`
`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.
`
`
`
`
` CONFIRMATIONNO.
`
`
`12/530,555
`
`09/09/2009
`
`Hiroki Busujima
`
`090224
`
`1966
`
`23850
`7590
`09/09/2014
`KRATZ, QUINTOS& HANSON, LLP
`1420 K Street, N.W.
`4th Floor
`WASHINGTON,DC 20005
`
`HURST, JONATHAN M
`
`1775
`
`MAIL DATE
`
`09/09/2014
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
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`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)
`
`

`

`
`
`Applicant(s)
`Application No.
` 12/530,555 BUSUJIMA ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`1775JONATHAN HURST Na
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTH(S) OR THIRTY(30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Anyreply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`1)X] Responsive to communication(s)filed on31July2013.
`LJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon__
`2a)L] This action is FINAL.
`2b) This action is non-final.
`3)L] Anelection was made bythe applicant in responsetoarestriction requirementset forth during the interview on
`
`
`; the restriction requirement and election have been incorporatedinto this action.
`4)[] Since this application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`
`
`Disposition of Claims
`5)KX] Claim(s) 1-5 is/are pending in the application.
`
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)L] Claim(s)
`is/are allowed.
`7) Claim(s) 1-5 is/are rejected.
`8)L] Claim(s)____is/are objectedto.
`
`9)L] Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`or send an inquiry to PPHieedback@uspto.qoy.
`
`Application Papers
`10)L] The specification is objected to by the Examiner.
`11)] The drawing(s)filed on 09 September 2009 is/are: a)X] accepted or b)_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)X] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)X] All
`b)[-] Some * c)L] None ofthe:
`1..] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`“ See the attached detailed Office action for a list of the certified copies not received.
`Interim copies:
`a)L] All
`b)L] Some
`
`Interim copies of the priority documents have been received.
`
`c)L] None of the:
`
`Attachment(s)
`3) CT] Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date. __
`2) [J information
`Disclosure
`Statement(s)
`(PTO/SB/08
`)
`4 O Other:
`)
`nformation Disclosure
`Statement(s) (
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 03-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20140815
`
`

`

`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 2
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`1.
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`The present application is being examined underthe pre-AlA first to invent
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`provisions.
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`DETAILED ACTION
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`Continued Examination Under 37 CFR 1.114
`
`2.
`
`A requestfor continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), wasfiled in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has beentimely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
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`7/31/2013 has been entered.
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`Claim Rejections - 35 USC § 103
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`3.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
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`for all obviousnessrejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of thistitle, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
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`4.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness underpre-AlA 35 U.S.C. 103(a) are summarized as follows:
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`1. Determining the scope and contentsof the prior art.
`2. Ascertaining the differences betweenthe prior art and the claims at issue.
`3. Resolving the level of ordinary skill in the pertinent art.
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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 3
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`4. Considering objective evidence presentin the application indicating
`obviousness or nonobviousness.
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`5.
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`Claims 1 and 4-5 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Tamaokiet al. (US 2004/0063195) as applied to claims above and further in view
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`of Haddadet al. (US 4,033,825).
`
`Regarding claim 1 Tamaoki et al. discloses an incubation apparatus to incubate
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`culture targets such as cells, embryos or microorganisms in an incubation chamber, the
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`incubation apparatus including: (See Tamaoki Abstract and [0004] wherein the device is
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`an incubation apparatus to culture cells)
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`a gas concentration sensor which detects a gas concentration in the incubation
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`chamber; a controller which controls the supply of a gas into the incubation chamber on
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`the basis of an output of the gas concentration sensor; (See Tamaoki Fig. 2 and [0041]-
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`[0051] wherein a CO2 gas concentration sensor 6 detects CO2 concentration in an
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`incubation chamber $1/S2 and a controller is connected to the sensor and controls the
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`supply of a gas into the incubation chamberon the basis of an output of the CO2 gas
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`concentration sensor.)
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`wherein the controller is connected to at least a first valve which is connected toafirst
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`pipe extending out of the incubation chamber, (See Tamaoki Fig. 4 and [0049] wherein
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`a first valve 23 is connected to the controller 25 and connectedto a first pipe 4A/4B
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`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 4
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`extending out of the incubation chamberin order to supply actually used gasto the
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`sensor.)
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`Tamoaki doesnot specifically disclose the utilizing a standard gas supply to the
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`gas sensor in order to calibrate the sensor and an actually used gas concentration.
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`Haddadetal. discloses an incubation apparatus to incubate culture targets such
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`as cells, embryos or microorganisms in an incubation chamber, the incubation
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`apparatus including: (See Haddad Abstract)a standard gas supply device which can
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`supply a gas concentration sensor with a standard gas which has been previously
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`adjusted to an actually used gas concentration or a gas concentration close thereto
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`(See Haddad Fig.
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`1 and Col. 6 Lines 17-35 wherein a standard gas supply device 46
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`supplies the sensor with a standard gas which is adjusted to a desired actually used gas
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`concentration.)
