic cells ready for clinical use, 245 J.
Immunol. Meth. 15–29 (2000).
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Decl. ¶ 15), but quotes Feuerstein’s results before optimizing the freezing
conditions (see Koski Decl. ¶ 16). However, Feuerstein teaches the need for
“optimizing the freezing conditions” (Feuerstein 19, col. 2). Feuerstein
further teaches that the monocytes were frozen at a different point in the
maturation process than that suggested by Dohnal (FF 5–6) for use in
methods such as those of Czerniecki (FF 1). Feuerstein notes a “standard
10% DMSO concentration” and found “[v]arying DMSO concentrations had
no discernible bearing on DC survival” (Feuerstein 20, col. 2). Feuerstein
taught that “the preferred method to obtain optimally cryopreserved mature
DC was to . . . freeze the matured DC at 1ºC/min in pure autologous
serum+10% DMSO+5% glucose” (Feuerstein 21, col. 2). Thus, Feuerstein’s
optimized freezing cryomedium falls fully within the scope of the claims.
Dr. Koski’s other arguments rely upon maturing conditions different
than those found in either Czerniecki or Dohnal (see Koski Decl. ¶¶ 26–27).
We find these arguments unpersuasive because the ordinary artisan,
interested in optimizing freezing of dendritic cells produced by the processes
of Czerniecki or Dohnal, would have reasonably used the effective 6 hour
time period after LPS treatment disclosed by Dohnal (FF 5) and well-known
cryomedia containing 10% DMSO as disclosed by Bosch, Shankara, and
indeed Feuerstein itself (see Feuerstein 21, col. 2).
Appellant contends:
the Examiner is selectively and improperly “picking and
choosing” elements from portions of [Bosch] to fill the gaps in
Czerniecki, using of course, the boundaries of Appellants’ own
claims as guidance which is prohibited hindsight syndrome. By
contrast, Czerniecki teaches to fully mature its antigen-pulsed
dendritic cells; [Bosch] instead only uses partially matured cells
that do not get exposed to antigen prior to cryopreservation.
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(Appeal Br. 14).
We find this argument unpersuasive because “picking and choosing
may be entirely proper in the making of a 103, obviousness rejection.” In re
Arkley, 455 F.2d 586, 587 (CCPA 1972). And while we are aware that
hindsight bias may plague determinations of obviousness, Graham v. John
Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that the Supreme
Court has stated that “if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR, 550 U.S. at
417.
Here, Czerniecki teaches a technique for generating dendritic cells for
a cancer vaccine (FF 1–2) and Dohnal, Shankara, and Bosch are relied upon
for methods to improve that vaccine with methods for freezing and storage
of dendritic cells (FF 4–14). Shankara provides specific motivations to
freeze dendritic cells used for therapy (FF 8) as “a need exists for a method
to freeze and thaw DCs that does not hamper viability and functionality of
the cells” (FF 9). Indeed, Appellant’s own cited prior art Feuerstein
reference also teaches a motivation to freeze dendritic cells, that “the
availability of cryopreserved mature DC will greatly facilitate the clinical
use of DC for immunotherapy” (Feuerstein 28, col. 1). Dohnal evidences
that freezing and thawing dendritic cells generated by a process virtually
identical to that of Czerniecki does not hamper viability and functionality of
the dendritic cells (FF 5–6).
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Thus, the Examiner’s obviousness position is not based on
impermissible hindsight but rather on the teachings of the cited prior art (FF
1–2, 4–14).
Appellant contends “the POSITA would have had to know that the
vast number of other differentiating agents and maturation agents [taught by
Bosch] could be ignored and that the overnight period was sufficient as
taught by Czerniecki” (Appeal Br. 15). Appellant also contends that “based
on [Bosch’s] example in mice, that changing the process to that of
Czemiecki and using human monocyte cells, and reducing the culturing time
and without the need for a midpoint supplemental cytokines and culture
media, would yield success” (id. at 16).
We remain unpersuaded by Appellant’s selective analysis of the
references without considering the teachings of the prior art as a whole.
“We start from the self-evident proposition that mankind, in particular,
inventors, strive to improve that which already exists.” Pro–Mold & Tool
Co., Inc. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996).
