Ex Parte KOBAYASHI et al

Patent Trial and Appeal Board

Mar 5, 2019

14666231 (P.T.A.B. Mar. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/666,231 03/23/2015
20277 7590 03/07/2019
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
Koichi KOBAYASHI
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
092122-0040 4429
EXAMINER
BOWERS, NATHAN ANDREW
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
03/07/2019 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOICHI KOBAYASHI,
Y ASUHIKO YOKOI, HIRONOBU SIKINE,
and RITAROU OGUMA
Appeal2018-001226
Application 14/666,231
Technology Center 1700
Before GEORGE C. BEST, JEFFREY R. SNAY, and SHELDON M.
McGEE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-15 of Application 14/666,231
under 35 U.S.C. § 103(a) as obvious. Final Act. 3-10 (April 19, 2017).
Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.
1 Panasonic Healthcare Holdings Co. is identified as the applicant and real
party in interest. Appeal Br. 1.
Appeal2018-001226
Application 14/666,231
BACKGROUND
The '231 Application describes an isolator system used in laboratory
environment equipment related to regenerative medicine and pharmaceutical
production. Spec. 1. The isolator described in the Specification is said to
reduce sterilizing processing time relative to the prior art. Id. at 1-2.
Claim 1 is representative of the '231 Application's claims and is
reproduced below:
1. An isolator system comprising:
a main body case including a substantially box-shaped
workspace isolated from its surroundings;
a spray device configured to spray a sterilizing mist from
a nozzle mounted within the main body case, the sterilizing
mist being obtained by converting a sterilizing liquid into mist;
a diffusion fan mounted within the main body case to
diffuse the sterilizing mist; and a control device configured to
control operations of the spray device and the diffusion fan,
wherein:
the spray device is configured to spray the sterilizing mist
when spraying, and
the control device is configured to control the diffusion
fan to intermittently operate during a spray process of the spray
device, and to continuously operate from an end of the spray
process of the spray device.
Appeal Br. 10 (Claims App.).
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Application 14/666,231
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 4, and 5 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Y okoi, 2 Ortner, 3 and Baker. 4
Final Act. 3.
2. Claims 2, 3, and 6 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Y okoi, Ortner, Baker, and
McVey. 5 Final Act. 6.
3. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Yokoi, Ortner, Baker, and Fanning. 6 Final Act. 8.
4. Claims 8-15 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Y okoi, Ortner, Baker, Fanning, and
McVey. Final Act. 8.
DISCUSSION
There are two independent claims on appeal: claim 1 and claim 7.
Appellant presents arguments for reversal of the rejection of these claims.
See Appeal Br. 5-7. The dependent claims are alleged to be patentable
based upon dependence from a patentable independent claim. Id. at 8.
Accordingly, we group each dependent claim with its parent independent
claim and each group will stand or fall together. 37 C.F.R. § 4I.37(c)(l)(iv).
2 US 2010/0189607 Al, published July 29, 2010.
3 US 2012/0040600 Al, published February 16, 2012.
4 US 2011/0315783 Al, published December 29, 2011.
5 US 2005/0084415 Al, published April 21, 2005.
6 US 2010/0062522 Al, published March 11, 2010.
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Application 14/666,231
Claim 1. Appellant argues that the rejection of claim 1 should be
reversed because the Examiner erred by finding that the combination of
Y okoi, Ortner, and Baker describes or suggests each limitation of the claim.
For the following reasons, we affirm the Examiner's rejection.
Claim 1 reads, in relevant part, "the control device is configured to
control the diffusion fan to intermittently operate during a spray process of
the spray device, and to continuously operate from an end of the spray
process of the spray device."
The Examiner found that the combination of Y okoi and Ortner
describes or suggests each limitation recited in claim 1 except for the
intermittent operation of the fan during a spray process of the spray device.
Final Act. 4. In particular, the Examiner found: "[ A ]s stated above, Yokoi is
fully capable of operating the fan either periodically or continuously,
Y okoi[, however,] does not expressly teach a control device configured to
operate the fan intermittently during the spray process." Id.
The Examiner further found that Baker describes an isolator system
including a fan. Id. "Baker teaches in at least paragraph [0054] that the fan
may be operated continuously or intermittently at any given time ('Fan
assembly 23 may be operated on a continuous basis or intermittently in a
variety of predetermined patterns')." Id.
The Examiner concluded that the differences between the claimed
subject matter and the prior art taken as a whole would have been obvious to
a person of ordinary skill in the art at the time of the claimed invention
because
Baker teaches that controllers configured to alternately operate
an isolator fan periodically and continuously are known in the
art. Baker teaches that this type of fan controller is beneficial
because it can be used to tailor the fan operation to essentially
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Application 14/666,231
any given incubator/isolator operation as well as in response to
sensed conditions within the main body case. One of ordinary
skill would have understood that a fan can either be "on" or
"off', and this would have inherently limited the options of one
operating the Y okoi fan. Accordingly, it would have been
within the purview of one of ordinary skill in the art to consider
both "intermittent" and "continuous" operation of the Y okoi
isolator fan.
Id. at 4--5.
Appellant argues that the Examiner erred in finding the subject matter
of claim 1 unpatentable. Appeal Br. 6. In particular, Appellant states that
what is missing in the cited references is when ( or in relation to
which operation) the intermittent operation is performed and the
continuous operation is performed. Pending claims 1 and 7
recite that the diffusion fan is controlled to intermittently
operate during a spray process of the spray device ( claims 1 and
7) and to continuously operate from an end of the spray process
of the spray device ( claim 1 ).
The Examiner failed to explain why "any necessary point
in time" would necessarily corresponds [sic] to the spray timing
in the combination of the cited references. . . . Accordingly,
even if Baker was combinable with Y okoi, the claimed timing
would not have been realized unless the present application is
referred to. In this regard, the Examiner failed to provide any
basis as to why one of ordinary skill in the art reviews "only"
Y okoi and Baker would necessarily modify the combination of
Y okoi and Baker to arrive that the claimed operation timings.
Id. at 6-7.
Appellant's argument does not persuade us that the Examiner
reversibly erred. As the Supreme Court has explained:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
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Application 14/666,231
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421 (2007).
In this case, the Examiner found that Y okoi' s fan can be either "on" or
"off." Thus, during the spray operation, the fan can only be in one of three
states: on, off, or intermittently on and off. Because there are only three
possibilities, this is the sort of change to the prior art that is the product not
of innovation, but of ordinary skill and common sense. The Examiner
correctly concluded that the differences between the claimed invention taken
as a whole, and the prior art would have been obvious to a person of
ordinary skill in the art at the time of the invention.
We, therefore, affirm the rejection of claim 1 and the claims that
depend therefrom.
Claim 7. The Examiner rejected claim 7 as unpatentable over the
combination of Y okoi, Ortner, Baker, and Fanning. Final Act. 8.
Claim 7 recites, in pertinent part, "the control device is configured to
cause the first diffusion fan to intermittently operate while the spray device
is spraying."
Appellant argues that the rejection of claim 7 should be reversed for
the same reasons it has advanced for reversing the rejection of claim 1. As
discussed above, we have determined that those reasons were not persuasive
of reversible error. Thus, we also affirm the rejection of claim 7 and claims
that depend therefrom.
CONCLUSION
For the reasons set forth above, we affirm the rejections of claims 1-
15 of the '231 Application.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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