Ex Parte Schwartz et al

Patent Trial and Appeal Board

Aug 8, 2016

13163977 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/163,977 06/20/2011
65650 7590 08/10/2016
MARGERJOHNSON/PARC
888 SW 5th A venue, Suite 1050
PORTLAND, OR 97204
FIRST NAMED INVENTOR
David Eric Schwartz
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.
20081940-US-DIV-9841-0234 1922
EXAMINER
ROGERS, JAMES L
ART UNIT PAPER NUMBER
1644
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
docketing@techlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ERIC SCHWARTZ, SCOTT A. ELROD,
RICHARD H. BRUCE, and DANIELL. LARNER
Appeal2014-008650
Application 13/163,977
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
RYAN H. FLAX, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL 1
This appeal under 35 U.S.C. § 134(a) involves claims 1, 3, and 4
(App. Br. 2-3). Examiner entered rejections under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Appellants disclose a "system for thrombolysis using magnetic forces
to affect a thrombus, commonly known as a blood clot" (Spec. i-f 17). Claim
1 Appellants identify the Real Party in Interest as "Palo Alto Research
Center Incorporated" (App. Br. 2).
Appeal2014-008650
Application 13/163,977
1 is representative and reproduced in the Claims Appendix of Appellants'
Brief.
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Brown,2 Volkonsky,3 Stetter,4 and Lanza. 5
Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Brown, Volkonsky, Stetter, Lanza,
Martel, 6 and Pilgrimm. 7
Claims 1 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Brown, Volkonsky, Stetter, Lanza, and
Chen. 8
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Brown "relates to medical devices, and more particularly to a new
method for inducing vibrations in such devices while they are disposed
within a living body" (Brown i-f l; see generally Final Rej. 2).
FF 2. Brown discloses "the introduction of any one of a number of devices
known in the art including, for example, [ferrous beads], into a patient's
body and positioning the device such that a predetermined portion of the
2 Brown et al., US 2003/0105382 Al, published June 5, 2003.
3 Volkonsky et al., US 6,482,436 Bl, issued Nov. 19, 2002.
4 Stetter et al., DE102005030986 (Al), published Jan. 11, 2007.
5 Lanza et al., US 2003/0086867 Al, published May 8, 2003.
6 Martel et al., US 2010/0168553 Al, published July 1, 2010.
7 Pilgrimm, US 5,916,539, issued June 29, 1999.
8 Haitao Chen, et al., Capture of magnetic carriers within large arteries
using external magnetic fields, 16 Journal of Drug Targeting 262---68 (2008).
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Appeal2014-008650
Application 13/163,977
device lies adjacent to the target site" (Brown iii! 9 and 25; see id. if 19
(Brown discloses "placement of an object [] to be vibrated in proximity to
the target site [] within the patient's body"); Final Rej. 2).
FF 3. Brown discloses that a "magnetic field ... will magnetically attract
the ferrous bead and thus induce vibrations therein that will impact the target
tissue and whose frequency, magnitude and/or direction will likewise
oscillate according to the function generated by the signal generator"
(Brown if 25; Final Rej. 2).
FF 4. Brown discloses that the "mechanical vibrating motion or through
waves generated by the intrabody device" will "break up thrombi or other
masses" (Brown if 13; see id. (the mechanical vibration can be used "to
enhance the action of lysing agents ... by speeding up drug delivery and/or
penetration and absorption into tissue [to] ... break[] up clots and emboli
which cause ischemic stroke, myocardial infarction, deep vein thrombosis,
pulmonary emboli, and other intravascular clots"); Final Rej. 2).
FF 5. Volkonsky "relates to particles capable of carrying biologically
active compounds, which provide for targeted magnetic transport of the
particles and the maintenance of them in a predetermined place for localized
diagnostic or therapeutic treatment of disease" (Volkonsky 1: 19-23; id. at
3: 23-29; see generally Final Rej. 3).
