Ex Parte Cecchi et al

Board of Patent Appeals and Interferences

Dec 2, 2011

11732187 (B.P.A.I. Dec. 2, 2011)

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.
11/732,187 04/04/2007 Michael D. Cecchi H-1388 9637
7590 12/05/2011
William W. Jones
6 Juniper Lane
Madison, CT 06443
EXAMINER
MARCHESCHI, MICHAEL A
ART UNIT PAPER NUMBER
1775
MAIL DATE DELIVERY MODE
12/05/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MICHAEL D. CECCHI, JACQUES COHEN,
and TIM SHIMMEL
________________

Appeal 2010-009541
Application 11/732,187
Technology Center 1700
________________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and LINDA M.
GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision
rejecting claims 1-6. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a mammalian cell specimen manipulation or biopsy
apparatus comprising a container 10 having a bottom wall and a specimen
gathering structure 13 in the container and being positioned on the bottom wall of
Appeal 2010-009541
Application 11/732,187
 
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the container, "said structure being sized to capture single ones of the specimens"
(claim 1; Figs. 1-2).
Representative claim 1 reads as follows:
1. A mammalian cell specimen manipulation or biopsy apparatus comprising:

a) a container for holding the specimens, and for holding a culturing medium
which sustains the specimens during the procedure, said container having a bottom
wall; and

b) at least one specimen gathering structure in said container, said structure
being positioned on said bottom wall of said container, and said structure being
sized to capture single ones of the specimens.

Under 35 U.S.C. § 102(b), the Examiner rejects:
(a) claims 1-4 and 6 as anticipated by Masaki (US 4,378,438, issued Mar.
29, 1983);
(b) claims 1-4 and 6 as anticipated by Bradley (US 4,239,853, issued Dec.
16, 1980); and
(c) claims 1-6 as anticipated by Ringleben (US 6,800,491 B2, issued Oct. 05,
2004).
We will sustain each of these rejections for the reasons expressed in the
Answer and below.
As an initial matter, we observe that Appellants do not separately argue the
rejected claims (App. Br. 5-7). Accordingly, we select claim 1, the sole
independent claim on appeal, as representative of the rejected claims.
The Examiner finds that each of Masaki, Bradley, and Ringleben discloses
an apparatus having the structural features recited in the rejected claims (Ans. 3-6),
and Appellants do not argue otherwise (App. Br. 5-7). The Examiner concedes
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Application 11/732,187
 
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that these references do not teach using the prior art apparatus for "mammalian cell
specimen manipulation or biopsy" as recited in claim 1 and do not teach a structure
"being sized to capture single ones of the specimens" as recited in claim 1 (Ans. 6-
7). With respect to these claim recitations, the Examiner finds that the apparatus of
the applied references would be inherently capable of such mammalian cell
specimen use and that the apparatus includes structure sizing inherently capable of
performing the claim 1 function "to capture single ones of the specimens" (id.).
Appellants argue that the Examiner has engaged in pure conjecture in
finding that the applied reference apparatus includes structure sizing inherently
capable of capturing single ones of the specimens as claimed (App. Br. 6-7).
Appellants' argument is unpersuasive.
While a patent applicant is free to recite features of an apparatus either
structurally or functionally, the choice to define an element functionally carries a
risk, namely:
where the Patent [and Trademark] Office has reason to believe
that a functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.

In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) quoting In re Swinehart, 439
F.2d 210, 213 (CCPA 1971).
We perceive no merit in Appellants' contention that the Examiner has
engaged in pure conjecture in finding that the prior art apparatus includes structure
sizing inherently capable of performing the claim 1 function "to capture single
ones of the specimens." Rather, the Examiner's inherent capability finding is
rationally based on the undisputed fact that the structural elements of the prior art
apparatus are identical to the structural elements defined by the rejected claims.
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This finding is additionally supported by the Examiner's determinations that a
single cell or specimen disposed in the prior art apparatus "would undoubtedly be
'captured' by the [apparatus]" (Ans. para. bridging 6-7) and that the claim 1
recitation "being sized to capture single ones of the specimens" does not exclude
an apparatus which can also capture more than one specimen (id.).
On the other hand, Appellants have provided this record with no reason for
believing that the structure sizing of the prior art apparatus would not be capable of
capturing a single specimen placed there via a micro tool such as a syringe as
described in the Specification (Spec. 4, last sentence; see also dependent claim 5).
It follows that Appellants have failed to carry their burden of proving that the prior
art apparatus does not inherently possess the functional characteristic recited in
claim 1.
For the reasons stated above and in the Answer, we sustain each of the § 102
rejections before us.
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. §1.136(a)(1)(v).
AFFIRMED

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