LIFE TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Oct 29, 2021

2020005077 (P.T.A.B. Oct. 29, 2021)

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.
16/175,550 10/30/2018 Terence Tak-Shing TAM 16100.20 5337
137270 7590 10/29/2021
Workman Nydegger/Life Technologies Corporation
60 East South Temple, Suite 1000
Salt Lake City, UT 84111
EXAMINER
KHALID, OMER
ART UNIT PAPER NUMBER
2422
NOTIFICATION DATE DELIVERY MODE
10/29/2021 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):
PatentDocketing@thermofisher.com
docketing@wnlaw.com
pair_thermofisher@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERENCE TAK-SHING TAM, CHRISTOPHER MARTIN,
FRANK METTING, JASON MECHAM, ROBERT DAIN,
LARRY RYSTROM, PAUL ADRIAN BOESCHOTEN, and
STEVEN W. LYTLE
Appeal 2020-005077
Application 16/175,550
Technology Center 2400
Before ALLEN R. MACDONALD, MICHAEL J. STRAUSS, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Herein, “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as LIFE
TECHNOLOGIES CORPORATION. Appeal Br. 2.
Appeal 2020-005077
Application 16/175,550

2
STATEMENT OF THE CASE
Introduction
Appellant states the Application is directed to “imaging systems and
methods in the field of microscopy” using “integrated controls for imaging
and environmental settings.” Appeal Br. 2, 4. Claims 23, 26–42, and 44 are
pending; claims 23, 29, and 36 are independent. Appeal Br. 25–29. Claim
23 is reproduced below for reference (emphases added):
23. An imaging system, comprising:
a chamber having a set of environmental settings, the set
of environmental settings comprising at least one of:
a temperature of the chamber, a humidity of the
chamber, a pressure of the chamber, or a concentration of gas
within the chamber, and
wherein the set of environmental settings
additionally comprises an introduction or a regulation of one or
more reagents, growth factors, or other adjuvants for stimulating
or modifying a growth of a sample within the chamber;
an imaging device for imaging a sample within the
chamber, the imaging device having a set of imaging parameters,
the set of imaging parameters comprising at least one of:
a magnification setting, a focal length setting, a resolution
setting, an illumination setting, a monochrome setting, a color
setting, a fluorescent stain setting, a transparency setting, or a
phase setting;
a system controller operatively connected to the chamber
and the imaging device and configured (i) to individually change
one or more of the set of environmental settings or the set of
imaging parameters and (ii) to simultaneously change at least
one environmental setting within the set of environmental
settings with at least one imaging parameter of the set of imaging
parameters.
Appeal Br. 25 (Claims App.).
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Application 16/175,550

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References and Rejections2
Claims 23, 26–29, 30–42, and 44 are rejected under 35 U.S.C. § 103
as being unpatentable over Kagayama (US 2005/0282268 A1, published
Dec. 22, 2005), in view of Namba (US 8,179,597 B2, issued May 15, 2012).
Final Act. 3.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made, but chose not to timely
present, are forfeit. See 37 C.F.R. § 41.37(c)(1)(iv) and 37 C.F.R.
§ 41.41(b)(2).
We disagree with Appellant that the Examiner erred and adopt as our
own the findings and reasons set forth by the Examiner, to the extent
consistent with our analysis below. We add the following primarily for
emphasis.

A. Independent Claim 23
Kagayama
Appellant argues the Examiner’s rejection of independent claim 23 is
in error, because “the Examiner has failed to provide evidence that
[Kagayama’s] controller 2 is configured to ‘simultaneously change at least
one environmental setting within the set of environmental settings with at
least one imaging parameter of the set of imaging parameters.’” Appeal

2 The Examiner has withdrawn the rejection under 35 U.S.C. § 101. See
Ans. 3.
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Application 16/175,550

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Br. 17. Particularly, Appellant contends that, “at most, the controller 2 is
operable to set imaging parameters.” Id.
We are not persuaded by Appellant’s argument. Kagayama teaches
chamber “values specified can generally be adjusted,” and “[i]n the chamber
20, the temperature, humidity, and carbon dioxide (CO2) concentration are
maintained at fixed values suitable for a culture environment, or are
positively controlled.” Kagayama ¶¶ 36, 39, Final Act. 4; Ans. 15. As cited
by the Examiner, Kagayama further discloses “the heater 12 may be
controlled by the controller 2.” Kagayama ¶ 54; Final Act. 5. Based on the
record before us, we disagree with Appellant’s argument “the controller 2 is
not operable to set or control the temperature controller 6 or heater 12.”
Appeal Br. 17 (emphasis added). Thus, we are not persuaded the examiner
errs in finding that, by disclosing the control of various variables, Kagayama
teaches or suggests the disputed limitations.
Separately, we agree with the Examiner that Kagayama teaches or
suggests the recited controller, because Kagayama’s “controller 2 and
temperature controller 6 are connected to a computer 9 that can control both
controllers 2 and 6.” Ans. 15 (quoting Kagayama ¶ 35). Appellant fails to
differentiate persuasively the controller, within the meaning of the claim,
from a computer known to one of ordinary skill in the art at the time of the
invention. Rather, the Examiner correctly finds the disputed limitations are
obvious to one of ordinary skill, as supported by a factual basis in view of
the computer teachings of Kagayama. See Kagayama Fig. 2; Final Act. 4, 5.

