Ex Parte Shaaltiel et al

Patent Trial and Appeal Board

Feb 12, 2019

12451295 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/451,295 11/05/2009
67801 7590 02/14/2019
MARTIN D. MOYNIHAN d/b/a PRTSI, INC.
P.O. BOX 16446
ARLINGTON, VA 22215
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Yoseph Shaaltiel
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.
47215 7141
EXAMINER
EDWARDS, LYDIA E
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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):
usptomail@ipatent.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSEPH SHAAL TIEL, Y AIR KIRSHNER, ALON
SHTAINIZ, YARONNAOS, and YFTACH SHNEOR
Appeal2017-004524
Application 12/451,295
Technology Center 1700
Before N. WHITNEY WILSON, JEFFREY R. SNAY, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 seek our review of the
Examiner's decision to reject claims 1, 29, 32, 54--56, 58, 61, 62, 66-85, and
87. App. Br. 2.
An oral hearing was held on January 29, 2019.
We have jurisdiction. 35 U.S.C. § 6.
We reverse.
1 Appellants identify Protalix Ltd. as the real party in interest. App. Br. 2.
Appeal2017-004524
Application 12/451,295
SUBJECT MATTER
The subject matter on appeal relates to a disposable device used in the
culturing and harvesting of plant tissue and/or cells. Spec. 1:4--5.
Independent claim 1 is illustrative of the claimed subject matter and is
copied below, with emphasis added to key limitations in italics:
1. A disposable device for culturing and harvesting plant tissue
and/or cells comprising a non-rigid container having a
volume of at least 400 liters and being configured with gas
exchange ports and a harvesting port enabling said device to
be used continuously for at least two consecutive
culturing/harvesting cycles, wherein said gas exchange ports
include a plurality of gas inlet ports positioned around the
perimeter of the container in the lower half of the container,
the outlets of said ports into the container having exits into
the container that are spaced from an axis of the container and
wherein the device has neither mechanical agitation to mix
medium in the container or a sparger to distribute gas bubbles
when medium is present therein.
App. Br. 18 ( emphasis added).
REJECTI0N2
Claims 1, 29, 32, 54--56, 58, 61, 62, 66-85, and 87 35 U.S.C. § I03(a)
as unpatentable over Hong3 in view of Proulx,4 and further in view of
Hodge. 5
2 The Examiner has withdrawn the rejection of claims 1 and 66 under
35 U.S.C. § 112, first paragraph, and the rejection of claim 75 under
35 U.S.C. § 112, second paragraph. Ans. 2.
3 US 2003/0175948 Al, published Sept. 18, 2003.
4 US 2005/0282269 Al, published Dec. 22, 2005.
5 US 2005/0272146 Al, published Dec. 8, 2005.
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Appeal2017-004524
Application 12/451,295
Regarding independent claims 1 and 66, the Examiner finds that Hong
teaches the claimed bioreactor, but "does not explicitly disclose [ 1] wherein
the bioreactor is disposable or [2] wherein the bioreactor comprises gas
exchange[] ports and a harvesting port." Final 8. To address these
differences, the Examiner relies on the teachings of Proulx. Id. at 8-9. 6
Based on the combined disclosure of Hong and Proulx, the Examiner
determines the skilled artisan would have found it obvious to 1) construct
Hong's bioreactor in a disposable manner with flexible plastic material as
taught by Proulx, and 2) modify Hong's bioreactor to include the gas
exchange ports and a harvesting port "to achieve the adequate movement
and/or mixing of components as desired without the need for capital and
maintenance intensive equipment." Id. at 9.
In the Answer, the Examiner finds that Hong's "gas inlet ports as
shown in Figure 3:63 positioned in the bottom half of the bioreactor as
shown in Figure 3 :20 provides a means to effectively mix the culture
solution as discussed in at least paragraph 40." Ans. 2.
OPINION
We reverse the rejection.
The underlying obviousness rationale for combining the teachings of
Hong with Proulx is two-fold - 1) making Hong's bioreactor disposable by
using Proulx's plastic material to save on capital expenditure (Final 9; see
Proulx ,r 4), and 2) modifying Hong's bioreactor to include Proulx's gas
exchange ports and harvesting port "to achieve the adequate movement
6 Because the Examiner does not rely on Hodge for any of the limitations
appearing in claims 1 and 66, we need not address this reference.
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Appeal2017-004524
Application 12/451,295
and/or mixing of components as desired without the need for capital and
maintenance intensive equipment ... " (Final 9; see Proulx ,r,r 6, 7, and 42).
As correctly noted by Appellants (Reply Br. 2-3), the Examiner's new
finding in the Answer that Hong's gas inlet ports "provides a means to
effectively mix the culture solution" (Ans. 2) negates the Examiner's
rationale for including Proulx's gas exchange ports and harvesting port in
Hong's device- i.e., in order "to achieve the adequate movement and/or
mixing of components as desired." Final 8-9.
On this appeal record, the Examiner has made an express finding that
Hong does not disclose the recited "gas exchange ports and harvesting
port,"7 and relies on Proulx's disclosure for these recited limitations. Final
8. The Examiner's additional finding in the Answer regarding Hong's gas
inlet port does not establish that Hong's gas inlet port now satisfies the "gas
exchange ports and harvesting port" limitations. Ans. 3. In the absence of
such a finding, 8 and in view of the Examiner's determination (Ans. 3) that
7 Hong appears to disclose a harvesting port (i.e., "discharge tube" 24 (Hong
,r 31 ("discharge tube 24 is provided to the bottom of the culture drum 20 for
discharging the culture solution that has been cultured"))). The
Specification, however, indicates that a "gas exchange port" includes both
"at least one gas inlet ... and at least one gas exhaust port." Spec. 22:30-
32 ( emphasis added). The Examiner has not provided evidentiary support to
establish that Hong discloses such a "gas exhaust port" along with its gas
inlets to thus satisfy the recitation of "gas exchange ports" appearing in each
independent claim. See Final 8-9; Ans. 2. The question whether the
provision of a gas exhaust port would have been implicit in or obvious over
Hong alone is not before us.
8 In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("The Patent Office has
the initial duty of supplying the factual basis for its rejection. It may not ...
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies" in the cited references.).
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Appeal2017-004524
Application 12/451,295
Hong's gas inlets already achieve adequate mixing of the components, the
Examiner has not explained sufficiently why the skilled artisan would have
been motivated to modify Hong's device to include Proulx's gas exchange
ports and harvesting port. Without such an explanation, there can be no
prima facie case of obviousness.
In proceedings before the Patent and Trademark Office,
the Examiner bears the burden of establishing a prima facie case
of obviousness based upon the prior art. "[The Examiner] can
satisfy this burden only by showing some objective teaching in
the prior art or that knowledge generally available to one of
ordinary skill in the art would lead that individual to combine the
relevant teachings of the references."
In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted).
DECISION
The Examiner's obviousness rejection is reversed.
REVERSED
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