Ex Parte OURA et al

Patent Trial and Appeal Board

Nov 28, 2018

13400107 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/400,107 02/19/2012 Mitsuhiro OURA
39083 7590 11/30/2018
KENEALY VAIDYA LLP
3000 K Street, N.W.
Suite 200
Washington, DC 20007
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
6002-0063 3808
EXAMINER
EDWARDS, LYDIA E
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
avaidya@kviplaw.com
uspto@kviplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUHIRO OURA, TERUO OKANO,
TATSUY A SHIMIZU, HIROTSUGU KUBO,
KATSUYOSHI SUZUKI, and SUNAO TAKEDA
Appeal2017-003049
Application 13/400, 107
Technology Center 1700
Before ROMULO H. DELMENDO, BEYERL YA. FRANKLIN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants appeal2 under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 4--13, and 15-20. We have jurisdiction
under 35 U.S.C. § 6(b). A hearing was held on November 15, 2018. 3
We AFFIRM.
1 In this Decision, we refer to the Specification filed February 19, 2012
("Spec."), the Final Office Action dated October 8, 2015 ("Final Act."), the
Appeal Brief filed April 15, 2016 ("Appeal Br."), the Examiner's Answer
dated November 4, 2016 ("Ans."), and the Reply Brief filed January 3, 2017
("Reply Br.").
2 Appellants identify the real parties in interest as Nihon Kohden
Corporation and Tokyo Women's Medical University. Appeal Br. 3.
3 The record will include a transcript of the hearing when it becomes
available.
Appeal2017-003049
Application 13/400,107
The subject matter of the claims on appeal are directed to a cell
incubator and incubation condition monitoring system that can wirelessly
transmit and receive information such as incubation conditions to and from a
predetermined communicating apparatus. Spec. 1, 11. 4--9. Claims 1 and 13,
reproduced below, are illustrative of the claims on appeal.
1. A cell incubator comprising:
a culture cell accommodating section in which cells are
cultured, and which accommodates a culture solution;
an RFID tag which is attached to the culture cell
accommodating section and which includes a reception
structure and a transmit structure, the transmit structure
configured to transmit predetermined information to a
communicating apparatus in response to reception by the
reception structure of a signal that is wirelessly transmitted
from the communicating apparatus; and
a sensor incorporated in the RFID tag and configured to
directly or indirectly measure a temperature of the culture
solution and at least one of a carbon dioxide concentration, an
oxygen concentration, an oxygen partial pressure, a glucose
concentration, a lactate concentration, and an ammonia
concentration, wherein
the RFID tag is configured to transmit the predetermined
information that includes a result of measurement by the sensor
to the communicating apparatus.
13. A cell incubator comprising:
an incubator body unit which includes:
a culture cell accommodating section that
accommodates cells to be cultured and a culture solution;
and
a measuring unit accommodating section that is
disposed adjacent to and integrally with the culture cell
accommodating section; and
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Application 13/400,107
a measuring unit which is housed in the measuring
unit accommodating section, and which includes a light
emitting section and a light receiving section, the measuring
unit in which the light emitting section transmits light through
the culture solution and the light receiving section receives the
transmitted light, thereby measuring a condition of the culture
solution, wherein
the culture cell accommodating section includes a central
portion and a continuous projection portion extending
continuously from the central portion, and the projection
portion is projected as to be between the light emitting section
and light receiving section.
Appeal Br. 18, 21 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claim 1 under pre-AIA 35 U.S.C. § I02(b) as
anticipated by Larsen (US 2008/0090287 Al, published April 17, 2008)
(Final Act. 3; Ans. 2);
Rejection 2: Claims 1, 4--12, 16-18, and 204 under pre-AIA
35 U.S.C. § I03(a) as unpatentable over Spittle et al. (WO 2007/120619 A2,
published October 25, 2007) ("Spittle") in view of Herbert et al.
(WO 2007/049078 Al, published May 3, 2007) ("Herbert") and Larsen
(Final Act. 5; Ans. 2);
Rejection 3: Claims 13 and 19 under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Eden et al. (US 2008/0176273 Al, published July 24,
2008) ("Eden") (Final Act. 9; Ans. 2); and
4 Claim 21 was canceled.
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Application 13/400,107
Rejection 4: Claim 15 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Eden in view of Herbert (Final Act. 11; Ans. 2).
DISCUSSION
After review of the cited evidence in light of the Appellants' and the
Examiner's opposing positions, we determine that Appellants have not
identified reversible error in the Examiner's rejections. See generally
Appeal Br. 10-17. Accordingly, we affirm the rejections for the reasons set
forth below, in the Final Office Action, and in the Examiner's Answer. We
add the following.
