Ex Parte Tsumura et al

Patent Trial and Appeal Board

Sep 17, 2018

13375606 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/375,606 12/01/2011
23850 7590 09/17/2018
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Takashi Tsumura
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.
110373 6485
EXAMINER
HURST, JONATHAN M
ART UNIT PAPER NUMBER
1799
MAIL DATE DELIVERY MODE
09/17/2018 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 TAKASHI TSUMURA, HIROMI OKADA,
TOSHIMASA UEMURA, and YOSHIMI OYABU
Appeal2017-010659
Application 13/375,606
Technology Center 1700
Before DONNA M. PRAISS, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1---6 and 10-12. Appeal Br. 6; Non-Final Act. 3-21.
We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse the decision to reject claims 1---6 and 10-12 and enter a
new ground of rejection of claims 1---6 and 10-12.
1 In this Decision, we refer to the Specification filed December 1, 2011
("Spec."), the Non-Final Office Action entered October 20, 2016 ("Non-
Final Act."), the Appeal Brief filed February 17, 2017 ("Appeal Br."), the
Examiner's Answer entered June 14, 2017 ("Ans."), and the Reply Brief
filed August 14, 2017 ("Reply Br.").
2 The real party in interest is JTEC Corporation. Appeal Br. 2.
Appeal2017-010659
Application 13/375,606
The invention relates to a cell culture vessel and apparatus, more
particularly, "a rotating culture vessel suited for automatic exchange of a
liquid culture medium and an automatic cell culture apparatus having an
automatic liquid culture medium exchange function." Spec. ,r 1. Claim 1 is
illustrative ( disputed limitations italicized):
1. A rotating culture vessel used for three-dimensional
culture of a cell in a nearly gravity-free microgravity
environment, the rotating culture vessel characterized by
compnsmg:
a flat cylindrical culture container having a cylinder axis,
being removably attached to an end of a horizontal rotating
shaft of a rotating culture device such that the cylinder axis is
coaxially arranged to the horizontal rotating shaft as a rotating
center;
one or more inlets/outlets for supplying a cell and a
liquid culture medium at an initial stage and taking out a
cultured cell at an appropriate position on the flat cylindrical
culture container; and
at least one pair of a supply port and a discharge port for
exchanging the liquid culture medium on an outer
circumferential cylindrical face of the culture container,
the pair of the supply port and the discharge port being
positioned 180° opposite to each other,
the discharge port having a center line passing through
the rotating center, and
the supply port having a center line eccentrically
positioned with respect to the rotating center.
Appeal Br. 18 (Claims Appendix). Claim 2 depends from claim 1 and
requires that the "distance between the center line of the supply port and the
rotating center is 0.5r to 0.9r where the culture container has a culture space
having a radius of r." Id. at 19. Claims 7 and 13, the other independent
claims in this Appeal, are directed to an automatic cell culture apparatus
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Application 13/375,606
using the rotating culture vessel according to claim 1 and claim 2,
respectively. Id. at 20-21, 23-24.
The Examiner maintains the following rejections under 35 U.S.C.
§ 103:
1. Claims 1-3 and 10 over Akers3 as evidenced by Anderson4 in view of
Schwarz '998· 5
'
2. Claims 4, 6, and 11 over Akers as evidenced by Anderson in view of
Schwarz '998 and further in view of Bae; 6 and
3. Claims 5 and 12 over Akers as evidenced by Anderson in view of
Schwarz '998 in view of Schwarz '623 7 in view of Bae and further in
view of Florez. 8
Ans. 2-3; Non-Final Act. 3-21.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. See Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections"). After review of the
arguments and evidence presented by both Appellants and the Examiner, we
conclude that the claim limitations recited in claim 1 are so indefinite as to
3 Akers et al., US 2004/0110273 Al, published June 10, 2004 ("Akers").
4 Anderson et al., US 6,080,581, issued June 27, 2000 ("Anderson").
5 Schwarz et al., US 5,437,998, issued August 1, 1995 ("Schwarz '998").
6 Bae et al., US 5,262,055, issued November 16, 1993 ("Bae").
7 Schwarz et al., US 4,988,623, issued January 29, 1991 ("Schwarz '623").
8 Florez et al., US 2009/0148941 Al, published June 11, 2009 ("Florez").
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Appeal2017-010659
Application 13/375,606
require us to make assumptions about the meaning of the terms employed in
order to determine the scope of the claim.
The Examiner determines that claims 1-3 and 10 would have been
obvious to one of ordinary skill in the art at the time of the invention for the
reasons stated on pages 3-10 of the Non-Final Office Action. Appellants
argue the claims as a group (Appeal Br. 6-13). Accordingly, claims 2, 3,
and 10 will stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants contend that the Examiner erred in rejecting claim 1 over
the combination of Akers, Anderson, and Schwarz '998 because (1) Akers
does not disclose a flat cylindrical shape, (2) Akers is not removably
attached to an end of a horizontal rotating shaft, and (3) the center line of
Akers' supply port is not eccentrically positioned with respect to the rotating
center of the rotating shaft. Appeal Br. 7-8. Appellants assert that what the
Examiner describes as removable in Akers is "forcible removal with
breakage, dismembering or cutting [that] cannot be defined as 'removably' ."
Id. at 8. Appellants additionally argue that the secondary references do not
cure the deficiencies of Akers. Id. at 10-13. Appellants specifically contend
