Wanis, Sameh S.

Patent Trials and Appeals Board

Oct 8, 2019

14165085 - (D) (P.T.A.B. Oct. 8, 2019)

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.
14/165,085 01/27/2014 Sameh S. Wanis NGC-00143(006224-0030) 4732
64728 7590 10/08/2019
SHUMAKER, LOOP & KENDRICK, LLP
NORTHROP GRUMMAN CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
HENKEL, DANIELLE B
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
10/08/2019 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):
CCARDINALE@shumaker.com
cgolupski@shumaker.com
tlopez@shumaker.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMEH S. WANIS
Appeal 2019-000811
Application 14/165,085
Technology Center 1700
Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and LILAN REN,
Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–15.3
We AFFIRM.

1 This Decision includes citations to the following documents: Specification
filed January 27, 2014 (“Spec.”); Final Office Action dated April 6, 2018
(“Final”); Appeal Brief filed May 17, 2018 (“Appeal Br.”); Examiner’s
Answer dated October 2, 2018 (“Ans.”); and Reply Brief filed November 8,
2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to the “Applicant” as defined in
37 C.F.R. § 1.42(a). The Appellant is Northrop Grumman Systems
Corporation, also identified as the real party in interest. Appeal Br. 3.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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CLAIMED SUBJECT MATTER
“Th[e] invention relates . . . to a system . . . for providing tissue
regeneration without the use of scaffolds and . . . that employs acoustic
fields to confine human cells into sheets and electric fields to form cell
assemblies into chains for vascularization.” Spec. ¶ 1. The invention is said
to “solve[] two major problems in tissue engineering and generation,
namely, the elimination of a physical scaffold, and increasing the speed of
the alignment of individual cells into the desired three-dimensional
geometry.” Id. ¶ 19. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A system for regenerating tissue, said system comprising:
a vessel including a base portion at a first end and a
reflector at a second end, said vessel containing a fluid suitable
for enhancing tissue generation; and
an acoustic transducer in the base portion, said acoustic
transducer being configured to provide an acoustic signal
which, based on a length of the vessel and interaction with the
reflector, generates standing acoustic fields in the vessel, said
standing acoustic fields substantially confining cells within the
fluid into at least one cell sheet to cause the cells to generate an
extracellular matrix and subsequently the tissue, where the
acoustic signal includes multiple field frequencies enabling
collection of individual cells and the at least one cell sheet into
one or more three-dimensional surfaces.
Appeal Br. 19 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
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Application 14/165,085

