Ex Parte Claes et al

Patent Trial and Appeal Board

Nov 28, 2016

12299271 (P.T.A.B. Nov. 28, 2016)

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.
12/299,271 07/31/2009 Tom Claes 642-054 7501
1009 7590 11/30/2016
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
BOWERS, NATHAN ANDREW
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
u spto @ iplaw 1. net
laura @ iplaw 1. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOM CLAES,
JEAN-PASCAL ZAMBAUX, STEVE VANHAMEL,
CHRISTOPHE BRAET, FLORENCE BOSCO, and JOSE CASTILLO
Appeal 2015-004761
Application 12/299,271
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
JULIA HEANEY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 161, 162, 164—172, and 174—206
of Application 12/299,271 under 35 U.S.C. § 103(a) as obvious. Final Act.
(May 12, 2014). Appellants1 seek reversal of this rejection pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
We REVERSE because the Examiner has not provided a sufficiently
detailed statement of the findings of fact and reasons underlying the legal
1 Pall Life Sciences Belgium BVBA is identified as the real party in interest.
Appeal Br. 3.
Appeal 2015-004761
Application 12/299,271
conclusion that the subject matter of the appealed claims would have been
obvious to a person of ordinary skill in the art at the time of the invention.
We emphasize that this reversal is procedural in nature. We express no
opinion on the merits (or lack thereof) of the rejection set forth in the final
action.
BACKGROUND
The ’271 Application’s Specification describes methods and apparatus
for the industrial or laboratory mixing of gases and liquids that may be used
in bioreactors. Spec. 12. In particular, Appellants describe mixing
apparatus that can be used with a disposable container. Id. ^flf 8—13.
Claim 161 is representative of the ’271 Application’s claims and is
reproduced below:
161. A material processing apparatus comprising:
a hollow tank having an interior bounded by at least one interior
wall;
a mixing paddle disposed and adapted to travel within the
interior of the tank, the paddle being adapted to engage a
support rod mechanically coupleable to receive kinetic energy
from a kinetic energy source; and
a functional element arranged to travel with the mixing paddle
within the interior of the tank, the functional element including
any of:
(a) at least one sensor in sensory communication with the
interior of the tank;
(b) a material extraction conduit in at least selective fluid
communication with the interior of the tank and adapted
to permit the extraction of material from the interior of
the tank;
(c) a material addition conduit in at least selective fluid
communication with the interior of the tank and adapted
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to permit the addition of a material to the interior of the
tank; and
(d) a heat exchange element in thermal communication
with the interior of the tank and adapted to permit the
addition or removal of thermal energy from the interior;
wherein the tank comprises a flexible sleeve having an open
end proximate to a wall of the tank, having an end protruding
into the interior, having at least one exterior wall, and defining
a cavity containing the mixing paddle, with the at least one
interior wall of the tank and the at least one exterior wall of the
sleeve enclosing a volume, such that the sleeve serves as an
isolation barrier impermeable to any fluid of the volume;
wherein the functional element is adapted to interact with the
flexible sleeve.
Appeal Br. 22—23 (Claims App.).
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 161, 162, 164—172, and 174—2052 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of
Zambaux,3 Forschner,4 Donofrio,5 Muller,6 and Schmid.7
Answer 2.
2 On November 15, 2014, Appellants filed an amendment canceling claim
206. The amendment was entered on December 2, 2014.
3 US 2005/0078552 Al, published April 14, 2005.
4 US 6,439,756 Bl, issued August 27, 2002.
5 US 4,426,450, issued January 17, 1984.
6 US 3,925,165, issued December 9, 1975.
7 US 7,659,108 B2, issued February 9, 2010.
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DISCUSSION
In the Final Action, the Examiner concludes: “Claims 161, 162, 164—
172 and 174—206 are rejected under 35 U.S.C. [§] 103(a) as being
unpatentable over Zambaux (US 20050078552) in view of Forschner (US
6439756), Donoffio (US 4426450), Muller (US 3925165) and Schmid (US
7659108).” Final Act. 3. The Examiner then sets forth slightly less than 2 U
pages of discussion regarding the content of each of the five references.
This discussion does not contain any findings of fact relating the content of
the prior art to a particular limitation recited in any claim. The Examiner
