Ex Parte Schryver

Patent Trial and Appeal Board

Jun 26, 2018

12819024 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/819,024 06/18/2010 Brian Schryver
71341 7590 06/28/2018
KIRTON MCCONKIE
36 South State Street
Suite 1900
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.
18045.4 9099
EXAMINER
ALOSH, TAREQ M
SALT LAKE CITY, UT 84111 ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
dconklin@kmclaw.com
kchamberlain@kmclaw.com
ipdocket@kmclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN SCHRYVER
Appeal2016-003417
Application 12/819,024
Technology Center 3700
Before STEVEN D.A. McCARTHY, MICHAEL W. KIM and
JEFFREY A. STEPHENS, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claim 23 under pre-AIA 35 U.S.C. § 112, first
paragraph, for lack of written description; and claims 1, 2 and 21-23 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Morris
(WO 91/01635, publ. Feb. 21, 1991), Chopas (US 5,689,970, issued Nov.
25, 1997), Robinson (US 5,604,977, issued Feb. 25, 1997) and Manwaring
(US 2010/0268213 Al, publ. Oct. 21, 2010); or, in the alternative, over
The Appellant identifies the real party in interest as BioCision, LLC.
(See Appeal Brief, dated May 11, 2015, at 1).
Appeal2016-003417
Application 12/819,024
Morris, Chopas, Manwaring and Wengyn (US 5,184,721, issued Feb. 9,
1993) (See Final Office Action, mailed Sept. 10, 2014 ("Final Action" or
"Final Act."), at 2, 4 & 9). Claims 3-7 are cancelled; and claims 8-20 have
been withdrawn from consideration. (See generally Appeal Brief, dated
May 11, 2015, ("Br."), at 15-18 (Claims App'x)). We have jurisdiction
under 35 U.S.C. § 6(b ).
The Appellant does not address in its brief the rejection of claim 23
under§ 112, first paragraph, for lack of written description. We summarily
AFFIRM that rejection. For the reasons that follow, we also AFFIRM the
rejections of claims 1, 2 and 21-23 under§ 103(a).
Claim 1 is the sole independent claim on appeal:
1. A specimen freezing rate regulator device,
compnsmg:
a cylindrical container having a sidewall and a bottom
composed of an insulating material and a central cavity having a
wall, the cylindrical container comprising a plurality of specimen
containment chambers formed in the sidewall and consisting of
a single row arranged in a radial pattern in relation to the central
cavity, the plurality of specimen containment chambers being
maintained at an equal distance from the central cavity by a
uniform layer of the insulating material, the cylindrical container
further having an outer surface, the plurality of specimen
containment chambers being maintained at an equal distance
from the bottom outer surface by a uniform layer of the insulating
material, the cylindrical container further having a bottom outer
surface, the plurality of specimen containment chambers being
maintained at an equal distance from the bottom outer surface by
a uniform layer of the insulating material, a uniform layer of
insulating material further interposed between each specimen
containment chamber to maintain an equal distance between each
specimen containment chamber, each specimen containment
chamber having an opening, a sidewall and a bottom surface
formed by the insulating material and configured to receive the
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Application 12/819,024
sample tube vial in direct contact with the insulating material, the
openings of the plurality of specimen containment chambers
being oriented in a plane that is perpendicular to the sidewalls of
the plurality of specimen containment chambers, the central
cavity having an opening that is in the same plane as the openings
of the plurality of specimen containment chambers, and the
insulating material comprising a uniform density material,
wherein the sidewall, bottom, central cavity and plurality of
specimen containment chambers form a monolithic structure;
a cover composed of the insulating material that is
removably coupled to the opening of the cylindrical container,
the cover being in contact with the insulating material of the
cylindrical container and covering the openings of the plurality
of specimen containment chambers and the central cavity when
coupled to the cylindrical container, the cover comprising a
central protrusion that extends into the central cavity and mates
with a friction fit at the wall of the central cavity, wherein thermal
energy contained within a sample is transferred to the insulating
material at a desired rate; and
a removable ballast disposed within the central cavity and
thermally coupled to the insulating material of the cylindrical
container, such that when said thermal ballast is disposed in said
central cavity, there is an air space between the thermal ballast
and the cover, wherein the thermal ballast is a metal or a metal
alloy excluding sealed liquid containers, and wherein said ballast
is physically separated from said sample tube vials by the
insulating material.
(Br. 14 & 15 (Claims App'x)).