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`a passage control device comprising a second valve which is connected to a second
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`pipe connecting the standard gas supply device to the second valve, and connected to
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`a gas concentration sensor which can connect the incubation chamberor the standard
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`gas supply device to the gas concentration sensor selectively, (See Haddad Fig. 1 and
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`Col. 6 Lines 17-35 wherein a passage control device, i.e. comprising valve 48 ,the
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`second valve and second pipe connected thereto, connects selectively the culture
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`chamberor standard gas supply device 46 to the CO2 sensor 42.)
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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 5
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`wherein the deviceis controlled to maintain the concentration of the standard gas,
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`supply the standard gas to the gas concentration sensor by the standard gas supply
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`device, and on the basis of an output of the gas concentration sensor and the
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`concentration of the standard gas at the moment, calibrate the actually used gas
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`concentration of the gas concentration sensor by controlling the passage control device.
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`(See HaddadFig. 1, Fig. 13, and Col. 6 Lines 17-35 wherein the concentration of
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`standard gas, supply of standard gasto the sensor, calibration of the sensor, and usage
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`of passage control device comprising valve 48 are maintained/performed and controlled
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`in some manner. In order for the supply of standard gas, calibration of the sensor, and
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`operation of valve to be performed some form of control must be executed by some
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`form of controlling device utilized to perform said actions.)
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`It would have been obvious to one of ordinary skill in the art at the time of
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`invention to provide and connect a standard gas supply, a passage control device
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`comprising a second valve and connecting pipe, and a sensor calibration device as
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`described by Haddadetal. to the sensor in the device of Tamaoki et al. because such
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`standard gas supplies, passage control devices (valves and associated pipes), and
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`calibrators are known in the art to be utilized in incubation devices such as those
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`described by Tamaoki et al. and such devices allow carbon dioxide sensors to be
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`calibrated and assure the accurate operation thereof and control of the environment
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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 6
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`within and incubation chambersuchthat cells may be effectively and efficiently cultured
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`as is required by Tamaokietal.
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`Also in regards to the controller controlling the second valve and passage control
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`deviceit is noted that Tamaokiet al. discloses that valves are known in the art to be
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`controlled utilizing controllers and it would have been obvious to one of ordinary skill in
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`the art at the time of invention to provide a controller to control all valves in the device of
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`modified Tamaoki because such valves are knownin the art to be controlled by
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`controllers and such controllers reduce operator intervention, error, and associated
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`costs as would have been desirable in the device of modified Tamaoki.
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`Also it is noted that modified Tamaoki discloses the device being utilized to carry
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`outall the claimed functions as is described above. Assuming arguendo with respect to
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`the desired functions not being carried out by a programmedcontrollerit is noted that
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`programmedcontrollers are very well knownin the art to be utilized to automatically
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`control functions within devices and such a modification, i.e. providing a controller
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`programmedto automatically carry out described functions, would have been obvious to
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`one of ordinary skill in the art at the time of invention becausesinceit has been held
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`that broadly providing a mechanical or automatic means to replace manual activity
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`which has accomplished the same result involves only routine skill in the art.
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`In re
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`Venner, 120 USPQ 192 (CCPA 1958); In re Rundell, 9 USPQ 220 (CCPA 1931).
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`Regarding claim 4 modified Tamaoki disclosesall the claim limitations as set
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`forth above as well as the device further including a connection opening to connect a
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`pipe which supplies the standard gas to the gas concentration sensor. (See Haddad
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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 7
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`Fig. 1 and Col. 6 Lines 17-35 wherein there is a connection between the sensor and
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`standard gas supply and some form of pipe with an opening betweenthe two must be
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`provided.)
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`Regarding claim 5 modified Tamaoki disclosesall the claim limitations as set
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`forth aboveas well as the device further wherein the controller is configured to calibrate
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`the actually used gas concentration at preset time intervals. (See Haddad Col. 6 Lines
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`17-35 wherein calibration is performed periodically (periodically implies that the
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`calibration is performed at some time intervals.))
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`It is noted that the rejection of claims 4 and 5 below is provided assuming
`dependencyfrom claim 2.
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`6.
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`Claims 2 and 4-5 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Tamaokiet al. (US 2004/0063195) in view of Haddad etal. (US 4,033,825) as
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`applied to claims above and further in view of Loscher (GB 2,138,949).
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`Regarding claim 2 Tamaoki discloses all the claim limitations as set forth above as well
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`as the device wherein outside gasses are provided to the incubation unit but does not
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`specifically disclose having an outside air supply and performing zero-point calibration
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`and the outside air supply being comprisedofa third valve anda third pipe connecting
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`air to the third valve with the controller connected thereto to operate said third valve.
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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 8
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`Loscher discloses an incubation chamber wherein outside air is provided from an
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`outside air supply device comprised of a valve, i.e. third valve, and third pipe connecting
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`air to the valve to a CO2 sensor and a controller connected to the third valve controls
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`the said supply of outside air to the sensor by the third valve and on the basis of an
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`output of the gas concentration sensor at the moment, is configured to perform zero-
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`point calibration of the gas concentration sensor. (See Loscher Abstract and Page 2
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`Lines 1-65 wherein outside air is supplied to a CO2 sensor by an outside air source
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`through a valve andpipe, i.e. third valve and third pipe, controlled by a controller and
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`zero point calibration of the sensor is performed by a configured controller. It is noted
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`that Loscherdiscloses that all operations are controlled by a microprocessor, i.e. a
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`programmedcontroller, and as suchall actions described are performed underdirection
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`of said controller.)
