Ex Parte KommisrudDownload PDFPatent Trial and Appeal BoardDec 11, 201712996773 (P.T.A.B. Dec. 11, 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. 12/996,773 01/04/2011 Elisabeth Kommisrud P21360USPC 1342 29078 7590 12/18/2017 fTTRTSTTANn ARFT EXAMINER Onsagers AS Munkedamsveien 35 HELVEY, PETER N. P.O. Box 1813 Vika ART UNIT PAPER NUMBER UslO, JN-UlZj NORWAY 3782 NOTIFICATION DATE DELIVERY MODE 12/18/2017 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): post@onsagers.no christian.abel@onsagers.no cdabell 14@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ELISABETH KOMMISRUD Appeal 2017-004078 Application 12/996,773 Technology Center 3700 Before ST. JOHN COURTENAY III, LARRY HUME, and JOYCE CRAIG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Examiner finally rejected claims 25—32. Claims 1—24 are canceled. Appellant appeals the rejected claims under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. Invention “This invention relates to a packaging for storing, transport and/or freezing of a biological material such as fish semen or milt.” More particularly, “the invention regards a packaging for cryopreservation of Appeal 2017-004078 Application 12/996,773 spermatozoa, embryos or eggs from aquatic organisms.” (Spec. 1). Claim 25, reproduced below, is illustrative of the claimed subject matter: Representative Claim 25. A packaging for biological material, comprising two substantially parallel, semi-rigid walls separated by a distance of 2.5 mm or less and joined along their peripheral edges so as to form an enclosure, the enclosure having first and second sealed ends and two longitudinal sides, the sides being longer than the ends, wherein - there is arranged a first opening in the first end of the enclosure, the first opening being an opening for the introduction of biological material, - further wherein there are arranged two connection areas between the semi-rigid walls in the form of first and second longitudinal ridges attached along their lengths to the two walls respectively, the longitudinal ridges being substantially parallel to each other and also being shorter than the lengths of the longitudinal sides, the ridges being arranged intermediate the first and second ends, both of said ridges extending less than completely to both of said ends so as to form an unsealed space between the first and second ends of the enclosure and the ends of the first and second ridges, whereby said ridges form first, second and third longitudinal channels, with said first opening being positioned immediately above the first channel, whereby biological material introduced into the first opening will flow through the first, second and third channels. (Contested dispositive limitations emphasized in italics). Grouping of Claims Based upon Appellant’s arguments, we decide the appeal of claims 25 and 28—32, rejected under § 103, on the basis of representative independent claim 25. We address the appeal of separately argued claims 26 and 27, infra. To the extent Appellant has not advanced separate, substantive arguments for particular rejected claims or issues, such arguments are waived. See 37 C.F.R. §41.37(c)(l)(iv). 2 Appeal 2017-004078 Application 12/996,773 Rejection Claims 25—32 are rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Lecointe (US 2003/0163110 Al; August 28, 2003) and Saint-Ramon et al. (US 6,964,656 B2, Nov. 15, 2005) (hereinafter “Saint-Ramon”). ANALYSIS Issue: Under § 103, did the Examiner err in finding that the cited references, either alone or in combination, would have taught or suggested the dispositive contested limitations (shown in italics and bold): wherein there are arranged two connection areas between the semi-rigid walls in the form of first and second longitudinal ridges attached along their lengths to the two walls respectively, the longitudinal ridges being substantially parallel to each other and also being shorter than the lengths of the longitudinal sides, the ridges being arranged intermediate the first and second ends, both of said ridges extending less than completely to both of said ends so as to form an unsealed space between the first and second ends of the enclosure and the ends of the first and second ridges, whereby said ridges form first, second and third longitudinal channels, with said first opening being positioned immediately above the first channel, whereby biological material introduced into the first opening will flow through the first, second and third channel [,] within the meaning of independent claim 25?1 In the Final Action (2—3), the Examiner finds the contested limitations are taught or suggested by Lecointe, Figures 8 and 10. The Examiner 1 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). See Spec. 8,11. 1—6, broadly describing alternative embodiments and arrangements of the connection areas and openings relative to the packaging. 3 Appeal 2017-004078 Application 12/996,773 specifically finds the scope of “biological material” introduced into the first opening . . . that “will flow through the first, second and third channels” is sufficiently broad to include Lecointe’s packaging when Lecointe’s cannula is extended. (Final Act. 3; claim 25.) Appellant urges that Lecointe addresses “an entirely different problem than the current invention.” (App. Br. 8). However, for a prirna facie case of obviousness, the reference need not recognize the same problem solved by the Appellant. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). Moreover, “neither the particular motivation nor the avowed purpose” of the [Appellant] controls” in an obviousness analysis. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Appellant. See In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“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.”). Appellant further contends: With respect to Fig 8, it is respectfully believed that the series of segments "T" cannot be considered to equate to the elongated central ridges of the current invention. As seen in Fig 8, the three vertically-aligned segments "T" have spaces between them, and cannot, therefor, be considered to create "longitudinal channels" as specified in claim 25. 