In this case, the ordinary artisan interested in improving Czerniecki’s
process had motivation in the prior art, as discussed above, to freeze these
cells (FF 8–9). Thus, the ordinary artisan would have looked to other prior
art references that froze dendritic cells such as Dohnal, Bosch, and Shankara
for guidance on freezing Czerniecki’s dendritic cells. “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant contends “the Examiner disregards Dohnal’s clear emphasis
that their protocol has been optimized and validated. For example, Dohnal
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states they used a previously optimized protocol to generate DC” (Appeal
Br. 17). Appellant cites the Koski Declaration, particularly the portion
stating
DCs produced by our claimed different “maturing process” do
not exhibit the characteristic of JL-12 exhaustion. We
demonstrated . . . that DCs produced by our claimed process
yields DCs that not only produce IL-12 upon receipt of initial
maturation signals, but can produce a “second burst” of IL-12
more than 24 hours later when challenged with another
activating signal in the form of CD40 ligand, which simulates
contact with CD4 T cells.
(Koski Decl. ¶ 52).
We are not persuaded by Appellant’s argument. We note that the
arguments on this issue are not commensurate in scope with claim 1, where
Dohnal teaches generating activated dendritic cells by a process of culturing
monocytes over six days in the presence of GM-CSF and IL-4 (FF 4).
Dohnal then teaches pulsing with antigen, activating the pulsed dendritic
cells with IFN-γ and LPS, and cryopreserving the resulting activated
dendritic cells after 6 hours (FF 4–6).
Dohnal’s 6 day time period encompasses the overnight period of
claim 1. Claim 1 uses open “comprising” language, and even claim 35 uses
“consisting essentially of” language, neither of which excludes periods of
additional culture because neither claim 1 nor claim 35 positively require the
pulsing step to occur without an additional step of further culture in GM-
CSF and IL-4. Additionally, neither claim 1 nor claim 35 requires a “second
burst” of IL-12 discussed by Dr. Koski but instead requires an “effective
amount” of IL-12, where “effective amount” is defined by the Specification
as an amount “sufficient to provide a beneficial effect to a mammal” (Spec.
10). Dohnal expressly teaches, and Dr. Koski concurs, that dendritic cells
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prepared by the method of Dohnal result in an IL-12 burst (FF 5–6; cf. Koski
Decl. ¶ 51). Appellant presents no persuasive evidence that this is not
sufficient to be beneficial and Dohnal at least suggests that it is sufficient for
benefit (FF 5–6).
Thus, the evidence of record shows that Dohnal teaches a method that,
but for the absence of disclosure of 10% DMSO in the cryomedium,
addresses all the other limitations actually recited by claims 1 and 35. Thus,
we agree with the Examiner that the ordinary artisan would have found it
obvious to freeze Czerniecki’s dendritic cells as suggested by Dohnal and
the other cited prior art for the benefits recited in the prior art.
“[A]ppellant’s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.” In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Appellant contends “[w]hile Dohnal indicates that they could freeze
the cells 6 hours after maturation with no impact to IL-12 production and
viability, the skilled artisan would have to ignore Dohnal’s earlier teaching
which includes 20–21 days of proliferation before freezing as indicated
above” (Appeal Br. 20). Appellant also contends “Dohnal cannot be relied
upon for any teaching as to the viability and recovery of the cells produced
after thawing when using Dohnal’s method, because Czerniecki’s methods
differ at least due to the culturing time used” (id. at 20).
We find these arguments unpersuasive for the reasons given above. In
particular, Appellant fails to address the teachings of Dohnal in combination
with the other prior art. Merck, 800 F.2d at 1097. As to reliance on Dohnal
for viability and recovery of cells, “[o]bviousness does not require absolute
predictability of success . . . all that is required is a reasonable expectation
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of success.” Kubin, 561 F.3d at 1360. Dohnal’s teaching of success (FF 5–
6), along with the similar teachings of Bosch and Shankara (FF 11, 14),
provide such a reasonable expectation of success.
Appellant contends that Shankara does not anticipate the claims and
reiterates the arguments that fail to address Shankara in combination with
the other cited prior art (see Appeal Br. 24–25). We find these unpersuasive
for the reasons given above.
