Ex Parte Gibson et alDownload PDFPatent Trials and Appeals BoardJun 11, 201915418304 - (D) (P.T.A.B. Jun. 11, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/418,304 01/27/2017 29200 7590 K&L Gates LLP-Chicago Baxter P.O. Box 1135 Chicago, IL 60690-1135 06/13/2019 FIRST NAMED INVENTOR Iain Ronald Gibson 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. BOULT-003DIV 7853 EXAMINER DICKINSON,PAUL W ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 06/13/2019 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IAIN RONALD GIBSON, JANET MABEL SCOTT SKAKLE, NIGEL SMITH and THOMAS BUCKLAND 1 Appeal2018-008418 Application 15/418,304 Technology Center 1600 Before DEMETRA J. MILLS, ERIC B. GRIMES, and RICHARD M. LEBOVITZ, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method of improving MRI contrast in a calcium phosphate material, such as hydroxyapatite, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 Appellants identify the Real Parties in Interest as Apa Tech Limited and University Court of the University of Aberdeen. Br. 3. Appeal2018-008418 Application 15/418,304 STATEMENT OF THE CASE "The present invention relates to biomedical materials and, in particular, to calcium phosphate bioceramics ( eg apatite and hydroxyapatite) containing gadolinium as an MRI contrast agent." Spec. 1:4--7. "Hydroxyapatite has the chemical formula Ca1o(P04)6(0H)2." Id. at 2:4--5. "[T]he present invention provides a synthetic calcium phosphate- based biomedical material comprising gadolinium." Id. at 3:5-7. "The gadolinium ion is believed to substitute for the calcium ion in the calcium phosphate (eg apatite orhydroxyapatite) lattice." Id. at 3:10-12. "The biomedical material preferably also further comprises silicon and/or silicate . . . . If present, the silicate ion is believed to substitute for the phosphate ion in the hydroxyapatite lattice." Id. at 3:20-24. Claims 44, 47, and 49-66 are on appeal. Claims 44 and 47 are the independent claims and read as follows: 44. A method of improving MRI contrast in a calcium phosphate material comprising a calcium phosphate lattice, which method comprises substituting Gd3+ into the lattice to produce a calcium phosphate material having the chemical formula: wherein O < x < 1.1 and O < y < 1.3. 4 7. A method comprising: magnetic resonance imaging a biomedical material comprising a gadolinium substituted calcium phosphate lattice having the chemical formula: wherein O < x < 1.1 and O < y < 1.3. 2 Appeal2018-008418 Application 15/418,304 DISCUSSION The Examiner rejects all of the claims on appeal under 35 U.S.C. § 103(a) as obvious based on Nosco. 2 Ans. 3. The Examiner finds that "N osco teaches a method of imaging by administering to a patient a compound of the formula CanMmXrY[sJ (a calcium phosphate material) where M is a paramagnetic ion, such as Gd3+ ... X is a simple ion, such as OH- ... and Y may be a mixture of tetrahedral oxyanions, such as POl[-J and SiO/[-J_" Id. The Examiner also finds that substituting Gd3+ for Ca2+ in hydroxyapatite "inherently provides a stoichiometric ratio of Caio-yGdy because the Gd3+ ions are replacing Ca2+ ions in the lattice." Id. The Examiner finds that "Nosco fails to teach 'wherein O.OCopy with citationCopy as parenthetical citation