ANIMAL STEM CELLDownload PDFPatent Trials and Appeals BoardJun 23, 20212020000105 (P.T.A.B. Jun. 23, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/302,687 10/07/2016 Kazuhiro Nagaike P160962US00 3402 38834 7590 06/23/2021 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 LEESBURG PIKE SUITE 7500 TYSONS, VA 22182 EXAMINER HURST, JONATHAN M ART UNIT PAPER NUMBER 1799 NOTIFICATION DATE DELIVERY MODE 06/23/2021 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): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUHIRO NAGAIKE and TOSHINORI SUZUKI Appeal 2020-000105 Application 15/302,687 Technology Center 1700 Before MONTÉ T. SQUIRE, JEFFREY R. SNAY, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3 and 5–8. See Final Act. 3, 5, 6. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “ANIMAL STEM CELL.” Appeal Br. 2. Appeal 2020-000105 Application 15/302,687 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A cell culture container comprising: a body portion having a regular octagonal prism shape with two ends; a closed bottom end portion connected to a first end of the body portion; and a top end portion connected to a second end of the body portion, the top end portion having an opening, wherein respective surfaces forming said octagonal prism shape are planar, and wherein two mutually opposed surfaces among the surfaces forming the octagonal prism shape are parallel, wherein the closed bottom end portion is conical in shape or is in a shape of an octagonal pyramid. Claims Appendix (Appeal Br. 9). REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Hsieh US 2002/0155594 A1 Oct. 24, 2002 Rehan US 2005/0156350 A1 July 21, 2005 Unger US 2007/0077655 A1 Apr. 5, 2007 Hui US 2008/0199958 A1 Aug. 21, 2008 REJECTIONS Claims 1–3 and 7 are rejected under 35 U.S.C. § 103 as being unpatentable over Rehan and Hui. Final Act. 3. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as being unpatentable over Rehan, Hui, and Unger. Final Act. 5. Appeal 2020-000105 Application 15/302,687 3 Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Rehan, Hui, and Hsieh. Final Act. 6. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After having considered the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that reversible error has been identified, and we affirm the Examiner’s § 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Claim 12 In rejecting claim 1 over Rehan and Hui, the Examiner finds that “Rehan discloses all the claim limitations . . . but does not specifically disclose a bottom end portion which is conical or an octagonal pyramid.” Final Act. 3. The Examiner finds that “Hui discloses a bioreactor device wherein the bottom is conical in shape in order to provide larger culture medium surface, seed volume reduction, and other desirable properties over flat bottomed bioreactors.” Id. (citing Hui ¶ 6). The Examiner concludes that 2 Appellant argues against the rejections of claims 1–3 and 5–8 as a group, with claim 1 as the representative claim. See Appeal Br. 3–8, 7 (arguing that, with regard to claims 5 and 6, Unger “does not remedy the deficiencies of Rehan and Hui,” and with regard to claim 8, Hsieh “does not remedy the deficiencies of Rehan and Hui”). These claims stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-000105 Application 15/302,687 4 it would have been obvious for a skilled artisan to combine the conical shaped end portion of Hui with the apparatus of Rehan because “such a conical bottom increases culture surface area, reduces seed volume and provides other known advantages which would be desirable in the device of Rehan.” Id. Appellant argues that a skilled artisan would not have combined the prior art devices because “if the closed bottom of the bottom of the bottle is formed into a conical or octagonal pyramid shape as in the present invention, the bottle falls down and the contents are spilled.” Appeal Br. 3. Appellant’s argument is unpersuasive because it is not commensurate in scope with the claim language, which does not require the recited apparatus to “be standing on the experiment table” as Appellant argues. Id. Appellant’s argument is equally unpersuasive because it does not structurally distinguish the prior art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen 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’s argument is unpersuasive also because it does not address the Examiner’s rationale in support of the rejection. Id. at 418 (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Appellant next argues that there would have been no reason to combine the prior art teachings because “the vessel disclosed in Hui is used for shaking or impellor action” and “neither the vessel of Rehan nor the cell culture container of the present invention requires shaking or impellor Appeal 2020-000105 Application 15/302,687 5 action.” Appeal Br. 5. Appellant’s argument is unpersuasive again because it does not address the Examiner’s rationale in support of the rejection. Appellant’s argument is unpersuasive also because it is incommensurate in scope with the apparatus claim. See Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (holding that “apparatus claims cover what a device is, not what a device does”). Appellant’s argument that there would have been no reason for the skilled artisan “to make the body portion of the Hui’s vessel to have a regular octagonal prism shape with respective planar surfaces or make the two mutually opposed surfaces parallel” (Appeal Br. 5)3 is unpersuasive because it does not address the Examiner’s fact findings in support of the rejection. Specifically, the Examiner finds that Rehan teaches or suggests “a body portion having a regular octagonal prism shape” and “respective surfaces forming said octagonal prism shape are planar, and wherein two mutually opposed surfaces among the surfaces forming the octagonal prism shape are parallel” as recited in claim 1. Final Act. 3. The Examiner finds 3 In the Reply Brief, Appellant argues, for the first time on appeal, that “Rehan also lacks the feature that a body portion has ‘a regular octagonal prism shape.’” Reply Br. 2. Such an argument raised for the first time in a Reply Brief is untimely and considered waived because Appellant does not explain why it could not have been raised previously. See Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that arguments and evidence not timely presented in the principal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.”). Appeal 2020-000105 Application 15/302,687 6 that “Rehan discloses that the device may be formed in many shapes” and “such a modification would have required a mere change in shape which would have been obvious . . . because the change in configuration of shape of a device is obvious absent persuasive evidence that the particular configuration is significant.” Id. Appellant’s argument is only based on Hui and does not address the Examiner’s findings with regard to Rehan for these claim limitations and no reversible error has been identified. Appellant’s argument that certain “advantageous effects were not expected from the teachings of Rehan and Hui” (Appeal Br. 5) is unpersuasive. To the extent this argument attempts to show that the recited apparatus exhibits unexpected results over the closest prior art, Appellant’s argument lacks evidentiary support and is therefore insufficient to rebut or otherwise show reversible error in the Examiner’s obviousness determination. “It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements . . . does not suffice.” In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorneys’ argument is no substitute for evidence.”). CONCLUSION The Examiner’s rejections are affirmed. Appeal 2020-000105 Application 15/302,687 7 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 7 103 Rehan, Hui 1–3, 7 5, 6 103 Rehan, Hui, Unger 5, 6 8 103 Rehan, Hui, Hsieh 8 Overall Outcome 1–3, 5–8 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation