Tom Claes et al.

Patent Trials and Appeals Board

Oct 17, 2019

12299271 - (D) (P.T.A.B. Oct. 17, 2019)

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.
12/299,271 07/31/2009 Tom Claes 642-054 7501
1009 7590 10/17/2019
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
BOWERS, NATHAN ANDREW
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
10/17/2019 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):
laura@iplaw1.net
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOM CLAES,
JEAN-PASCAL ZAMBAUX, STEVE VANHAMEL,
CHRISTOPHE BRAET, FLORENCE BOSCO, and JOSE CASTILLO
Appeal 2018-002578
Application 12/299,271
Technology Center 2800
Before KAREN M. HASTINGS, GEORGE C. BEST, and
JULIA HEANEY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals2 from the
Examiner’s decision to reject claims 161, 162, 164–172, and 174–205 of
Application 12/299,271. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Pall Life Sciences BVBA as the real
party in interest. Appeal Br. 3.
2 This is the second time Appellant has appealed an examiner’s decision in
the ’271 Application. See Ex parte Claes, Appeal 2015-004761 (PTAB Nov.
20, 2016) (available at https://go.usa.gov/xVdP6). In this earlier decision, we
reversed the rejection for procedural reasons.
Appeal 2018-002578
Application 12/299,271
2
BACKGROUND
The ’271 Application’s Specification describes methods and apparatus
for mixing of gases and liquids that may be used in industrial or laboratory
scale bioreactors. Spec. ¶ 2. In particular, Appellant describes a mixing
apparatus that can be used with a disposable container. Id. ¶¶ 8–13.
Independent claims 161, 179, and 194 are reproduced below from the
Claims Appendix of the Appeal Brief.
161. A material processing apparatus comprising:
a hollow tank having an interior bounded by at
least one interior wall;
a mixing paddle disposed and adapted to travel within the
interior of the tank, the paddle being adapted to engage a
support rod mechanically coupleable to receive kinetic energy
from a kinetic energy source; and
a functional element arranged to travel with the mixing
paddle within the interior of the tank, the functional element
including any of:
(a) at least one sensor in sensory communication
with the interior of the tank;
(b) a material extraction conduit in at least
selective fluid communication with the interior of the
tank and adapted to permit the extraction of material
from the interior of the tank;
(c) a material addition conduit in at least selective
fluid communication with the interior of the tank and
adapted to permit the addition of a material to the interior
of the tank; and
(d) a heat exchange element in thermal
communication with the interior of the tank and adapted
to permit the addition or removal of thermal energy from
the interior;
wherein the tank comprises a flexible sleeve having an
end proximate to a wall of the tank, having an end protruding
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into the interior, having at least one exterior wall, and defining
a cavity containing the mixing paddle, with the at least one
interior wall of the tank and the at least one exterior wall of the
sleeve enclosing a volume, such that the sleeve serves as an
isolation barrier impermeable to any fluid of the volume;
wherein the functional element is adapted to interact with
the flexible sleeve.
Appeal Br. 27 (emphasis added).
179. A material processing apparatus comprising:
a hollow tank having an interior bounded by at least one
interior wall;
a mixing paddle disposed and adapted to travel within the
interior of the tank, the paddle being adapted to engage a
pivotally mounted support rod mechanically coupleable to
receive kinetic energy from a kinetic energy source; and
a functional element interface adapted for coupling with
a functional element arranged to travel with the mixing paddle,
wherein the functional element is in fluid communication or
sensory communication with the interior;
wherein the tank comprises a flexible sleeve including at
least a portion of the functional element interface, said sleeve
having an open end proximate to a wall of the tank, having an
end protruding into the interior, having at least one exterior
wall, and defining a cavity containing the mixing paddle, with
the at least one interior wall of the tank and the at least one
exterior wall of the sleeve enclosing a volume, said sleeve
comprising a material forming a barrier between the volume
and the mixing paddle, and between the volume and the portion
of the functional element interface within the sleeve.
Id. at 29–30 (emphasis added).
