VanRx Pharmaceuticals, Inc.

Patent Trials and Appeals Board

May 28, 2020

14377696 - (D) (P.T.A.B. May. 28, 2020)

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.
14/377,696 08/08/2014 Christopher PROCYSHYN Vanrx-5-828-13371 9487
77741 7590 05/28/2020
Brannon Sowers & Cracraft PC
47 South Meridian Street
Suite 400
Indianapolis, IN 46204
EXAMINER
MCCLAIN, GERALD
ART UNIT PAPER NUMBER
3652
NOTIFICATION DATE DELIVERY MODE
05/28/2020 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):
docket@bscattorneys.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER PROCYSHYN, ROSS M. GOLD,
JEROEN IMMERZEEL, and STEVE SANG JOON

Appeal 2019-006301
Application 14/377,696
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 10–30, and 35. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Vanrx
Pharmasystems, Inc. Appeal Br. 1.
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BACKGROUND
The Specification “relates, in general, to pharmaceutical processing.
More specifically, this invention relates to a multi-axis articulated
manipulating arm apparatus.” Spec. 1.
ILLUSTRATIVE CLAIMS
Claim 1 is the only independent claim on appeal and recites:
1. A hermetically sealed multi-axis articulated arm apparatus
for use within a sealable isolator chamber configured to maintain
an aseptic condition for pharmaceutical applications, the
apparatus comprising:
a shaft having a rotational axis, wherein the shaft passes
through an opening in the sealable isolator chamber and is
configured to rotate around the axis;
a sealing member, including:
an exposed cleanable radial seal,
a mounting surface configured for mounting the sealing
member on and hermetically sealing it to an inner surface of the
sealable isolator chamber, wherein the mounting surface and the
inner surface continuously surround the opening in the sealable
isolator chamber to maintain a hermetically sealed condition,
a shaft sealing surface defined by the exposed cleanable
radial seal, which surrounds and seals the shaft, the exposed
cleanable radial seal extending radially between the inner surface
of the sealable isolator chamber and the shaft sealing surface,
a plurality of interconnected hermetically sealed arm
segments, wherein one of the plurality of arm segments is a
terminal arm segment, and one of the plurality of arm segments
is a first arm segment operably attached to the shaft;
an end effector attached to the terminal arm segment
constructed and adapted to perform aseptic pharmaceutical
container handling applications within the isolator chamber; and
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at least one drive system for driving and controlling the
shaft and the plurality of arm segments, with the drive system
being fully enclosed within the articulated arm apparatus.
Appeal Br. 18.
REJECTIONS
1. The Examiner rejects claims 1, 10–14, 17, 18, 20–24, 26–29, and 35
under 35 U.S.C. § 102(b) as anticipated by Mori.2
2. The Examiner rejects claims 15, 16, 19, 25, and 30 under 35 U.S.C.
§ 103(a) as unpatentable over Mori in view of Grover,3 Ono,4 Caveney,5
and Ouchi.6
DISCUSSION
Anticipation
With respect to claim 1, the Examiner finds, inter alia, that Mori
discloses an articulated arm apparatus and isolator chamber as claimed
including an exposed cleanable radial seal 64 that extends “radially between
the inner surface of the sealable isolator chamber and the shaft sealing
surface” as claimed because “at outer diameter of 64; clearly, 64 ‘extend[s]’
radially from the inside of the robot in figure 2 at 14/20/21/42/45 to the outer
diameter shaft sealing surface of 64.” Final Act. 3. The Examiner further
finds that “[e]xtending in a direction is construed broadly such that a
structure has a dimension in that extension direction.” Id. at 8.

2 Mori, JP 11000888A, pub. Jan. 6, 1999.
3 Grover et al., US 2002/0078778 A1, pub. June 27, 2002.
4 Ono, US 2014/0109712 A1, pub. Apr. 24, 2014.
5 Caveney et al., US 2007/0020082 A1, pub. Jan. 25, 2007.
6 Ouchi et al., US 5,695,289, iss. Dec. 9, 1997.
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Appellant argues that:
Mori discloses and shows seals that are annularly disposed
between cylindrical support member 22 and first arm 11, rather
than the claimed radial seal that radially extends between the
inner surface of the sealable isolator chamber and the shaft
sealing surface. Mori has no such structure, and nothing in Mori
discloses, teaches, or suggests such a structure.
Appeal Br. 8. We agree with Appellant that the Examiner has not
established that Mori discloses an exposed cleanable radial seal extending
radially as required by claim 1. We have reviewed Figure 2 of Mori, relied
upon by the Examiner and find that this figure indicates only that element 64
appears to extend axially between elements in Mori’s apparatus and does not
extend radially between any two structures.
The claim requires a sealing member including the radial seal such
that the sealing member seals the inner surface of the isolating chamber to a
mounting surface such that the mounting surface and the inner surface
“continuously surround the opening” in the isolator chamber. The claim
further requires a shaft that passes through the opening in the isolator
chamber and requires that the radial seal surrounds this shaft and extends
between the shaft sealing surface and the inner surface of the isolator
chamber. Thus, the claim requires a seal that extends around a shaft passing
through the opening in the isolator chamber and extends radially in between
the shaft and the inner surface of the isolator chamber. We fail to see how
Mori’s element 64 discloses such a seal.
To the extent the Examiner finds that the claim requires only that the
seal extends in a radial direction, we disagree. The Examiner’s claim
interpretation appears to ignore several requirements for the claimed seal.
Specifically, as discussed, the seal must extend around a shaft and also be
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radially disposed between the two elements.7 We agree with Appellant that
the Examiner’s interpretation of “extending radially between” would seem to
completely read the term “radially” in this clause out of the claim. See
Texas Instruments, Inc. v. U.S. Int’l Trade Com’n, 988 F.2d 1165, 1171
(Fed. Cir. 1993) (“[T]o construe the claims in the manner suggested by TI
would read an express limitation out of the claims. This, we will not do”).
In particular, we note that the claim already requires a “radial seal” and then
further requires that the seal extends radially between two surfaces. One
would understand that because the seal is “radial” it must extend in some
radial direction. However, the further inclusion of the “extending radially”
language in the claim indicates that the seal is radially disposed between two
elements.
Based on the foregoing, we determine that the Examiner has not
established that Mori discloses a sealing member as claimed because the
Examiner has not established that Mori’s element 65 is a radial seal that
extends radially between two elements. Accordingly, we do not sustain the
anticipation rejection of claim 1. For the same reasons, we do not sustain
the rejection of dependent claims 10–14, 17, 18, 20–24, 26–29, and 35.
Obviousness
With respect to the obviousness rejection of dependent claims 15, 16,
19, 25, and 30, the Examiner does not provide further evidence or reasoning
that would cure the deficiency in the rejection of claim 1, as discussed