As to the element for which Shankara was cited, the use of 10%
DMSO in cryomedia, Appellant contends Shankara
only teaches increasing the amount of DMSO, and certainly not
having less than 10% DMSO. [Shankara] teaches that the most
preferred combination is at least approximately 90% serum and
10% DMSO.” The inventors point out in [Shankara] that at
least 10% (v/v) of an agent [such as DMSO] is added to prevent
crystal formation during freezing. . . . [Shankara] therefore also
fails to teach 5-10% DMSO as claimed in claims 1 and 35 or
the less than 10%, as claimed in claims 36 and 37.
(Appeal Br. 26).
We find this argument unpersuasive because it fails to compare the
limitation of claim 1 with the prior art. Claims 1 and 35 recite a range
“comprising 5–10% DMSO” while claims 36 and 37 recite a range that
“comprises less than 10% DMSO.” As to claims 1 and 35, courts “have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Here, Bosch and Shankara teach a value of 10% DMSO that falls within the
range required by claims 1 and 35. Appellant provides no persuasive
evidence of secondary considerations regarding freezing compared to the
closest prior art of either Dohnal or Czerniecki.
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As to claims 36 and 37, these claims encompass the use of 9.99%
DMSO, a value that is “so mathematically close that the examiner properly
rejected the claims as prima facie obvious.” In re Brandt, 886 F.3d 1171,
1177 (Fed. Cir. 2018). The Examiner has therefore shifted the burden to
Appellant to come forward with rebuttal evidence or argument that
demonstrates “evidence of unexpected results or criticality for the Board to
consider” (Id.). No such evidence or persuasive argument has been
presented.
Claims 6 and 7
Appellant relies upon the same arguments for claim 1 that have
already been found unpersuasive, and we therefore find them unpersuasive
for the reasons given above. We note that Dohnal teaches 80% viability for
thawed activated dendritic cells, satisfying the specific requirements of
claims 6 and 7 (FF 5).
Claim 31
Appellant relies upon the same arguments for claim 1 that have
already been found unpersuasive, and we therefore find them unpersuasive
for the reasons given above. The Examiner explains how the prior art
addresses the specific limitations of claim 31 (see Ans. 20).
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that Czerniecki, Dohnal, Bosch, and Shankara render the claims
obvious.

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B. 35 U.S.C. § 103(a) over Czerniecki, Dohnal, and Salazar
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that Czerniecki,
Dohnal, and Salazar render the claims obvious?
Findings of Fact
15. Salazar teaches
an ex vivo, fast and efficient process to obtain activated
antigen-presenting cells that are useful for therapies against
cancer and immune system-related diseases. At the same time,
it is related to a cellular composition that contributes to
stimulate the activated antigen-presenting cells to induce a
specific immune response against tumors in patients with
cancer or other pathologies involving immune responses.
(Salazar 1:6–11).
16. Salazar teaches
Peripheral blood monocytes were incubated for 24 hours with
GM-CSF and IL-4 and then stimulated with TNF-α, TRIMEL
or TNF-α and TRIMEL for further 24 hours. An ELISA assay
was performed in the culture supernatant to determine the
concentration of secreted IL-10. The secretion of these
cytokines, especially IL-12, indicates that Rapid DCs are able
to induce Th1-type responses, described as very effective
against tumors.
(Salazar 10:7–12).
17. Salazar teaches dendritic cell
cultivation is supplemented with cytokines such as IL-4 and
GM-CSF as already described. Twenty-two hours after
cultivation, the maturation factors are added, which correspond
to tumor lysate alone or in presence of cytokines and/or
differentiation factors, preferably TNF-α as already described.
After further 24 hours of incubation and about 48 hours after
culture start, DCs are harvested, washed and frozen in 1 ml of
freezing medium in cryovials at doses between 1 and 50 x 106
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of DCs, preferably between 20 and 30 x 106 in 500 μl of
freezing medium. The freezing medium consists in 90% de-
supplemented autologous plasma treated at 56ºC for
inactivation of complement for 20 minutes and 10%
dimethylsulfoxide (DMSO).
(Salazar 15:22–31).
Analysis
We adopt the Examiner’s findings of fact and conclusion of law (see
Final Act. 9–11, FF 1–6, 15–17). Appellant relies upon arguments that
address Salazar individually for the claims that have already been found
unpersuasive, and we therefore find them unpersuasive for the reasons given
above. Merck, 800 F.2d at 1097.
