Ex Parte Cecchi

Patent Trial and Appeal Board

Jul 5, 2017

13066296 (P.T.A.B. Jul. 5, 2017)

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.
H-1407 1391
EXAMINER
HURST, JONATHAN M
ART UNIT PAPER NUMBER
1799
MAIL DATE DELIVERY MODE
13/066,296 04/12/2011
7590
WILLIAM W. JONES
56 TERRACE HILL RD.
GILFORD, NH 03249
07/06/2017
Michael D. Cecchi
07/06/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL D. CECCHI1
Appeal 2016-006023
Application 13/066,296
Technology Center 1700
Before JAMES C. HOUSEL, GEORGE C. BEST, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’
rejections of claims 10—16 under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellant identifies LifeGlobal Group LLC as the real party in interest.
App. Br. 1.
Appeal 2016-006023
Application 13/066,296
BACKGROUND
Appellant’s claims are directed to a dish or an assembly that is used in
an in vitro fertilization (IVF) procedure.
Representative claim 10, taken from the Claims Appendix of the
Appeal Brief, appears below with key limitations italicized.
10. A dish for use in IVF insemination of oocytes, said dish
having:
a) an outer wall and a bottom wall;
b) said bottom wall having an interior well which extends
below said bottom wall;
c) said well having a downwardly and inwardly tapering
side wall;
d) a chamber formed in said well side wall, said chamber
forming an upwardly open pocket in said well side wall, said
pocket having opposed chamber side walls which converge
downwardly and inwardly toward each other;
e) an inwardly facing opening formed in said pocket
between said chamber side walls, said opening being smaller
than the average size of an oocyte disposed in said pocket, said
opening providing microtool access through said opening from
the interior of said well to the interior of said pocket', and
f) said chamber side walls converging toward each other
in a manner which is operative to firmly position an oocyte in
said pocket and adjacent to said opening.
App. Br. 15 (emphases and indentations added).
The Examiner relies on the following references as evidence of
unpatentability:
REFERENCES
Larsen
Kanegasaki
Dodgson
Olgac
Ramsing
WO 2006/000220 A1
US 7,259,008 B2
Jan. 5, 2006
Aug. 21,2007
Nov. 15,2007
Sept. 4, 2008
July 7, 2011
US 2007/0264705 A1
US 2008/0213899 A1
US 2011/0165609 A1
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Application 13/066,296
REJECTIONS ON APPEAL2
I. Claims 10-16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larsen, Dodgson, Kanegasaki, and Ramsing
(Final Act. 4—17); and
II. Claims 11—16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larsen, Dodgson, Kanegasaki, Ramsing, and
Olgac (Final Act. 17—28).
ANALYSIS
Rejection I
With respect to Rejection I, Appellant argues against the rejection of
claims 10, 12, 13, 14, and 15 separately (App. Br. 6—10), and we accordingly
consider the patentability of these claims separately. Dependent claims 11
and 16 stand or fall with their respective independent claims 10 and 15.
37 C.F.R. § 41.37 (c)(i)(iv).
Claims 10 and 11
The Examiner’s rejection of claims 10 and 11 appears at pages 4—9 of
the Final Office Action. We adopt the Examiner’s findings and conclusions
as our own.
Appellant argues that Larsen fails to disclose the claim limitation
requiring the “chamber formed in [the interior] well side wall.” App. Br. 6.
Appellant also contends that certain portions of Kanegasaki and Ramsing
fail to teach this limitation. Id. at 7—8. These arguments lack persuasive
merit because, as correctly observed by the Examiner (Ans. 3—4), the
2 The rejection of claims 11—16 under 35 U.S.C. § 112,12 (Final Act. 2—3)
was withdrawn by the Examiner (Ans. 2) and, therefore, is not before us.
