ASPECT BIOSYSTEMS LTD.

Patent Trials and Appeals Board

Dec 10, 2020

2020005140 (P.T.A.B. Dec. 10, 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.
14/898,036 12/11/2015 Simon Travis BEYER ASPT-006/PCT/US 3501
160212 7590 12/10/2020
SQUIRE PB (SFR-IP)
275 BATTERY STREET, SUITE 2600
SAN FRANCISCO, CA 94111-3356
EXAMINER
KIM, YUNJU
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
12/10/2020 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):
IP-Squire@SquirePB.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SIMON TRAVIS BEYER, KONRAD WALUS,
TAMER MOHAMED, and ANAS AMJAD MOHAMMAD BSOUL

Appeal 2020-005140
Application 14/898,036
Technology Center 1700
____________

Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
JOHN A. EVANS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–29, 31, and 37. An oral hearing was
held on November 19, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In this Decision, we refer to the Specification filed Dec. 11, 2015
(“Spec.”), the Final Office Action dated Aug. 1, 2019 (“Final Act.”), the
Appeal Brief filed Jan. 31, 2020 (“Appeal Br.”), the Examiner’s Answer
dated Apr. 30, 2020 (“Ans.”), the Reply Brief filed June 30, 2020 (“Reply
Br.”), and the Declaration of Simon Beyer filed July 3, 2019 (“Beyer
Decl.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Aspect Biosystems Ltd. as the real party
in interest. Appeal Br. 1.
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2
STATEMENT OF THE CASE
The invention relates to a three-dimensional (3D) printing system for
fabricating 3D cell-laden hydrogel structures as an alternative to two-
dimensional (2D) surfaces, such as micro-well plates and Petri dishes, for
performing cell culture studies. Spec. ¶¶ 2, 4. The Specification describes
existing systems for fabricating cellular constructs using fused fiber
deposition techniques as being difficult to control cell placement because
cells are added to the scaffold after printing. Id. ¶ 5. The Specification also
describes existing systems for direct printing of cellular materials using ink
jet printing technology as slow processes and the shear force involved with
propelling droplets of fluid onto a substrate as potentially damaging to cells
dispersed in the fluid. Id. ¶ 6. According to the Specification, other prior art
methods require multiple nozzles and/or cartridge orifices to print multiple
different materials, which increases movement of the printing system and
decreases printing speed and efficiency. Id. ¶ 8.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal (disputed limitations italicized).
1. A system for additive manufacturing of three-
dimensional structures, the system comprising:
-at least one print head for receiving and dispensing
materials, the materials comprising at least one first material
and at least one second material, the print head comprising:
-a single orifice for dispensing the materials;
-microfluidic channels arranged within the print head
comprising at least two first channels for receiving and
directing the first material and one or more second channels for
receiving and directing the second material, the second channel
and each of the first channels joining together at a common
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first intersection point to form a dispensing channel which
extends to the orifice, and
-fluidic switches, each fluidic switch corresponding to
one of the microfluidic channels in the print head and
configured to allow or disallow fluid flow in the microfluidic
channels of the print head when actuated;
-a receiving surface for receiving a first layer of the
materials dispensed from the orifice;
-a positioning unit for positioning the orifice of the print
head in three dimensional space, the positioning unit operably
coupled to the print head; and
-a dispensing means for dispensing the materials from the
orifice of the print head.
Appeal Br. 20 (Claims App.).

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are persuaded of reversible error in the appealed
rejections.
The Examiner rejects claims 1–29, 31, and 37 as follows. Final Act.
4–22.

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Claim(s) Rejected 35 U.S.C. § References/Basis
1–7, 14–17, 19 103 Kang,3 Lee4
8–11, 20, 21, 27, 28,
31, 37 103 Kang, Lee, Hull
5
12, 22–25 103 Kang, Lee, Hull, Lechmann6
13, 26 103 Kang, Lee, Hull, Lechmann, Mark7
18 103 Kang, Lee, Bheda8
29 103 Kang, Lee, Hull, Lechmann, Bheda

Each of the rejections is based on the same modification of Kang with
Lee. Final Act. 4–22. Thus, the dispositive issue in this appeal is whether the
Examiner’s modification (id. at 5–6) of Kang’s system with Lee’s
microfluidic chip comprising a single orifice and a number of individually
controllable inlets for Kang’s four separate syringes is supported by
reasoning having rational underpinnings. Conclusory statements are
insufficient to merit an obviousness rejection; “instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