ISSUES
The Appellant's arguments do not differentiate between the claims on
appeal. Therefore, we select independent claim 1 as representative. See 3 7
C.F.R. § 41.37(c)(l)(iv). Furthermore, the Appellant's arguments address
only the teachings of the primary reference, Morris. Therefore, we limit our
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Application 12/819,024
findings to the teachings of that reference. Only those arguments actually
made by the Patent Owner will be considered. Arguments that the Patent
Owner could have made, but chose not to make, will not be considered and
are deemed to be waived. See 37 C.F.R. § 41.67(c)(l)(vii) (2011); In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
We address two issues:
First, did the Examiner properly find that a device, including a
"cylindrical container comprising a plurality of specimen containment
chambers formed in the sidewall and consisting of a single row arranged in a
radial pattern in relation to the central cavity," would have been obvious?
Second, did the Examiner properly conclude that it would have been a
mere matter of design choice for one of ordinary skill in the art to fabricate
the sidewall and bottom of the cylindrical container as a monolithic
structure?
FINDINGS OF FACT
The record supports the following findings of fact ("FF") by a
preponderance of the evidence.
1. Figure 2a of Morris depicts a device 1 adapted to be placed in a
cold environment to cool biological material such as mammalian fetuses or
gametes. (See Morris 43, 11. 13-19; see also id. 44, 1. 32 -45, 1. 2).
2. The device 1 includes a toroidally-shaped insulating body 11
having a cylindrical inner surface defining a central cavity; a cylindrical
outer surface; and flat top and bottom surfaces. (See Morris 44, 11. 1-8 &
Fig 2a). The device 1 also includes a disc-shaped base plate 9 separate from
the insulating body 11 (see Morris 43, 11. 28 & 29); and a cylindrical, brass
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Application 12/819,024
core 3 (see Morris 43, 11. 21-23). The base plate 9 has a flat upper surface
for abutment with the bottom surface of the insulating body 11. (See Morris
43, 11. 23-26 & 44, 11. 1--4).
3. The insulating body 11 includes four series of holes 13, 15, 17,
19 for receipt of tube-shaped straws carrying the material to be frozen. (See
Morris 44, 1. 32 - 45, 1. 2). As depicted in Figure 2a, each hole has an
opening in the top surface of the insulating body 11; a sidewall extending in
a direction parallel to the height of the outer surface of the insulating body;
and a bottom.
4. Each series of holes 13, 15, 17, 19 consists of a single row of
holes arranged in a radial pattern in relation to the central cavity. The rows
of holes constituting the series 13, 1 5, 17, 19 are arranged at different
distances from the central cavity. (See Morris 44, 11. 10-30). Each hole,
within any one of the series, is equally spaced from the inner surface, the
outer surface, and the bottom surface.
5. Morris teaches reducing damage to a specimen, due to the
effects of ice crystallization during freezing, by reducing the time during
which the latent heat of fusion of water within the specimen is being lost.
To this end, Morris teaches cooling a specimen at a higher rate during the
period while the latent heat of fusion is being lost; and, subsequently, at a
lower rate. (See Morris 7, 1. 18 - 8, 1. 17).
6. Morris teaches effecting such a variable cooling rate in the
device 1 by first loading thin tubes or "straws" containing the samples into
the holes 13, 15, 17, 19; chilling the core 3; inserting the core into the central
cavity of the insulating body 11; and then placing the device in a cold
environment. During the period while the latent heat of fusion is being
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Application 12/819,024
extracted, the specimens are cooled at a relatively high rate by the combined
action of the cold, external environment and the chilled core 3. After the
temperature of the core 3 equilibrates with that of the insulating body 11, the
specimens are cooled at a lower rate by the action of the cold, external
environment alone. (See Morris 45, 1. 18 - 46, 1. 25; see also id. 35, 1. 33 -
36, 1. 8 & 38, 11. 11-32).
7. Morris teaches positioning the chilled core 3 in the central
cavity of the insulating body 11 by press fitting a spigot 5, extending from a
lower end of the core 3, into a socket, defined in a boss 7 projecting from the
top surface of the base plate 9, to firmly attach the core to the base plate;
placing the core 3 and the base plate 9 together in a cold environment to chill
the core; and then sliding the core 3 into the central cavity until the boss 7
engages the wall of the central cavity. (See Morris 45, 11. 18-31; see also id.
43, 11. 21-26 & 44, 11. 1--4).
