Ex Parte Zal

Patent Trial and Appeal Board

Apr 20, 2016

13265642 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/265,642 10/21/2011
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
04/22/2016
FIRST NAMED INVENTOR
FrankZal
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.
0600-1269-1 2898
EXAMINER
BEISNER, WILLIAM H
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
04/22/2016 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):
DocketingDept@young-thompson.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK ZAL
Appeal2014-009045
Application 13/265,642
Technology Center 1700
Before KAREN M. HASTINGS, ELIZABETH M. ROESEL, and
MONTE T. SQUIRE, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--4 and 9-11under35 U.S.C. § 102(b) as
anticipated by Rose (US 5,223,428, issued June 29, 1993) and under
35 U.S.C. § 103(a) as unpatentable over Rose in view of Garlick2 or
Zal et al. (US 2003/0181358, published Sept. 25, 2003, "Zal"). We have
jurisdiction under 35 U.S.C. § 6(b).
1 Appellant identifies HEMARINA as the real party in interest. Br. 2.
2 Robert L. Garlick and Robert C. Terwilliger, Structure and Oxygen
Equilibrium Of Hemoglobin And Myoglobin From The Pacific Lugworm
Abarenicola Pacifica, 57B Comp. Biochem. Physiol. 177-184 (1977).
Appeal2014-009045
Application 13/265,642
We AFFIRM.
STATEMENT OF THE CASE
Appellant's Specification discloses devices and bioreactors capable of
delivering oxygen to a cell culture using oxygen-carrying molecules. Spec.,
Abstract.
Claim 1 is the sole independent claim, is representative of the subject
matter on appeal, and is reproduced below from Appellant's Claims
Appendix:
1. A receptacle, comprising:
a chamber at least partially defined by an oxygen-
permeable membrane, and
a plurality of oxygen-carrying molecules contained
within said chamber, said oxygen carrying molecules being
chosen from extracellular hemoglobins isolated from worms
belonging to ii ..renicolidae family or Nereididae family.
App. Br. 17.
ANALYSIS
Obviousness
Appellant argues claims 1-3 as a group, directing its arguments to the
limitations of claim 1 only. App. Br. 8-12. Appellant argues claims 4 and
9-11 as a group, repeating the same arguments as are presented for claims
1-3. Id. at 12-15. As a consequence, all appealed claims stand or fall
together, and we confine our discussion to claim 1.
The Examiner finds that Rose discloses a receptacle including a
chamber at least partially defined by an oxygen-permeable membrane and a
plurality of oxygen-carrying molecules contained within the chamber, where
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Application 13/265,642
the oxygen-carrying molecules may be hemoglobin. Final Action 2-3, 4--5
(citing Rose Figs. 1, 2 and 9:55-10:11). The Examiner finds that Garlick
and Zal each discloses that hemoglobin molecules from worms of the
Arenicolidae family are known blood substitutes. Id. at 5 (citing Garlick,
Introduction and Zal i-f 19). The Examiner concludes that it would have been
obvious to substitute the hemoglobin molecules of either Garlick or Zal for
those of Rose "for the known and expected result of providing an alternative
means recognized in the art to achieve the same result, carry[ing] oxygen to
a cell culture." Id. at 5.
Appellant argues that it would not have been obvious to substitute the
worm hemoglobin of Garlick or Zal for the human hemoglobin of Rose.
App. Br. 8-12.
Upon consideration of the evidence presented in this Appeal and each
of Appellant's arguments, we are not persuaded that Appellant identifies
reversible error, and we find that a preponderance of evidence supports the
Examiner's conclusion that the subject matter of Appellant's claims is
unpatentable over the applied prior art. We sustain the rejection of claim 1
based on the Examiner's findings of fact, conclusions of law, and rebuttals
to Appellant's arguments, as expressed in the Final Action and the Answer.
We add the following for emphasis.
Rose discloses an arrangement for oxygenation of culturing cells
using hemoglobin as the oxygen-carrying material. Rose, 9:55-10: 11. Rose
further discloses that hemoglobin can be encapsulated in a semi-permeable
membrane that permits oxygen to pass from the hemoglobin on one side of
the membrane to culturing cells in need of oxygenation on the other side of
the membrane. Id. at 14:17-28, 14:33--40. Rose does not, however, disclose
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Appeal2014-009045
Application 13/265,642
that the hemoglobin can be extracellular hemoglobin isolated from worms.
Zal discloses that extracellular hemoglobin isolated from worms may be
used as a blood substitute, where the function of the hemoglobin is to
transport oxygen and carbon dioxide. Zal iii! 1, 3, 28, 30, 72, 74.
