Ex Parte Yoneda et al

Board of Patent Appeals and Interferences

Jul 30, 2007

11000309 (B.P.A.I. Jul. 30, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENJI YONEDA, YASUSUKE OSHIMA,
and RYO NIHEL
____________

Appeal 2007-1885
Application 11/000,309
Technology Center 1700
____________

Decided: July 30, 2007
____________

Before PETER F. KRATZ, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-4. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ invention relates to an isolator system comprising a sterile
work chamber in which a sterile condition is maintained. The chamber
comprises a robot that has an operating arm for performing various
Appeal 2007-1885
Application 11/000,309

operations within the sterile work chamber (Specification 2). Representative
independent claim 1, as presented in the Brief, appears below:
1. An isolator system comprising a sterile work chamber in which
a sterile condition is maintained, a robot which is placed in the
sterile work chamber and has an operating arm for performing
various operations within the sterile work chamber, and a
sterilizing gas supply unit for supplying a sterilizing gas to the
interior of the sterile work chamber, said isolator system
additionally comprising:
a gas supply unit for supplying a gas from outside of the sterile
work chamber to the interior of the robot, said gas supply unit
having a top end opening opened inside the operating arm at a top
end side, and a base portion opening opened inside the robot at a
base portion side,
wherein when the sterile work chamber is sterilized with the
sterilizing gas, the gas from the gas supply unit is supplied to the
interior of the robot through one of the top end opening and the
base portion opening, and the gas circulated through the interior of
the robot is discharged to the outside of the robot through the other
opening, and the pressure inside the robot is reduced relative to the
pressure inside the sterile work chamber to which the sterilizing
gas is supplied from the sterilizing gas supply unit.

The Examiner relies on the following references in rejecting the
appealed subject matter:
Petersen US 5,730,777 Mar. 24, 1998
Suzuki US 6,267,022 B1 July 31, 2001

Claims 1-4 stand rejected under 35 U.S.C. §103 as unpatentable over
Petersen in view of Suzuki.

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Application 11/000,309

The issue presented for review is as follows:
Has the Examiner reasonably determined that a person having
ordinary skill in the art would have been led to form a sterile work chamber
comprising a robot wherein a gas is supplied from outside of the sterile work
chamber to the interior of the robot to establish gas circulation through the
interior of the robot which is discharged to the outside of the robot within
the meaning of 35 U.S.C. § 103? On this record, we answer this question in
the affirmative.
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459,
467(1966). “[A]nalysis [of whether the subject matter of a claim would
have been obvious] need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41,
82 USPQ2d 1385, 1396 (2007) quoting In re Kahn, 441 F.3d 977, 988, 78
USPQ2d 1329, 1336-37 (Fed. Cir. 2006); see also DyStar Textilfarben
GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361, 80
USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need not be found in
the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (CCPA 1969)(“Having established that this knowledge was in the
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art, the examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference.’”); In re Hoeschele, 406 F.2d 1403, 1406-07, 160
USPQ 809, 811-812 (CCPA 1969) (“[I]t is proper to take into account not
only specific teachings of the references but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom. . .”). The
analysis supporting obviousness, however, should be made explicit and
should “identify a reason that would have prompted a person of ordinary
skill in the art to combine the elements” in the manner claimed. KSR, 127
S.Ct. at 1731, 82 USPQ2d at 1389.
As evidence of obviousness of the claimed subject matter under § 103,
the Examiner has relied on the disclosures of Petersen and Suzuki (Answer
4-7).
Petersen discloses an isolator system having a sterile work chamber
(2) in which a sterile condition is maintained, and a manipulating means (5)
for performing various operations (col. 5, l. 66 to col. 6, l. 10). Gas is
supplied to the sterile work chamber and separate gas is supplied to the
manipulating means in order to ensure that the pressure inside the
manipulating means is reduced relative to the pressure inside the sterile work
chamber (col. 8, ll. 31-49). Gas is introduced to a first chamber (2) by an
inlet (6) connected to a supply (7). Petersen discloses various sterilizing
gases may be introduced to the chamber in the first chamber (col. 14. ll. 52-
67). Petersen teaches that a gas supply unit (18) supplies a gas from a
second chamber (4) to the interior of the manipulating means (col. 19. ll. 21-
54). Gas moves from an inlet (17) through a passageway (4) formed along
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Application 11/000,309