8. Morris teaches forming the core 3 from a thermally conductive
metal, namely, brass; and forming the base plate 9 from the same material as
the insulative body 11, namely, laminated polystyrene. (See Morris 43, 11.
21-29; see also id. 44, 11. 5-7). Morris does not teach or suggest that the
thermal behavior of the base plate 9 is intended to differ from that of the
insulative body 11; or that the base plate 9 is intended to contribute to the
relatively higher rate of cooling induced by the combined action of the cold
environment and the core 3.
9. W engyn describes a hypodermic needle or syringe receptacle
including a toroidally-shaped lower body 20. The toroidally-shaped body 20
includes a single row of recesses 2 4 arranged in a radial pattern in relation to
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Application 12/819,024
a centrally-disposed canister recess 22. The recesses 24 are configured to
receive liquid retaining tubes 26. (See Wengyn, col. 3, 11. 20-29 & Fig. 1).
10. Wengyn's centrally-disposed canister recess 22 is configured to
receive a hollow, substantially cylindrical tube 38 containing a porous foam
element 40 permeated with a disinfectant into which used hypodermic
needles may be stabbed. A support ledge or flange 54 extends outwardly
from the upper periphery 48 of the tube 38 to abut against an upper edge 56
of the centrally-disposed canister recess 22 of the body 20. (See Wengyn,
col. 3, 11. 48-55 & 60-64; & Fig. 3).
ANALYSIS
At the outset, we point out that the Appellant has not established that
Morris teaches away from the subject matter of claim 1. "Teaching away"
implies criticism of the claimed subject matter or a suggestion that the
claimed subject matter will not succeed in its intended purpose. See In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Morris fails to affirmatively
teach, within its four comers, cooling all samples placed in plurality of
specimen containment chambers at the same rate; or to expressly describe a
device in which the sidewall, bottom, central cavity and plurality of
specimen containment chambers of a cylindrical container form a monolithic
structure. We are unpersuaded that silence here implies criticism, as we are
unpersuaded that these features would have been anything but obvious
variations of what Morris did teach. Accordingly, we are unpersuaded that
the Examiner improperly rejected claims 1, 2 and 21-23.
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First Issue
Claim 1 recites a "cylindrical container comprising a plurality of
specimen containment chambers formed in the sidewall and consisting of a
single row arranged in a radial pattern in relation to the central cavity." The
Examiner correctly finds that the insulating body 11 of the device 1,
depicted in Figure 2a of Morris, corresponds to the sidewall of the
cylindrical container recited in claim 1. (See FF 2). The insulating body 11
includes holes arranged in series 13, 15, 17, 19. The series 13, which
consists of "a single row arranged in a radial pattern in relation to the central
cavity," corresponds in and of itself to the "plurality of specimen
containment chambers formed in the sidewall." The open-ended language,
reciting a "cylindrical container comprising a plurality of specimen
containment chambers" (italics added for emphasis), admits of the
possibility that the recited cylindrical chamber may include structure in
addition to the recited "plurality of specimen containment chambers," such
as additional holes or specimen containment chambers 15, 17, 19 not within
the "single row arranged in a radial pattern in relation to the central cavity."
The Appellant argues that the Examiner "has failed to recognize that
the [subject matter of claim 1] differs from the [apparatus of Figure 2a of
Morris] in that [the claimed subject matter] provides a device that provides a
means in which all samples in the device should experience the same rate of
cooling, when the device is placed in a cold environment." (Br. 6). Claim 1
does not recite a limitation that all samples in the device experience the same
rate of cooling with the device is placed in a cold environment. For this
reason alone, the argument is not persuasive.
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Application 12/819,024
Even were claim 1 limited to devices in which all samples in the
device experienced the same rate of cooling, however, the plurality of
specimen containment chambers or holes 13 are arranged in a single row
symmetrically about the central cavity of the insulating body 11. (See FF 4).
Because the series of holes 13 are arranged in a pattern similar to the
arrangement of the specimen receiving chambers in the device of Figure 1 of
the underlying application, the Examiner has a sound and unrebutted basis
for believing that all samples placed in the plurality of specimen
containment chambers 13 would experience the same rate of cooling. (See
Ans. 15 & 16). For this reason, as well, the Appellant's argument is not
persuasive.
