Ex Parte Damien

Board of Patent Appeals and Interferences

May 16, 2012

10915995 (B.P.A.I. May. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHRISTOPHER J. DAMIEN
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Appeal 2010-009587
Application 10/915,995
Technology Center 1700
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-23, 30-31 and
33. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A method of making an osteogenic composition, the method
comprising:

combining purified collagen, an osteoinductive substance, and water
containing dilute acid in a dispersing assembly comprising two vessels and a
reduced diameter portion, said vessels being in mutual fluid communication
by way of said reduced diameter portion;
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Application 10/915,995

2
forcing said combination from vessel to vessel through said reduced
diameter portion a predetermined number of times sufficient to disperse said
collagen and osteoinductive substance in said water, such that said collagen
is at least partially hydrated and a dispersion is obtained; and

allowing said dispersion to stand for a period of time of at least about
30 minutes.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Hardman 3,700,215 Oct. 24, 1972
Chu 4,743,229 May 10, 1988
Jefferies 6,311,690 B1 Nov. 06, 2001
Benedict WO 98/35643 Aug. 20, 1998

Appellant’s claimed invention is directed to a method of making an
osteogenic composition which entails mixing purified collagen, an
osteoinductive substance, and water containing a dilute acid. The
composition is mixed in a dispersing assembly comprising two vessels that
are in fluid communication via a passageway having a reduced diameter.
The composition is forced from one vessel to the other through the passage
having the reduced diameter.
Appealed claims 1-23, 30, 31 and 33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Benedict in view of Harman and Chu.
The appealed claims also stand rejected under 35 U.S.C. § 103(a) over the
stated combination of references further in view of Jefferies.
Appellant does not present separate, substantive arguments for any
particular claim on appeal. Accordingly, all the appealed claims stand or fall
together with claim 1.
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We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for the reasons set
forth in the Answer, which we incorporate herein, and we add the following
for emphasis only.
There is no dispute that Benedict, like Appellant, discloses a method
of making an osteogenic composition comprising mixing the presently
claimed purified collagen, an osteoinductive substance and water containing
the dilute acid. As acknowledged by the Examiner, although Benedict
teaches that the components may be mixed in one or more containers, the
reference does not disclose the claimed method of mixing. However,
Hardman establishes that it was known in the art to mix liquid or semi-liquid
materials by pumping the material back and forth between two syringes
through a reduced diameter portion connecting the syringes. Accordingly,
we concur with the Examiner that it would have been obvious for one of
ordinary skill in the art to employ the method of Hardman to mix the
osteogenic material of Benedict. We also agree with the Examiner that the
conclusion of obviousness is underscored by Chu’s disclosure of using two
syringes connected by a narrow passageway to mix an osteogenic
composition.
We are not persuaded by the arguments presented in Appellant’s Brief
but are in complete agreement with the responses thereto set forth by the
Examiner at pages 11 through 14 of the Answer. We do take note that
Appellant has not rebutted the Examiner’s position that the argued back and
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Application 10/915,995

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forth mixing between the two vessels is not required by claim 1 on appeal,
with which all the appealed claims stand or fall. The Examiner has
presented the reasonable position that “when the material is ‘forced’ ‘from
vessel to vessel’ one time (i.e. the predetermined number of times is one and
the material does not return to the first vessel/syringe)” (Ans. 13, second
para.), as disclosed in Chu, the limitation of claim 1 is met. Appellant has
not directed our attention to any credible evidence that the two-syringe, one-
passage mixing method described by Chu does not result in the partial
hydration and dispersion of collagen required by claim 1.
As a final point, we note that Appellant bases no argument upon
objective evidence of non-obviousness, such as unexpected results.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(iv).
AFFIRMED

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