the outside wall of the sterile work chamber, and is then carried inside and
through the manipulating means. The gas that is circulated through the
interior of the manipulating means is discharged to the outside of the
manipulating means through an outlet (22) by a pump or some other suction
device (col. 11, ll. 35-39). Petersen teaches that the manipulation means can
be a robot (col. 9, ll. 15-31). Petersen does not disclose the circulation of the
gas through the robotic device.
Suzuki discloses an articulated robot having a hollow arm structure
(3). An air flow communication passage is maintained within the structure,
so that dust formed in the robot can be discharged outside of a clean
environment in which the robot is operating (col. 1, ll. 34-43). Suzuki
discloses the pressure level in the robot is controlled and maintained below
the pressure in the clean environment to prevent dust particles from flowing
outside of the robot body (col. 2, ll. 39-49). A first opening covered by a
filter is positioned on the robot structure near a joint or wrist unit.
The Examiner contends that the teachings of Petersen and Suzuki
suggest the formation of an isolator system comprising a sterile work
chamber in which a robot is placed and has an operating arm for performing
various operations within the sterile work chamber. The robot comprises a
hollow structure that allows for the circulation of gas that is not in
communication with the sterilized work environment.
Appellants contend that the present invention avoids the problem of
corrosion of the inner portion of the robot by sterilizing gas without the need
of covering the outer surface of the robot by supplying a gas from outside of
the sterile work chamber to the interior of the robot to establish a gas
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circulation through the interior of the robot which is discharged to the
outside of the robot (Br. 3-4).
We agree with the Examiner that it would have been obvious to a
person of ordinary skill in the art to employ manipulation means (i.e., a
robot) that includes a hollow structure wherein gas is circulated that does not
enter into the sterilized environment of the first chamber. Petersen discloses
the suitability of using a robot for manipulation of items within a sterilized
environment. A person of ordinary skill in the art would have recognized
the importance of preventing contamination of the sterilized environment.
Suzuki describes a robot for use in clean room environments. Suzuki also
recognizes the importance of isolating the interior of the robot from
communication with the sterilized environment (col. 1, ll. 37-43).
Appellants’ arguments presented in the Briefs have been considered.
We adopt the Examiner's well articulated responses to these arguments
(Answer 7-10). We add the following.
Appellants argue that there is no motivation to use the robot of Suzuki
in the clean room recited in Peterson because Petersen seeks to prevent the
withdrawal of air from the first chamber into the second chamber while
Suzuki withdraws air from the enclosed chamber into the robot (Reply Br.
3). This argument is not persuasive. A person of ordinary skill in the art
recognizes the importance of preventing contamination of the isolation
system (clean room environment). Petersen discloses that the second
chamber is isolated from the first chamber. A person of ordinary skill in the
art would understand that the use of a robot and the system of Petersen must
also be isolated from the first chamber. The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
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into the structure of the primary reference.... Rather, the test is what the
combined teachings of those references would have suggested to those of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ
385, 389 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.”); and In re Nievelt, 482 F.2d 965, 968, 179 USPQ 224, 226 (CCPA
1973) (“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
For the reasons set forth above and in the Answer, we affirm the
rejection of claims 1-4. As a final point with respect to the § 103 rejection,
we note that Appellants base no argument upon objective evidence of
nonobviousness, such as unexpected results.
ORDER
The Examiner's rejection of claims 1-4 under 35 U.S.C. § 103(a) 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) (iv) (2006).
AFFIRMED

tlc/ls/cam

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Appeal 2007-1885
Application 11/000,309

FLYNN, THIEL, BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
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