Ex Parte Beebe et al

Patent Trials and Appeals Board

Jun 3, 2019

14744765 - (D) (P.T.A.B. Jun. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/744,765 06/19/2015 David Beebe
72088 7590 06/05/2019
WISCONSIN ALUMNI RESEARCH FOUNDATION
C/0 BOYLE FREDRICKSON S.C
840 North Plankinton A venue
Milwaukee, WI 53203
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.
282.190 2542
EXAMINER
PYLA, EVELYN Y
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
06/05/2019 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):
docketing@boylefred.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID BEEBE, ERWIN BER THIER,
and MARY REGIER
Appeal2019-000087
Application 14/744,765
Technology Center 1600
Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.
VALEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 submit this appeal under 35 U.S.C. § 134(a) involving
claims to methods for transmitting particles to a cell culture by using a
stamp. Examiner rejected the claims as anticipated and obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
According to Appellants' Specification, "[c]urrent technologies
1 Appellants identify the real party in interest as Wisconsin Alumni Research
Foundation. App. Br. 3. Herein we refer to the Final Office Action mailed
Sept. 28, 2017 ("Final Act."), Appeal Brief filed April 16, 2018 ("App.
Br."), Examiner's Answer mailed Aug. 3, 2018 ("Ans."), and Reply Brief
filed Oct. 3, 2018 ("Reply Br.").
Appeal2019-000087
Application 14/744,765
allowing patterning of soluble factors in gradients and other concentration
profiles are limited to microfluidic devices or culture in or under a hydrogel.
However many standard cell culture procedures and protocols calling for
patterning of surface associated factors require open systems." Spec. 1, 11.
20-24. The Specification states that "it is a primary object and feature of the
present invention to provide a stamp and a method for transferring particles
to cells of a cell culture." Id. at 2, 11. 18-19.
Claims 7-21 are on appeal and can be found in the Claims Appendix
of the Appeal Brief. Claims 7 and 14 are the only independent claims. They
read as follows:
7. A method of transmitting particles to cells of a cell culture,
comprising the steps of:
providing the cell culture on a surface;
patterning the particles in a gel extending along a portion
of a lower surface of a stamp;
positioning the stamp with the particles patterned in the
gel such that the particles in the gel extending along the lower
surface of the stamp communicate with the cells of the cell
culture; and
allowing the particles in the gel to diffuse into the cells of
the cell culture.
14. A method of transmitting particles to cells of a cell culture,
comprising the steps of:
forming a cell culture on a base;
patterning the particles in a gel extending along a lower
surface of a stamp;
depositing cell culture media on the cell culture;
positioning the stamp with the particles patterned in the
gel in the cell culture media such that the particles in the gel
extending along the lower surface of the stamp communicate
with the cells of the cell culture; and
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Appeal2019-000087
Application 14/744,765
allowing the particles in the gel to diffuse into the cells of
the cell culture through the cell culture media.
App. Br. 12-14.
Appellants seek review of the following rejections: 2
I. Claims 7-12 and 14--19 under 35 U.S.C. § 102 as anticipated by
Beebe, 3 and
II. Claims 13, 20, and 21 under 35 U.S.C. § 103 as unpatentable over
Beebe.
Analysis
We address the two rejections together because the rejection of
dependent claims 13, 20, and 21 is premised on Examiner's finding that
Beebe anticipates the independent claims. See Final Act. 19; see also App.
Br. 11 ( arguing that the dependent claims are "allowable as depending from
an allowable base claim").
Examiner's rejection is based on Beebe's disclosure of "microfluidic
devices." Final Act. 10-11. In particular, Examiner relies on Beebe Figure
5 (copied below).
2 Appellants also sought review of Examiner's rejection of claims 7-21
under 35 U.S.C. § 112 for failure to comply with the written description
requirement. App. Br. 4--8. Examiner subsequently withdrew that rejection
and it is not before us now. Ans. 12.
3 David J. Beebe et al., US 2010/0025243 Al, published Feb. 4, 2010
("Beebe").
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Appeal2019-000087
Application 14/744,765
4-0 48
~ ·v-..--"'-+illt.---,-,...~n-~ri'--r~-ir""J!-~~~