Rejection 1 - Claim 1
The Examiner finds that Larsen teaches claim 1 's structural
limitations including a culture cell accommodating section ( culture dish) in
which cells are cultured and which accommodates a culture solution (Larsen,
Abstract, ,r,r 63---65), and an RFID tag attached to the culture cell
accommodating section (id. ,r,r 33-35) that uses suitable sensors connected
to a microprocessor to measure parameters such as temperature, carbon
dioxide concentration and/or pH, or other metabolic parameters. (id. ,r 37).
Final Act. 3.
With respect to the intended/functional limitations regarding reception
and transmission of a signal and/or data, the Examiner finds that Larsen's
device is "structurally the same as the instantly claimed [ cell incubator]" and
thus is capable of performing the recited intended uses recited in the
claim. Id.
Appellants argue that Larsen fails to disclose or teach an RFID tag
that "includes a reception structure and a transmit structure, the transmit
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Application 13/400,107
structure configured to transmit predetermined information to a
communicating apparatus in response to reception by the reception structure
of a signal that is wirelessly transmitted from the communicating apparatus"
and that "is configured to transmit the predetermined information that
includes a result of measurement by the sensor to the communicating
apparatus" as recited in claim 1. Appeal Br. 11. Appellants further argue
that "the term 'configured' limits the claims to a specific structure and
structural relationship between elements so as to produce a specific function
that is not taught or suggested in the art." Id.
Appellants' arguments are not persuasive of reversible error. As the
Examiner finds, Larsen teaches all the structural elements of claim 1 's cell
incubator. Final Act. 3 (citing Larsen, Abstract, ,r,r 33-38, 63---65).
Appellants do not invoke 35 U.S.C. § 112, ,r 6, or explain how claim 1 's cell
incubator is structurally different from Larsen's apparatus. In re Schreiber,
128 F.3d 1473, 1478 (Fed. Cir. 1997) ("A patent applicant is free to recite
features of an apparatus either structurally or functionally . . . . Yet,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk."). Given that Larsen's apparatus is structurally the same as claim
1 's cell incubator, the Examiner reasonably finds that Larsen's apparatus
would have been capable of performing the specific functions recited in
claim 1. In re Swinehart, 439 F.2d 210,213 (CCPA 1971) ("'Functional'
terminology may render a claim quite broad. By its own literal terms a
claim employing such language covers any and all embodiments which
perform the recited function."). Accordingly, we sustain the anticipation
rejection of claim 1.
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Rejection 2- Claims 1, 4-12, 16-18, and 20
Appellants do not present separate arguments for the patentability of
dependent claims 4--12, 16-18, and 20. Appeal Br. 12. Therefore, we select
claim 1 as representative and limit our discussion to claim 1 below.
Claims 4--12, 16-18, and 20 will stand or fall with claim 1.
The Examiner finds that Spittle teaches claim 1 's cell incubator
including a cell incubator (2) with a culture cell accommodating section ( 6)
that accommodates cells to be cultured and a culture solution, and a reader
unit (10) which is attached to the culture cell accommodating section and is
configured to wirelessly transmit predetermined information to a
communicating apparatus (12, 16). Final Act. 5 (citing Spittle 5, 1. 10-6,
1. 12). Spittle does not explicitly disclose that the reader unit (10) is an
RFID tag. Final Act 5. The Examiner, however, finds that Herbert teaches a
laboratory apparatus with an incubator that includes sample containers with
assigned RFID tags that transmit predetermined information to a
communicating apparatus in response to reception of a signal. Final Act. 5
( citing Herbert 6-8).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify Spittle
with Herbert's RFID tags "to allow labeling/information to be added to the
culture dish which can be used to monitor the conditions and control
feedback in an incubator thereby creating an electronic trail within the
incubator." Final Act. 5---6.
Appellants argue that the cited art does not factually support the
Examiner's rejection. Appeal Br. 12. Specifically, Appellants argue that
Spittle's cuvette is not the same as "a culture cell accommodating section in
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which cells are cultured, and which accommodates a culture solution," as
recited in claim 1. Id. at 13. Appellants argue that Spittle's reader (10) is
connected to the cuvette (8), not the culture dish ( 6) in a manner to provide
data regarding the contents of the culture dish (6). Id. Appellants also argue
that the claimed subject matter eliminates components of the cited art. Id.
at 14.
Appellants' arguments address findings and reasoning the Examiner
made in previous Office Actions dated October 8, 2015, May 21, 2015, and
December 17, 2014, rather than the Examiner's findings and reasoning set
forth in the Final Office Action dated October 8, 2015, before us in this
appeal. Appeal Br. 12-14. We nevertheless have considered Appellants'
arguments, but find them unpersuasive for the reasons discussed below.