194. A material processing apparatus comprising:
a hollow tank having an interior bounded by at least one
interior wall, said tank comprising a flexible sleeve having an
open end connected to a wall of the tank, having an end
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protruding into the interior, and having at least one exterior
wall;
a mixing paddle disposed and adapted to travel within the
interior of the tank, the paddle being adapted to engage a
support rod mechanically coupleable to receive kinetic energy
from a kinetic energy source; and
a first conduit;
wherein the flexible sleeve defines a cavity containing the
mixing paddle and at least a portion of the first conduit, with
the at least one interior wall of the tank and the at least one
exterior wall of the sleeve enclosing a volume, such that the
sleeve serves as an isolation barrier between the volume and
the mixing paddle.
Id. at 32 (emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 161, 162, 165–167, 169–172, 174, 175, 177–83, and
186–205 are rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Zambaux,3 Forschner,4 and Donofrio.5 Final Act. 3.
2. Claims 164, 176, 184, and 185 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Zambaux, Forschner,
Donofrio, and Schmid.6 Final Act. 12.

3 US 2005/0078552 A1, published April 14, 2005.
4 US 6,439,756 B1, issued August 27, 2002.
5 US 4,426,450, issued January 17, 1984.
6 US 7,659,108 B2, issued February 9, 2010.
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3. Claim 168 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Zambaux, Forschner, Donofrio, and Müller.7 Final
Act. 13.
4. Claims 161, 162, 164, 169–172, 174–182, 184, 185, 187–190,
192, and 193 are rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Zambaux and Schmid. Final Act. 15.
5. Claims 165–167, 183, 186, 191, and 194–205 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Zambaux,
Schmid, Forschner, and Donofrio. Final Act. 19.
6. Claims 168 and 186 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Zambaux, Schmid, and Müller. Final
Act. 24.
7. Claims 161, 162, 168–171, 174, 175, 178, 179, 181, 182, 186–
190, 192, and 193 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Zambaux and Müller. Final Act. 26.
8. Claims 165–167, 172, 177, 180, 183, 191, and 194–205 are
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Zambaux, Müller, Forschner, and Donofrio. Final Act. 30.
9. Claims 164, 172, 176, 177, 180, 184, and 185 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Zambaux,
Müller, and Schmid. Final Act. 35.

7 US 3,925,165, issued December 9, 1975.
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6
OPINION
Rejection 1. The Examiner rejected claims 161, 162, 165–167, 169–
172, 174, 175, 177–83, and 186–205 as unpatentable over the combination
of Zambaux, Forschner, and Donofrio. Final Act. 3.
We address each of independent claims 161, 179, and 194 separately
below. We also specifically address dependent claims 165 and 195, for
which Appellants presented separate arguments. Dependent claims not
specifically argued by Appellant will be grouped with their parent
independent claims. 37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claims 161, 179, and 194, the Examiner relies upon the
combination of Zambaux and either Forschner or Donofrio as describing a
material extraction/addition conduit (elements (b) and/or (c) of claim 161)
that is arranged to travel on the mixing paddle. Final Act. 3–4.
The Examiner found that Zambaux describes every element of claim
161 except for the claimed functional element in the form of a material
extraction/addition conduit arranged to travel on the mixing paddle. Final
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Act. 3. For ease of reference, we reproduce Zambaux’s Figures 1 and 4B
below:

Figure 1 illustrates a three-dimensional view of a
disposable mixing tank. Zambaux ¶ 11.
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Figure 4B illustrates a mixing means for use in
Zambaux’s disposable mixing tank. Id. ¶ 14.
As shown in Figure 1, Zambaux’s disposable mixing tank 100
includes a sealed sleeve or compartment 140 which is defined by a wall 150.
Id. ¶ 52. Sealed sleeve 140 may be of any suitable thickness. Id. ¶ 57. As
shown in Figure 4B, sealed sleeve 140 defines a passageway for the
insertion of mixing means 400, which may comprise paddle 410 having
coupling means 420 for coupling to, for example, a mixer shaft. Id. ¶¶ 59,
60. Sealed sleeve 140 isolates mixing means 400 from the interior of the
mixing tank. Id. ¶ 59. Thus, mixing means 400 does not contact the interior
180 of the tank or its contents. Id.
