Ex Parte Yokoi et al

Patent Trial and Appeal Board

May 2, 2018

13457675 (P.T.A.B. May. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/457,675 04/27/2012 Y asuhiko Y okoi
38834 7590 05/04/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
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.
P5119USOO 1066
EXAMINER
BOWERS, NATHAN ANDREW
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
05/04/2018 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUHIKO YOKOI, KOICHI KOBAYASHI,
HIROSHI YAMAMOTO, and HIROKI BUSUJIMA
Appeal2017-008412
Application 13/457,675
Technology Center 1700
Before ROMULO H. DELMENDO, BEYERL YA. FRANKLIN, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from rejections2 of claims
1, 2, 4, 5, 7, 8, and 10-12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 PANASONIC HEALTHCARE CO., LTD. is identified as the real party in
interest. (Appeal Brief, filed February 22 2017 ("App. Br."), 2.)
2 Final Rejection mailed June 30 2016 ("Final Act."). In this decision, we
also refer to the Examiner's Answer mailed March 29 2017 ("Ans."), and
the Reply Brief filed May 15 2017 ("Reply Br.").
Appeal2017-008412
Application 13/457,675
CLAIMED SUBJECT MATTER
The claims are directed to an isolator and a method involving moving
subcultured cells. Spec. 1: 11-11, 24--25. 3 Claims 1 and 11, reproduced
below, are illustrative of the claimed subject matter:
1. An isolator, comprising:
a working chamber which is capable of having a culture
apparatus demountably mounted to an exterior of the working
chamber via a coupling member, and including an opening
configured to attach a working glove thereto and an opening
configured to allow a culture chamber of the culture apparatus
and the working chamber to communicate with each other, when
the culture apparatus has been mounted;
a storage chamber including a door configured to open or
close an opening configured to allow the storage chamber and an
exterior of the storage chamber to communicate with each other,
the door configured to open or close the opening configured to
allow the storage chamber and the exterior of the storage
chamber to communicate with each other being a part of an outer
surface of the isolator in a state where the door configured to
open or close the opening configured to allow the storage
chamber and the exterior of the storage chamber to communicate
with each other is closed, wherein a culture is not cultured in the
storage chamber;
a door configured to open or close an opening configured
to allow the working chamber and the storage chamber to
communicate with each other; and
a temperature adjusting device configured to, when the
culture taken out of the culture chamber has been temporarily
stored in the storage chamber, and the storage chamber has been
hermetically sealed, and thereafter the culture apparatus has
been demounted, adjust temperature of the culture stored in the
storage chamber.
3 We refer to the specification as "Spec."
2
Appeal2017-008412
Application 13/457,675
11. A method for moving culture stored in a first culture
chamber of a first culture apparatus to a second culture chamber
of a second culture apparatus in an isolator to which the first
culture apparatus or the second culture apparatus can be
mounted, the isolator comprising: a working chamber which is
capable of having a culture apparatus demountably mounted to
an exterior of the working chamber via a coupling member, and
including an opening configured to attach a working glove
thereto and an opening configured to allow the first or the second
culture chamber and the working chamber to communicate with
each other, when the first or the second culture apparatus has
been mounted, wherein a culture is not cultured in the working
chamber; a door configured to close the opening configured to
allow the first or the second culture chamber and the working
chamber to communicate with each other, so as to hermetically
seal the working chamber; and a temperature adjusting device
included in the working chamber, the method comprising:
a first process of moving the culture in the first culture
chamber to the working chamber via the opening configured to
allow the first or the second culture chamber and the working
chamber to communicate with each other, when the first culture
apparatus has been mounted to the working chamber;
a second process of closing the door and hermetically
sealing the working chamber;
a third process of causing the temperature adjusting device
to adjust temperature of the culture;
a fourth process of demounting the first culture apparatus;
a fifth process of mounting the second culture apparatus;
and
a sixth process of opening the door and moving the culture
temporarily stored in the working chamber to the second culture
chamber via the opening configured to allow the first or the
second culture chamber and the working chamber to
communicate with each other,
wherein the first culture apparatus and the second culture
apparatus are each demountably mountable to an exterior of the
working chamber via a coupling member.
App. Br. 20, 22-23 (Claims Appendix) (emphasis added).
