Fabrice Casset et al.

Patent Trials and Appeals Board

Sep 30, 2019

15046803 - (D) (P.T.A.B. Sep. 30, 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.
15/046,803 02/18/2016 Fabrice CASSET 467410US41 1376
22850 7590 09/30/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
BOWERS, NATHAN ANDREW
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FABRICE CASSET
and ARNAUD MILLET
____________

Appeal 2019-001424
Application 15/046,803
Technology Center 1700
____________
Before JAMES C. HOUSEL, GEORGE C. BEST, and
SHELDON M. McGEE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15, 17, and 18 of Application
15/046,803. Final Act. (August 29, 2017). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Commissariat a L’Energie Atomique et
aux Energies Alternatives as the real party in interest. Appeal Br. 1.
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BACKGROUND
The ’803 Application describes a device for manipulating biological
cells using a vibrating support and to a device for sorting biological cells.
Spec. 1. In particular, the Specification describes apparatus and methods for
sorting biological cells from the heterogeneous mixture without marking the
cells prior to sorting. Id. According to the Specification, prior art techniques
that allow sorting without prior marking do not have sufficient resolution. Id.
at 1–2.
The apparatus described in the ’803 Application sorts cells according
to their adherence with respect to a surface. Id. at 2–3. Techniques using this
sorting principal are known, but recovery of the cells that adhere to the
surface may pose a problem. Id. at 2. The ’803 Application’s Specification
describes a device having a support to which the cells adhere. Id.at 3. The
apparatus also includes means to make the support vibrate at least one
frequency—e.g., a piezoelectric actuator—so to apply an inertial force to the
cells which have adhered to the support. Id. The inertial force is sufficient to
release the cells from the support surface. Id.
Claim 1 is representative of the ’803 Application’s claims and is
reproduced below from the Claim Appendix of the Appeal Brief
1. Device for manipulating biological cells distinguished by
their adherence properties, comprising:
at least one support including a reception surface
enabling the adherence of a plurality of cells having different
adherence properties with respect to said reception surface, the
support being a suspended membrane,
at least one actuator contacting said suspended membrane
and configured to make said surface vibrate at [] least one
natural frequency of the membrane, and
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a controller configured to control said actuator such that
the surface vibrates at a predetermined frequency correlated to
adherence properties of at least one type of biological cells
among said plurality of cells such that the predetermined
frequency causing detachment of the at least one type of
biological cells while not causing detachment of others of said
plurality of cells.
Appeal Br. 8.
REJECTIONS
On appeal, the Examiner maintains2 the following rejections:
1. Claims 1–13, 17, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Martin,3 Singh,4 and Fukui.5
Final Act. 4–8.
2. Claims 14 and 15 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Martin, Singh, Fukui, and
Toner.6 Final Act. 8–9.
3. Claims 1–13, 17, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Fukui, Martin, and Singh.
Final Act. 10–14.