We are persuaded that the teachings of the cited references are
sufficient to support the Examiner's conclusion that it would have been
obvious to one of ordinary skill in the art to use Zal' s extracellular
hemoglobin isolated from worms in the cell culture oxygenation
arrangement disclosed in Rose. Zal expressly discloses that extracellular
hemoglobin isolated from worms can be substituted for human blood and
human hemoglobin. Zal iii! 1, 28, 30, 72, 74. Zal teaches an advantage of
this substitution: "the extracellular haemoglobin does not necessitate any
cofactor to liberate any oxygen possibly fixed on the haemoglobin." Id.
if 51; see also id. at iii! 15, 52 (discussing need for cofactor to release oxygen
from human hemoglobin).
Appellant is correct that Zal focuses on in vivo uses for hemoglobin,
while Rose's arrangement is an in vitro use. App. Br. 9. That difference
does not, however, persuade us of error in the Examiner's conclusion
because the function of the hemoglobin is the same in both instances: to
carry oxygen to cells in need of oxygenation. Rose 10:9-10, 14:21-28; Zal
iii! 3, 30. Zal teaches that worm hemoglobin can substitute for human
hemoglobin in the human body, Zal if 30, and Appellant does not explain
persuasively why the same substitution would not have been obvious in a
cell culturing apparatus. Furthermore, we agree with the Examiner that
Zal' s discussion of preserving organs during transplantation suggests that in
vitro use of worm hemoglobin is contemplated. Zal if 26; Ans. 6. KSR Int 'l
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Application 13/265,642
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result").
Appellant directs us to Rose's teaching that "care ... must be taken"
to insure that the rates of oxygen consumption and carbon dioxide
production do not result in a "toxic environment." App. Br. 9-10; Rose
10:16-20. Appellant does not, however, persuade us that substitution of
worm hemoglobin for human hemoglobin would make the rate balancing
problem more difficult to solve or impede one of ordinary skill in the art
from implementing Rose's disclosed solution. Rose 10:20-25 (metering
devices to permit regulation of the amounts of these gases). Appellant
asserts that worm hemoglobin differs from human or bovine hemoglobin in
terms of its need for a cofactor, its amino acid sequence, and its 3D
structure. App. Br. 10-11. These differences do not, however, persuade us
of error in the Examiner's conclusion because Zal expressly teaches that
worm hemoglobin can advantageously be substituted for human or bovine
hemoglobin, notwithstanding these differences. Zal i-fi-f l, 15, 28, 30, 51, 52,
72, 74.
Appellant contends that the hollow fiber structure of Rose is
insufficient, App. Br. 11 (citing Spec. 2:24--29), but Appellant fails to
identify claim language that excludes such an embodiment from the scope of
the claims. Appellant asserts that the claimed receptacle provides increased
oxygen diffusion, as compared to simple oxygen diffusion, and that worm
hemoglobin is more stable than human hemoglobin. App. Br. 11. Neither
comparison is sufficient to support patentability of claim 1 over the cited art.
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Application 13/265,642
Appellant's first comparison is not made to the closest prior art-a cell
oxygenation apparatus utilizing human hemoglobin, as taught by Rose.
Appellant's second comparison does not identify an advantage shown to
have been unexpected by one of ordinary skill in the art, particularly in view
of Zal. Zal i-fi-155, 58, 65 (extracellular hemoglobin, e.g., from worms,
"keeps for at least 6 weeks at 4° C. without oxidation"). In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("when unexpected
results are used as evidence of non-obviousness, the results must be shown
to be unexpected compared with the closest prior art").
We, therefore, conclude that the weight of the evidence supports the
Examiner's conclusion of obviousness.
Anticipation
The Examiner also rejected claims 1--4 and 9-11 under 35 U.S.C.
§ 102(b) as anticipated by Rose. Final Act. 2-3; Ans. 2--4. Because our
affirmance of the Examiner's obviousness rejection is dispositive of all
claims on appeal, we need not and do not reach this additional rejection. Cf
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (having
decided a single dispositive issue, the ITC was not required to review other
matters decided by the presiding officer).
CONCLUSION OF LAW AND DECISION
The decision of the Examiner is affirmed.
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Appeal2014-009045
Application 13/265,642
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1).
AFFIRMED
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