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Stuckart
Brcka

US 5,164,094
US 2013/0192990 A1

Nov. 17, 1992
Aug. 1, 2013

REJECTIONS
1. Claims 1–15 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph. Final 2.
2. Claims 1–15 are rejected under 35 U.S.C. § 103 as unpatentable
over Brcka in view of Stuckart. Final 4.
OPINION
The Examiner rejected claims 1–15 under 35 U.S.C. § 112 for failure
to comply with the written description requirement, and under 35 U.S.C.
§ 103 as obvious. For the reasons stated in the Final Office Action, the
Answer, and below, we sustain both grounds of rejection.
Rejection under 35 U.S.C. § 112
The Appellant filed an amendment on January 9, 2017, amending
independent claim 1 to include the limitation “where the acoustic signal
includes multiple field frequencies enabling collection of individual cells
and the at least one cell sheet into one or more three-dimensional surfaces,”
and amending independent claim 10 to include the limitation “where the
acoustic signal includes multiple field frequencies enabling collection of
individual cells and the plurality of cell sheets into a plurality of three-
dimensional surfaces.” The Examiner determined that the phrase “where the
acoustic signal includes multiple field frequencies” in each of amended
claims 1 and 10 lacks written descriptive support, because “[n]owhere in the
specification is it clearly stated that the multiple field frequencies are part of
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one single acoustic signal alone[,] . . . nor is it clear how the transducer is
configured to create such a signal.” Final 2–3.
The Appellant contends that Specification paragraph 18 provides
written descriptive support for the claim phrase “where the acoustic signal
includes multiple field frequencies” (claims 1, 10). Appeal Br. 7–8. In
particular, the Appellant relies on the following disclosure:
The use of multiple field frequencies enables the collection of
individual cells into specific three-dimensional surfaces and
movement of the formed tissue can be provided at lower
frequencies. Thus, both the individual cells and formed tissue
are manipulated using the field-induced forces. This enables
multiple surfaces to be brought together for multi-cell type
tissues to be formed.
Spec. ¶ 18; see Appeal Br. 8. The Appellant additionally cites Specification
paragraphs 15, 16, and 20–22 as providing written descriptive support. See
Appeal Br. 8–10.
In response, the Examiner argues that “the [S]pecification does not
provide any clear support for how the ‘multiple field frequencies’ are
attributed to the acoustic signal alone.” Ans. 4. The Examiner explains that
Specification paragraph 17 describes the use of both acoustic fields and
electric fields, “[t]hereby giving examples of multiple types of fields that can
be used in combination, and this combination explains how there would be
the multiple field frequencies recited in the following paragraph [0018].”
Ans. 3. The Examiner further asserts that Specification paragraphs 20–22
“only refer to the frequency of the acoustic transducer in the singular.” Ans.
3.
In the Reply Brief, the Appellant argues that one of ordinary skill in
the art would understand that Specification paragraph 18’s description of
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“multiple field frequencies enabl[ing] the collection of individual cells into
specific three-dimensional surfaces” relates to the acoustic signal because
Specification paragraphs 15, 16, and 20–23 clarify that forming sheets of
cells is related to the transducer’s acoustic signal, whereas cell adhesion, not
shaping, is related to the use of electric fields. Reply Br. 2.
We have reviewed the cited disclosure in the Specification, but are not
persuaded of error in the Examiner’s rejection of claims 1–15 as failing to
comply with the written description requirement. Although the Specification
describes the use of higher frequency electric fields to increase the speed of
the cell adhesion process, the Specification clearly suggests that an electric
field is not used solely for this purpose. See Spec. ¶ 16 (“Higher frequency
electric fields (optical fields), such as those produced by lasers, may be used
to increase the speed of the cell adhesion process without affecting the cell
assembly.” (emphasis added)). For example, the Specification discloses that
“[a]coustic and electric forces can be used to manipulate cells in a solution
and shape them into predetermined geometries. . . . Cells will collect into
predetermined shapes by controlling the field distribution and the field
type.” Id. ¶ 15 (emphasis added). In the same paragraph, the Specification
further discloses that “[b]y carefully selecting and tuning the fields, the cells
can be assembled and stably configured into complex three-dimensional
geometries without the need to use a scaffold material.” Id. As to the electric
fields, the Specification discloses that “an electric field within the vessel 12 .
. . provides dielectrophoretic forces to control the position and orientation of
endothelial cells to provide tissue vascularization as the tissue is being
regenerated. . . . [E]lectric fields act on the cells to create linear cell arrays or
chains” Id. ¶ 23. By contrast, as observed by the Examiner (Ans. 3–4), the
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Specification uses the term “frequency” in the singular when discussing the
acoustic signal. See, e.g., Spec. ¶ 20 (“The transducer 22 is intended to
represent any suitable device that can generate an acoustic signal at a desired
frequency . . . .”).
Given the above disclosures, we do not agree with the Appellant that
one of ordinary skill in the art would understand that Specification paragraph
18’s description of “multiple field frequencies enabl[ing] the collection of
individual cells into specific three-dimensional surfaces” relates to the
acoustic signal (Reply Br. 2). Rather, we agree with the Examiner that “the
[S]pecification does not provide any clear support for how the ‘multiple field
frequencies’ are attributed to the acoustic signal alone.” Ans. 4.
Accordingly, we sustain the rejection of claims 1–15 under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph.
Rejection under 35 U.S.C. § 103
The Examiner found that Brcka discloses a system as claimed in
independent claims 1 and 10, with the exception that Brcka “does not
explicitly disclose a reflector or an acoustic transducer in the base portion
configured to provide an acoustic signal that generates standing acoustic
fields and includes multiple field frequencies in the vessel.” Final 4. The
Examiner found that Stuckart “discloses a device for the flocculation,
precipitation, agglomeration or coagulation of substances or microorganisms
