Ex Parte Florez et al

Patent Trial and Appeal Board

Mar 2, 2016

12221252 (P.T.A.B. Mar. 2, 2016)

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.
12/221,252 07/30/2008 Peter Florez 134-000110US 9663
22798 7590 03/02/2016
QUINE INTELLECTUAL PROPERTY LAW GROUP, P.C.
P O BOX 458
ALAMEDA, CA 94501
EXAMINER
HENKEL, DANIELLE B
ART UNIT PAPER NUMBER
1799
MAIL DATE DELIVERY MODE
03/02/2016 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 PETER FLOREZ,
SHUN LUO, LOUIS CHEUNG, and KIMBERLEY FLOREZ
____________

Appeal 2014-004960
Application 12/221,252
Technology Center 1700
____________
Before JAMES C. HOUSEL, GEORGE C. BEST, and JULIA HEANEY,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 3‒11, 20, and 21 of
Application 12/221,252 under 35 U.S.C. § 103(a) as obvious. Final Act.
(January 17, 2013). Appellants seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM. Because our affirmance
relies upon findings of fact and conclusions of law that differ from those that
form the basis of the Examiner’s rejection, we designate our affirmance as
constituting a NEW GROUND OF REJECTION under 37 C.F.R.
§ 41.50(b).
Appeal 2014-004960
Application 12/221,252
2
BACKGROUND
The ’252 Application describes systems and methods for processing
biological materials in a highly automated, rapid manner while maintaining
high cell viability, throughput, and sterility. Spec. ¶ 2. In particular, the
Specification describes a small, disposable bioreactor with a septum for
inserting and removing samples, and a gas permeable membrane to allow
gas exchange between the interior of the bioreactor and the ambient
surroundings. Id.
Claim 1 is representative of the ’252 Application’s claims and is
reproduced below:
1. A cell culture system comprising:
a container comprising a cylindrical side wall, a closed bottom
end and an open top end,
wherein the container has approximately the length and
diameter of a standard 50-ml centrifuge tube; and,
a cap comprising a septum and a gas permeable membrane,
wherein the cap is adapted to close the top end of the
container;
wherein the membrane allows gas exchange between an
inside of the container and the exterior of the container,
and
wherein the septum provides a self-sealing access to the
inside of the container after penetration with a conduit.
App. Br. 10 (Claims App.) (some paragraphing and indentation added).
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Application 12/221,252
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REJECTION
Claims 1, 3‒11, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Roos1 and Sakal.2 Final Act. 3.
DISCUSSION
Appellants present substantially identical arguments for the reversal of
the rejection of claims 1 and 10, which are the two independent claims in the
’252 Application. See Appeal Br. 4–8. We, therefore, will limit our
discussion to the limitations recited in claim 1, but our analysis applies with
equal force to the corresponding limitations as recited in claim 10. Each of
dependent claims 3–9, 11, 20, and 21 stands or falls with the independent
claim from which it depends.
Appellants argue that the rejection of claim 1 should be reversed
because the Examiner erred by finding that the combination of Roos and
Sakal describes or suggests a container having approximately the length and
diameter of a standard 50mL centrifuge tube. Id. at 5–6.
The Examiner found that the combination of Roos and Sakal describes
a container having approximately the length and diameter of a standard
50mL centrifuge tube. Final Act. 3–4. In particular, the Examiner found
that Roos discloses a cylindrical shaped container, the container described as
having the length and diameter of a standard 50mL centrifuge tube. Id. at 3.
The Examiner also found that
SAKAL discloses a vial container capable of containing at least
20 mL fluid (mL centrifuge tube) . . . . At the time of the
invention[,] it would have been obvious to one of ordinary skill

