Ex Parte Hong et alDownload PDFPatent Trial and Appeal BoardJun 19, 201713892697 (P.T.A.B. Jun. 19, 2017) Copy Citation 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. 13/892,697 05/13/2013 Yulong Hong SP12-324 3734 22928 7590 06/21/2017 TORNTNO TNmRPORATFD EXAMINER SP-TI-3-1 CORNING, NY 14831 BOWERS, NATHAN ANDREW ART UNIT PAPER NUMBER 1799 NOTIFICATION DATE DELIVERY MODE 06/21/2017 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): u sdocket @ corning .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YULONG HONG, JENNIFER LYNN HUNT, MEENAL PAUDDAR SONI, HUI SU, and JIAN TAN (Applicant: CORNING INC.)1 Appeal 2016-006131 Application 13/892,697 Technology Center 1700 Before: MARKNAGUMO, MICHAEL P. COLAIANNI, and AVELYN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL2 Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—10 and 13—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as Coming Incorporated. Appeal Br. 2. 2 In our Decision below we refer to the Specification filed May 13, 2013 (“Spec.”), the Final Office Action appealed from dated May 11, 2015 (“Final Act.”), the Appeal Brief filed November 11, 2015 (Appeal Br.), the Examiner’s Answer dated March 25, 2016 (“Ans.”) and the Reply Brief filed May 24, 2016 (“Reply Br.”). Appeal 2016-006131 Application 13/892,697 STATEMENT OF THE CASE The subject matter on appeal relates to cell culture substrates “having a plurality of mini-menisci structures on which cells may be cultured.” Spec. 12. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An article for culturing cells, comprising: a substrate having a surface; a plurality of pillars extending from the surface of the substrate; and a polymeric coating disposed on the surface of the substrate between the pillars, forming a plurality of mini-menisci on the surface of the substrate between the plurality of pillars, wherein the mini-menisci have diameters of 80 micrometers or more, and wherein the plurality of pillars are spaced apart from one another in a manner to encourage cell growth on the mini menisci rather than the on top of the pillars. Claims App’x. 1. REJECTIONS The Examiner maintains the rejection of claims 1—10 and 13—20 under 35 U.S.C. § 103(a) as being unpatentable over Kuwabara3 in view of either Gehman4 or Shogbon.5 Final Act. 3. 3 Kuwabara et al., US 2006/0183222 Al, published August 17, 2006 (“Kuwabara”). 4 Gehman et al., US 2009/0203065 Al, published August 13, 2009 (“Gehman”). 5 Shogbon et al., US 2009/0191633 Al, published July 30, 2009 (“Shogbon”). 2 Appeal 2016-006131 Application 13/892,697 Appellants request reversal of the Examiner’s rejection of claims 1—10 and 13—20. See generally Appeal Br. Appellants present the same arguments in support of claims 1 and 13, and do not argue dependent claims 2—10, 12, and 14—20 separate from what is argued for independent claim 1 and claim 13. Id. We, therefore, focus our discussion below on claim 1 to resolve the issues on appeal. OPINION The Examiner rejects claim 1 as obvious over Kuwabara in view of either Gehman or Shogbon. Final Act. 3. The Examiner finds that Kuwabara teaches a substrate having a resin layer for culturing cells, including neurons. Id. The Examiner further finds that the substrate of Kuwabara comprises a plurality of pillars that extend from the top of the substrate surface. Id. The Examiner also finds that Kuwabara teaches various surface treatments, including coatings, which may be applied to the surface of the substrate and pillars. Id. But, the Examiner acknowledges that Kuwabara “does not expressly state [that] this coating is a polymer coating configured to form a plurality of mini-menisci between the pillars.” Id. However, the Examiner finds that Gehman and Shogbon, directed to similar cell culture systems, teach that “cell adhesion coatings ... are applied to the surfaces of a plurality of microwells” and that when thick coatings are utilized, they “will inherently accumulate at the periphery of each well due to [the] meniscus effect from surface tension.” Id. at 3^4. The Examiner concludes that it would have been obvious to include coatings 3 Appeal 2016-006131 Application 13/892,697 on the pillars and substrate surface of Kuwabara that would allow for the formation of mini-menisci because “Kumabara already teaches in favor of the use of coatings to improve cell attachment, [and] it would have been within the ability of one of ordinary skill to consider the meniscus-forming, cell adhesion-promoting coatings taught by Gehman and/or Shogbon.” Id. at 4. Additionally, the Examiner finds that Kuwabara teaches that the distance between pillars (“interval g”) is related to the diameter of the neuron type (Id.) and further explains that interval g may be 0.4 to 2 times the diameter of the neuron (Ans. 3—4). Appellants argue that the combination of references fails to teach or suggest a mini-menisci having a diameter of 80 pm or more