3
Appeal2017-008412
Application 13/457,675
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal are:
Cox
Barbera-Guill em
Herbert
US 3,907,389 Sep. 23, 1975
US 2003/0040104 Al Feb. 27, 2003
US 2010/0291664 Al Nov. 18, 2010
REJECTIONS
Claims 1, 2, 4, 5, 7, 8, and 10-12 are rejected under pre-AIA 35
U.S.C. § I03(a) as being unpatentable over Herbert in view of Cox and
Barbera-Guillem. Final Act. 3--4.
Claims 1, 2, 4, 5, 7, 8, and 10-12 are additionally rejected under pre-
AIA 35 U.S.C. § I03(a) as being unpatentable over Cox in view of Barbera-
Guillem. Final Act. 7-8.
OPINION
We adopt the Examiner's findings pertinent to the issues raised by
Appellants and incorporate the fact findings as set forth in the Final
Rejection and Examiner's Answer. We add the following for emphasis.
Rejection of Claim 1 (Herbert, Cox, and Barbera-Guillem)
The dispositive issue on appeal is whether the combined prior art
teaches an isolator having "a temperature adjusting device configured to,
when the culture taken out of the culture chamber has been temporarily
stored in the storage chamber, and the storage chamber has been
hermetically sealed, and thereafter the culture apparatus has been
4
Appeal2017-008412
Application 13/457,675
demounted, adjust temperature of the culture stored in the storage chamber"
as recited in claim 1. 4
Citing relevant components in Herbert, Cox and "an environment
controlling mechanism 16 for controlling the environment conditions of
biochamber 14" described in Barbera-Guillem, the Examiner finds that each
and every limitation of claim 1 has been taught or suggested by the
combined teaching of these references. Final Act. 3--4 ( citing various
portions of each reference); Barbera-Guillem ,r 37 ( cited in Final Act 3).
Appellants do not dispute Barbera-Guillem describes that the environmental
controlling mechanism "controls the environment conditions in biochamber
14 in which cells may be cultured and manipulated by controlling a
parameter selected from the group consisting of temperature ... " but argue
that the prior art environmental controlling mechanism does not "adjust
temperature ... in the storage chamber" as recited in claim 1. App. Br. 9-10
(citing Barbera-Guillem ,r 37). Appellants argue that because the
biochamber 14 in Barbera-Guillem is not a storage chamber but a culture
apparatus, "the teachings of Barbera-Guillem are completely duplicative of
the teachings of Herbert" because a culture apparatus "typically include[ s]
temperature and humidity controls[.]" Id. at 10.
"[A]pparatus claims cover what a device is, not what a device does."
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). An inventor of a structure (machine or article of manufacture) is
entitled to benefit from all of its uses, even those not described, Roberts v.
Ryer, 91 U.S. 150, 157 (1875), and conversely, patentability of the structure
4 Claims depend from claim 1 stand or fall with claim 1 with respect to this
obviousness rejection. App. Br. 12.
5
Appeal2017-008412
Application 13/457,675
cannot tum on the use or function of the structure. In re_Michlin, 256 F.2d
317, 320 (CCP A 1958) ("It is well settled that patentability of apparatus
claims must depend upon structural limitations and not upon statements of
function.").
Claims directed to an apparatus therefore must be distinguished from
the prior art in terms of structure. See In re Danly, 263 F.2d 844, 848
( CCP A 19 59) ("Claims drawn to an apparatus must distinguish from the
prior art in terms of structure rather than function"); In re Gardiner, 171
F .2d 313, 315-16 ( CCP A 1948) ("It is trite to state that the patentability of
apparatus claims must be shown in the structure claimed and not merely
upon a use, function, or result thereof."). "'By its own literal terms a claim
employing [functional] language covers any and all embodiments which
perform the recited function." Swinehart, 439 F.2d 213. Where there is
reason to believe that the structure of the prior art is inherently capable of
performing the claimed function, the burden shifts to the applicant to show
that the claimed function patentably distinguishes the claimed structure from
the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997); In re Hallman, 655 F.2d 212,215 (CCPA 1981).
