ANIMAL STEM CELL

Patent Trials and Appeals Board

Jun 23, 2021

2020000105 (P.T.A.B. Jun. 23, 2021)

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

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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.
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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).
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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
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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.”).
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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.
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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