as claimed. Appeal Br. 6. First, Appellants contend that “Kuwabara et al. does not teach application of a coating . . . that would result in formation of mini-menisci.” Id. at 7. Additionally, Appellants urge that if the skilled artisan were to apply a coating as claimed, “the coating would overwhelm the protrusions of Kuwabara et al., and the protrusions would have no effect in aiding the formation of mini-menisci as recited in the present claims.” Id. Thus, Appellants argue that the purpose of Kuwabara is different than that of the instant application. Id. Appellants’ arguments do not convince us of reversible error by the Examiner. To begin, the Examiner does not rely upon Kuwabara to teach application of a coating that results in a mini-menisci, rather, the Examiner relies upon the polymeric coating of Gehman and Shogbon and finds that “[m]ini-minisci would inherently be formed between the Kuwabara protrusions when the coatings of Gehman and/or Shogbon are applied to the Kuwabara substrate.” Ans. 5. Thus, Appellants’ argument amounts to an 4 Appeal 2016-006131 Application 13/892,697 attack on Kuwabara individually, and does not address the combined teachings as presented by the Examiner. Moreover, as the Examiner finds (Ans. 5), Kuwabara’s teachings are not as limited as Appellants suggest. Rather, Kuwabara discloses that the height of the protrusions may be as high as 5,000 pm (Kuwabara 148) and exemplifies embodiments having 1 pm high protrusions {Id. 1131). Appellants do not dispute these findings by the Examiner. See generally Reply Br. Further, as the Examiner explains (Ans. 5), a person skilled in the art would not have applied a coating layer that is thicker than the height of the protrusions as it would render the protrusions inconsequential. Therefore, without more, Appellants’ argument that “the coating would overwhelm the protrusions of Kuwabara” is inconsistent with the full teachings of Kuwabara. Appellants, in reply, also argue that the Examiner has failed to show that menisci would necessarily result when applying the coatings of Gehman/Shogbon to Kuwabara. Reply Br. 3. According to Appellants, neither Gehman nor Shogbon teach forming mini-menisci. Id. Appellants also contend that Gehman and Shogbon teach away from the formation of mini-menisci because they are taught to be avoided. Id. We do not find these arguments persuasive of reversible error. Both Gehman and Shogbon discuss the tendency of the polymer coatings to form a meniscus, especially for thicker coatings. For example, Gehman and Shogbon explain that “it has been found that thicker coatings, e.g. coatings of greater than about 10 micrometers, tend to have unevenness around the periphery of the coating due to surface tension.” Gehman 149; Shogbon | 28. Gehman continues to describe that “[tjhick coating (from 1/1 ethanol 5 Appeal 2016-006131 Application 13/892,697 process) leads to the accumulation of monomer formulation at the periphery of the well due to meniscus effect from surface tension of formulation.” Gehman 1128; see also id. 1138 (“[tjhick coating was found to be the cause of increased non-uniformity due to the meniscus effect. . . Furthermore, while Gehman and Shogbon teach certain embodiments, i.e., embodiments having coatings having a thickness of 10 pm or more, result in an increased non-uniformity due to a meniscus effect, this falls short of establishing a “teaching away.” “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here instead, Gehman states that the “[sjynthetic polymer coating layer 20 may have any desirable thickness.” Gehman 149; see also Shogbon 128 (same). That Gehman and Shogbon discuss “various embodiments” having a coating thickness of less than about 10 pm is insufficient to establish a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”). Notably, Appellants do not identify any specific passage of Gehman or Shogbon that criticizes, discredits, or discourages the formation of mini-menisci between protrusions. Second, Appellants urge that Kuwabara fails to teach a mini-menisci diameter of 80 pm or more because Kuwabara “only describes an interval ‘g’ between protrusions as large as 50 micrometers and a neuron diameter as large as 20 micrometers.” Appeal Br. 8. And, because Kuwabara teaches 6 Appeal 2016-006131 Application 13/892,697 that interval g may be 0.4 to 2 times the diameter of the neuron, Appellants argue that even using the largest neuron diameter disclosed, i.e., 20 pm, yields an interval of 40 pm and not a mini-menisci diameter of 80 pm or more. Id. Appellants’ argument fails to identify error in the Examiner’s rejection. Kuwabara teaches that the distance between protrusions is selected based on the diameter of the neuron to be cultured. Specifically, Kuwabara explains that the “interval g is 0.4 to 2.0 times as large as the diameter of the neuron.” Kuwabara 1143; see also id. 117 (“interval of protrusions falls