Ex Parte Gibson et al

Patent Trials and Appeals Board

Jun 11, 2019

15418304 - (D) (P.T.A.B. Jun. 11, 2019)

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.O