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The Examiner also found that Forschner describes a fermentation
vessel comprising a rotatable shaft and mixing paddle. Final Act. 4 (citing
Forschner Fig. 1; 3:4–57; 5:35–54). The shaft and paddle are operatively
coupled to a plurality of gas injection orifices that receive air from a hollow
portion of the shaft. Id.
In the alternative, the Examiner found that Donofrio describes a
mixing system for a fermentation vessel in which gas or liquid media are
introduced through hollow shafts. Id. (citing Donofrio Figs. 1 & 2; 3:30–68).
The mixing device includes orifices for projecting a liquid or gaseous stream
into the cell culture. Id.
The Examiner also found:
[A]t the time of the invention, it would have been
obvious to equip the central support rod and mixing paddle
disclosed by Zambaux with a functional element configured to
add gases or liquid medium into the reactor volume. Because
Zambaux already teaches that the support rod is hollow and the
sleeve is gas permeable, one of ordinary skill would have
understood, in light of Forschner and/or Donofrio, that it would
have been possible to add and remove gases from the reactor
using a material addition/withdrawal conduit. Zambaux states
in paragraph [0040] that the sleeve “may be vapor permeable”.
One of ordinary skill would have therefore expected gas added
to the interior of the mixing sleeve to permeate through the
vapor permeable sleeve and into the surrounding reaction
liquid. Zambaux requires no particular gas injection rate, and
even if he did, would have been within the ability of one of
ordinary skill to optimize the rate of gas diffusion through the
sleeve into the reactor by adjusting the material composition of
the sleeve and the thickness of the sleeve. Furthermore, in at
least Fig. 5A and 5C, the mixing rod 530 of Zambaux is already
depicted as being hollow, and therefore it would have only
required minor alterations to either use the hollow rod itself to
deliver gases into the reactor or provide an additional material
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supply conduit within the hollow rod to deliver gases into the
reactor.
Id. at 4–5 (emphasis added).
Independent claim 161. For the reasons set forth below, we reverse
the rejection of claim 161. The Examiner’s rejection relies upon the vapor
permeable or microporous nature of Zambaux’s sealed sleeve 140 to allow
gas to permeate sealed sleeve 140 and reach interior 180 of reactor 100. Id.
at 3–5.
Claim 161, however, specifies that the claimed sleeve “serves as an
isolation barrier impermeable to any fluid of the volume.” Claim 161
(emphasis added). Obviously, the sleeve material cannot both be permeable
and impermeable. In the rejection as set forth by the Examiner, the sleeve is
made of a vapor permeable or microporous material. It, therefore, cannot
meet the claim limitation that the sleeve be impermeable to any fluid of the
volume. We, therefore, cannot affirm this basis for the rejection of claim 161
as unpatentable over either the combination of Zambaux and Forschner or
Zambaux and Donofrio.
In the alternative, the Examiner found that “one of ordinary skill
would have understood that nozzles could be extended through the liquid-
impermeable sleeve of Zambaux to permit the introduction and withdrawal
of liquid medium using the hollow support rod.” Final Act. 5–6.
This basis for the rejection of claim 161 is insufficient. In particular,
Examiner does not provide a citation to the prior art that describes the use of
a nozzle to achieve direct gas addition into the reactor. Nor does the
Examiner provide any prior art citation for the use of a heat welded seal to
maintain and reconstruct the fluid impermeable sleeve at the point where it
is penetrated by the nozzle. The Examiner must explain where the prior art
Appeal 2018-002578
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describes claim limitations as a part of the prima facie case of
unpatentability. We, therefore, cannot affirm this basis for the rejection of
claim 161.