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Application 13/066,296
Examiner does not rely on Larsen’s disclosure alone to teach this claimed
feature. See, Final Act. 7 (“Modified Larsen does not specifically disclose
the said well having ... the chambers formed in said side wall.”). Indeed,
the Examiner specifically relies on the teachings of Kanegasaki (Figs. 29
and 30, col. 18: 19—60) and Ramsing (Abstract, Figs. 1 A—2, and 145) to
establish that forming chambers in a tapered sidewall was well known at the
time of the invention. Final Act. 7—8. In addition, the Examiner determined
that placing the chambers in the side wall of the interior well would have
required a mere rearrangement of parts, and therefore would have been
obvious, because such rearrangement would only have involved routine skill
in the art. Id. at 8—9.
In the primary Brief, however, Appellant only specifically addresses
the Examiner’s findings regarding Kanegasaki’s Fig. 29 and Ramsing (App.
Br. 8), but fails to contest with any specificity both the Examiner’s findings
regarding Kanegasaki’s Fig. 30,3 as well as the Examiner’s additional
determination that arranging the chambers to be located in the interior well
side wall would have been obvious as only involving routine skill in the art.
Thus, on the record before us, the Examiner makes an uncontested finding
3 Appellant makes substantive arguments regarding Kanegasaki’s Fig. 30 on
page 3 of the Reply Brief. We decline to consider such arguments because
Appellant has not explained why these arguments could not have been raised
in their Appeal Brief. 37 C.F.R. § 41.37 (c)(l)(iv) (“Except as provided for
in §§41.41, 41.47 and 41.52, any arguments or authorities not included in the
appeal brief will be refused consideration by the Board for purposes of the
present appeal.”); see also Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI
2010) (Informative) (explaining that under the previous rules, which are
similar to the current rules, “the reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”).
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Application 13/066,296
that chambers formed in the interior well side wall were known in the prior
art. Final Act. 7 (“[Kanegasaki’s Fig. 30] wherein a well 29 is provided with
a downwardly tapered side wall and a chamber 28 for holding a sample
therein is provided in the said side wall in order to allow pipette access
thereto.”). Moreover, the Examiner’s determination that such an
arrangement would have otherwise been obvious remains unaddressed by
Appellant. Accordingly, on this record, we are not persuaded by Appellant’s
arguments (App. Br. 6—8; Reply Br. 3 4) that this claim limitation is not
taught or suggested by the cited references—either individually or
collectively—or otherwise would have been nonobvious.
Appellant contends further that neither Larsen nor Dodgson disclose
the limitation requiring “an inwardly facing opening formed in said
pocket. . . said opening providing microtool access through said opening
from the interior of said well to the interior of said pocket.” App. Br. 6—7;
Reply Br. 2—3. Specifically, Appellant argues that “[a] microtool cannot
physically access the pockets 60 [of Larsen] by means of the channels 70
due to the geometry of the channels 70 relative to the sperm reservoir 61.”
App. Br. 6. Appellant makes a similar argument that Dodgson’s device
contains a micro channel 52 connecting wells 50 and 54, thus not allowing
“access” of a microtool. Id. at 7.
This argument is not persuasive of reversible error. As correctly
found by the Examiner (Final Act. 5), Larsen discloses an inwardly facing
opening in a side wall of a chamber and allows sperm to contact oocytes in
the micro-well. Larsen Fig. 6b, 16:1—3 (“micro-well 61 is connected by
channels 70 to the micro-wells 60 containing the oocytes. The channels 70
guide the sperm cells to the oocytes and optimize fertilization.”). We agree
with the Examiner that Larsen’s configuration allows the microtool to
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Application 13/066,296
access, at least fluidically, the interior of micro-well 60 through channel 70
after the microtool injects the sperm into micro-well 61. Final Act. 5. We
furthermore disagree with Appellant’s position that the claims require the
direct physical access of a microtool to the interior of the chamber. App. Br.
6; Reply Br. 2—3. Rather, as correctly found by the Examiner (Ans. 5—6),
the claim broadly recites “providing microtool access through said opening”
and does not specify that such access must be direct. Moreover, even if the
claims were so limited to require direct access of a microtool to the chamber,
we observe that Dodgson’s disclosure relied upon by the Examiner
(Dodgson | 50, referring to Figs. 4a-4h) discloses the direct access of
pipette 80 into the interior of chamber 50. See, Dodgson, Fig. 4g, | 55.