then discusses dependent claims 162, 178, and 187. Final Act. 5. These are
the only claims discussed with any specificity in the entirety of the rejection.
In the Answer, the Examiner “clarifies” the grounds of rejection as
follows:
It is critically important to note that this is not a “five­
way” rejection. Claims 161, 182 and 198 are “Markush-type”
claims that recite a plurality of alternatively useable functional
elements (a)-(d), (a)-(g) and (a)-(c). Using claim 161 as a
guide:
(a) at least one sensor ... is rejected over Zambaux in
view of Muller:
(b) , (c) a material extraction/addition conduit... is
rejected over Zambaux in view of either Forschner or Donofrio.
and
(d) a heat exchange element... is rejected over Zambaux
in view of Schmid.
In other words, the rejections of record contemplate
multiple ways in which one of ordinary skill would have been
motivated to combine different prior art functional elements
with the mixing paddle of Zambaux. Indeed, the rejection
includes different “two-way ” combinations, such that any one
of which is sufficient to read on the claims. It is therefore
possible for the Patent Trial and Appeal Board to not agree with
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the Examiner as to correctness of one combination (e.g.
Zambaux with Schmid - adding a heat exchange element to
Zambaux’s mixing paddle) while affirming another
combination (e.g. Zambaux with Forschner - adding a conduit
to Zambaux’s mixing paddle), thereby affirming the rejection as
a whole.
Answer 2—3 (italicized emphasis added).
Thus, according to the Answer, the ’271 Application faces four
distinct grounds of rejection rather than the single ground of rejection
indicated in the Final Action.
The Answer, therefore, compounds the problems with the statement of
rejection set forth in the Final Action. While the portion of the Answer
quoted above establishes the Examiner’s intent to reject claims 161, 182, and
198 as unpatentable over each of the four combinations of prior art identified
in the Answer, the Examiner still has not provided a clear explanation of
how each of those combinations should be applied to claim 161. Nor has he
provided any substantive explanation of the application of each combination
to claims 182 and 198. Furthermore, the Examiner has not provided any
explanation of which of the prior art combinations applies to each of the
dependent claims.
The Examiner’s failure to provide a reasoned explanation of the basis
for the rejection of each of the ’271 Application’s claims requires reversal.
It may well be that some or all the claims are unpatentable over some or all
of the asserted combinations of prior art, but our mandate is to review what
the Examiner has done on the basis of the reasons provided in the record.8
8 Although we can enter new grounds of rejection in the course of deciding
an appeal, see 37 C.F.R. § 41.50(b), we decline to do so here because the
Examiner has not entered a complete rejection in the first instance.
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To borrow an image from the 7th Circuit, we are not truffle-hunting pigs
looking for reasons that the Examiner has not expressly stated in the record
before us to affirm a rejection. See U.S. v. Dunkel, 927 F.2d 955, 956 (7th
Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”).
In view of the foregoing, we reverse the rejection of claims 161, 162,
164—172, and 174—205 as unpatentable over the combination of Zambaux
and any one of Forschner, Donofrio, Muller, or Schmid. We emphasize that
our reversal is based upon the Examiner’s failure to provide the necessary
statement of the basis for each of the rejections and not upon the merits of
any such rejection.
CONCEUSION
For the reasons set forth above, we reverse the Examiner’s rejection of
claims 161, 162, 164—172, and 174—205 of the ’271 Application. We
emphasize that this reversal is procedural in nature. We express no opinion
regarding the merits (or lack thereof) of the grounds of rejection set forth in
the Final Action.
When the ’271 Application is returned to the Examiner for further
action, the Examiner remains free to withdraw the finality of the May 12,
2014 Final Action and to enter a new rejection of any or all of the claims on
appeal as unpatentable over any appropriate combination of Zambaux,
Forschner, Donofrio, Muller, and Schmid. In so doing, however, the
Examiner must provide a sufficiently detailed statement of the factual
findings and reasoning underlying the rejection to enable Appellants to
understand and substantively respond to the rejection and to allow the Board
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to meaningfully review the merits of the rejection based upon the contents of
the record.
REVERSED
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