Even were we to conclude that claim 1 limits the recited device to one
having a sidewall with specimen containment chambers lying only within "a
single row arranged in a radial pattern in relation to the central cavity," such
an arrangement would have been obvious from the combined teachings of
Morris and Wengyn. (See Final Act. 9; see also FF 9). The Appellant does
not appear to challenge either the Examiner's findings regarding the
teachings of W engyn; or the existence of a reason to combine the teachings
of W engyn with those of Morris. All samples placed in a single row of
specimen containment chambers arranged in a radial pattern would
experience the same rate of cooling. (See Ans. 15 & 16). For this reason, as
well, the Appellants' argument is not persuasive.
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Application 12/819,024
Second Issue
Claim 1 recites that "the sidewall, bottom, central cavity and plurality
of specimen containment chambers form a monolithic structure." In
addressing this limitation, a distinction may be drawn between the condition
of the device 1, depicted in Figure 2a of Morris, before and after the
insulating body 11 engages the core 3 and the base plate 9. Before the
insulating body 11 engages the core 3 and the base plate 9, the bottom
portion of the insulating body constitutes the bottom of the device. Tubes or
"straws" inserted into the holes 13, 15, 17, 19 would be supported by the
bottom portion of the insulating body 11. After the insulating body 11
engages the core 3 and the base plate 9, the base plate 9 of the device 1
depicted in Figure 2a of Morris constitutes the bottom of the device. The
base plate 9 is not monolithic with the insulating body 11 that embodies the
recited sidewall. (See FF 2 & 7).
The Examiner concludes that it would have been an obvious design
choice to fabricate the insulating body 11 and the base plate 9 as a
monolithic structure, thereby satisfying the quoted limitation. (See Final
Act. 5 & 6, citing In re Larson, 340 F.2d 965, 968 (CCPA 1965)). As
mentioned earlier, the bottom portion of the insulating body 11 constituted
the bottom of the device before the insulating body 11 engaged the core 3
and the base plate 9 to perform the staged cooling of specimens supported in
the holes 13, 15, 17, 19. This fact alone would have suggested that the
device might be fabricated in an alternative configuration in which the
sidewall and bottom were monolithic. The teachings of W engyn would have
provided guidance as to how a metal cylinder, having the same external
contour as the core 3, might have been inserted into, and supported within, a
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Application 12/819,024
central cavity in a toroidally-shaped body without being attached to a
separate base plate. (See FF 10).
In other words, a configuration in which the sidewall, bottom, central
cavity and plurality of specimen containment chambers formed a monolithic
structure was a known, or at least foreseeable, alternative to the separate
insulating body 11 and base plate 9 described by Morris. It would have been
obvious to merely substitute such a configuration for that described by
Morris; and to merely substitute a method by which a cylindrical metal
body, such as the core 3, was slid into the central cavity from the top, as
suggested by W engyn, for the method by which the metal cylinder was
attached to a base plate 9 and slid in through the bottom, as taught by
Morris. In this sense, at least, the arrangement described by Morris and that
recited in the claim were known alternative design choices.
Morris does not teach away from the subject matter of claim 1. (See
generally Br. 7-12). As noted earlier, the fact that Morris teaches a device 1
having a base plate 9 separate from the insulating body 11 does not imply, at
least here, that Morris criticizes devices having monolithic sidewalls and
bottoms. In particular, the Appellant does not persuade us that the fact that
Morris teaches chilling the core 3 and the base plate 9 as a unit would have
discouraged one of ordinary skill in the art from substituting a device having
a monolithic sidewall and bottom. The base plate 9 described by Morris, as
opposed to the core 3, appears to play no role in the staged cooling of
specimens in Morris's device 1. (See FF 8). One of ordinary skill in the art
would not have reason to retain the separate base plate 9 in order to better
carry out Morris's teaching to cool the specimens at a higher rate during the
period while the latent heat of fusion was being extracted. (See FF 6).
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Likewise, since W engyn suggests how the core 3 might be inserted into the
central cavity without first coupling the core to a separate base plate 9, one
of ordinary skill in the art would not have had reason to retain the separate
base plate in order to position the core 3.
The Examiner persuades us that the subject matter of claim 1 would
have been obvious from the combined teachings of the cited prior art. We
sustain the rejection of claims 1, 2 and 21-23 under§ 103(a) as being
unpatentable over Morris, Chopas, Robinson (US 5,604,977, issued Feb. 25,
1997) and Manwaring; or, in the alternative, over Morris, Chopas,
Manwaring and W engyn.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1, 2 and 21-
23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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