Ex Parte Sengun et al

Patent Trial and Appeal Board

Jul 20, 2016

12894271 (P.T.A.B. Jul. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/894,271 09/30/2010
27777 7590 07/22/2016
JOSEPH F SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Mehmet Ziya Sengun
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.
MIT5137USNP 5692
EXAMINER
MARTIN, PAUL C
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
07/22/2016 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEHMET ZIY A SENGUN, WILLIAM PARRISH,
BROOKS J. STORY, KRISTIAN DIMATTEO,
GREGORY R. WHITTAKER, and DOUGLAS ALLEN FIFOLT
Appeal2014-005159
Application 12/894,271 1
Technology Center 1600
Before ERIC B. GRIMES, RYAN H. FLAX, and TIMOTHY G. MAJORS
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 extracting platelet rich plasma (PRP) from a
sample of whole blood in a vial. Claims 1 and 3-11 are on appeal as
rejected under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 The Real Party in Interest is DePuy Mitek, LLC. Br. 2.
Appeal2014-005159
Application 12/894,271
STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claim 1 is the sole independent claim and reads as follows:
1. A method for procuring platelet rich plasma (PRP) from a
sample of whole blood in a vial, the method comprising the steps
of:
separating the whole blood into layers through centrifugation
with an upper layer containing platelet poor plasma (PPP) and a
PRP layer disposed below the upper layer and containing PRP;
adjusting an end point of a first range of motion of an extractor
relative to a position of the PRP layer by setting the position of a
stop against which an abutment associated with the extractor
engages at the end point, the position of the stop being
determined by aligning with the PRP layer an indicator
associated with the stop;
moving the extractor through the first range of motion through
the vial, PPP passing out from the upper layer through the
extractor; and
after the extractor reaches the end point of the first range of
motion, extracting the PRP through the extractor and collecting
the PRP.
Br. 6 (Claims App'x).
The following rejections are on appeal:
Claims 1, 3, 4, and 8-10 rejected under 35 U.S.C. § 103(a) over
Jorgensen2 and Moran. 3
2 U.S. Patent No. US 7,452,344 B2 to Jorgensen et al. (issued Nov. 18,
2008) (hereinafter "Jorgensen").
3 U.S. Patent No. 4,874,385 to Moran et al. (issued Oct. 17, 1989)
(hereinafter "Moran").
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Appeal2014-005159
Application 12/894,271
Claims 1 and 3-10 rejected under 35 U.S.C. § 103(a) over Jorgensen,
Moran, and Riuli. 4
Claims 1, 3, 4, and 8-11 rejected under 35 U.S.C. § 103(a) over
Jorgensen, Moran, and Britton. 5
DISCUSSION
The Examiner based each of the three rejections under 35 U.S.C.
§ 103(a) on a determination that Jorgensen and Moran combined rendered
obvious the following claim limitation:
adjusting an end point of a first range of motion of an extractor
relative to a position of the PRP layer by setting the position of a
stop against which an abutment associated with the extractor
engages at the end point, the position of the stop being
determined by aligning with the PRP layer an indicator
associated with the stop.
See Non-Final Action mailed July 12, 2013, at 4--13. We disagree that this
limitation would have been obvious in view of the cited prior art
combination.
Appellants contend the lockable stop device disclosed by Moran
would only be used for setting a pre-determined amount to be dispensed
from its associated syringe. Br. 4. This is indeed the only use disclosed by
Moran. See Moran col. 1, 11. 4--8; col. 3, 11. 39-43; col. 6, 11. 1-10.
Appellants also contend such a plunger-stopping device could only be
properly set by first performing a "dry run," e.g., a pre-use calibration step,
4 U.S. Patent No. 4,713,060 to Riuli (issued Dec. 15, 1987) (hereinafter
"Riuli").
5 U.S. Patent Application Pub. No. US 2003/0007957 Al (published Jan. 9,
2003) (hereinafter "Britton").
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Application 12/894,271
before using the device combined with that of Jorgensen to extract fluid.
Br. 4.
In response to Appellants' arguments the Examiner argues one could
simply "visually determine" how to adjust the plunger-stop of Moran to stop
extracting PPP based on where the PPP and PRP layers separate. Ans. 4--5.
The Examiner argues this would not require a "dry run." Id. 6. Just how a
skilled artisan would go about calibrating the stop-point on the plunger with
respect to an associated vial of separated whole blood and the separation
point between PPP and PRP layers is not explained by the Examiner.
Indicating it could be done "visually" is not enough. Id. 4--5.
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993). "'It is impermissible within the framework of section 103 to
pick and choose from any one reference only so much of it as will support a
given position, to the exclusion of other parts necessary to the full
appreciation of what such reference fairly suggests to one of ordinary skill in
the art."' In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (quoting In re
Wesslau, 353 F.2d 238, 241 (CCPA 1965)). Here, it appears the Examiner
has focused on Moran's locking component without considering how it
would actually be used in combination with a blood extractor of Jorgensen,
in the real world. The mere possibility that one might adapt the Moran
component to use with Jorgensen's device is not sufficient for a prima facie
case for obviousness and, absent the impermissible use of hindsight using
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Application 12/894,271
the current application as a roadmap, we are not presented with convincing
evidence of how one would properly combine the references to achieve the
invention.
For the above reasons, the rejections are reversed.
SUMMARY
The rejection of claims 1, 3, 4, and 8-10 under 35 U.S.C. § 103(a)
over Jorgensen and Moran is reversed.
The rejection of claims 1 and 3-10 under 35 U.S.C. § 103(a) over
Jorgensen, Moran, and Riuli is reversed.
The rejection of claims 1, 3, 4, and 8-11under35 U.S.C. § 103(a)
over Jorgensen, Moran, and Britton is reversed.
REVERSED
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