Ex Parte Cecchi et al

Board of Patent Appeals and Interferences

Jan 31, 2012

11732744 (B.P.A.I. Jan. 31, 2012)

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.
11/732,744 04/05/2007 Michael D. Cecchi H-1382 3647
7590 02/01/2012
William W. Jones
6 Juniper Lane
Madison, CT 06443
EXAMINER
SASAKI, SHOGO
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
02/01/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL D. CECCHI, JACQUES COHEN,
and TIM SHIMMEL
____________

Appeal 2010-009926
Application 11/732,744
Technology Center 1700
____________

Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and JAMES
C. HOUSEL, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejections under 35 U.S.C. § 102(b) of claims 7-10 as anticipated by either
Lyman (US 5,084,246 issued Jan. 28, 1992) or Lacey (US 6,943,009 B2
issued Sep. 13, 2005). We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

Appeal 2010-009926
Application 11/732,744

2
Appellants claim a container assembly for use in preparation of
specimens comprising a first compartment 10 containing a plurality of
specimen-receiving wells 16 arranged in a pattern of columns and rows, side
walls 4 surrounding the first compartment, and information surfaces
providing shelves upon which information "regarding the specimens in each
of said rows and columns of wells is displayed" (claim 7; Fig. 1).
Representative claim 7, the sole independent claim on appeal, reads as
follows:
7. A container assembly for use in the preparation of mammalian
specimens for cryopreservation and/or vitrification, and for thawing and
using such specimens, said container comprising:

a) a first compartment containing a plurality of specimen-receiving
wells, said wells being arranged in a grid pattern comprising columns and
rows of aligned wells;

b) side walls surrounding said first compartment so as to isolate said
grid of wells from ambient surroundings; and

c) at least two information surfaces disposed adjacent to two adjacent
ones of said side walls, said information surfaces providing shelves upon
which information regarding the specimens in each of said rows and
columns of wells is displayed.

We sustain the above rejections for the reasons expressed in the
Answer and add the following comments for emphasis.
The Examiner finds that each of Lyman and Lacey discloses a
container assembly having information surfaces with alpha-numeric
characters thereon as required by clause c) of independent claim 7 (Ans. 3,
5). Appellants argue that "[t]hese characters . . . do not provide any
Appeal 2010-009926
Application 11/732,744

3
information at all 'regarding the specimens in each of the rows and columns'
[as recited in clause c) of claim 7]" (Br. 3, 4).
This argument is unpersuasive. As correctly pointed out by the
Examiner, the information surfaces of claim 7 are structurally
indistinguishable from the information surfaces of Lyman and Lacey (Ans.
para. bridging 6-7). Although claim 7 characterizes the specific information
as "regarding the specimens", such specific information is not patentably
distinguishable from the alpha-numeric information of Lyman and Lacey.
This is because the specific information recited in claim 7 is not functionally
related to the surfaces upon which the information is displayed. See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) ("[w]here the printed matter is
not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability", quoting
In re Gulack, 703 F.2d 1381, 1387 (Fed. Cir. 1983)).
Regarding certain limitations of the remaining dependent claims,
Appellants merely identify the limitation and assert that "[t]his limitation is
completely lacking" in Lyman and Lacey (Br. 3, para. bridging 3-4, 4, 5)
without specifically addressing the Examiner's findings concerning these
limitations. Such unembellished assertions fail to reveal error in the findings
of fact made by the Examiner.
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)(1)(iv).
AFFIRMED
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