4 Appeal 2017-004078 Application 12/996,773 (App. Br. 9.) In the Answer, the Examiner explains: The spaces between the ridges (Ts) in Lecointe do not prevent each vertical space from forming a channel as claimed. Further, each pair of ridges (Ts) can readily be interpreted as forming a channel therebetween as required by the claims, thus meeting the scope of the claims a second way. (Ans. 6). We agree with the Examiner’s broad but reasonable interpretation that Lecointe’s Ts teach or at least suggest the claimed “ridges” that form “longitudinal channels” within the meaning of claim 25. (Id.)2 3 Appellant further argues that several features of the Lecointe reference (Id.) differ from the limitations recited in claim 25. However, we are not persuaded by Appellant’s arguments, because Appellant is arguing limitations not recited in claim 25. (Ans. 6—1)? We note Appellant has not filed a Reply Brief to rebut the Examiner's responsive clarifications and findings in the Answer. Therefore, on this record, Appellant has not provided sufficient evidence or argument to persuade us of any reversible error in the 2 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). 3 A basic canon of claim construction is that one may not read a limitation into a claim from the written description. Renishaw pic v. Marposs Societa’per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). Patentability is based upon the claims. “It is the claims that measure the invention.” SRIInt’l v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). 5 Appeal 2017-004078 Application 12/996,773 Examiner's reading of the contested limitations on the corresponding features found in the cited prior art. Accordingly, we sustain the Examiner’s obviousness rejection of independent representative claim 25, and claims 28—32, which fall therewith. See supra Section, Grouping of Claims. Claim 26 Under § 103, did the Examiner err in finding that the cited references, either alone or in combination, would have taught or suggested the dispositive contested limitations (shown in italics and bold): The packaging according to claim 25, further comprising a second opening arranged in the first end of the enclosure a distance from the first opening the first end being sealed between saidfirst and second openings, said second opening being a vent for venting air from the enclosure, wherein said second opening is arranged immediately above the third longitudinal channel, whereby biological material introduced into the first opening will flow through the first, second and third channels, expelling air through the second opening, within the meaning of independent claim 25? See n. 1, supra. Appellant contends the Examiner combines the second opening from Figure 10 of Lecointe with the packaging of Figure 8 without providing a rationale. (App. Br. 10.) Appellant explains that “[i]n Fig. 10, the central cannula of Lecointe extends all the way to the end of the package. In order to fill the package, biological material must therefore be introduce[d] on both sides the central channel (because, as discussed above, the presence of the cannula will prevent the material from flowing across).” (Id.) However, the Examiner finds “the advantages of providing a second fill opening are certainly well within the level of ordinary skill in the art at 6 Appeal 2017-004078 Application 12/996,773 the time of the invention, particularly the faster filling operation possible via the use of a second opening.” (Ans. 7.) The Supreme Court guides: “a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 401. Moreover, substitution of components does not destroy the principle of operation where it does not destroy the overall principle of operation of the device. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Appellant’s challenge to combining features of two figures of the Lecointe reference is not convincing of error in the Examiner’s legal conclusion of obviousness, because “[cjombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). A reason to combine teachings from the prior art “may be found in explicit or implicit teachings within the references themselves, from the ordinary knowledge of those skilled in the art, or from the nature of the problem to be solved.” IVMS Gaming Inc. v. Int 7 Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In reRouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Appellant has not provided persuasive evidence that combining the interrelated teachings within the Lecointe reference would have been “uniquely challenging or difficult for one of ordinary skill in the art,” or that such a combination would have “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). 7 Appeal 2017-004078 Application 12/996,773 Therefore, on this record, we find Appellant has not shown the invention as recited in claim 26 is “more than the predictable use of prior art elements according to their established functions” so as to be non-obvious under KSR, 550 U.S. at 417. For the reasons discussed above, Appellant has not provided arguments supported by a preponderance of the evidence to persuade us the Examiner erred. ly, for essentially the same reasons articulated by the Examiner in the Answer (7), as further discussed above, we sustain the Examiner's rejection of claim 26. Claim 27 Regarding claim 27, similar to that argued regarding claim 26, Appellant argues the examiner supplies the missing feature (one ridge is longer than the other) from Figure 10, not Figure 8. (App. Br. 10). We are not persuaded by Appellant’s argument because we find varying the length of the ridges would have been well within the level of an artisan having ordinary skill in the art. (Ans. 8.). ly, for essentially the same reasons articulated by the Examiner in the Answer (8), we sustain the Examiner’s rejection of claim 27. 8 Appeal 2017-004078 Application 12/996,773 DECISION We affirm the Examiner’s rejection of claims 25—32 under pre-AIA 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED 9 Copy with citationCopy as parenthetical citation