Ex Parte Spittle et al

Patent Trial and Appeal Board

Oct 17, 2013

12204511 (P.T.A.B. Oct. 17, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/204,511 09/04/2008 Jason William Spittle 10922-367 5118
48003 7590 10/17/2013
BRINKS GILSON & LIONE/CHICAGO/COOK
PO BOX 10395
CHICAGO, IL 60610
EXAMINER
BOWERS, NATHAN ANDREW
ART UNIT PAPER NUMBER
1775
MAIL DATE DELIVERY MODE
10/17/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JASON WILLIAM SPITTLE,
STEPHEN CHARLES DAVIS, ANDREW HINSCH,
and JOHN HUBERTS
____________

Appeal 2012-007567
Application 12/204,511
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1-3 and 5-19 as unpatentable
over Peng (US Patent Publication No. 2005/0254055 A1, published Nov. 17,
2005) in view of Acker et al. (US 3,837,746, patented Sep. 24, 1974). We
have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

Appeal 2012-007567
Application 12/204,511

2
Appellants claim an apparatus or system for measuring characteristics
such as temperature and pH of a culture medium comprising a reader unit
10, 20, comprising a culture vessel 24, and a separate cuvette 28 containing
the same medium as the culture vessel, wherein the measurement is carried
out in the cuvette, wherein the culture vessel and cuvette may be retained by
a gripper arrangement 22, and wherein the reader unit is configured to
measure the characteristics when the reader unit, culture vessel, and cuvette
are outside an incubator (sole independent claims 1 and 13; see Figs. 1-2).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. An incubation condition monitoring device comprising at least one
reader unit to measure selected characteristics within an incubator, a
receiver/transmitter mechanism to convey the measurements of the selected
characteristics to a data logger outside the incubator and a monitor and
display system to monitor and display the measurements of the selected
characteristics, wherein each reader unit comprises a gripper arrangement to
grip and retain a culture vessel and a separate cuvette containing the same
medium as the culture vessel and the measurement of the selected
characteristic is carried out in the cuvette,
wherein the reader unit is configured to enable monitoring of the
selected characteristics when the reader unit is removed from the incubator
while retaining the culture vessel and cuvette.

Appellants do not present separate arguments directed to the
dependent claims on appeal (i.e., claims 2, 3, 5-12, and 14-19) (Br. 3-7).
Therefore, the dependent claims will stand or fall with their parent
independent claims.
We sustain the above rejection for the reasons given in the Answer.
The comments below are added for emphasis.
Appeal 2012-007567
Application 12/204,511

3
The Examiner finds that Peng discloses an apparatus or system
comprising a reader unit which clamps or grips a culture vessel and
measures characteristics of the culture medium in the vessel but does not
disclose a separate cuvette for containing the culture medium to be measured
as required by independent claims 1 and 13 or a gripper arrangement for
retaining a cuvette as well as the culture vessel as required by independent
claim 1 (Ans. 6). The Examiner also finds that Acker discloses a culture
monitoring system comprising a culture vessel and separate cuvette (i.e., for
the culture medium to be measured) with a gripper arrangement therefor
(id.). In light of these findings, the Examiner concludes that it would have
been prima facie obvious to provide Peng with a culture vessel having a
separate cuvette and a gripper arrangement for the cuvette and culture vessel
as taught by Acker (id. at 7).
Appellants argue that Peng teaches away from the combination
proposed by the Examiner and required by the independent claims by
criticizing conventional equipment which includes a separate cuvette as
rendering measurements very tedious or even impossible when continuous
measurement is required especially when biological cells are in a growing
and shaking environment (Br. 4-7 quoting paras. 0006, 0007, and 0021 of
Peng).
The Examiner responds to this argument by pointing out that the
proposed combination is not antithetical to the teachings of Peng but rather
improves on these teachings (Ans. 10-12). We agree with the Examiner.
The culture vessel, separate cuvette, and gripper arrangement taught by
Acker are designed for continuous measurement in a cell-growing and
Appeal 2012-007567
Application 12/204,511

4
shaking environment (see, e.g., Abst. and col. 1, ll. 12-20) as desired by
Peng (see, e.g., Abst. and para. 0025).
For these reasons, an artisan would have considered the teachings of
Peng and Acker to complement one another and would have combined these
teachings in the manner proposed in order to obtain the predictable use of
prior art elements (e.g., a culture vessel, separate cuvette, and gripper
arrangement) according to their established functions (e.g., for continuous
measurement in a cell-growing and shaking environment). See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (in assessing the obviousness
of a claim to a combination of prior art elements, the question to be asked is
"whether the improvement is more than the predictable use of prior art
elements according to their established functions").
The decision of the Examiner 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).
AFFIRMED

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