Ex Parte Orgel et al

Patent Trial and Appeal Board

Mar 21, 2016

12419689 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/419,689 0410712009
42419 7590 03/21/2016
PAULEY ERICKSON & KOTTIS
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169
FIRST NAMED INVENTOR
Joseph Orgel
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IIT-253 1082
EXAMINER
STEADMAN, DAVID J
ART UNIT PAPER NUMBER
1656
MAILDATE DELIVERY MODE
03/21/2016 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
Ex parte JOSEPH ORGEL and OLGA ANTIPOV A
Appeal2014-000440
Application 12/419,689 1
Technology Center 1600
Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a method of obtaining fibril collagen. The Examiner
rejects claims 1, 3-5, 7, and 16---19 under 35 U.S.C. § 102(b) or, in the
alternative, under 35 U.S.C. § 103(a) and claims 8-11 and 20 under
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Illinois Institute of
Technology (App. Br. at 2).
Appeal2014-000440
Application 12/419,689
STATEMENT OF THE CASE
Claims 1, 3-5, 7-11, and 14--21 of U.S. Patent Application No.
12/419,6892 are on appeal. 3 These claims can be found in the Claims
Appendix of the Appeal Brief. Independent claim 1 is the sole independent
claim, is representative of the claims on appeal, and reads as follows:
1. A method of obtaining fibril collagen, comprising:
providing isolated collagen fibers, wherein the collagen fibers
comprise native type II collagen fibers; and
treating the collagen fibers with an antibody to obtain collagen
fibrils, wherein the antibody comprises an anti-biglycan
antibody.
(Reply. Br. at 15, Claims Appendix).
Appellants request review of the following grounds of rejection:4
A. Claims 1, 3-5, 7, and 16-19 under 35 U.S.C. § 102(b) as
anticipated by, or alternatively under 35 U.S.C. § 103(a) as being
unpatentable over, Kavanagh5 as evidenced by Antipova; 6
2 All references herein to the Specification (or "Spec") are to the published
version of the appealed application (Pub. No. 2010/02554578 Al, published
Oct. 7, 2010).
3 Claims 1, 3-5, 7-11, and 16-19 remain rejected over prior art. Claims 14,
15, and 21 have been indicated to be allowable, but are objected to as being
dependent upon a rejected claim.
4 In the Answer (at 9) the Examiner withdrew all previous rejections and
presented (at 3-9) new grounds for rejection for all appealed claims.
5 Kavanagh et al., Distribution of Biglycan and Decorin in Collateral and
Cruciate Ligaments and Menisci of the Rabbit Knee Joint, 49 J. HISTOCHEM.
CYTOCHEM 877-885 (2001) (hereinafter "Kavanagh").
6 Olga A. Antipova, The Studies of Collagen Type I Macromolecular
Structure by X-ray Fiber Diffraction and Electron Microscopy Techniques
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Application 12/419,689
B. Claims 8 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Kavanagh; and
C. Claims 9-11under35 U.S.C. § 103(a) as being unpatentable
over Kavanagh in view of Sheren. 7
FINDINGS OF FACT
FF 1. Kavanagh discloses a study of the distribution of biglycan
and decorin in ligaments and menisci tissue of rabbits. (Kavanagh at 878,
Figs. 1-25).
FF2. Kavanagh discloses that matrix components, i.e.,
collagens, proteoglycans, and other molecules, are distributed in a specific
pattern within tissue (i.e., rabbit ligaments and menisci) and that, during
development, they are laid down over a protracted period in a precise and
sequential manner. (Kavanagh at 884 (Conclusion)).
FF3. Kavanagh discloses a study identifying biglycan and
decorin distribution by identifying the locations of antibodies thereto
between (collagen) fiber bundles in rabbit tissues. (Kavanagh at 881, Figs.
1-25).
FF4. Kavanagh does not disclose "obtain[ing] collagen fibrils."
FF5. The Specification discloses:
The method of the invention also provides a relatively gentle
chemical mechanism to reduce native connective tissues
composed primarily of type II collagen into a state that can be
(Dec. 2007) (unpublished Ph.D. dissertation, Illinois Institute of
Technology) (hereinafter "Antipova").
7 Sheren et al., Type 11 Collagen of Lamprey, 85B COMPO BIOCHEM.
PHYSIOL. 5-14 (1986) (hereinafter "Sheren").
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Appeal2014-000440
Application 12/419,689
used to then construct alternate tissue structures or other useful
bio-materials for therapeutic and other uses, whilst keeping the
essential building blocks (the fibrils) intact.
(Spec ii 20).
DISCUSSION
The rejections of claims 1, 3-5, 7, and 16-19 under 35 U.S.C.
§ 102(b) or§ 103(a), of claims 8 and 20 under 35 U.S.C. § 103(a), and
of claims 9-11 under 35 U.S.C. § 103(a)