In this case, Appellants acknowledge that Barbera-Guillem teaches an
environmental controlling mechanism for a cell culture device which
includes a storage array. Reply Br. 3 ("Applicant does not dispute that it is
possible to store cells in the biochamber 14 of Barbera-Guillem."); see
Barbera-Guillem ,r,r 37, 38. Whether the prior art teachings are duplicative -
as argued by Appellants (App. Br. 10)- does not identify reversible error in
the Examiner's finding that each component of the recited isolator is taught
in the prior art. Appellants' argument that "the biochamber 14 of Barbera-
6
Appeal2017-008412
Application 13/457,675
Guillem is most analogous to the incubator 21 of Herbert" (Reply Br. 3;
App. Br. 11) also does not distinguish the recited isolator from the prior art
in terms of structure. See In re Danly, 263 F.2d at 848.
Appellants argue that there are "key differences between culture
chambers and storage chambers" because culture chambers are "for
cultivating culture, while storage chambers are not for cultivating culture."
App. Br. 11. Appellants also argue that the claim is "based on an idea of
temporarily storing culture" in the storage chambers. Id. at 12. Appellants
thus reason that there would be no reason to implement temperature control
for a storage chamber. Id. at 11; Reply Br. 3--4. Appellants, however, do
not disagree with the Examiner's finding that the biochamber 14 of
Barbera-Guillem is partly used as a storage chamber. Compare Ans. 4 with
Reply Br. 3 ("In fact, as noted by the Examiner's Answer, a storage array 20
including cell culture devices 22 is disposed within the biochamber. "). We
further note that Barbera-Guillem states "[b ]asic operations for culturing
cells may include ... maintenance of cell culture" such as "storage under
appropriate environmental conditions." Barbera-Guillem ,r 2.
Appellants' argument that "it is well known to those having ordinary
skill in the art that adding temperature control to [a storage] chamber would
be unnecessary, and add unnecessary cost and complexity to systems" is
unsupported by factual evidence. Reply Br. 5. "Attorneys' argument is no
substitute for evidence." Johnston v. IVAC Corp., 885 F.2d 1574, 1581
(Fed. Cir. 1989). In any case, even if this assertion is supported by evidence,
"a given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to combine."
Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
7
Appeal2017-008412
Application 13/457,675
Appellants have not identified reversible error in the Examiner's rationale
that a skilled artisan, based on the prior art teaching of temperature
controlling a cell culture device which includes a storage array, would
predictably implement the temperature control component for a storage
array. Compare Final Act. 4 with App. Br. 9-11; compare Ans. 4 with
Reply Br. 5.
Rejection of Claims 11 and 12 (Herbert, Cox, and Barbera-Guill em)
From the outset, Appellants' argument that claim 11 "requires
adjusting the temperature of the culture stored in the working chamber by a
temperature adjusting device ... when culture taken out of the culture
chamber has been stored in the working chamber and the working chamber
has been hermetically sealed. Thereafter, the culture apparatus is
demounted" is not commensurate in scope with the language of the claim.
See App. Br. 12-13. For example, claim 11 does not recite an order
performing a step of "adjusting the temperature ... when culture taken out
of the culture chamber has been stored in the working chamber and the
working chamber has been hermetically sealed" and a step of "[t]hereafter,
the culture apparatus is demounted." Appellants' arguments with regard to
claim 11 mirror those for claim 1 (id.) which have been addressed in detail
supra. 5
Appellants' arguments with regard to claim 12 are identical to those
for claim 11 (compare App. Br. 12-13 with App. Br. 13-14) which have
5 Claims depend from claim 11 stand or fall with claim 11 with respect to
this obviousness rejection. App. Br. 13.
8
Appeal2017-008412
Application 13/457,675
been considered supra and are not persuasive of reversible error in the
Examiner's fact findings. 6
Rejection of Claims 1, 11, and 12 (Cox and Barbera-Guillem)
Appellants' arguments with regard to the rejection based on Cox and
Barbera-Guillem are identical to those for the rejection based on Herbert,
Cox, and Barbera-Guillem (compare App. Br. 9-14 with App. Br. 14--18)
which have been considered supra and are not persuasive of reversible error
in the Examiner's fact findings.
DECISION
The Examiner's rejections of claims 1, 2, 4, 5, 7, 8, and 10-12 are
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
6 Claims depend from claim 12 stand or fall with claim 12 with respect to
this obviousness rejection. App. Br. 14.
9