Appellant contends Salazar “provides no indication whether the cells
produced by Czerniecki’s method as modified by WO 2009/040413 method
using the 10% DMSO or less upon thawing after cryopreservation could
produce IL-12” (Appeal Br. 33).
We find this argument unpersuasive because Salazar specifically
states regarding the activated dendritic cells that an ELISA assay was
performed to determine secreted IL-10 levels and “secretion of these
cytokines, especially IL-12, indicates that Rapid DCs are able to induce Th1-
type responses, described as very effective against tumors” (FF 16). Dohnal
shows that frozen activated dendritic cells secrete IL-10 (FF 6).
Consequently, the weight of the evidence supports the Examiner’s prima
facie case that there would have been a reasonable expectation of success in
freezing Czerniecki’s cells and having the thawed cells secrete IL-10.
Kubin, 561 F.3d at 1360.
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Claim 4
Appellant relies upon the same arguments for claim 1 that have
already been found unpersuasive, and we therefore find them unpersuasive
for the reasons given above. We note that both Czerniecki and Dohnal teach
the use of LPS as required by claim 4 (FF 1, 4).
Claims 6 and 7
Appellant relies upon the same arguments for claim 1 that have
already been found unpersuasive, and we therefore find them unpersuasive
for the reasons given above. We note that Dohnal teaches 80% viability for
thawed activated dendritic cells, satisfying the specific requirements of
claims 6 and 7 (FF 5).
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that Czerniecki, Dohnal, and Salazar render the claims obvious.

C. 35 U.S.C. § 103(a) over Czerniecki, Dohnal, Bosch, Shankara,
Salazar, and Pogue-Caley
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion Czerniecki,
Dohnal, Bosch, Shankara, Salazar, and Pogue-Caley render the claims
obvious?
Findings of Fact
18. Pogue-Caley teaches “there is a need to develop methods for
manufacturing DC vaccines using PBMCs or monocytes that have been
stored during shipment to a manufacturing facility. The present invention
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satisfies this need and provides additional advantages as well” (Pogue-Caley
¶ 4).
19. Pogue-Caley teaches “an antigen-loaded dendritic cell, wherein
said cell is differentiated in vitro from a monocyte and is capable of
surviving in vitro for at least 24 hours following freezing in the presence of
≥5% DMSO and thawing” (Pogue-Caley ¶ 17).
20. Pogue-Caley teaches “[p]referably, the concentration of DMSO
is 2-20%, more preferably 5-15%, and most preferably approximately 10%”
(Pogue-Caley ¶ 74).
Analysis
We adopt the Examiner’s findings of fact and conclusion of law (see
Final Act. 11–11, FF 1–20). Appellant relies upon the arguments that
address the combination including Pogue-Caley by addressing the references
individually that have already been found unpersuasive, and we therefore
find them unpersuasive for the reasons given above. Merck, 800 F.2d at
1097.
For example, Appellant asserts:
What Pogue-Caley does teach is problematic, because the
teaching is divergent from Czerniecki or what is claimed.
Additionally, Pogue-Caley cannot provide an expectation of
success in freezing cells alone based on its teachings, as it uses
a different process to obtain its cells. Pogue-Caley’s success
therefore is not readily extrapolated to Czerniecki for producing
a similarly successful result in freezing Czerniecki’s cells.
(Appeal Br. 46).
We find this argument unpersuasive because Pogue-Caley is solely
relied upon to show that dendritic cells may successfully be frozen using
DMSO concentrations below 10% (FF 19–20). Shankara and Bosch
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demonstrate successful freezing of dendritic cells with 10% DMSO (FF 9,
11, 14), while Dohnal teaches that frozen cells using a process very similar
to Czerniecki result in cells that produce IL-12 (FF 1, 5). These teachings
provide a reasonable expectation of success. Kubin, 561 F.3d at 1360.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion Czerniecki, Dohnal, Bosch, Shankara, Salazar, and Pogue-Caley
render the claims obvious.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–8,
31–35
103 Czerniecki, Dohnal,
Bosch, Shankara
1, 2, 4–8,
31–35

1, 2, 4–8,
31–35
103 Czerniecki, Dohnal,
Salazar
1, 2, 4–8,
31–35

36, 37 103 Czerniecki, Dohnal,
Bosch, Shankara,
Salazar, Pogue-
Caley
36, 37
Overall
Outcome
1, 2, 4–8,
31–37

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED