Ex Parte Buchman

Board of Patent Appeals and Interferences

Nov 19, 2010

11496710 (B.P.A.I. Nov. 19, 2010)

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.
11/496,710 08/01/2006 Alan L. Buchman 067539-0019 4791
20277 7590 11/22/2010
MCDERMOTT WILL & EMERY LLP
600 13TH STREET, N.W.
WASHINGTON, DC 20005-3096
EXAMINER
VAKILI, ZOHREH
ART UNIT PAPER NUMBER
1614
MAIL DATE DELIVERY MODE
11/22/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALAN L. BUCHMAN
____________

Appeal 2010-008348
Application 11/496,710
Technology Center 1600
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1-3, 6, and 21-38,
the only claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-008348
Application 11/496,710

2
STATEMENT OF THE CASE
The claims are directed to a method for decreasing the risk of venous
thrombosis in a patient. Claims 1, 2, and 25 are representative and are
reproduced in the “Claims Appendix” of Appellant’s Brief (App. Br. 12-15).
Claims 1-3, 6, and 21-382 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Buchman.3
We affirm.
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s finding that Buchman teaches the claimed invention?
FINDINGS OF FACT
FF 1. “Central venous catheter thrombosis is a frequent complication in
patients who require long-term total parenteral nutrition (TPN)” (Spec. 2: ¶
[0007]; see also Buchman, col. 1, ll. 57-58 (“Other complications that may
develop [from total parenteral nutrition] include . . . thrombosis of the vena
cava”) and Ans. 3-4).
FF 2. Buchman teaches the addition of choline, as a supplement, to
nutrient solutions used in total parenteral nutrition (Ans. 3; Buchman,
Abstract).

2 We note that the Examiner’s statement of rejection includes canceled
claims 4 and 5 (Ans. 3). In addition, we recognize that the Examiner’s
statement of the rejection fails to include claim 21 (see id.). Nevertheless,
the Examiner later identifies claim 21 as included in the rejection of record
(Ans. 5 (“[c]onsequently, the reference anticipates the claimed invention
defined in claims 1-6 and 21-38”). In addition, Appellant recognizes that
claim 21 is part of the rejection to be reviewed in this appeal (App. Br. 5).
Accordingly, we find that the Examiner’s omission of claim 21 in the
statement of the rejection to be a harmless typographical error.
3 Buchman et al., US 5,567,736, issued on Oct. 22, 1996.
Appeal 2010-008348
Application 11/496,710

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FF 3. Buchman teaches that the “[a]ddition of choline to the TPN solution
maintains plasma-free choline levels within normal limits” (id.; see also
Buchman, col. 2, ll. 36-40 (“As a feature of the present invention, an
improved nutrient solution is provided by adding sufficient choline chloride
or other salt of choline to the TPN patient’s normal nutrient solution”)).
FF 4. Buchman teaches “[a]s a feature of the present invention, choline
chloride or other choline salt is added to the nutrient solution in an amount
sufficient to provide from 0.25 to about 8 grams of choline per liter of
solution” (Buchman col. 2, ll. 23-26).
FF 5. Appellant discloses “[a]s a feature of the present invention, a
therapeutically effective amount of choline chloride or other choline salt is
infused parenterally or added to a nutrient solution in an amount sufficient to
provide from 0.25 to about 8 grams of choline per liter of solution” (Spec. 4-
5: ¶ [0010]).
FF 6. Buchman teaches that “patients receiving long term parenteral
nutrition tend to develop choline deficiency as evidenced by low plasma
choline levels” (Buchman, col. 1, ll. 62-65; see also Ans. 3).
ANALYSIS
Appellant separately groups and provides separate arguments for two
groups of claims: I. claims 1 and 34-38 and II. claims 2, 3, 6, and 21-33. We
recognize, however, that while not separately grouped, Appellant provides
separate arguments for claims 25-30. Accordingly, we have reviewed the
merits of this appeal as it relates to the following three groups: I. claims 1
and 34-38; II. claims 2, 3, 6, 21-24, and 31-33; and III. 25-30. Claims 1, 2,
and 25 are representative. 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2010-008348
Application 11/496,710

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Claim 1:
Buchman teaches that patients who require long-term total parenteral
nutrition (TPN) are at risk of developing thrombosis of the vena cava (FF 1).
Buchman parenterally administers a composition comprising choline
chloride or other choline salt in an amount sufficient to provide from 0.25 to
about 8 grams of choline per liter of solution to patients who require long-
term TPN (FF 1-4). In doing so, Buchman inherently reduces the risk of
thrombosis in these patients. In this regard, we recognize that Appellant’s
claim 1 requires the administration of a therapeutically effective amount
choline or choline salt, which as defined by Appellant’s Specification is the
same amount taught by Buchman (Cf. 4 and 5). Accordingly,
notwithstanding Appellant’s contentions to the contrary, including the
Buchman Declaration and other evidentiary documents cited in Appellant’s
Brief, (App. Br. 6-10), we find no error in the Examiner’s prima facie case
of anticipation. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
1376 (Fed. Cir. 2005), (claims directed to preventing sunburn damage to
exposed skin surfaces were anticipated by the prior art, even though the prior
art did “not disclose any benefit directed to skin sunburn, or any of the other
specific skin disorders, as claimed”).

Claim 2:
Having found no error in the Examiner’s prima facie case of
anticipation with regard to claim 1, we are not persuaded by Appellant’s
contention regarding claim 2 (see App. Br. 10-11).

Appeal 2010-008348
Application 11/496,710

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Claim 25:
Claim 25 depends from and further limits claim 1 to require that the
choline concentration of a patient compared to the normal level is
determined when identifying a patient at risk. Appellant contends that the
Examiner failed to address the limitations of claim 25. We disagree. The
Examiner found that Buchman teaches that patients who require long-term
total parenteral nutrition (TPN) are at risk of developing thrombosis of the
vena cava (FF 1) and that “patients receiving long term parenteral nutrition
tend to develop choline deficiency as evidenced by low plasma choline
levels” (FF 6). Thus, Buchman does determine the choline concentration of
TPN patients, who are at risk of developing venous thrombosis, compares
them to normal levels and finds TPN patients’ choline levels deficient.

CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner’s finding that Buchman teaches the claimed invention. The
rejection of claims 1, 2, and 25 under 35 U.S.C. § 102(b) as being
anticipated by Buchman is affirmed. Claims 34-38 fall together with claim
1. Claims 3, 6, 21-24, and 31-33 fall together with claim 2. Claims 26-30
fall together with claim 25.

Appeal 2010-008348
Application 11/496,710

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TIME PERIOD FOR RESPONSE
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

alw

MCDERMOTT WILL & EMERY LLP
600 13TH STREET, N.W.
WASHINGTON DC 20005-3096