7 We base our interpretation of this limitation for the most part on the plain
language of the claims for a description because we find the Specification
insufficiently describes this feature.
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above. Accordingly, for the reasons discussed, we also do not sustain the
rejection of claims 15, 16, 19, 25, and 30.
New Ground of Rejection
We reject claims 1, 10–30, and 35 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
Whether a Specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). To satisfy the written
description requirement, the specification must describe the invention in
sufficient detail so “that one skilled in the art can clearly conclude that the
inventor invented the claimed invention as of the filing date sought,” (In re
Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008) (quoting Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)), i.e., “whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date” (Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (citing Vas-Cath, 935 F.2d at 1563).
Independent claim 1 recites a sealing member that includes an
exposed cleanable radial seal that extends “radially between the inner
surface of the sealable isolator chamber and the shaft sealing surface.” We
determine that the written disclosure, as originally filed, fails to adequately
support such a seal.
As an initial matter, we note that this claim requirement was added by
an amendment filed on January 15, 2018. Appellant indicates that seal 300
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provides support for the claimed seal, as amended. See Remarks 6, filed Jan.
15, 2018. However, Appellant provides no specific explanation regarding
how seal 300 extends radially as required by the amendment. Appellant
does indicate that this language was added to distinguish the claims from
Mori. See id. at 8.
Similarly, in the Appeal Brief, Appellant identifies seal 300 as the
claimed radial seal member. See Appeal Br. 4 (citing Fig. 3; Spec. 10–11).
Appellant acknowledges that seal 300 is described in the prosecution history
as providing a seal between housing 118 and rotatable hub 126. Id.
However, Appellant does not explain, or provide any citation to the written
description portion of the Specification that explains, how seal 300 extends
radially between an inner surface of the sealable isolator chamber and the
shaft sealing surface, as required by the claim. Rather, the Specification, as
filed, appears to only disclose that seal 300 extends between portions of an
“elbow joint” of the articulated arm, and there is no disclosure that such an
elbow joint is located at the inner surface of a sealable isolator chamber such
that the seal 300 may extend between the shaft surface and the inner surface
of the chamber. Accordingly, we determine that the seal 300 fails to provide
adequate support for the exposed cleanable radial seal as claimed.
The written description portion of the Specification also discloses that
a static seal member “can be used between the flange 103 of the base 102
and the floor of the environment within which the articulated arms 100 and
200 is [sic] used.” Spec. 14. We do not see any further description of a
static seal member used in this manner, and thus, we also determine that this
fails to provide adequate support for a seal as claimed.
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Based on the foregoing, we determine that there is a lack of written
description support for the claim requirement of an exposed cleanable radial
seal that extends “radially between the inner surface of the sealable isolator
chamber and the shaft sealing surface.” In other words, the figures and the
written description portion of the Specification fail to reasonably convey to
one of ordinary skill in the art the inventor here had possession of this
subject matter as of the filing date.
CONCLUSION
We REVERSE the rejections of claims 1, 10–30, and 35. We enter a
new ground of rejection of claims 1, 10–30, and 35 under 35 U.S.C. § 112,
first paragraph.

In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis  Affirmed Reversed New
Grounds
1, 10–14,
17, 18,
20–24,
26–29,
35
102(b) Mori 1, 10–14,
17, 18,
20–24,
26–29,
35

15, 16,
19, 25,
30
103(a) Mori, Grover,
Ono, Caveney,
Ouchi
15, 16,
19, 25,
30

1, 10–30,
35
112, first
paragraph
Written description 1, 10–30,
35
Overall
Outcome
1, 10–30,
35
1, 10–30,
35

This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
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Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.

REVERSED;
37 C.F.R. § 41.50(b)