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Application 16/175,550

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Namba
Appellant further argues the Examiner errs, because “the Examiner
fails to provide the requisite evidence that Namba, if combined with
Kagayama, would result in the claimed invention.” Appeal Br. 18.
Appellant contends that “the Final Office Action fails to provide evidence
that Namba discloses the acts of contacting cells with a substance to cause a
stimulus, as being operable by a ‘system controller,’ as required by claim
23,” and that, “[t]o the contrary, the evidence provided by Namba is that
this is performed manually.” Id.; citing Namba 50:62–60:26.
We are unpersuaded the Examiner errs. We agree with the Examiner
that the combination of Kagayama’s controller and Namba’s cell contact
method renders the dispute limitation obvious. See Final Act. 5; Ans. 15–
16; Kagayama ¶ 32, Fig. 2; Namba 60:17–18 (“Next, a substance (e.g.,
compound), . . . is brought into contact with the cell to cause a stimulus.”).
Appellant’s arguments against Namba alone fail to address the Examiner’s
finding that Kagayama in combination with Namba teaches or suggests the
argued subject matter.
Furthermore, we find Appellant’s arguments are not commensurate
with the scope of the claim. Claim 23 recites “the set of environmental
settings additionally comprises an introduction or a regulation of one or
more reagents, growth factors, or other adjuvants,” and “a system controller
operatively . . . change at least one environmental setting.” Appeal Br. 25
(emphases added). That is, the controller need only change one
environmental setting, such as temperature. The claim does not require the
controller to change the reagents or other substances. Accordingly, under
the broadest reasonable construction of claim 23, it is irrelevant whether
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Namba teaches a controller configured to change a setting comprising
contacting cells with a substance. For this additional reason, we are not
persuaded the Examiner’s rejection of claim 23 is in error.
We sustain the Examiner’s rejection of independent claim 23, and the
rejection of claims 26–28 not separately argued. See Appeal Br. 19.

Independent Claim 29
Appellant argues the Examiner’s rejection of independent claim 29 is
in error, because “the Examiner has failed to set forth any basis for
Kagayama disclosing receipt of a triggering event at the system controller.”
Appeal Br. 21. Appellant contends Kagayama “simply disclose[s] different
configurations that can be made with the imaging system.” Id.
We are not persuaded the Examiner errs in finding Kagayama teaches
receipt of a triggering event, as claimed:
[I]n response to the triggering event {[0059], At step S2, an input
indicating whether an original position of the stage should be set
is waited for. The operator may use a mouse, clicking the Init
buttons provided in Stage/R.theta. and Stage/Z of the control
panel GUI 81. Then, the original position of the stage is set[}].
Ans. 16; see also Final Act. 7; Kagayama ¶¶ 50–61. Other than quoting the
claim, Appellant provides no analysis or evidence (such as citing to the
Specification for a definition) with respect to the claimed “triggering event.”
Thus, Appellant fails to show Kagayama’s input is patentably
distinguishable from the limitation. See 37 C.F.R. § 41.37(c)(1)(iv) (“A
statement [that] merely points out what a claim recites will not be considered
an argument for separate patentability of the claim.”); In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
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brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”).
Appellant further contends “Kagayama is directed to imaging systems
that maintain the culture environments,” which “is the opposite of
‘automatically and dynamically update[ing] the set of initial environmental
settings to the set of changed environmental settings,’ as required by claim
29.” Final Act. 22.
We are not persuaded the Examiner errs in citing to Kagayama for the
disputed limitations of claim 29. The Examiner finds that Kagayama’s use
of the temperature control heater teaches or suggests automatically and
dynamically updating the set of initial environmental settings to the set of
changed environmental settings. See Final Act. 7; Ans. 16; Kagayama ¶ 32.
We find the Examiner’s determination to be reasonable because Kagayama
teaches or suggests the heaters can be controlled by a user and can operate
automatically. See Kagayama ¶¶ 40, 54. We further note Kagayama
discloses “[t]he [environmental] values specified can generally be adjusted,”
and can be “maintained at fixed values . . ., or are positively controlled.”
Kagayama ¶¶ 36, 39. We agree with the Examiner that an artisan of
ordinary skill would find the disputed limitations obvious in view of
Kagayama’s environmental value control teachings. See Final Act. 7; Ans.
16. Accordingly, we are not persuaded the Examiner errs in finding claim
29 to be obvious in view of the prior art.
We sustain the Examiner’s obviousness rejection of independent
claim 29, and the rejection of claims 30–35 and 44 not separately argued.
See Appeal Br. 22.
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CONCLUSION
We are not persuaded the Examiner errs in finding claims 23, 26–35,
and 44 to be obvious. Appellant does not present separate substantive
arguments for the remaining claims. See Appeal Br. 22–23. Thus, we
sustain the Examiner’s obviousness rejection of claims 23, 26–42, and 44.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
23, 26–42,
44
103 Kagayama, Namba 23, 26–42,
44

TIME PERIOD FOR RESPONSE
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)(1)(iv) (2019).
AFFIRMED