On this record, Appellants have not directed us to a definition in their
Specification that defines "a cell accommodating section" in such a way to
exclude a cuvette. See Appeal Br. 12-14; In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) ("we look to the specification to
see if it provides a definition for claim terms, but otherwise apply a broad
interpretation). Likewise, it is unclear to us how Appellants' claims
"eliminate" components of the cited art. As the Examiner explains, claim 1
uses the transitional phrase "comprising," and thus does not exclude
additional unrecited elements. Ans. 6.
Moreover, even if we agree with Appellants that the Examiner's
findings regarding Spittle are deficient, Larsen teaches or suggests all of
claim 1 's elements. Larsen, Abstract, ,r,r 33-38, 63---65.
Accordingly, we sustain the obviousness rejection of claims 1, 4--12,
16-18, and 20 over Spittle, Herbert, and Larsen.
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Rejections 3 and 4 - Claims 13, 15, and 19
Appellants do not present separate arguments for the patentability of
claims 15 and 19. Thus, we select independent claim 13 as representative,
and claims 15 and 19 will stand or fall with claim 13.
The Examiner finds that Eden discloses all the elements of
independent claim 13 including:
a measuring accommodating section (fixture assembly, Col. 4,
lines 51-55)[,] which accommodates a measuring unit that
includes a light emitting section [11 and 12] and a light receiving
section [ 15 and 16], the measuring unit in which the light
emitting section transmits light through the culture solution and
the light receiving section receives the transmitted light, thereby
measuring a condition of the culture solution, wherein a part of
the culture cell accommodating section is located between the
light emitting section and light receiving section ( see paragraphs
16 and 17), wherein a part of the culture cell accommodating
section includes a central potion [5] and a continuous projection
portion [9] extending continuously from the central portion, the
light emitting axis intersecting with the projection portion, and
the projection portion is projected as to be between the light
emitting section and light receiving section (see FIGS. 1-2; also
see whole document).
Final Act. 9-10 ( emphasis added).
Appellants argue that the Office Action fails to identify which
component or structure of Eden correspond to "a measuring accommodating
section" as recited in independent claim 13. Appeal Br. 15. Appellants also
argue that during the February 24, 2015, interview, the Examiner explained
that the unlabeled legs extending from the bottom of Eden's container 2 is
defined as "a measuring unit accommodating section." Id. Appellants
contend that the Examiner fails to explain how or why one skilled in the art
would interpret the unlabeled legs extending from the bottom of Eden's
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container 2 as corresponding to "a measuring unit accommodating section"
as recited in independent claim 13. Id.
Appellants' arguments are unpersuasive of reversible error.
Appellants' arguments that the unlabeled legs extending from the bottom of
Eden's container 2 correspond to claim 13 's "measuring unit
accommodating section" addresses a finding made by the Examiner in an
earlier Office Action. Appellants, however, do not address the Examiner's
finding and reasoning set forth the in the Final Office Action dated
October 8, 2015, before us in this appeal. As discussed above, in the
October 8, 2015, Final Office Action, the Examiner has clearly identified
which of Eden's component(s) and/or structure(s) correspond to "a
measuring unit accommodating section," as recited in independent
claim 13-i.e., Eden's fixture assembly. Final Act. 9-10 (citing Eden 4:51-
55). Appellants do not address or identify reversible error in the Examiner's
finding.
In the Reply Brief, Appellants argue that there is no way for Eden's
fixture assembly ( corresponding to claim 13 's "measuring unit
accommodating section") "to hold the measuring components as shown and
described, for example, by reference number 122 in Figure 2 of Appellants'
Specification." Reply Br. 9.
Appellants' argument is not persuasive of reversible error because as
the Examiner finds, Eden teaches that light sources 11, 12, and photo-
detector 15 are included or housed in the fixture assembly. Final Act. 10
( citing Eden ,r 17). Appellants do not identify reversible error in the
Examiner's finding.
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We are also unpersuaded by Appellants' argument that Eden does not
teach a measuring unit accommodating section that is disposed "integrally
with" the culture cell accommodating section. Reply Br. 10. Because
Appellants have not directed us to a definition in their Specification for the
phrase "integrally with," we discern no reversible error in the Examiner
giving the claimed phrase its broadest reasonable interpretation-i.e., "of,
relating to, or belonging as part of the whole; constituent or component."
Final Act. 10.
For the reasons above, we are not persuaded of reversible error in the
Examiner's rejection. Accordingly, we sustain the Examiner's obviousness
rejection of claims 13, 15, and 19 over Eden, alone or in view of Herbert.
DECISION
The rejections of claims 1, 4--13, and 15-20 are 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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