1 US 2004/0005699 A1, published January 8, 2004.
2 US 2008/0121050 A1, published May 29, 2008.
Appeal 2014-004960
Application 12/221,252
4
in the art to modify the device of ROOS to include the vial
container as taught by SAKAL because it allows for use in
automated systems and further allows for automated
manipulation by automated machinery (0031, 0036).
Additionally, SAKAL discloses the selected size of the vial
container and cap may vary. Therefore[,] It [sic] would have
been an obvious matter of design choice to use a 50mL vial in
place of a 20 mL [sic, vial] or dish, since such a modification
would have involved a mere change in the size of a component.
Final Act. 3–4.
Appellants argue that the Examiner’s analysis amounts to reversible
error for a variety of reasons. Appeal Br. 5–6. In particular, Appellants
argue that the analysis is erroneous because it does not address the claim
limitations specifying the length and diameter of the claimed container. Id.
at 5.
The Examiner responds by arguing that Sakal does describe a
container having approximately the length and diameter of the standard
50mL centrifuge tube. Answer 2–3 (citing Spec. ¶ 35; Sakal ¶ 31). The
Examiner’s argument is not persuasive. First, the Examiner relies upon ¶ 35
of the Specification as providing the dimensions of a standard 50mL
centrifuge tube. Paragraph 35, however, is the description of one of
Appellants’ preferred embodiments. The Specification provides the
dimensions of the standard 50mL centrifuge tube in Figure 1. See Spec. ¶ 34.
The Examiner’s calculations, therefore, are based upon the wrong
dimensions. Second, the Examiner erred by applying the 25% variation
provided by the claim’s use of the term “approximately” twice. See Reply
Br. 2–3. When the Examiner’s errors are corrected, it is clear that Sakal
Appeal 2014-004960
Application 12/221,252
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does not describe a container having the approximate length of a standard
50mL centrifuge tube.3
Due to the Examiner’s errors, we cannot affirm the rejection of claims
1, 3‒11, 20, and 21 as unpatentable over the combination of Roos and Sakal
on the record before us.
NEW GROUNDS OF REJECTION
For the reasons set forth below, we conclude that claims 1, 3–11, 20,
and 21 are unpatentable over the combination of Applicants’ Admitted Prior
Art (AAPA) and Roos.
With respect to claims 1, 3, and 10, the ’252 Application’s
Specification describes the use of 50mL centrifuge tubes as cell culture
systems and notes some of the limitations of such systems:
Existing technology in the form of vented and un-vented
standard 50 ml centrifuge tubes used to support current cell
culture media optimization testing, transfection and other cell
banking and process development applications and methods is
unable to support near-future, very-fast methods of high
throughput testing. This is because these products consisting
primarily of standard non-vented and vented centrifuge tubes
(including TPP, Switzerland) “disposable bioreactors” with their
“vent only” design requires that caps must be manually removed
if any manipulation of the cell culture or bio-solutions contained
within is desired during testing and/or screening. Current

3 According to Figure 1 of the ’252 Specification, the length of a standard
50mL centrifuge tube is 114.35 mm. Thus, a container having a length
between 85.8 mm and 142.9 mm has the approximate length of the standard
50mL centrifuge tube for the purposes of claim 1 (based on Appellants’
broadest description of “approximately” as covering values within 25% of
the cited value, Spec. ¶ 17). According to the Examiner, Sakal describes a
container having a length of 69.85 mm. Answer 3.
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standard vented centrifuge tubes (e.g., “disposable bioreactor”
devices) have this serious limitation in the requirement to open a
screw-cap to access the interior. Cap removal for inoculation and
sampling increase the amount of labor and time required to run
experiments or analyses. Sterility and speed are compromised
with currently available technology, which can not [sic]
effectively interact with automated high-throughput processing
equipment.
Spec. ¶ 4.4
As found by the Examiner, Roos discloses a culture dish comprising a
cap. Final Act. 3. Roos’s cap comprises a sealable port, preferably a septum
that allows access to the interior of the capped container, and a gas
permeable membrane that allows gas exchange between the inside and
outside of the covered dish. See Roos ¶¶ 3, 15–18; Figs. 1, 2.
We conclude that, at the time of the invention, it would have been
obvious to a person of ordinary skill in the art to modify the cap described
by Roos by adjusting its size so that it would seal a standard 50mL
centrifuge tube. This combination would address the limitations in the use
of standard 50mL centrifuge tubes as cell culture systems that are described
in AAPA.
With respect to dependent claims 4–9, 11, 20, and 21 we adopt the
Examiner’s findings of fact regarding the additional limitations added in
each of these dependent claims. See Final Act. 4–6. Appellants have not
challenged these findings in this appeal.

4 We also note, but do not rely upon, Appellants’ statement that “[s]tandard
50-mL centrifuge tube dimensions are notoriously well known in the art.”
Appeal Br 3.
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CONCLUSION
For the reasons discussed above, we cannot affirm the rejection of
claims 1, 3–11, 20, and 21 as unpatentable over the combination of Roos and
Sakal based upon the Examiner’s factual findings. We, however, have
newly rejected these claims as unpatentable over combination of AAPA and
Roos.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b), which provides that “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)