3 US 2012/0089238 A1, Apr. 12, 2012.
4 Edward Kang, Gi Seok Jeong, Yoon Young Choi, Kwang Ho Lee, Ali
Khademhosseini, Sang-Hoon Lee, Digitally tunable physicochemical coding
of material composition and topography in continuous microfibers, 10
Nature Materials 877 (Nov. 2011).
5 US 2008/0206383 A1, Aug. 28, 2008.
6 US 2011/0190904 A1, Aug. 4, 2011.
7 US 2014/0328963 A1, Nov. 6, 2014.
8 US 2014/0232035 A1, Aug. 21, 2014.
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Appellant argues modification of Kang would render Kang
unsatisfactory for its intended purpose and change Kang’s principle of
operation. Appeal Br. 10; Reply Br. 1. Appellant points out Kang
individually prints structural support polymers separate from cellular
materials so that the cellular composition can be cooled and the structural
support polymer can be heated. Appeal Br. 10 (citing Kang ¶¶ 10, 27, 28, 30,
32–34, 38, 50, 99, 100); Reply Br. 2. Modification with Lee’s system, which
simultaneously prints a crosslinker, a hydrogel, and optionally a biomaterial,
Appellant contends, would require significant reengineering of the entire
system and is not simply a substitution of Lee’s microfluidic chip for Kang’s
multi-syringe system. Appeal Br. 10–11 (citing Beyer Decl. ¶¶ 6–7).
Appellant additionally contends no practical way of combining Kang with
Lee is provided in the record for switching between the “hot” and “cold”
material without clogging the device or killing the cells in the cold material
where it makes contact with the hot material. Id. at 11–12; Reply Br. 2.
The Examiner’s response does not adequately address Appellant’s
arguments regarding the modification of Kang’s system for separately
delivering cellular and polymer support materials with Lee’s delivery
system. The Examiner does not dispute that Kang’s technique iteratively
prints different materials with separate dispensers due to the toxic nature and
temperature requirements of the extruded support polymers. Ans. 3. Instead,
the Examiner finds Lee controls valve operations for serial, parallel, or
mixed materials. Id. In the case of serial operation, the Examiner finds Lee
teaches independently controlling each inlet channel and serial coding the
material extruded from the microfluidic chip so that it is not mixed with
another material. Id. (citing Lee 1:22–27, Figs. 2a, 2b). The Examiner’s
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response does not adequately explain why a skilled artisan would modify
Kang’s process with Lee’s teachings regarding serial operation and a single
orifice in view of Kang’s teaching to separately control the temperature of
materials in the cartridges or syringes. Kang ¶¶ 99, 100.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (noting that 35 U.S.C.
§ 103 leads to three basic factual inquiries: (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue;
and (3) the level of ordinary skill in the art). Furthermore, the Examiner’s
obviousness rejection must be based on
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). It is not sufficient for the Examiner to point to
where the various claim limitations may be disclosed in the prior art
references. An invention “composed of several elements is not proved
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obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” KSR, 550 U.S. at 418.
Therefore, in view of the absence of a rationale for modifying Kang’s
system to accommodate a single orifice, we are persuaded by Appellant’s
argument that modification of Kang with Lee’s teachings is not adequately
supported with reasoning and would render Kang unsuitable for its intended
purpose.
Accordingly, we reverse the Examiner’s rejections of claims 1–29, 31,
and 37 under 35 U.S.C. § 103 over the combination of Kang and Lee alone
and together with the cited secondary references.

CONCLUSION
For these reasons and those the Appellant provides, we reverse the
Examiner’s rejections of claims 1–29, 31, and 37 under 35 U.S.C. § 103.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed
1–7, 14–17,
19 103 Kang, Lee
1–7, 14–17,
19
8–11, 20, 21,
27, 28, 31, 37 103 Kang, Lee, Hull
8–11, 20,
21, 27, 28,
31, 37
12, 22–25 103 Kang, Lee, Hull, Lechmann 12, 22–25
13, 26 103 Kang, Lee, Hull, Lechmann, Mark 13, 26
18 103 Kang, Lee, Bheda 18
29 103 Kang, Lee, Hull, Lechmann, Bheda 29
Overall
Outcome 1–29, 31, 37

REVERSED