Ex Parte Fan et al

Patent Trial and Appeal Board

Jun 13, 2016

12989375 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/989,375 11/03/2010
27799 7590 06/15/2016
Cozen O'Connor
277 Park A venue, 20th floor
NEW YORK, NY 10172
FIRST NAMED INVENTOR
Shun Jie Fan
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.
5029-719PUS-307318.000 8528
EXAMINER
HASSAN, LIBAN M
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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):
patentsecretary@cozen.com
patentdocket@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHUN JIE FAN, HONG WEI YANG,
JUN FENG JIANG, HERBERT GRIEB, YUE ZHUO, and
KURT BETTENHAUSEN
Appeal2015-000581
Application 12/989,375
Technology Center 1700
Before MICHAEL P. COLAIANNI, BRIAND. RANGE, and LILAN REN,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 28-32. We have jurisdiction. 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellants, the real party in interest is Siemens AG.
Appeal Br. 2.
Appeal2015-000581
Application 12/989,375
STATEMENT OF CASE
Appellants describe the present invention as relating to controlling a
fermentation process (which could be applicable, for example, in making
pharmaceuticals, foods, or beverages) by obtaining status information of
biological cells in the fermenting tank. Spec. 2-3. Claim 28, reproduced
below, is the only independent claim on appeal and is illustrative of the
claimed subject matter:
28. A device for controlling a fermentation process,
compnsmg:
a status information acquisition unit configured to collect
biological cell samples of biological cells from a fermenting tank
and to obtain current status information of the biological cells
based on the collected biological cell samples;
a control unit configured to control a feed rate of nutrient
solution flow to said fermenting tank according to a difference
status between the current status information of the biological
cells and the preset target status information; and
a comparison unit configured to compare said current
status information of the biological cells with a preset target
status information, obtain the difference status between the
current status information of the biological cells and the preset
target status information, and to provide the difference status
to said control unit.
Appeal Br. 2 11 (Claims Appendix) (emphases added).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
2 In this decision, we refer to the Final Office Action mailed September 18,
2013 ("Final Act."), the Appeal Brief filed April 1, 2014 ("Appeal Br."), the
Examiner's Answer filed August 1, 2014 ("Ans."), and the Reply Brief
mailed October 1, 2014 ("Reply Br.").
2
Appeal2015-000581
Application 12/989,375
West
Ilkov
US 2005/0158701 Al Jul. 21, 2005
US 2007 /023 6681 A 1 Oct. 11, 2007
REJECTIONS
The Examiner made the following rejections:
Rejection 1. Claims 28 and 30-32 under 35 U.S.C. § 102(b) as
unpatentable as anticipated by West. Final Act. 2.
Rejection 2. Claim 29 under 35 U.S.C. § 103(a) as unpatentable as
obvious over West in further view of Ilkov. Id. at 5.
ANALYSIS
Rejection 1. The Examiner rejects claims 28 and 30-32 as anticipated
by West. In doing so, the Examiner finds that West's utility tower 115
corresponds with claim l's recited "control unit" and that West's controller
120 corresponds to the recited "comparison unit." Final Act. 2-3; Ans. 3, 5.
The Examiner also finds that the controller 120 "provide[s] the difference
status to said control unit (i.e., increase or decrease the rate at which a fluid
is provided to a bioreactor based in response to a measured condition;
[0088], [O 104 ])."
Appellants argue, however, that the Examiner fails to establish that
West teaches controller 120 "provid[ing] the difference status to said control
unit" as recited in claim 1. Appeal Br. 4; Reply Br. 4--5. We agree with
Appellants on this point.
West explains that controller 120 uses measured information to
"determine[] adjustments to the continuous bioreactor process or if the
media in the bioreactor 220 should be harvested." West i-f 88. The same
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Appeal2015-000581
Application 12/989,375
paragraph also explains that "if the data signals fall within a predetermined
range of values, [controller 120 will] initiate action to remove or 'harvest' a
portion of cells from the bioreactor." Id. Rather than showing that the
controller 120 passes "difference status" to the utility tower 115 so that the
utility tower 115 can decide what action to take, the passages cited by the
Examiner establish that the controller 120 provides action commands to
utility tower 115. See also West i-f 104 (stating that the controller 120's
software 555, see id. at i-f 101, can "send a control signal ... to cause the
pump control system 240 (FIG 2) to provide a fluid to the bioreactor .... ").
We do not construe "difference status" so broadly that it would include
control signal commands to, for example, harvest cells or provide fluid.
Because, on the present record, the Examiner has not established that
West teaches "a comparison unit configured to ... provide the difference
status to said control unit," 3 we do not sustain the Examiner's rejection of
claim 28. Because claims 30-32 depend from claim 28, we do not sustain
the Examiner's rejection of those claims for the same reason.
Rejection 2. Claim 29 also depends on claim 28. The Examiner
rejects claim 29 as obvious over West in further view of Ilkov. The
Examiner explains that Ilkov relates to the sheath flow cytometer of claim
29. The Examiner does not use Ilkov to further address the "comparison
unit configured to ... provide the difference status to said control unit"
3 In the event of further prosecution, the Examiner should consider whether
this limitation is governed by 35 U.S.C. § 112, i-f 6 pursuant to the reasoning
of Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)
(en bane) (holding that § 112, i-f 6 may apply even where the word "means"
is not recited if claim's recited words do not "have a sufficiently definite
meaning as the name for a structure").
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Appeal2015-000581
Application 12/989,375
recitation of claim 2 8 and does not provide reasoning as to why the "a
comparison unit configured to ... provide the difference status to said
control unit" is obvious in view of the teachings of West or Ilkov.
Accordingly, we do not the Examiner's rejection of claim 29.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
28-32.
REVERSED
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