DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8 October 2026 has been entered.
Status of the Claims
Claims 2, 3 and 15 have been cancelled.
Claims 6-14 have been withdrawn.
Claims 1, 4-5 are presented for examination on the merits.
Terminal Disclaimer
The terminal disclaimer filed on 8 October 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application 18/333812 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Thus the Double Patenting rejection of the previous Office action has been withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 4-5 stand rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2018-0005130A (Kangstem) and Rothrauff et al. (2017). [cited in IDS filed by Applicant 8/30/2023]
Kangstem discloses an injectable composition containing pig-derived acellular lysates and stem cells for preventing or treating osteoarthritis (see entire document, including e.g, claims 1, 4, 10, paragraphs [0001], [0013], [0055], [0071] and [0179].
Rothruauff et al. beneficially teach tissue-specific bioactivity of soluble tendon-derived and cartilage derived extracellular matrices on adult mesenchymal stem cells and includes the steps of: solubilizing extracellular matrices by reaction at 37oC with enzymes for an hour and collecting the supernatant obtained by centrifuging the aqueous solution to prepare a composition for tissue specific stem cell differentiation. Sterilization is carried out by a syringe filter during the process of preparing extracellular matrices (see entire document, including e.g., Abstract, page 2 right column, page 3 left column, page 3 right column).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the instant Application to employ pig-derived CAM in treating osteoarthritis as evidenced by the cited prior art and the plethora of attached references as well as those recited in the IDS filed by Applicant. It would have been well within the purview of the skilled practitioner to solubilize any the number of CAM powders known in the art with a solvent to prepare an injectable composition. Injectable cartilage acellular matrix compositions were known in the art before the present application. There are no hints in the prior art that a precise temperature range has any particular significance, but a solubilization treatment at 37°C appears to be common.
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), emphasized a flexible approach to the obviousness question, stating that the analysis under 35 U.S.C. § 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418; see also id. at 421 ("A person of ordinary skill is... a person of ordinary creativity, not an automaton."). Furthermore, in KSR, the Supreme Court indicated that the obviousness analysis should consider the “background knowledge possessed by a person having ordinary skill in the art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Under KSR, information deemed within PHOSITA’s general knowledge is more powerful than that found buried in a prior art reference because we assume that PHOSITA would consider using their general knowledge in combination with the prior art — even absent any express motivation to do so. Under 35 U.S.C. § 103, the obviousness inquiry turns not only on the prior art, but whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103. Regardless of the tribunal, the inquiry into whether any “differences” between the invention and the prior art would have rendered the invention obvious to a skilled artisan necessarily depends on such artisan’s knowledge.
The adjustment of particular conventional working conditions (e.g., determining the optimal variables in preparing the CAM for injection, such as temperature, duration of solubilization and to employ sterilization techniques for preparing an injectable) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. See e.g., MPEP2144.05.
Accordingly, the instant claims, in where no unexpected results are observed (e.g., evidence of criticality of the experimental variables recited in the method), would have been obvious to one of ordinary skill having the above cited references before him/her.
Applicant's arguments filed with respect to the 35 USC 103 rejection have been fully considered but they are not persuasive.
Applicant further asserts that, by specifying the particular solubilization conditions, amended Claim 1 achieves the unexpected result of satisfying (i) injectable viscosity and physical properties, (ii) retention of active ingredients such as collagen, and (iii) induction of chondrocyte differentiation of stem cells. For instance, Example 2, [0081]-[0082], of the present specification demonstrates that the injectable formulation is successfully formed specifically within the temperature range of 33°C to 37°C. In Example 4, [0089], it was confirmed that the collagen content decreased when the solubilization time was 24 hours or more and the solubilization temperature was 55°C or higher" (Emphasis added). In Example 5, [0091], the injectable composition solubilized at 37°C for 6 hours was capable of inducing chondrocyte differentiation of stem cells, whereas compositions solubilized at 37°C for 24 hours, 55°C for 6 hours, or 55°C for 24 hours failed to induce chondrocyte differentiation of stem cells.
However, with respect to such unexpected results, please note that in KSR, the Court also reaffirmed that evidence of unexpected results may overcome an examiner's prima facie case of obviousness. KSR, 550 U.S. at 416 ("The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams' design was not obvious to those skilled in the art" - discussing United States v. Adams, 383 U.S. 39). However, "any superior property must be unexpected to be considered as evidence of non-obviousness." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). Thus, "[m]ere improvement in properties does not always suffice to show unexpected results ....[W]hen an applicant demonstrates substantially improved results.., and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary." In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). Moreover, in order to establish unexpected results for claimed invention, objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support. In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978). Please also note that "the discovery of an optimum value of a variable in a known process is usually obvious." Pfizer v. Apotex, 480 F.3d at 1368. The rationale for determining the optimal parameters for prior art result effective variables "flows from the 'normal desire of scientists or artisans to improve upon what is already generally known.'" Id. (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)).
In order to accord substantial weight to secondary considerations in an obviousness analysis, “the evidence of secondary considerations must have a ‘nexus’ to the claims, i.e., there must be ‘a legally and factually sufficient connection’ between the evidence and the patented invention.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). “The patentee bears the burden of showing that a nexus exists.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). “To determine whether the patentee has met that burden, we consider the correspondence between the objective evidence and the claim scope.” Henny Penny, 938 F.3d at 1332.
See also MPEP 2144.05(III)(A)
Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See also Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 271 (1916) (a patent based on a change in the proportions of a prior product or process (changing from 4-10% oil to 1% oil) must be confined to the proportions that were shown to be critical (1%)); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) ("Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies."); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Lilienfeld, 67 F.2d 920, 924 (CCPA 1933) ("It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree."); In re Wells, 56 F.2d 674, 675, 12 USPQ 430 (CCPA 1932) ("Changes in proportions of agents used in combinations . . . in order to be patentable, must be critical as compared with the proportions of the prior processes."); E.I. DuPont de Nemours & Company v. Synvina C.V., 904 F.3d 996, 1006, 128 USPQ2d 1193, 1201 (Fed. Cir. 2018.)("[A] modification of a process parameter may be patentable if it ‘produce[s] a new and unexpected result which is different in kind and not merely in degree from the results of the prior art." (citing Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 693, 2023 USPQ2d 448 (Fed. Cir. 2023) ("A difference of degree is not as persuasive as a difference in kind – i.e., if the range produces ‘a new property dissimilar to the known property,’ rather than producing a predictable result but to an unexpected extent.").
The specification would seem to indicate that the conditions employed are critical in achieving an unexpected/surprising result. While the claims have been amended, the conditions employed to obtain the supposedly unexpected results set forth by Applicant (see Example 5) within the Specification are not reflected by the conditions stated within the amended claims.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL G FIEBIG whose telephone number is (571)270-5366. The examiner can normally be reached M-F 8-4.
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/RUSSELL G FIEBIG/Examiner, Art Unit 1655