Each of the outstanding rejections of the appealed claims relies on the
disclosure of Kavanagh as the only or primary reference and, thus, all the
rejections stand or fall with this reference. We, therefore, address all
rejections together.
The question presented is whether Kavanagh discloses providing
isolated collagen fibers including native type II collagen fibers, and treating
them with an antibody including an anti-biglycan antibody to obtain fibril
collagen. The Examiner's rejections stand or fall with the disclosure of
Kavanagh and because the reference does not disclose "treating the collagen
fibers with an antibody to obtain collagen fibrils," either expressly or
inherently, the rejections must be reversed. (Reply Br. at 15 (emphasis
added)).
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prim a facie case of unpatentability."
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "[A]nticipation of a
claim under§ 102 can be found only ifthe prior art reference discloses every
element of the claim .... " In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986)
(citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
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Application 12/419,689
730 F.2d 1452, 1457 (Fed. Cir. 1984)). "[A]bsence from the reference of
any claimed element negates anticipation." Kloster Speedsteel AB v.
Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir 1986). Likewise, to establish
prima facie obviousness of a claimed invention, all the claim limitations
must be taught or suggested by the prior art. See In re Royka, 490 F .2d 981,
985 (CCPA 1974).
The Examiner determined that "Kavanagh does not expressly teach
formation of collagen fibrils resulting from contacting biglycan antibody
with Collagen type II" and looked to Antipova as evidence that this is
inherent to the disclosure. Even if this was specifically evidenced by
Antipova, it would not cure Kavanagh's shortcomings.8 (See Ans. at 4).
As Appellants identify, Kavanagh is directed to a study of rabbit
anatomy and development on a molecular scale-it seeks to identify the
composition of rabbit knee ligaments and menisci, in particular, to
characterize the presence and location of proteoglycans, biglycan, and
decorin in this tissue and how it changes over time. (See Reply Br. at 4 and
Kavanagh at 884). Kavanagh does not disclose a process that includes
"obtain[ing] collagen fibrils" as a result of treatment with an antibody, or
otherwise, as claim 1 requires. (Reply Br. at 5-7).
8 Antipova is not evidence that a treatment with biglycan antibodies as
disclosed in Kavanagh will necessarily result in obtaining collagen fibrils.
Antipova establishes only that in if its specific processing parameters are
followed using lamprey notochord and, to some degree, with bovine
articular cartilage, type II fibrils may become disassociated from their fibril
bundles if treated with biglycan antibodies. (Antipova at 136-40). The
Examiner does not provide evidence otherwise.
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Kavanagh discloses a process that results in the production of tissue
labeled with antibodies so that one can characterize the presence and
location of biglycan and decorin between fiber bundles of that tissue, which
we see evidenced in the photographs in Kavanagh showing ligaments and
menisci labeled by biglycan antibody binding and decorin antibody binding.
(Kavanagh at Figs. 1-25; see also FF 1--4). This is not the same as obtaining
collagen fibrils from such a process as required by claim 1, and for this
reason the reference fails to disclose each element of the appealed claims
and the rejections thereof must be reversed. 9
For these reasons, the rejections of claims 1, 3-5, 7-11, and 16-20
under 35 U.S.C. §§ 102(a) and/or 103(a) are each REVERSED.
9 In rejecting appealed claims 9-11 under§ 103(a) over Kavanagh and
Sheren, the Examiner determined that Sheren disclosed homogenizing a
tissue per claim 9, obtaining collagen type II from lamprey notochord per
claim 10, and denaturing per claim 11. Even if the Examiner's
determinations are correct, Sheren does not cure the deficiencies of
Kavanagh.
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Application 12/419,689
SUMMARY
The rejection of claims 1, 3-5, 7, and 16-19 under 35 U.S.C. §102(b)
as anticipated by, or alternatively under 35 U.S.C. § 103(a) as being
unpatentable over, Kavanagh as evidenced by Antipova is REVERSED.
The rejection of claims 8 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Kavanagh is REVERSED.
The rejection of claims 9-11 under 35 U.S.C. § 103(a) as being
unpatentable over Kavanagh in view of Sheren is REVERSED.
REVERSED
7