In yet another alternative basis for the rejection, the Examiner finds
that “another way to add a prior art material addition/withdrawal conduit to
the Zambaux paddle would be to attach the conduit to the outside surface of
the sleeve.” Final Act. 6–7. This basis for the rejection also is deficient. In
particular, the Examiner has not explained where the prior art describes a
conduit attached to the outer sleeve of a mixing paddle or to any of the
materials Zambaux describes as being useful in fabricating its fluid
impermeable sleeve. The Examiner must explain where the prior art
describes claim limitations as a part of the prima facie case of
unpatentability. We, therefore, cannot affirm this basis for the rejection of
claim 161.
In view of the foregoing, we reverse the rejection of claim 161.
Accordingly, we also reverse the rejection of claims 162, 166, 167, 169–172,
174, 175, 177, and 178 which depend from claim 161.
Dependent claim 165. As discussed above, we have reversed the
rejection of claim 161 from which claim 165 depends. We, therefore, also
reverse the rejection of claim 165 as unpatentable over the combination of
Zambaux and either Forschner or Donofrio.
Independent claim 179. Claim 179 recites, in pertinent part,
[a] material processing apparatus comprising . . . a flexible
sleeve including at least a portion of the functional element
interface, . . . said sleeve comprising a material forming a
barrier between the volume and the mixing paddle, and between
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the volume and the portion of the functional element interface
within the sleeve.
Appeal Br. 29–30.
According to Appellant, the rejection does not specifically address
either of these claim limitations. Id. at 16. Appellant also argues that the
rejection of claim 179 cannot stand for each of the reasons asserted in
connection with the rejection of claim 161. Id.
Appellant’s first argument is incorrect. The Final Action does include
specific findings regarding the claim elements quoted above. See Final Act.
10. Thus, we are not persuaded to reverse the rejection of claim 179 for that
reason.
We, however, are persuaded that the Examiner’s findings of fact are
deficient with respect to any of the three theories of unpatentability
presented in the Final Action. As discussed above, the first proposed
combination of either Zambaux and Forschner or Zambaux and Donofrio
relies upon permeation of gas through the flexible sleeve. For this proposed
combination to be operable, the flexible sleeve cannot serve as a barrier
between the functional element interface within the sleeve and the volume
on the exterior of the sleeve. The second proposed combination is not
supported by the necessary factual findings regarding the use of a nozzle to
penetrate the sleeve and creation of a fitment to ensure that the sleeve
continues to serve as a barrier between the volume and the mixing paddle
and the volume and the portion of the functional element within the sleeve.
The third proposed combination does not satisfy the claim limitation
requiring that the flexible sleeve include at least a portion of the functional
element interface. The entirety of the conduit the Examiner proposes adding
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13
to Zambaux’s flexible sleeve and mixing paddle is located outside of the
sleeve.
For these reasons, we cannot sustain the rejection of claims 179–183,
186, 188–191, and 193.
Independent Claim 194. Claim 194 recites, in pertinent part, that
“the flexible sleeve defines a cavity containing the mixing paddle and at
least a portion of the first conduit” and that “the sleeve serves as an isolation
barrier between the volume and the mixing paddle.” Claim 194. Because the
Examiner has not made necessary findings of fact to establish a proper prima
facie case of obviousness, we also reverse the rejection of claim 194 as
unpatentable over the combination of Zambaux and either Forschner or
Donofrio.
The Examiner’s first proposed combination of either Zambaux and
Forschner or Zambaux and Donofrio relies upon permeation of gas through
the flexible sleeve. As we have discussed, the flexible sleeve cannot serve as
an isolation barrier and be gas permeable at the same time. Thus, the
Examiner’s proposed combination is either inoperable or does not describe
or suggest every limitation of claim 194.
The Examiner’s second proposed combination is deficient because it
does not provide the requisite prior art citations for a description of a nozzle
or a fitment allowing penetration of the nozzle through the sleeve without
destroying its ability to serve as an isolation barrier.
The Examiner’s third proposed combination is deficient because it
does not meet the claim limitation requiring that the flexible sleeve defines a
cavity containing at least a portion of the first conduit. Indeed, the
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Examiner’s rejection of claim 194 does not contain any finding of fact
regarding this claim limitation.