2 The Examiner has withdrawn the rejection of claims 6 and 17 under 35
U.S.C. § 112(b) as indefinite and the rejection of claim 18 under 35 U.S.C.
§ 112(d) as being of improper dependent form. Answer 3.
3 US 2009/0298153 A1, published December 3, 2009.
4 US 2014/0357506 A1, published December 4, 2014.
5 US 2012/0003709 A1, published January 5, 2012.
6 US 6,759,245 B1, issued July 6, 2004.
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4. Claims 14 and 15 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Fukui, Martin, Singh, and
Toner. Final Act. 14–15.
DISCUSSION
Rejection 1. The Examiner rejected claims 1–13, 17, and 18 as
unpatentable over the combination of Martin, Singh, and Fukui. Final Act.
4–8.
Appellant provides a single argument for reversal of this rejection
with respect to the group of claims at issue. We, therefore, select claim 1 as
representative of the claims subject to this ground of rejection. 37 C.F.R.
§ 41.37(c)(1)(iv).
In rejecting claim 1, the Examiner found—in relevant part—Martin
describes at least one actuator capable of making the surface vibrate at
essentially any frequency, including at least one natural frequency of the
membrane. Final Act. 4 (citing Martin ¶¶ 44–52; Figure 3). The Examiner
further found that Martin does not expressly state that the controller controls
the actuator to produce a vibration that selectively causes the detachment of
only one type of biological cell. Id. The Examiner also found that Singh
discloses a device for manipulating biological cells distinguished by their
adherence properties. Id. at 5. In particular, the Examiner found that Singh
describes an actuator that is configured to produce a force of predetermined
magnitude to selectively detach a desired population of target cells based on
their relative attachment strength to a substrate. Id. (citing Singh ¶¶ 8–11).
Based upon these findings, the Examiner explained that
it would have been obvious to configure the Martin controller
to produce a vibrational frequency/magnitude known to
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selectively detach a first type of cells from the membrane.
Singh teaches that it is known in the art to exploit differences in
the relative adhesive strengths of different cell populations to
sort and isolate desired cell types. Martin already teaches that
the actuator may be operated in multiple frequencies and
magnitudes over time, and one of ordinary skill would have
understood that different vibrations could be produced at these
values to specifically dislodge certain cells of interest. In other
words, it would have been obvious to apply the teachings of
Singh to the Martin system in order to detach different cells at
different times instead of all at once in order to separate them
and collect them.
Id. at 5–6.
Appellant argues that the Examiner erred by finding that Singh
describes or suggests the use of Martin’s system to selectively detach one
type of cell from the membrane having a plurality of cell types attached to it.
Appeal Br. 5–7.
We agree with Appellant that the Examiner has not sufficiently
explained why a person having ordinary skill in the art would have
combined Singh and Martin in the manner set forth in the rejection. In
particular, the Examiner found that Singh’s paragraph 117 states that the
detachment force may be essentially any mechanical, hydrodynamic,
centrifugal, or magnetic force. Final Act. 5. We determine that the
Examiner—perhaps prompted by hindsight—has read too much into Singh’s
disclosure. Singh’s paragraph 117 states, in relevant part, that cells may be
detach by a force “applied by any suitable method including, without
limitation, hydrodynamic force, centrifugal force and/or magnetic force.”
Singh ¶ 117. Although this statement seems broad, it must be understood in
the context provided by the rest of Singh’s disclosure. As Appellant points
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out, Singh actually describes the use of laminar fluid flow to provide shear
force that selectively detach cells from a device surface. Appeal Br. 5.
The Examiner has not provided an adequate explanation of why a
person having ordinary skill in the art, considering the entirety of Singh’s
disclosure, would have combined Singh with Martin when Singh does not
discuss the use of vibration to detach, either selectively or nonselectively,
cells from a surface. In the absence of such an explanation, we reverse the
rejection of claim 1. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”).
Rejection 2. The Examiner rejected claims 14 and 15 as unpatentable
over the combination of Martin, Singh, Fukui, and Toner. Final Act. 8–9.
Appellant’s Appeal Brief does not address this rejection. See Appeal
Br. 3–7. Claims 14 and 15 ultimately depend from claim 1. As discussed
above, we have reversed the rejection of claim 1 as unpatentable over the
combination of Martin, Singh, and Fukui. In rejecting claims 14 and 15, the
Examiner does not make any findings or offer any rationale that cures the
defect in the rejection of claim 1. We, therefore, also reverse the rejection of
claims 14 and 15.
Rejection 3. The Examiner rejected claims 1–13, 17, and 18 as
unpatentable over the combination of Fukui, Martin, and Singh. Final Act.
10–14.
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Appellant’s arguments for reversal of this rejection do not
differentiate between the rejected claims. We, therefore, select claim 1 as
representative of the group of claims subject to this ground of rejection.
37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claim 1 as unpatentable over the combination of Fukui,
Martin, and Singh, the Examiner relies upon Singh in the same manner that
we have discussed in connection with Rejection 1. We, therefore, reverse the
rejection of claim 1 as unpatentable over the combination of Fukui, Martin,
and Singh for the reasons we discussed in Rejection 1.
Rejection 4. The Examiner rejected claims 14 and 15 as unpatentable
over the combination of Fukui, Martin, Singh, and Toner. Final Act. 14–15.
Appellant’s Appeal Brief does not address this rejection. See Appeal
Br. 3–7. Claims 14 and 15 ultimately depend from claim 1. As discussed
above, we have reversed the rejection of claim 1 as unpatentable over the
combination of Fukui, Martin, and Singh. In rejecting claims 14 and 15, the
Examiner does not make any findings or offer any rationale that cures the
defect in the rejection of claim 1. We, therefore, also reverse the rejection of
claims 14 and 15.
CONCLUSION
In summary:
Claims
Rejected Basis Affirmed Reversed
1–13, 17, 18 § 103 Martin, Singh, Fukui 1–13, 17, 18
14, 15
§ 103
Martin, Singh,
Fukui, Toner
14, 15
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Claims
Rejected Basis Affirmed Reversed
1–13, 17, 18 § 103 Fukui, Martin, Singh 1–13, 17, 18
14, 15
§ 103
Fukui, Martin,
Singh, Toner
14, 15
Overall Outcome 1–15, 17, 18
REVERSED