Ex Parte Kommisrud

Patent Trial and Appeal Board

Dec 11, 2017

12996773 (P.T.A.B. Dec. 11, 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.
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