In view of the foregoing, we reverse the rejection of claims 194 and
196–205.
Claim 195. Appellant provides separate arguments for reversal of the
rejection of dependent claim 195. This claim depends from independent
claim 194. Because we have reversed the rejection of claim 194, we also
reverse the rejection of claim 195.
Rejection 2. The Examiner rejected claims 164, 176, 184, and 185 as
unpatentable over the combination of Zambaux, Forschner, Donofrio, and
Schmid. Final Act. 12.
Although Appellant does not present specific arguments for reversal
of the rejection of these claims, we reverse. We do so because these claims
depend from independent claims 161 and 179, the rejections of which we
have reversed above.
Rejection 3. The Examiner rejected claim 168 as unpatentable over
the combination of Zambaux, Forschner, Donofrio, and Müller. Final
Act. 13.
Although Appellant does not present specific arguments for reversal
of the rejection of this claim, we reverse. We do so because this claim
depends from independent claim 161, the rejection of which we have
reversed above.
Rejection 4. The Examiner rejected claims 161, 162, 164, 169–172,
174–182, 184, 185, 187–190, 192, and 193 as unpatentable over the
combination of Zambaux and Schmid. Final Act. 15.
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Appellant provides specific arguments for reversal of the rejection of
independent claims 161 and 179. See Appeal Br. 18–21. We address these
arguments in turn.
Independent Claim 161. In rejecting claim 161, the Examiner found
that Zambaux describes or suggests each limitation recited in claim 161
except for one of the elements listed in the Markush group. Final Act. 15.
The Examiner also found that Schmid describes a fermentation system
a rotating shaft with paddles. Id. at 16 (citing Schmid Figures 1, 4; 4:39–58).
The Examiner further found that Schmid describes the shaft as including
sensors and a transmitter that allows communication with an external
receiver and controller. Id.
The Examiner also found that it would been obvious to modify
Zambaux to combine a sensor in sensory communication with the interior of
the tank with Zambaux’s mixing paddle and sleeve. Id. The Examiner
further found that a person of ordinary skill in the art would have expected
sensors coupled to Zambaux’s flexible sleeve to allow an operator to more
precisely monitor and control environmental conditions within the reactor.
Id. The Examiner asserts that
the Schmid sensors are temperature and pressure sensors that
could be applied on both inner and outer surfaces of the
Zambaux sleeve. Even if they were positioned inside the sleeve,
a sensor separated from a reaction medium by a thin liquid-
impermeable sleeve would still be able to monitor temperature
and pressure changes within the reaction medium.
Id.
According to the Examiner, it is prima facie obvious to combine prior
art elements according to known methods to yield predictable results. Id. In
the alternative, the Examiner found that “one of ordinary skill would have
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been motivated to add a sensor within the Zambaux sleeve because the
sensor would permit the collection of additional data regarding the reaction
medium near the mixing paddle, while the liquid-impermeable sleeve would
protect the sensor from the reaction medium.” Id.
Appellant argues that Schmid discloses a fermenter with a hollow
rotating shaft with paddles and a sensor monitoring unit attached to an
interior surface of the shaft. Appeal Br. 18 (citing Schmid Figures 1, 3, 4).
According to Appellant,
any use of these components in combination with the sealed
sleeve of Zambaux would render each element incapable of
performing its intended purpose. Rotating paddles within a
sleeve would not mix the fluid. A sealed sleeve surrounding a
sensor monitoring unit (which is within the shaft) would
separate the sensor monitoring unit from the fluid, thereby
preventing the intended data from being collected through the
sensor monitoring unit.
Id. (reference numbers omitted).