We are, therefore, unpersuaded of reversible error in the Examiner’s
rejection of claims 10 and 11, and sustain the Examiner’s rejection of these
claims.
Claims 12 and 14
With respect to the rejection of claims 12 and 14,4 Appellant repeats
the argument that Larsen fails to disclose a chamber formed in the side wall
of the interior well. App. Br. 8, 9; Reply Br. 4. This argument is not
persuasive for the reasons stated above with respect to claims 10 and 11.
We also emphasize here that Appellant’s argument regarding the
Kanegasaki and Ramsing references in the Reply Brief (Reply Br. 4) is
untimely because Appellant has not explained why such argument could not
4 Because Appellant separately argues claims 12 and 14, we consider the
patentability of these claims separately. We combine our discussion of these
claims, however, because Appellant’s arguments with respect to these claims
are similar.
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Application 13/066,296
have been raised in the Appeal Brief. Specifically, we note that the rejection
of claims 12 and 14 was based on “modified Larsen [which] discloses all the
claim limitations as set forth above” in the rejection of claims 10 and 11.
Final Act. 9, 10. In the rejection of claims 10 and 11, the Examiner finds
that Kanegasaki (Figs. 29 and 30, 18:19-60) and Ramsing disclose the
disputed claim limitation, and additionally provides rationale why arranging
the chambers in the side wall of the interior well would have required only
routine skill in the art. Id. at 7—8. Thus, as with the arguments against the
rejection of claims 10 and 11, Appellant fails to provide the record with a
timely response to the Examiner’s findings regarding Kanegaski’s Fig. 30
and the Examiner’s obviousness rationale.
We, therefore, sustain the Examiner’s rejection of claims 12 and 14.
Claim 13
Appellant argues that the rejection of claim 13 is erroneous because
“Larsen does not disclose the use of a sperm injection micro tool for
injecting sperm into an oocyte located in its micro wells.” App. Br. 9.
Appellant contends further that “[a] pipette is not a sperm injecting
microtool operative to engage an oocyte,” and that the term “operative”
requires action such as the actual performance of an IVF insemination
attempt on an oocyte.” Reply Br. 4.
We discern no persuasive merit in Appellant’s arguments regarding
claim 13. First, we observe that Appellant does not address the full scope of
the Examiner’s rejection in the Appeal Brief, but instead focuses only on the
teachings of Larsen (App. Br. 9) when the rejection is based on a
combination of four references. Final Act. 9—10. Moreover, we emphasize
that Appellant’s statement that “[a] pipette is not a sperm injecting
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Application 13/066,296
microtool” (Reply Br. 4) is technically erroneous, and therefore is
unpersuasive of reversible error. Appellant’s Specification recognizes that
an intracytoplasmic sperm injection (ICSI) pipette “is for injection of the
sperm into the oocyte for fertilization” (Spec. 2:10—11), and we further note
that the ICSI procedure is disclosed in Larsen. Larsen 1:9—10. Finally,
regarding Appellant’s contention regarding the claimed micro tool being
“operative to engage” an oocyte, we remind Appellant that claim 13 is not
directed to a method, but rather claims a dish, and thus does not require the
performance of a procedure’s active steps.
Accordingly, we sustain the Examiner’s rejection of claim 13.
Claims 15 and 16
Appellant argues against the rejection of these claims by repeating
many of the arguments presented regarding the rejection of other claims.
App. Br. 9-10. For the reasons already given above, these arguments do not
identify reversible error of the rejection of claims 15 and 16, and we sustain
the Examiner’s rejection of these claims.
Rejection II
Because our affirmance of Rejection I disposes of all claims on appeal
(claims 10—16), we decline to reach Rejection II which covers claims 11—16.
SUMMARY
We affirm Rejection I, but decline to reach Rejection II.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F. R. § 1.136(a).
AFFIRMED
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