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`It would have been obvious to one of ordinary skill in the art at the time of
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`invention to provide an outside air source and controller with associated programming
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`as described by Loscherin the device of modified Haddad because such gas sources
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`and control mechanisms are knownin the art to be used in incubation systems such as
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`those described by Haddad et al. and such systems allow for the appropriate supply of
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`gases to an incubator such that incubation may be effectively performed and allowsfor
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`the accurate functioning of device sensors to ensure a desired operation as is required
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`by modified Haddad.
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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
`
`Page 9
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`Regarding claim 4 modified Haddad disclosesall the claim limitations as set forth
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`above as well as the device further including a connection opening to connect a pipe
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`which supplies the standard gas to the gas concentration sensor. (See Haddad Fig. 1
`
`and Col. 6 Lines 17-35 wherein there is a connection between the sensor and standard
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`gas supply and some form of pipe with an opening between the two must be provided.)
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`Regarding claim 5 modified Haddaddisclosesall the claim limitations as set forth
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`above aswell as the device further wherein the controller is configured to calibrate the
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`actually used gas concentration at preset time intervals. (See Haddad Col. 6 Lines 17-
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`35 wherein calibration is performed periodically (periodically implies that the calibration
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`is performed at some time intervals.))
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`7.
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`Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable overeither(1)
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`Tamaoki et al. (US 2004/0063195) in view of Haddadet al. (US 4,033,825) or (2)
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`Tamaoki et al. (US 2004/0063195) in view of Haddadet al. (US 4,033,825) further in
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`view of Loscher (GB 2,138,949) as applied to claims above, and both further in view of
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`Silley (US 6,265,210).
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`Regarding claim 3 modified Tamaoki discloseall the claim limitations as set forth
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`above but does not specifically disclose the source of CO2 standard gas being a
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`detachable cylinder.
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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 10
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`Silley et al. discloses a controlled atmosphere enclosure for growing/maintaining
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`microorganisms including a gas source, including CO2, comprising compressed
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`cylinders of said gas. (See Figs. and Col.
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`1 Lines 7-15 wherein compressed gas
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`cylinders are used to supply gasesincluding CO2 to a chamber.)
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`It would have been obvious to one of ordinary skill in the art at the time of
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`invention to utilize a compressed CO2 cylinder as described by Silley et al. in the device
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`of modified Tamaoki because such sources of CO2 are knownin the art to supply
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`chambers with a regulated amount of gas as is required by modified Tamaoki and such
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`cylinders represent a specific, effective, and known form of CO2 source for supplying a
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`chamberas is required by modified Tamaoki
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`Response to Arguments
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`8.
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`Applicant’s arguments with respect to the claims have been considered but are
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`moot because the arguments do not apply to any of the combination of references being
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`used in the current rejection.
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`Applicant argues that “Haddadis deficient, becauseit fails to describe, teach, or
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`suggest the combination of features as recited in claim 1, as amended herein, including
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`at least the following features: "a controller which controls the supply of gas into the
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`incubation chamberon the basis of an output of the gas concentration sensor; ...
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`wherein the controller is programmed to maintain the concentration of the standard gas,
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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
`
`Page 11
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`supply the standard gas to the gas concentration sensor by the standard gas supply
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`device, and on the basis of an output of the gas concentration sensor and the
`
`concentration of the standard gas at the moment, calibrate the actually used gas
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`concentration of the gas concentration sensor by controlling the passage control device,
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`wherein the controller is connected to at least a first valve which is connectedtoafirst
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`pipe extending out of the incubation chamber, connected to a second valve whichis
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`connected to a second pipe connecting the standard gas supply device to the second
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`valve, and connected to the gas concentration sensor."
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`It is noted that Haddad doesin fact disclose a passage control device and controlling
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`the supply of gas into the incubation chamberon the basis of an output of the gas
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`concentration sensor, maintain the concentration of the standard gas, and on the basis
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`of an output of the gas concentration sensor and the concentration of the standard gas
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`at the moment, calibrate the actually used gas concentration of the gas concentration
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`sensor.
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`Furthermore in regards to any other argued deficiencies additional references
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`and rational have been provided to makeup for any suchdeficiencies.
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`Conclusion
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`9.
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`Anyinquiry concerning this communication or earlier communications from the
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`examiner should be directed to JONATHAN HURSTwhosetelephone numberis
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`(571)270-7065. The examiner can normally be reached on Mon.- Fri. 7:30-4:00.
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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 12
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Michael Marcheschi can be reached on (571)272-1374. The fax phone
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`numberfor the organization wherethis application or proceeding is assigned is 571-
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`273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on accessto the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`
`/JONATHAN M HURST/
`
`Examiner, Art Unit 1775
`
`