9376305 et al.

Patent Trials and Appeals BoardNov 25, 2020

2020004624 (P.T.A.B. Nov. 25, 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. 96/000,272 10/08/2018 9376305 A259 7000US.REX 1011 26158 7590 11/25/2020 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER DAWSON, GLENN K ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 11/25/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SARTORIUS STEDIM NORTH AMERICA, INC. Patent Owner and Appellant Appeal 2020-004624 Reexamination Control 96/000,272 Patent 9,376,305 Technology Center 3900 Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and JEREMY M. PLENZLER, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellant1 requests reconsideration (hereinafter “Request” or “Req.”) under 37 C.F.R. § 41.52 of our Decision mailed July 30, 2020 (“Decision”), affirming the Examiner’s rejections of claims 1, 2, 4–7, 10–13, 17–22, and 24–27. We DENY the request to reverse the Examiner’s rejection. 1 Appellant identifies the real party in interest as Sartorius Stedim North America, Inc. Appeal Br. 1. Appeal 2020-004624 Reexamination Control 96/000,272 Patent 9,376,305 2 REHEARING DECISION In affirming the Examiner’s rejections of the claims on appeal, the Board was not persuaded by the Appellant’s argument that Crook is non- analogous art, and agreed with the Examiner’s determination that Crook is analogous art because it is reasonably pertinent to a problem confronting the inventor. Decision 6. The Appellant asserts that the Board “misapprehended the problem faced by the ’305 Patent,” and requests reconsideration of the Decision. Req. 2. Specifically, the Appellant asserts that the Board erred in agreeing with the Examiner that “the problem solved by the ’305 Patent was ‘how to attach tubes (fluid transfer conduits) to a body with holes therethrough which is then attached to a vessel for providing transfer of fluid to and from that vessel without the need for tube connections.’” Req. 2, quoting Decision 6 (which quotes Answer 14). According to the Appellant, the Board’s Decision is based on an “incomplete or partial description of the problem solved by the ’305 Patent,” which is “an impermissible simplification of the problem statement of the ’305 Patent.” Req. 2. In support, the Appellant directs us to the passage of the ’305 Patent that states “[t]hus, what is needed is . . . . What is further needed is . . . .” Req. 2, quoting Spec. col. 1, l. 64–col. 2, l. 7 (formatting removed). The Appellant asserts that the problem confronted by the inventor must include the problem identified in the “[w]hat is further needed” portion of the ’305 Patent. Req. 2–3 (that is, the further need for “low cost, disposable fluid transfer interface that is connected to a vessel, for example, a bioreactor bag, and to which fluid control devices may be Appeal 2020-004624 Reexamination Control 96/000,272 Patent 9,376,305 3 connected that creates a substantially aseptic fluid pathway into and out of the vessel that does not suffer from the shortcomings of a barbed or luer termination, or other means of joining fluid pathways” (Spec. col. 2, ll. 1– 7)). We do not agree. Appellant does not identify anything that was actually misapprehended or overlooked. Rather, Appellant’s Request simply amounts to a disagreement with our finding regarding one of the problems with which the inventor was involved. As explained in our Decision, the structure of the above noted passage of the ’305 Patent makes clear that more than one problem confronted the inventor, and that these problems are addressed by the disclosed invention. Decision 6. Specifically, the ’305 Patent states: “[t]hus, what is needed is a fluid transfer interface with a body from which continuous fluid transfer conduits extend, whereby the conduits extend through and are secured to the body, and to which a fluid control device may be connected.” Spec. col. 1, ll. 64–67. This articulation of the broader problem confronting the inventor is explicitly set forth in the ’305 Patent, and the Examiner’s articulation of the problem is consistent therewith. The ’305 Patent then states that “[w]hat is further needed is a low cost, disposable fluid transfer interface,” thereby indicating another problem confronting the inventor that is further addressed by the invention. Spec. col. 2, l. 1–col. 2, l. 7. The structure of the pertinent passage is clear. In its briefs, the Appellant only focused on the narrower problem confronting the inventor that was set forth in the ’305 Patent, and ignored the broader the problem also set forth therein. See Appeal Br. 7; Reply Br. Appeal 2020-004624 Reexamination Control 96/000,272 Patent 9,376,305 4 3. This deficiency in the Appellant’s argument, along with how Crook is reasonably pertinent to the broader problem confronting the inventor, was addressed in the Decision. See Decision 6–7. The remaining arguments presented in this Request are directed to establishing that Crook is not reasonably pertinent to the narrower problem confronting the inventor, and thus, are also unpersuasive. Req. 3–4. Therefore, in view of the above, although we have considered the Decision in light of the Request, we decline to modify the Decision in any respect. DECISION SUMMARY Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 2, 4–7, 10–13, 17– 22, 24–27 103 Ryo, Crook 1, 2, 4–7, 10–13, 17– 22, 24–27 25–27 103 Ryo, Crook, Smith 25–27 Overall Outcome 1, 2, 4–7, 10–13, 17– 22, 24–27 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–7, 10–13, 17– 22, 24–27 103 Ryo, Crook 1, 2, 4–7, 10–13, 17– 22, 24–27 25–27 103 Ryo, Crook, Smith 25–27 Appeal 2020-004624 Reexamination Control 96/000,272 Patent 9,376,305 5 Overall Outcome 1, 2, 4–7, 10–13, 17– 22, 24–27 DENIED For Appellant: WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037