This argument is not persuasive of reversible error. Appellant is
arguing that Schmid’s mixing structure cannot be successfully incorporated
into Zambaux’s apparatus. See id. at 18–19. This is not the test for
obviousness. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would a suggested to those of ordinary skill in the art.”); see also In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
Appellant next argues that the rejection of claim 161 should be
reversed because the Examiner has not adequately explained why a person
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of ordinary skill in the art at the time of the invention would have modified
Schmid’s sensors by moving the sensors from the inside of the hollow shaft
to the outside of the shaft and structuring them such that they interact with
the flexible sleeve. Appeal Br. 19–20.
We agree with Appellant.
Zambaux describes the use of inlet openings 160 and outlet openings
170
to introduce different types of probes into the mixing tank 100.
For example, pH, pO2, temperature or pressure probes can be
introduced into the mixing tank 100 through a number of inlet
160 and/or outlet 170 openings to check the status of the
components and/or the result of the mixing of such components
with in the mixing tank 100.
Zambaux ¶ 76.
Schmid, on the other hand, describes the use of its sensor suite to
monitor the pressure, temperature, and/or humidity inside Schmid’s hollow
shaft mixer. Schmid 4:39–66. Schmid teaches that the monitoring of these
properties is necessary to ensure that the hollow shaft mixers maintain their
buoyancy. Id. 5:14–24.
Zambaux already provides for monitoring of the various properties of
the mixing tank’s contents via inlet and/or outlet openings. Thus, it is
incumbent upon the Examiner to explain why a person of ordinary skill in
the art would change the location of the sensors in the manner proposed by
the Examiner. Because the Examiner does not point to any reason for
making this change—such as an advantage described in the prior art—we
conclude that the rejection is impermissibly based upon hindsight.
We, therefore, reverse the rejection of independent claim 161 as
unpatentable over the combination of Zambaux and Schmid. We also reverse
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the rejection of dependent claims 162, 164, 169–172, and 174–178, which
depend from independent claim 161.
Independent Claim 179. In rejecting claim 179, the Examiner states
that Zambaux and Schmid disclose the claimed combination as described in
the rejection of claim 161. Final Act. 18. The Examiner further found that
any specific sub-feature required by Schmid’s sensor/transmitter system may
be considered to be the claimed “functional element interface.” Id. at 19.
The Examiner’s rejection of claim 179 as unpatentable over the
combination of Zambaux and Schmid is tainted by impermissible hindsight
in the same way as the rejection of claim 161 over these references.
We, therefore, reverse the rejection of independent claim 179 as
unpatentable over the combination of Zambaux and Schmid. We also reverse
the rejection of dependent claims 180–182, 184, 185, 188–190, 192, and
193, which depend from independent claim 179.
Rejection 5. The Examiner rejected claims 165–167, 183, 186, 191,
and 194–205 as unpatentable over the combination of Zambaux, Schmid,
Forschner, and Donofrio. Final Act. 19.
Dependent Claims 165–167, 183, 186, and 191. These claims
depend, directly or indirectly, from independent claims 161 or 179. Appeal
Br. 28, 31–32. We have already determined that the rejection of independent
claims 161 and 179 should be reversed. In rejecting claims 165–167, 183,
186, and 191, the Examiner did not make any findings or express any
reasoning that cures the defects in the rejection of the independent claims.
We, therefore, reverse the rejection of claims 165–167, 183, 186, and
191 as unpatentable over the combination of Zambaux, Schmid, and either
Forschner or Donofrio.
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Independent claim 194. In rejecting claim 194, the Examiner found
that “Zambaux and Schmid disclose the combination as described above,
however [these references] do not expressly state that a material
extraction/addition conduit is also attached to the paddle.” Final Act. 19.
As discussed above, we have already identified reversible error in the
combination of Zambaux and Schmid and in the combination of Zambaux
with either Forschner or Donofrio. The Examiner’s statement of the reasons
for the rejection of independent claim 194 does not contain findings of fact
or reasoning that cures these errors. See id.at 19–24.
We, therefore, reverse the rejection of independent claim 194 as
unpatentable over the combination of Zambaux, Schmid, and either
Forschner or Donofrio. We also reverse the rejection of claims 195–204,
which depend from independent claim 194.
