10939687 (B.P.A.I. Jun. 11, 2009)

Ex Parte Hursey

Board of Patent Appeals and InterferencesJun 11, 2009

10939687 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte FRANCIS X. HURSEY ____________ Appeal 2009-003346 Application 10/939,687 Technology Center 1600 ____________ Decided1: June 11, 2009 ____________ Before DONALD E. ADAMS, LORA M. GREEN, and FRANCISCO C. PRATS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1, 2, 4, 5, and 7-11, 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, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-003346 Application 10/939,687 2 STATEMENT OF THE CASE The claims are directed to a composition for promoting the formation of clots in blood (claims 1, 2, 4, 5, 7, and 8); method of forming a blood- clotting composition (claims 9 and 10); and method of clotting blood flowing from a wound (claim 11). Claim 1 is illustrative: 1. A composition for promoting the formation of clots in blood, said composition comprising: a binder; a zeolite disposed in said binder, said zeolite having an adjusted calcium content via the addition of a calcium-containing compound to said zeolite, said calcium content being between about 75 wt.% to about 83 wt.%, said composition being operable to reduce a heat of hydration when exposed to blood. The Examiner relies on the following prior art references to show unpatentability: Hursey et al. (Hursey I) US 4,822,349 Apr. 18, 1989 Hursey et al. (Hursey II) WO 02/30479 A1 Apr. 18, 2002 Hasan B. Alam et al., Comparative Analysis of Hemostatic Agents in a Swine Model of Lethal Groin Injury, 54(6) J. Trauma. 1077-1082 (2003) The rejection presented by the Examiner is as follows: Claims 1, 2, 4, 5, and 7-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Hursey I, Hursey II, and Alam. We reverse. ISSUE Does the evidence on this record support a conclusion that a composition, or method of preparing or utilizing a composition, comprising, inter alia, a zeolite that has a calcium content of about 75 wt. % to about 83 Appeal 2009-003346 Application 10/939,687 3 wt. %, wherein the heat of hydration is reduced, would have been obvious to a person of ordinary skill in this art at the time the invention was made? FINDINGS OF FACT FF 1. Appellant’s Specification discloses that “the present invention includes an adjusted calcium content such that the calcium content is up to about 83 wt. % calcium and preferably about 75 wt. % to about 83 wt. % calcium” (Spec. ¶ 0017). FF 2. “Increasing the calcium content to such a level substantially improves and enhances blood coagulation upon application of the blood clotting composition to blood” (id.). FF 3. “Because of the presence of the calcium in the zeolite material in the amount as indicated above, the zeolite material generates less heat upon being fully saturated with water in the application of the zeolite to blood” (Spec. ¶ 0019). In particular, heat generated by the application of the zeolite having up to about 83 wt. % calcium is inversely proportional to the total amount of calcium in the zeolite. A zeolite having about 80 wt. % calcium will generate less heat (when applied to blood) than the same zeolite not having supplemental calcium. (Id.) FF 4. There is no dispute on this record that Hursey II teaches a blood coagulation accelerator that comprises a zeolite in combination with an inorganic oxide (e.g., calcium oxide) (Ans. 4; see also App. Br. 4). FF 5. There is no dispute on this record that Hursey I teaches a zeolite molecular sieve material provided in a clay-binder (Ans. 5; see also App. Br. 4). Appeal 2009-003346 Application 10/939,687 4 FF 6. Hursey I teaches the use of a zeolite material for “the treatment of open wounds” (Hursey I, col. 2, ll. 31). In this regard, Hursey I teaches that [a] distinct advantage to the use of zeolite for this purpose can be layed to the heat generated as a result of the exothermic action when the zeolite material absorbs moisture from the blood. The heat generated is not excessive, but is sufficient to achieve cauterizing of the wound in addition to the improved coagulation effect had on the blood itself by absorption of the water in the blood. (Hursey I, col. 2, ll. 32-40.) FF 7. There is no dispute on this record that Alam teaches a granular zeolite (Ans. 5; see also App. Br. 5) PRINCIPLES OF LAW In proceedings before the Patent and Trademark Office, the Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art. In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). “From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing”. In re Papesch, 315 F.2d 381, 391 (CCPA 1963). Nevertheless, obviousness requires a suggestion of all the elements in a claim (CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)) and “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). Appeal 2009-003346 Application 10/939,687 5 ANALYSIS Each claim on appeal requires, inter alia, a zeolite that has a calcium content of about 75 wt. % to about 83 wt. % (see, e.g., claim 1). “Increasing the calcium content to such a level substantially improves and enhances blood coagulation upon application of the blood clotting composition to blood” (FF 2). In addition, the presence of this amount of calcium in the zeolite material results in the zeolite material generating “less heat upon being fully saturated with water in the application of the zeolite to blood” (FF 3). Each claim on appeal requires, inter alia, that the heat of hydration is reduced (see, e.g., claim 1). Reducing the heat of hydration appears to be in contrast to Hurley I’s express teaching of an advantage in the use of a zeolite material that exhibits an exothermic action upon the absorption of moisture from the blood (FF 6; see also App. Br. 4 (“The generation of heat from the exothermic reaction of the zeolite material on the moist blood cauterizes the wound, which is touted as being advantageous”)). The Examiner does not dispute that none of the references relied upon teaches a zeolite that has a calcium content of about 75 wt. % to about 83 wt.%. Instead, the Examiner concludes that “the amount of calcium content amounting to about 75-83 wt. % of the zeolite, an artisan would have been expected to determine the optimum amounts of calcium content to be utilized” (Ans. 5-6). In this regard, the Examiner reasons that routine experimentation of Hursey II’s invention would have lead an artisan to the “instant amount of calcium content being utilized . . . in order to develop a composition that would have been effective in [the] formulation of clots in blood” (id. at 6). Appeal 2009-003346 Application 10/939,687 6 Further, the Examiner reasons that after a person of ordinary skill in the art arrives at a calcium content in the range of about 75-83 wt. % of zeolite – a reduced heat of hydration would be inherent in the resulting composition – because “[p]roducts of identical chemical composition cannot have mutually exclusive properties” (Ans. 7). We are not persuaded. While the Examiner is correct in asserting that “[a] chemical composition and its properties are inseparable” (Ans. 7; see Papesch, 315 F.2d at 391); the Examiner fails to establish on this record that the claimed compound and methods were known. Instead, the Examiner concludes that the claimed compound and methods would have been obvious to those of ordinary skill in the art at the time the invention was made. In order to support such a conclusion the Examiner must articulate “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, 550 U.S. at 418. The Examiner has failed to articulate such a reason on this record. More particularly, the Examiner has failed to explain why a person of ordinary skill in the art would optimize the calcium content to a weight percentage that reduces the heat of hydration when the evidence the Examiner relies upon expressly teaches that it is advantageous to utilize a zeolite that generates heat as it absorbs moisture (FF 6). Simply stated the evidence relied upon by the Examiner directs one of ordinary skill in this art away from Appellant’s claimed invention. Appeal 2009-003346 Application 10/939,687 7 CONCLUSION OF LAW The evidence on this record fails to support a conclusion that a composition, or method of preparing or utilizing a composition, comprising, inter alia, a zeolite that has a calcium content of about 75 wt. % to about 83 wt. %, wherein the heat of hydration is reduced, would have been obvious to a person of ordinary skill in this art at the time the invention was made. The rejection of claims 1, 2, 4, 5, and 7-11 under 35 U.S.C. § 103(a) as unpatentable over the combination of Hursey I, Hursey II, and Alam is reversed. REVERSED lp KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE CA 92614