within the range of 0.4 to 2 times, more preferably, 0.6 to 2 times as large as the diameter of the neurons to be cultured”). Kuwabara also explains that “[t]he neurons used in the embodiment are not particularly limited as long as they can be cultured on the surface of a substrate and may be appropriately selected from conventional neurons.” Id. 136. The Examiner finds “that it is known in the art that neurons may be anywhere from 4 to 100 microns in diameter.” Ans. 8. Because Appellants do not dispute this finding by the Examiner, we adopt it as fact. Cf. In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (a finding not shown by the Appellant to be erroneous may be accepted as fact). From these teachings, the Examiner determines (illustrated in the table below) that neurons ranging in diameter from 40 to 100 pm will result in an interval “g”, and corresponding meniscus, in the claimed range. Ans. 4. 7 Appeal 2016-006131 Application 13/892,697 Range of Interval Lengths “g” based cart Neuron Cell Size (microns) mmxt as# sim {micmfisi Id. Appellants have not shown harmful error in the Examiner’s reasoning. The Examiner additionally offers an alternate position. The Examiner determines that ‘Telven if, for the sake of argument, the Kuwabara device is limited to intervals no greater than 50 microns . . . [the] diagonally-spaced protrusions will be approximately 71 microns apart.” Id. at 7. The Examiner further finds that “71 microns is believed to be close enough to 80 microns that one of ordinary skill would not have found there to be any significant difference between the two,” thus, making it prima facie obvious to increase the interval size. Id. at 7—8. Appellants do not respond to the Examiner’s alternate findings and, therefore, fail to identify reversible error in the Examiner’s rejection. Next, Appellants argue that the teachings of Kuwabara are not as broad as the Examiner suggests. Appeal Br. 8—9. Specifically, Appellants dispute the Examiner’s finding that “any diameter neuron may be placed between the protrusions of Kuwabara et al.” Id. Appellants urge that there must be some reason why one skilled in the art would be led to select a “mini-menisci having diameters of 80 micrometers or more (claim 1) or 8 Appeal 2016-006131 Application 13/892,697 having diameters of 80 micrometers to 150 micrometers (claim 13).” Id. at 9. Appellants contend that the Examiner’s website evidence that neurons may be larger than 20 pm, i.e., 100 pm, fails to show that “modifying the teachings of Kuwabara et al. to space [the] pillars at distances that would result in mini-menisci having the claimed diameters.” Id. at 10—11. Appellants do not persuade us of reversible error by the Examiner. As discussed above (see infra p. 7) Kuwabara’s teachings are larger than the specific examples using murine neurons having diameters of 2 to 20 microns. Kuwabara teaches that most any neuron may be used in the system of Kuwabara, limited only by the ability to be “cultured on the surface of a substrate.” Kuwabara 1 36. As the Examiner further notes, “Kuwabara is only bound in Embodiment 3 by the restriction that the interval ‘g’ [may be] 0.4 to 2.0 times the diameter of the neuron” and not by a specific neuron diameter. Ans. 6. Therefore, Kuwabara’s formula for protrusion spacing coupled with neuron diameter provides reason for the skilled artisan to have used a substrate having protrusions forming mini-menisci having a diameter of 80 micrometers or more. Lastly, Appellants argue that the range of mini-menisci diameters claimed result in advantageous results. Appeal Br. 10. And, nothing in Kuwabara would have led the skilled artisan to select the claimed diameters because Kuwabara does not recognize the advantages achieved by the claimed ranges. Id. We are not persuaded by Appellants’ argument. “One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.” Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) 9 Appeal 2016-006131 Application 13/892,697 (citing In re Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992). “As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventors.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see also In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). Here, Kuwabara states that the device is based on the principle that interval “g” is related to the diameter of the neuron. Thus, “[njeuron size dictates interval length.” Ans. 8. This teaching of Kuwabara is sufficient to suggest to the skilled artisan use of larger mini-menisci should larger neurons having larger diameters be used. Id. CONCLUSION The Examiner did not reversibly err in rejecting claims 1—10 and 13— 20 as being unpatentable over Kuwabara in view of either Gehman or Shogbon. DECISION For the above reasons, the Examiner’s rejection of claims 1—10 and 13—20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 10 Copy with citationCopy as parenthetical citation