Rejection 6. The Examiner rejected claims 168 and 186 as
unpatentable over the combination of Zambaux, Schmid, and Müller. Final
Act. 24.
Claims 168 and 186 depend from independent claims 161 and 179
respectively. For the reasons set forth above, we have already reversed the
rejection of the parent independent claims as unpatentable over the
combination of Zambaux and Schmid. The rejection of claims 168 and 186
does not contain findings of fact or explanations the cure the defects we’ve
identified in the rejection of the parent independent claims.
Thus, we also reverse the rejection of claims 168 and 186.
Rejection 7. The Examiner rejected claims 161, 162, 168–171, 174,
175, 178, 179, 181, 182, 186–190, 192, and 193 as unpatentable over the
combination of Zambaux and Müller. Final Act. 26–30.
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Appellant presents a single argument for reversal of the rejection with
respect to all of the claims subject to this ground of rejection. Appeal Br.
23–26. We, therefore, limit our discussion to independent claims 161 and
179. The dependent claims subject to this ground of rejection will stand or
fall with their parent independent claims.
Independent Claim 161. In rejecting independent claim 161, the
Examiner found that Zambaux describes every limitation of the claim except
for a functional element. Final Act. 26. The Examiner also found that Müller
describes a “cell culture system in which the central rotating shaft (Figure
1:4) is provided with heat exchange means to facilitate the addition or
removal of thermal energy from the interior of the culture chamber.” Id. at
27 (citing Müller 3:37–4:22).
The Examiner further found that it would been obvious to modify
Zambaux to include a heat exchange element in communication with
Zambaux’s mixing paddle and sleeve. Id. According to the Examiner, “[o]ne
of ordinary skill would have expected a heat exchange element coupled to
Zambaux’s flexible sleeve to allow an operator to more precisely control
environmental conditions, such as temperature, within the reactor.” Id.
Appellant argues that the rejection of claim 161 should be reversed
because
[u]se of the heat exchanger of [Müller] in the context of the
sealed sleeve of Zambaux would isolate the shaft 4 from the
container fluid and would prevent the shaft from contacting the
fluid, thereby thwarting the desired heat-exchange properties of
the shaft 4.
Moreover, as can be seen in . . . Fig. 1, the device of
[Müller] includes endplates 19, which create a radial gap
between the heat exchange fluid running through shaft 4 and the
closest place which a sleeve could come to said heat exchange
Appeal 2018-002578
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fluid. Therefore, incorporation of the teachings of molar into
the device of Zambaux (including sealed sleeve) would
necessarily create an air gap between the heat exchange fluid of
[Müller’s] heat exchanger in any film bordering on the medium
within the interior of the tank. This gap would prevent a heat
exchange fluid from accomplishing its intended purpose.
Appeal Br. 23–24.
This argument is not persuasive of the existence of reversible error in
the rejection of claim 161. Appellant’s arguments are based upon the bodily
incorporation of Müller’s heat exchange device into Zambaux’s reactor. As
discussed above, this is not the test for obviousness. See Keller, 642 F.2d at
425.
Appellant further argues that the Examiner has not considered the
entirety of Müller’s description. According to Appellant, “[w]hen viewing
[Müller] as a whole, the ordinarily skilled artisan would fully understand
that the heat transfer means of [Müller] is incompatible with the sleeved
mixing paddle of Zambaux.” Appeal Br. 24. Appellant asserts that this
incompatibility means that Müller and Zambaux teach away from their
combination. Id.
This argument is not persuasive. “To justify combining reference
teachings in support of a rejection it is not necessary that a device shown in
one reference can be physically inserted into the device shown in the other.”
Keller, 642 F.2d at 425.
Appellant’s final argument is that Zambaux’s sleeve insulates the heat
exchange means created by the combination of Zambaux and Müller. Appeal
Br. 25.
We do not find this argument persuasive. Zambaux describes its
sealed sleeve as being “of any suitable thickness readily determined by one
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22
skilled in the art.” Zambaux ¶ 57. We agree with the Examiner: at the time
of the invention, it was well within the level of ordinary skill in the art to
determine an appropriate thickness of the sleeve so that it would not serve as
an appreciable thermal barrier capable of inhibiting the heating and cooling
functions of a heat exchange element contained within the sleeve. Final Act.
