Ex Parte Anderson et alDownload PDFPatent Trial and Appeal BoardSep 22, 201613572327 (P.T.A.B. Sep. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/572,327 08/10/2012 21710 7590 09/26/2016 BROWN RUDNICK LLP ONE FINANCIAL CENTER BOSTON, MA 02111 FIRST NAMED INVENTOR Lisa Maria Anderson 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. PARA-005/00US 30155/llUS CONFIRMATION NO. 9479 EXAMINER TRPISOVSKY, JOSEPH F ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 09/26/2016 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): ip@brownrudnick.com usactions@brownrudnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LISA MARIA ANDERSON, JARED ALDEN JUDSON, and WILLIAM EDELMAN Appeal2014-009822 Application 13/572,327 Technology Center 3700 Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Lisa Maria Anderson et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We REVERSE. THE INVENTION Appellants' invention relates to a system for transporting biological samples. Appeal2014-009822 Application 13/572,327 Claim 1, the sole independent claim, is representative of the claimed invention, and reads as follows: 1. A system for hypothermic transport of a biological sample, comprising: a first transport container comprising: a pumping chamber having a substantially planar semi-permeable membrane disposed at an inclined angle with respect to horizontal when the first transport container is placed on a horizontal surface, the semipermeable membrane being configured to push against a fluid and cause the fluid to circulate inside said first transport container; an organ storage chamber configured to transport a biological sample; a fill port connected to an exterior of the first transport container and extending to the organ storage chamber; a vent port connected to the exterior of the first transport container and extending to the pumping chamber; a temperature sensor; and a temperature display; and a second transport container comprising an insulated cavity for receiving said first transport container and having recesses for receiving cooling media. THE REJECTION The Examiner has rejected claims 1-20 under 35 U.S.C. § 103(a) as being unpatentable over Wenrich (US 2005/0153271 Al, published July 14, 2005), Bunegin (US 2010/0086907 Al, published Apr. 8, 2010), Hassanein 2 Appeal2014-009822 Application 13/572,327 (US 2004/0171138 Al, published Sept. 2, 2004), and Suzuki (US 2006/0208881 Al, published Sept. 21, 2006). ANALYSIS The Examiner finds that Wenrich discloses most of the features of claim 1 including a first transport container having an organ storage chamber 8, a fill port 7 connected to an exterior of the first transport container and extending to the organ storage chamber, and a vent port 19 connected to the exterior of the first transport container and extending to a pumping chamber 4. Final Act. 2 (citing Wenrich, paras. 94 and 133; Figs. 4 and 8). The Examiner notes that pump chamber 4 of Wenrich is not part of the first transport container and does not include a semi-permeable membrane configured as in claim 1, and in view of this, relies on Bunegin as teaching a container 11, 50 having a pumping chamber 52 with a membrane 3 "configured to push against a fluid and cause the fluid to circulate inside said first transport container." Id. at 3 (citing Bunegin para. 33). The Examiner concludes that it would have been obvious to modify the system of Wenrich to combine the pump with the biological sample container taught by Bunegin so as to integrally form the pump with the biological container, which would make for a more simple system with less assembly components. Id. Appellants argue that Wenrich's "element 7 of Fig. 4 is not a fill port, but rather an adapter to which the organ is connected so that the organ can be perfused with a fluid that is circulated by the pump ( 4 ). " Appeal Br. 9 (citing Wenrich paras. 61, 71, and 7 4 ). Appellants assert that Bunegin does 3 Appeal2014-009822 Application 13/572,327 not address this shortcoming of Wenrich because "the priming port (15) of Bunegin (FIG. 1: 15; [0045] of Bunegin) does not teach or suggest a fill port as recited in claim 1 because the priming port is not connected to the organ storage chamber." Id. at 10. Appellants point out that, by contrast, "Bunegin teaches other methods for fil[l]ing his device, such as filling the organ storage chamber with preservation fluid and dunking the organ, attached to the lid, into the fluid. Id. (citing Bunegin paras. 53 and 54). Appellants assert that Hassanein and Suzuki also do not suggest a vent port. Id. The Examiner responds that Wenrich meets the claimed feature because "fill port (7) connect[ s] the exterior of the first transport container (8) and extend(s) to the organ storage chamber," as recited and because "vent port (30, Fig. 1, also shown with piping 19 at the bottom of organ container 8, Fig. 2) [is] connected to the exterior of the first transport container and extend(s) to the pumping chamber," also as recited. Ans. 8 (citing Wenrich, paras. 72 and 73). Appellants reply that "if one of skill did modify Wenrich to include the pumping chamber of Bunegin," the fill port 7 would be replaced and as such, "all of the structures in claim 1 would not be present even if Wenrich were adapted to incorporate a lid with a pumping function as described in Bunegin." Reply Br. 4. Appellants have the better position here. The pumping circuit of Wenrich uses pump 24 to circulate fluid from bubble remover 11 through adapter 7 into an organ in organ container 8 and then back to pump 24. Wenrich paras. 73 and 7 4; Fig. 1. Even if one of ordinary skill in the art 4 Appeal2014-009822 Application 13/572,327 were to consider fluid circulation through adapter 7 as filling container 8, thus making adapter 7 a fill port, the Examiner's modification which combines pump 24 and container 8 of Wenrich to have a configuration as in Bunegin (see Final Action 8) would, according to the Examiner, require the pumping components (pump 24, piping 19 connecting pump to organ chamber, inlet 7 and outlet 30) to be replaced with the pumping components (membrane 3, supports 4, 5, and priming inlet and outlets 15) in order to pump fluid between the pumping chamber and the organ storage chamber. Ans. 9. Although the Examiner does not explicitly indicate that the various tubing and other elements of Bunegin would also be incorporated in such a modification, even if such elements were incorporated, as Appellants note, the resultant combination would "not teach or suggest a fill port as recited in claim 1 because the priming port [of Bunegin] is not connected to the organ storage chamber." Appeal Br. 10. Specifically, by removing/modifying fill port 7 of Wenrich in order to have a pumping chamber in the lid; as taught by Bunegin, the only remaining fluid inlet would be priming port 15, which is not a fill port connected to the organ storage container. See Bunegin, para. 45; Fig. 2. As such, the Examiner has not established a prima facie case of obviousness of claim 1. The Examiner does not rely on the teachings of Hassanein or Suzuki in any manner that would address the shortcomings of the combined teachings of Wenrich and Bunegin discussed above. Accordingly, we do not sustain the rejection under 35 USC§ 103(a) of claims 1-20 as being unpatentable over Wenrich, Bunegin, Hassanein, and Suzuki. 5 Appeal2014-009822 Application 13/572,327 DECISION The rejection of claims 1-20 under 35 U.S.C. § 103(a) is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation