Ex Parte OURA et al

Patent Trial and Appeal BoardMar 23, 2017

13432658 (P.T.A.B. Mar. 23, 2017)

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. 13/432,658 03/28/2012 Mitsuhiro OURA 6002-0062 5456 39083 7590 03/27/2017 KFNF AT Y VATDYA T T P EXAMINER 3000 K Street, N.W. EDWARDS, LYDIA E Suite 310 Washington, DC 20007 ART UNIT PAPER NUMBER 1799 NOTIFICATION DATE DELIVERY MODE 03/27/2017 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): avaidya@kviplaw.com u spto @ kviplaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MITSUHIRO OURA, TERUO OKANO, TATSUYA SHIMIZU, HIROTSUGU KUBO, and SUNAO TAKEDA Appeal 2015-002874 Application 13/432,658 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s September 16, 2013 decision finally rejecting claims 1—11 (“Final Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was held on March 14, 2017. We reverse. 1 Appellants identify the real party in interest as Nihon Kohden Corporation (Appeal Br. 3). Appeal 2015-002874 Application 13/432,658 CLAIMED SUBJECT MATTER Appellants’ invention is directed to a cell culture apparatus which comprises (1) an isolator in which a sterile space accommodating a cell incubator filled with a culture solution containing cells to be cultured is disposed, and (2) a sampling unit configured to sample the culture solution in the cell incubator (Abstract). There is also a delivery flow path through which the sterile space can communicate with an area outside of the sterile space (id.). The delivery flow path is configured to “limit a flow in the delivery path” to a direction from the sterile space to outside the sterile space. Details of the claimed invention are set forth in Claim 1, as reproduced below from the Claims Appendix (emphasis added): 1. A cell culture apparatus comprising: an isolator in which a sterile space accommodating a cell incubator filled with a culture solution containing cells to be cultured is disposed; a sampling unit configured to sample the culture solution in the cell incubator; a delivery flow path through which an inside of the sterile space and an outside of the sterile space communicate with each other, the delivery flow path configured to limit a flow in the delivery flow path to a direction that is directed from the inside of the sterile space toward the outside of the sterile space; and a culture solution delivering section configured to deliver the sampled culture solution to the outside of the sterile space via the delivery flow path. 2 Appeal 2015-002874 Application 13/432,658 REJECTIONS I. Claims 1, 3, 5, and 10 are rejected under 35 U.S.C. § 102(b) as anticipated by Greenberger.2 II. Claims 2, 4, 6—9, and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Greenberger. DISCUSSION Because we decide this appeal based on limitations in independent claim 1 and, therefore, common to each of the claims, we focus our discussion on the anticipation rejection of claim 1. “A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336—37 (Fed. Cir. 2010)). In this instance, with regards to claim 1, Appellants argue, inter alia, that Greenberger does not teach or suggest the “the delivery flow path [being] configured to limit a flow in the delivery flow path to a direction that is directed from the inside of the sterile space toward the outside of the sterile space” (Appeal Br. 12). Appellants contend that Greenberger’s system allows for delivery of material from outside of the sterile space to the sterile space and, therefore, is not “configured to limit a flow in the delivery flow path” from the sterile space toward the outside of the sterile space (see, e.g., id.', Reply Br. 2; see also Greenberger | 68 (“a z-robot pipette that can automatically dispense and aspirate media to and from wells (emphasis added)), H 72, 73). 2 Greenberger et al., US 2002/0155487 Al, published October 24, 2002. 3 Appeal 2015-002874 Application 13/432,658 The Examiner does not dispute Appellants’ contention that Greenberger’s system provides for injection of material from outside of the sterile space into the sterile space (“Paragraph 73 [of Greenberger] teaches that the [z-]pipette tip is used for both dispensing growth and quiescence factors into the 96 well plate [inside the sterile chamber] as well as aspirating media into/out of the plate” using the pipetting system, which corresponds to the claimed delivery flow path; Ans. 3). Instead, the Examiner takes the position that “the device disclosed by Greenberger et al. is structurally the same as the instantly claimed and is capable of providing the operating conditions listed in the intended use section of the claim” (Final Act. 3—4). The Examiner, thus, relies on a construction of the claim phrase “the delivery flow path configured to limit a flow in the delivery flow path to a direction that is directed from the inside of the sterile space toward the outside of the sterile space” that merely requires that Greenberger be capable of that function. We disagree with the Examiner’s construction of the claim and, as a consequence, reverse the rejection. It is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification. Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (emphasis added, citation omitted). In this instance, the claim language recites “the delivery flow path configured to limit a flow in the delivery flow path to a direction that is directed from the inside of the sterile space toward the outside of the sterile space” (emphasis added). Thus, the claim requires that the delivery flow path be configured to 4 Appeal 2015-002874 Application 13/432,658 “limit a flow in the delivery flow path” in a direction from the sterile space to the outside. The Specification describes the use of check valve 165 as preventing flow through the flow delivery path from the outside into the sterile space (Spec. 7:4—12, 10: 8—9 (“there is no possibility that the interior of the sterile chamber 120 is contaminated by the reverse flow [from the outside into the sterile chamber])”; Fig. 1). Thus, we conclude, in light of the claim language and the Specification, the broadest reasonable interpretation of claim 1 excludes a system in which flow is permitted from outside the sterile space to inside the sterile space. As detailed above, the Greenberger system permits such a flow. Therefore, based on the evidence of record, we find that Greenberger does not anticipate claim 1, and reverse the anticipation rejection of claims 1, 3, 5, and 10. With regards to the obviousness rejection of claims 2, 4, 6—9, and 11 over Greenberger, the Examiner has not made any additional findings which would support a determination that configuring the flow delivery path to limit a flow in the delivery flow path to a direction that is directed from the inside of the sterile space toward the outside of the sterile space would have been obvious in view of Greenberger. Accordingly, we also reverse the obviousness rejection. CONCLUSION We REVERSE the rejection of claims 1, 3, 5, and 10 under 35 U.S.C. § 102(b) as anticipated by Greenberger. We REVERSE the rejection of claims 2, 4, 6—9, and 11 under 35 U.S.C. § 103(a) as being unpatentable over Greenberger. REVERSED 5