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k ,~~~ m
FIG. 5
Id. at 11. Figure 5 is a cross-section view of the channel layer of Beebe's
microfluidic device showing a gel 60 in channel 22 within the interior of the
device. Beebe ,r 40. Beebe teaches that medium and soluble factors are
introduced through access ports 52a and 52b to form a gradient in channel
22 and that cells can be added to the gel through port 62. Beebe ,r,r 28 and
40-41.
According to Examiner, Beebe's channel layer "reads on 'a lower
surface of a stamp[,]' as recited in claims 7 and 14." Final Act. 12.
Examiner finds that using port 62 to place cells on the gel in channel 22 of
the channel layer constitutes the claimed steps of "providing the cell culture
on a surface" (claim 7) and "forming a cell culture on a base" (claim 14). Id.
at 13. Examiner determines that loading a soluble factor through access port
52a to form a gradient constitutes the "patterning the particles in a gel" step
of Appellants' claims. Id. For the claimed "positioning the stamp" step,
Examiner states that Beebe discloses "adding cells to channel 22 using port
62 (see FIG. 5), thus the stamp is positioned such that the soluble factor
having a known concentration of particles located in the gel is in
communication with the cells of the cell culture, thus anticipating claims 7
and 14." Id. at 13-14.
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Appeal2019-000087
Application 14/744,765
Appellants argue that Beebe's microfluidic device does not anticipate
because it is not a "stamp," as claimed. Reply Br. 3. According to
Appellants, "[a] stamp is a device or instrument for stamping." Id. As such,
Appellants contend Beebe does not disclose "positioning the stamp ... such
that the particles in the gel extending along the lower surface of the stamp
communicate with the cells of the cell culture," as claimed. App. Br. 9-10.
In particular, Appellants argue because the "channel layer housing the gel
matrix ( the alleged stamp) is fixed" there is no positioning of the stamp to
bring the patterned particles into contact with the cells of the cell culture. Id.
at 9.
On this record, we determine that Appellants have the better position
because Examiner has not demonstrated that Beebe discloses a stamp that is
positioned as recited in Appellants' claims. Claims 7 and 14 recite a
"stamp" with gel on its lower surface containing patterned particles and
"positioning the stamp" to bring those particles into contact with the cells of
the cell culture. This is exemplified in Figures 5 and 6 of Appellants'
Specification (copied below).
F!G. 5
5
Appeal2019-000087
Application 14/744,765
-··G 6 r I ,.,
As shown in the Figures 5 and 6 above, the "[ s ]tamp 10 is positioned such
that lower surface 66 ... communicates with upper surface 78 of cell culture
media 76." Spec. 9, 11. 6-8. Put plainly, the Specification describes and
claims 7 and 14 recite a method in which cells are stamped with particles
that have been patterned in a gel.
The claimed method differs from the operation of the microfluidic
device disclosed in Beebe. In Beebe, cells are added through access ports to
a gel in a fixed channel layer. There, it is the cells, not the channel layer,
which is positioned to allow communication between the cells and particles.
Accordingly, Beebe does not disclose "positioning the stamp," as recited in
claims 7 and 14. In addition, Examiner has not sufficiently articulated how
Beebe's channel layer, which is fixed and does not move during operation,
can be considered a "stamp" consistent with the teachings of Appellants'
Specification. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
(Fed. Cir. 2015) ("Even under the broadest reasonable interpretation, the ..
. construction cannot be divorced from the specification ... and must be
consistent with the one that those skilled in the art would reach.")
(internal quotation marks and citations omitted).
For these reasons, we conclude that Examiner has not established by a
preponderance of the evidence that claims 7 and 14 are anticipated by
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Appeal2019-000087
Application 14/744,765
Beebe. Because we reverse Examiner's rejection of claims 7 and 14, we
also reverse Examiner's rejections of dependent claims 8-13 and 15-21.
SUMMARY
We reverse the rejection of claims 7-12 and 14--19 under 35 U.S.C.
§ 102 as anticipated by Beebe.
We reverse the rejection of claims 13, 20, and 21 under 35 U.S.C.
§ 103 as unpatentable over Beebe.
REVERSED
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