27; Answer 24.
Accordingly, we affirm the rejection of independent claim 161.
Because Appellant does not argue any of dependent claims 162, 168–171,
174, 175, and 178 separately, we also affirm the rejection of these claims as
unpatentable over the combination of Zambaux and Müller.
Independent Claim 179. Appellant offers the same argument for
reversal of the rejection of independent claim 179 as for reversal of the
rejection of independent claim 161. See Appeal Br. 23–25.
As discussed above, we did not find this argument to be persuasive of
the existence of reversible error in the rejection of claim 161. We also find it
unpersuasive of reversible error in the rejection of claim 179.
Thus, we affirm the rejection of independent claim 179. Because
Appellant does not argue any of dependent claims 181, 182, 186–190, 192,
and 193 separately, we also affirm the rejection of these claims as
unpatentable over the combination of Zambaux and Müller.
Rejection 8. The Examiner rejected claims 165–167, 172, 177, 180,
183, 191, and 194–205 as unpatentable over the combination of Zambaux,
Müller, Forschner, and Donofrio. Final Act. 30.
In rejecting these claims, the Examiner does not make any factual
determinations nor offer any persuasive argument sufficient to cure the
Appeal 2018-002578
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23
defects in the combination of Zambaux with either Forschner or Donofrio
identified in our discussion of Rejection 1.
We, therefore, reverse the rejection of claims 165–167, 172, 177, 180,
183, 191, and 194–205 as unpatentable over the combination of Zambaux,
Müller, and either Forschner or Donofrio.
Rejection 9. The Examiner rejected claims 164, 172, 176, 177, 180,
184, and 185 as unpatentable over the combination of Zambaux, Müller, and
Schmid. Final Act. 35.
In rejecting these claims, the Examiner does not make any factual
findings nor offer any persuasive argument sufficient to cure the defects in
the combination of Zambaux and Schmid which we have discussed above.
We, therefore, reverse the rejection of claims 164, 172, 176, 177, 180, 184,
and 185.
CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Basis Affirmed Reversed
161, 162, 165–
167, 169–172,
174, 175, 177–
183, 186–205
103(a) Zambaux, Forschner, Donofrio
161, 162,
165–167,
169–172,
174, 175,
177–183,
186–205
164, 176, 184, 185 103(a) Zambaux, Forschner, Donofrio, Schmid 164, 176, 184, 185
168 103(a) Zambaux, Forschner, Donofrio, Müller 168
161, 162, 164,
169–172, 174–
182, 184, 185,
187–190, 192, 193
103(a) Zambaux, Schmid
161, 162,
164, 169–
172, 174–
182, 184,
185, 187–
190, 192,
193
Appeal 2018-002578
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Claims Rejected 35 U.S.C. §  Basis Affirmed Reversed
165–167, 183,
186, 191, 194–205 103(a) Zambaux, Schmid, Forschner, Donofrio
165–167,
183, 186,
191, 194–
205
168, 186 103(a) Zambaux, Schmid, Müller 168, 186
161, 162, 168–
171, 174, 175,
178, 179, 181,
182, 186–190,
192, 193
103(a) Zambaux, Müller
161, 162,
168–171,
174, 175,
178, 179,
181, 182,
186–190,
192, 193

165–167, 172,
177, 180, 183,
191, 194–205
103(a) Zambaux, Müller, Forschner, Donofrio
165–167,
172, and
177, 180,
183, 191,
194–205
164, 172, 176,
177, 180, 184, 185 103(a) Zambaux, Müller, Schmid
164, 172,
176, 177,
180, 184,
185
Overall Outcome
161, 162,
168–171,
174, 175,
178, 179,
181, 182,
186–190,
192, 193
164–167,
172, 176,
177, 180 ,
183–185,
191, 194–
205
TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED IN PART