present in a liquid.” Id. The Examiner found that Stuckart’s device
comprises a tube having an ultrasonic transducer (an acoustic transducer) in
a base portion and a reflector at the other end. Id. The Examiner further
found that Stuckart discloses exposing liquid to two ultrasonic fields
(multiple fields) and that the ultrasonic treatment can be performed at two or
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more decreasing frequencies (the signal includes multiple field frequencies).
The Examiner determined that one of ordinary skill in the art would have
modified Brcka’s system
to include the acoustic transducer in the arrangement as taught
by [Stuckart] because it provides for extraction and recovery of
microorganisms from a liquid in the most effective manner in a
simple and energy-saving process (Column 1, lines 34–40) and
allows for a rapid coagulation or agglomeration of the
substances with a low energy requirement (Column 2, lines 13–
15) and advantageously allows for further agglomeration during
the growth of the coagulates (Column 4, lines 9–13).
Final 4–5.
The Appellant argues that the Examiner reversibly erred in finding
that Stuckart teaches or suggests multiple field frequencies in a single
acoustic signal. Appeal Br. 13. Specifically, the Appellant argues that
“Stuckart teaches ‘two fields which spatially intersect one another’, but does
not teach two (or multiple frequencies)[, and] that Stuckart teaches only
the use of a single ultrasonic frequency - not multiple field frequencies.” Id.
The Appellant concedes that Stuckart discloses using different frequencies,
but argues that those frequencies are used in different subsequent steps, i.e.,
each step uses one, not multiple field frequencies. Id. at 13–14.
The Appellant’s arguments are not persuasive of reversible error in
the Examiner’s conclusion of obviousness for the reasons explained in the
Answer. See Ans. 4–5. We add the following to address arguments made in
the Reply Brief.
The Examiner cited Stuckart column 3, lines 14–28 as support for
finding that Stuckart discloses multiple ultrasonic fields. Final 7–8; Ans. 4.
The Appellant argues that this disclosure “is clearly describing two different
fields created by two different transducers (‘intersecting each other at right
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angles’),” and there is no disclosure that different frequencies are used for
the two fields. Reply Br. 3. The Appellant’s argument does not persuade us
of error in the Examiner’s obviousness rejection because Stuckart’s
disclosure is not so limited.
The cited disclosure in Stuckart describes an embodiment in which
liquid is “exposed to two ultrasonic fields which spatially intersect one
another . . . and act on the liquid simultaneously or alternatingly.” Stuckart
3:15–18; see Ans. 4. The use of fields that intersect at right angles is merely
identified as preferred. Id. at 3:19–20; see also id. at 8:36–38 (describing an
embodiment in which more than one ultrasonic transducer is used to form
ultrasonic fields that intersect one another at right angles); Ans. 5. Moreover,
as found by the Examiner, based on the Appellant’s admission that “an
acoustic signal including multiple field frequencies would be routine and
conventional,” one of ordinary skill in the art would appreciate that
Stuckart’s transducer is capable of producing an acoustic signal that includes
multiple field frequencies. Ans. 4–5 (quoting Appeal Br. 14 (“[H]ow a
transducer can be configured to provide a single signal with multiple
frequencies . . . is no different than how an audio speaker operates.”)). The
Appellant does not dispute the Examiner’s finding as to the knowledge and
skill level of the ordinary artisan. See generally, Reply Br.
The Appellant argues that Stuckart’s description of using “two or
more successive steps at decreasing frequency” is not a description of
“multiple frequencies in a single applied field as in Appellant’s claims.”
Reply Br. 3. As explained by the Examiner, the Appellant’s argument is not
commensurate in scope with the claim language. Claims 1 and 10 require an
acoustic transducer configured to provide an acoustic signal that is capable
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of generating standing acoustic fields in the vessel and includes multiple
field frequencies. The Appellant has not explained persuasively why the
claims should be limited to an acoustic transducer configured to generate
multiple field frequencies simultaneously, but to exclude an acoustic
transducer configured to generate a field frequency in one process step and a
different field frequency in another process step. Further, as noted in the
prior paragraph, the Appellant has not refuted the Examiner’s finding that
one of ordinary skill in the art would appreciate that Stuckart’s transducer is
capable of producing an acoustic signal that includes multiple field
frequencies.
Accordingly, for the reasons stated in the Final Office Action, the
Answer, and above, we are not persuaded of reversible error in the
Examiner’s rejection of independent claims 1 and 10.
The Appellant presents a separate argument in support of patentability
of dependent claims 4 and 11, and the claims dependent therefrom (claims 6,
7, 13, and 14). Appeal Br. 16–17. The Examiner fully addresses this
argument on pages 5–7 of the Answer and we agree that the Appellant’s
argument is not persuasive of reversible error for the reasons stated in the
Answer. In particular, we determine that the Examiner has provided
sufficient facts and reasons to support a finding that Brcka discloses the
same structural features recited in the claims and, therefore, Brcka’s system
would be capable of performing the functional limitations recited in the
claims. “[W]hen the prior art evidence reasonably allows the PTO to
conclude that a claimed feature is present in the prior art, the evidence
‘compels such a conclusion if the applicant produces no evidence or
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argument to rebut it.’” In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004)
(quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990)).
Because the Appellant has not provided persuasive evidence or
argument to rebut the Examiner’s findings, we are not persuaded of
reversible error in the Examiner’s conclusion of obviousness as to dependent
claims 4, 6, 7, 11, 13, and 14.
Accordingly, we sustain the rejection of claims 1–15 under 35 U.S.C.
§ 103 as unpatentable over Brcka and Stuckart.

CONCLUSION
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–15 112(a) or 112,
1st paragraph

1–15
1–15 103 Brcka, Stuckart 1–15
Overall
Outcome
1–15

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).
AFFIRMED