that tubular vessel 4 of Schwarz '998 is not removable, but, instead, secured
via screw threads that make detachment unlikely. Id. at 12-13.
The Examiner responds that Akers is not relied upon in the rejection
for teaching a flat cylinder shape. Ans. 3. The Examiner further responds
that Akers discloses a variety of drive assemblies may be used to rotate the
culture chamber and provides Anderson as one such example, which the
Examiner also cites for teaching "threadably connecting the vessel 10 to the
motor assembly 54 through screw threads on drive shaft 32." Id. at 4--5.
The Examiner additionally finds that Schwarz '998 also discloses a
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Appeal2017-010659
Application 13/375,606
horizontal rotating shaft for rotating a removably connected culture vessel.
Id. at 5. Regarding the interpretation of the term "removably attached," the
Examiner points out that Appellants' Specification and claims are silent as to
any specific structure that may be required for such a connection, therefore,
the term is broadly interpreted to read on the screw thread connections
described by the cited prior art and also the destructive methods identified
by the Examiner to illustrate the extent of how broadly the term may be
interpreted absent more limiting structure. Id. at 6.
Regarding the recited "center line," the Examiner responds that the
Appellants appear to argue that every port has only one center line such that
it corresponds to the direction of fluid flow through the port, however, that is
not the commonly understood definition of a center line. Ans. 8. The
Examiner further responds that the broadest reasonable interpretation of a
"center line" is "an 'imaginary line which passes through a center of
something." Ans. 9. Annotated Figure 3 Akers is shown below:
Annotated Figure 3 includes dashed lines corresponding to example
center lines through Aker's port structure 25 as well as an arrow line
representing a rotating center. Ans. 9. The Examiner further notes that
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Appeal2017-010659
Application 13/375,606
because the vessel and ports are three dimensional structures, other non-
illustrated center lines which pass through the rotating center and are
eccentric and do not pass through the rotating center as required by claim 1
can be envisioned. Id. at 10.
Regarding Schwarz '998, the Examiner responds that "complementary
screw threads are very well known in the art to allow the attachment and
detachment of elements." Id. at 13 (quoting Schwarz regarding loosening
and lock nut to prevent unscrewing). The Examiner finds that Schwarz does
not describe "preventing deliberate user detachment." Id. The Examiner
further responds that Schwarz '998 was not relied upon to show port center
lines. Id. at 15.
In the Reply Brief, Appellants restate all of their arguments contained
in the Appeal Brief and additionally argue that "inadvertent loosening"
described in the prior art indicates that "the screw threads are not meant to
be removable but are intended to be secure." Reply Br. 3--4. Regarding the
term "removably attached" not being limited by structure in the claim,
Appellants' position is that they "believe[] that the claims clearly describe
the structural features of the claimed invention." Id. at 4.
Regarding Aker' s culture vessel, Appellants agree that "ports 40 and
44 are placed 180 degrees opposite to each other" as required by claim 1
(Reply Br. 4; Appeal Br. 8). Appellants argue, however, that because both
of Aker's ports 40 and 44 "hav[ e] axis/center lines passing through a
rotating center of the culture vessel" (Reply Br. 4), the configuration does
not meet the limitations of claim 1 because both ports having a shared axis
means neither port is then "eccentrically positioned with respect to the
rotating center" as recited in the claim. Id. at 4--5.
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Appeal2017-010659
Application 13/375,606
The difficulty with Appellants' argument distinguishing Aker is that
two ports, or two of anything, positioned 180 degrees opposite of each other
means that those two points are on a common axis. Appellants equate the
term "center line" with axis in their argument (Reply Br. 4). It is unclear
how two points that are 180 degrees opposite each other could have anything
other than a shared or common axis in order to be "eccentrically positioned"
as recited in claim 1 if the correct interpretation of "center line" is "axis" as
Appellants contend. Appellants do not direct us to any portion of their
Specification or Figures to explain the contradictory relationships recited in
claim 1 concerning the axes of the ports other than to cite paragraph 32 on
page 20 of the Specification. Appeal Br. 5. Paragraph 32 makes reference
to Figures 9-15 and states "[ t ]he pair of the supply port 22 and the discharge
port 23 is positioned 180Q opposite to each other, the discharge port 23 has a
center line passing through the rotating center, and the supply port 22 has a
center line eccentrically positioned with respect to the rotating center."
Figures 9-15 are all said to depict "a rotating culture vessel," however, the
Figures do not indicate a rotating shaft, a rotating center, or how the culture
vessel rotates.
Appellants' Figures 16-17, on the other hand, appear to show rotation
of the culture vessel during three states of the liquid culture medium
exchange operation when the first, second, and third pairs of supply ports 22
and discharge ports 23 are used. Spec. ,r 28. Figures 16-18 are shown
below.
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Appeal2017-010659
Application 13/375,606
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