FF 6. Volkonsky discloses the injection of a ferromagnetic particle into a
body site of a patient
by inserting [a] delivery means into an artery to within a short
distance from a body site to be treated and at a branch or
branches (preferably the most immediate) to a network of
arteries carrying blood to the site. The carrier is injected
through the delivery means into the blood vessel. Just prior to
injection, a magnetic field is established exterior to the body
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Application 13/163,977
and adjacent to the site of sutlicient field strength to guide a
substantial quantity of the injected carrier to, and retain the
substantial quantity of the carrier at, the site. Preferably, the
magnetic field is of sufficient strength to draw the carrier into
the soft tissue at the site adjacent to the network of vessels, thus
avoiding substantial embolization of any of the larger vessels
by the carrier particles.
(Volkonsky 3: 29--42 and 24: Example 13; Final Rej. 3.)
FF 7. Stetter
relates to the use of [] superimposed alternating magnetic fields
in conjunction with magnetic beads, preferably ferro-magnetic
beads[ for] the destruction of thrombosis, wherein coated
thrombolytic enzymes nanobeads can be used to bring the
thrombolic enzymes in contact with the thrombus and the beads
then move in a rotating motion, and thus destroy the thrombus.
(Stetter i-f 21; see generally id. i-f 1; Final Rej. 3.)
FF 8. Lanza relates "to nanoparticles which home to specific blood clots
and which carry to these targets substances useful in diagnosis or treatment.
More specifically, the invention concerns nanoparticles to which ligands
specific for thromboses are directly bound and which further contain
imaging agents and/or bioactive materials" (Lanza i-f 2; see generally Final
Rej. 3).
FF 9. Lanza discloses that "[p ]articularly preferred" ligands for targeting
thrombi "are targeting agents that bind to fibrin, as fibrin is a particularly
characteristic element included in blood clots[, wherein] [a]ntifibrin
antibodies are particularly preferred, including fragments thereof' (Lanza
i-f 24; see id. i-f 12 (Lanza' s composition is "intended to target blood clots or
thromboses, especially in vivo"); Final Rej. 3).
FF 10. Examiner finds that the combination of Brown, Volkonsky, Stetter
and Lanza fails to suggest "a magnetic resonance imaging (MRI) device [or]
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Application 13/163,977
that the plurality of magnetic particles includes superparamagnetic
particles," and relies on Martel and Pilgrimm to make up for this deficiency
in the combination of Brown, Volkonsky, Stetter, and Lanza (Final Rej. 4--
5).
FF 11. Examiner finds that the combination of Brown, Volkonsky, Stetter
and Lanza fails to suggest "a thrombolytic agent to dissolve at least a portion
of the thrombus" and relies on Chen to make up for this deficiency in the
combination of Brown, Volkonsky, Stetter, and Lanza (Final Rej. 6).
ANALYSIS
The rejection over the combination of Brown, Volkonsky, Stetter, and Lanza:
Based on the combination of Brown, Volkonsky, Stetter, and Lanza,
Examiner concludes that, at the time Appellants' invention was made, it
would have been prima facie obvious to utilize Lanza's antifibrin antibodies
as the targeting agent, to target Stetter's ferro-magnetic beads directly to the
site of a thrombosis and utilize the magnetic field methodology suggested by
the combination of Brown, Volkonsky, and Stetter to affect a thrombus by
one of moving the thrombus, agitating the thrombus, or moving and
agitating the thrombus, so as to destroy the thromobus (see Final Rej. 3; FF
1-9).
Notwithstanding Appellants' contention to the contrary, the
combination of Brown, Volkonsky, Stetter, and Lanza makes obvious
Appellants' claimed invention (FF 1-9). Therefore, we are not persuaded by
Appellants' contentions regarding In re Keller, 642 F.2d 413, 425 (CCPA
1981) (App. Br. 4--5). In addition, for the following reasons, we are not
persuaded by Appellants' contentions regarding the disclosure of each
reference, relied upon by Examiner, when considered in isolation.
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Application 13/163,977
Brown discloses the use of ferrous beads (i.e., magnetic particles, as
recited by the claims) and a "magnetic field" to, inter alia, "induce
vibrations therein that will impact the target tissue and whose frequency,
magnitude and/or direction will likewise oscillate according to the function
generated by the signal generator" (FF 2-3). Therefore, we are not
persuaded by Appellants' intimation that Brown's disclosure is limited "to
an 'intrabody device' such as guide wires and catheters that can be vibrated
by application of a magnetic field over a portion of the device that is inserted
into the body" or that "Brown teaches a directly connected device, not one
relying upon [magnetic] fields" (App. Br. 5; cf Ans. 4).
Volkonsky discloses the use of ferromagnetic particles for the
therapeutic treatment of disease (FF 5---6). Therefore, we are not persuaded
by Appellants' intimation that Volkonsky is limited to the use of "magnetic
particles to carry biologically active substances to a tumor site" (App. Br. 5
(emphasis added); cf Ans. 4--5).
Stetter
relates to the use of [] superimposed alternating magnetic fields
in conjunction with magnetic beads, preferably ferro-magnetic
beads[ for] the destruction of thrombosis, wherein coated
thrombolytic enzymes nanobeads can be used to bring the
thrombolic enzymes in contact with the thrombus and the beads
then move in a rotating motion, and thus destroy the thrombus.
(FF 7). Therefore, we are not persuaded by Appellants' intimation that
Stetter is limited to "the use of thrombolytic enzymes coated on nano beads
that are used to transport the enzymes to the thrombus" (App. Br. 5; cf Ans.
5). For the foregoing reasons we are not persuaded by Appellants'
contention that the combination of Brown, Volkonsky, and Stetter "are used
to deliver therapeutic agents" and not to "deliver[] ferromagnetic particles"
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Application 13/163,977
(Reply Br. 2). In addition, Appellants' contention fails to appreciate that
Lanza discloses the use of anti-fibrin antibodies, as ligands on nanoparticles,
to direct, or "home," the nanoparticles to a site of thrombosis (FF 8-9).
Therefore, we are not persuaded by Appellants' intimation that Lanza
"teaches [only] non-magnetic emulsions used to carry thrombolytic agents to
a thrombus" (App. Br. 5; Reply Br. 2; cf Ans. 5).
In sum, we are not persuaded by Appellants' contention that the
combination of Brown, Volkonsky, Stetter, and Lanza fails to make obvious
Appellants' claimed invention (see App. Br. 5; Reply Br. 2; cf FF 1-9).
The rejection over the combination of Brown, Volkonsky, Stetter, Lanza,
Martel, and Pilgrimm:
Based on the combination of Brown, Volkonsky, Stetter, Lanza,
Martel, and Pilgrimm, Examiner concludes that, at the time Appellants'
invention was made, it would have been prima facie obvious "to substitute []
superparamagnetic particles for the ferromagnetic particles" suggested by
the combination of Brown, Volkonsky, Stetter, and Lanza for use with the
MRI device suggested by Martel (Final Rej. 5; FF 1-10).
Having found no deficiency in the combination of Brown, Volkonsky,
Stetter, and Lanza, we are not persuaded by Appellants' contention that
Martel and Pilgrimm fail to make up for Appellants' alleged deficiency in
the combination of Brown, Volkonsky, Stetter, and Lanza (App. Br. 6).
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Application 13/163,977
The rejection over the combination ofBrown, Volkonsky, Stetter, Lanza, and
Chen:
Based on the combination of Brown, Volkonsky, Stetter, Lanza, and
Chen, Examiner concludes that, at the time Appellants' invention was made,
it would have been prima facie obvious "to substitute a thrombolytic agent
such as t-PA as [disclosed] by Chen for one of the lysing agents" suggested
by the combination of Brown, Volkonsky, Stetter, and Lanza (Final Rej. 6;
see FF 1-9 and 11 ).
Having found no deficiency in the combination of Brown, Volkonsky,
Stetter, and Lanza, we are not persuaded by Appellants' contention that
Chen fails to make up for Appellants' alleged deficiency in the combination
of Brown, Volkonsky, Stetter, and Lanza (App. Br. 6-7).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brown, Volkonsky, Stetter, and Lanza is affirmed.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brown, Volkonsky, Stetter, Lanza, Martel, and
Pilgrimm is affirmed. Claim 3 is not separately argued and falls with claim
1.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brown, Volkonsky, Stetter, Lanza, and Chen is
affirmed. Claim 4 is not separately argued and falls with claim 1.
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Application 13/163,977
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
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