`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`13/457,675
`
`04/27/2012
`
`Yasuhiko YOkOi
`
`P51 19US 00
`
`1066
`
`”/0430” —WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP m
`7590
`38834
`8500 Leesburg Pike
`BOWERS, NATHAN ANDREW
`SUITE 7500
`
`Tysons, VA 22182
`
`1799
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/04/2018
`
`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):
`
`patentmail @ tha.com
`
`PTOL—90A (Rev. 04/07)
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Ex parte YASUHIKO YOKOI, KOICHI KOBAYASHI,
`HIROSHI YAMAMOTO, and HIROKI BUSUJIMA
`
`Appeal 2017-008412
`Application 13/457,675
`Technology Center 1700
`
`Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
`
`LILAN REN, Administrative Patent Judges.
`
`REN, Administrative Patent Judge.
`
`DECISION ON APPEAL
`
`STATEMENT OF THE CASE
`
`Appellants1 appeal under 35 U.S.C. § 134 from rejections2 of claims
`
`1, 2, 4, 5, 7, 8, and 10—12. We have jurisdiction under 35 U.S.C. § 6(b).
`
`We affirm.
`
`1 PANASONIC HEALTHCARE CO., LTD. is identified as the real party in
`interest. (Appeal Brief, filed February 22 2017 (“App. Br.”), 2.)
`2 Final Rejection mailed June 30 2016 (“Final Act.”). In this decision, we
`also refer to the Examiner’s Answer mailed March 29 2017 (“Ans.”), and
`the Reply Brief filed May 15 2017 (“Reply Br.”).
`
`

`

`Appeal 2017-008412
`Application 13/457,675
`
`CLAIMED SUBJECT MATTER
`
`The claims are directed to an isolator and a method involving moving
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`subcultured cells. Spec. l:ll—l 1, 24—25.3 Claims 1 and 11, reproduced
`
`below, are illustrative of the claimed subject matter:
`
`1.
`
`An isolator, comprising:
`a working chamber which is capable of having a culture
`apparatus demountably mounted to an exterior of the working
`chamber via a coupling member, and including an opening
`configured to attach a working glove thereto and an opening
`configured to allow a culture chamber of the culture apparatus
`and the working chamber to communicate with each other, when
`the culture apparatus has been mounted;
`a storage chamber including a door configured to open or
`close an opening configured to allow the storage chamber and an
`exterior of the storage chamber to communicate with each other,
`the door configured to open or close the opening configured to
`allow the storage chamber and the exterior of the storage
`chamber to communicate with each other being a part of an outer
`surface of the isolator in a state where the door configured to
`open or close the opening configured to allow the storage
`chamber and the exterior of the storage chamber to communicate
`with each other is closed, wherein a culture is not cultured in the
`
`storage chamber;
`a door configured to open or close an opening configured
`to allow the working chamber and the storage chamber to
`communicate with each other; and
`
`a temperature adjusting device configured to, when the
`culture taken out of the culture chamber has been temporarily
`stored in the storage chamber, and the storage chamber has been
`hermetically sealed, and thereafter the culture apparatus has
`been demounted, adjust temperature of the culture stored in the
`storage chamber.
`
`3 We refer to the specification as “Spec.”
`
`2
`
`

`

`Appeal 2017-008412
`Application 13/457,675
`
`A method for moving culture stored in a first culture
`11.
`chamber of a first culture apparatus to a second culture chamber
`of a second culture apparatus in an isolator to which the first
`culture apparatus or
`the second culture apparatus can be
`mounted, the isolator comprising: a working chamber which is
`capable of having a culture apparatus demountably mounted to
`an exterior of the working chamber via a coupling member, and
`including an opening configured to attach a working glove
`thereto and an opening configured to allow the first or the second
`culture chamber and the working chamber to communicate with
`each other, when the first or the second culture apparatus has
`been mounted, wherein a culture is not cultured in the working
`chamber; a door configured to close the opening configured to
`allow the first or the second culture chamber and the working
`chamber to communicate with each other, so as to hermetically
`seal the working chamber; and a temperature adjusting device
`included in the working chamber, the method comprising:
`a first process of moving the culture in the first culture
`chamber to the working chamber via the opening configured to
`allow the first or the second culture chamber and the working
`chamber to communicate with each other, when the first culture
`apparatus has been mounted to the working chamber;
`a second process of closing the door and hermetically
`sealing the working chamber;
`a third process of causing the temperature adjusting device
`to adjust temperature of the culture;
`a fourth process of demounting the first culture apparatus;
`a fifth process of mounting the second culture apparatus;
`
`and
`
`a sixth process of opening the door and moving the culture
`temporarily stored in the working chamber to the second culture
`chamber via the opening configured to allow the first or the
`second culture
`chamber
`and the working
`chamber
`to
`communicate with each other,
`wherein the first culture apparatus and the second culture
`apparatus are each demountably mountable to an exterior of the
`working chamber via a coupling member.
`
`App. Br. 20, 22—23 (Claims Appendix) (emphasis added).
`
`

`

`Appeal 2017-008412
`Application 13/457,675
`
`REFERENCES
`
`The prior art relied upon by the Examiner in rejecting the claims on
`
`appeal are:
`
`Cox
`Barbera—Guillem
`
`Herbert
`
`Sep. 23, 1975
`US 3,907,389
`US 2003/0040104 A1 Feb. 27, 2003
`
`US 2010/0291664 A1 Nov. 18, 2010
`
`REJECTIONS
`
`Claims 1, 2, 4, 5, 7, 8, and 10—12 are rejected under pre-AIA 35
`
`U.S.C. § 103 (a) as being unpatentable over Herbert in View of Cox and
`
`Barbera—Guillem. Final Act. 3—4.
`
`Claims 1, 2, 4, 5, 7, 8, and 10—12 are additionally rejected under pre-
`
`AIA 35 U.S.C. § 103 (a) as being unpatentable over Cox in View of Barbera-
`
`Guillem. Final Act. 7—8.
`
`OPINION
`
`We adopt the Examiner’s findings pertinent to the issues raised by
`
`Appellants and incorporate the fact findings as set forth in the Final
`
`Rejection and Examiner’s Answer. We add the following for emphasis.
`
`Rejection of Claim 1 (Herbert, Cox, and Barbera-Guillem)
`
`The dispositive issue on appeal is whether the combined prior art
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`teaches an isolator haVing “a temperature adjusting deVice configured to,
`
`when the culture taken out of the culture chamber has been temporarily
`
`stored in the storage chamber, and the storage chamber has been
`
`hermetically sealed, and thereafter the culture apparatus has been
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`

`

`Appeal 2017-008412
`Application 13/457,675
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`demounted, adjust temperature of the culture stored in the storage chamber”
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`as recited in claim 1.4
`
`Citing relevant components in Herbert, Cox and “an environment
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`controlling mechanism 16 for controlling the environment conditions of
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`biochamber 14” described in Barbera-Guillem, the Examiner finds that each
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`and every limitation of claim 1 has been taught or suggested by the
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`combined teaching of these references. Final Act. 3—4 (citing various
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`portions of each reference); Barbera—Guillem 11 37 (cited in Final Act 3).
`
`Appellants do not dispute Barbera—Guillem describes that the environmental
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`controlling mechanism “controls the environment conditions in biochamber
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`14 in which cells may be cultured and manipulated by controlling a
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`parameter selected from the group consisting of temperature .
`
`. .” but argue
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`that the prior art environmental controlling mechanism does not “adjust
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`temperature .
`
`.
`
`. in the storage chamber” as recited in claim 1. App. Br. 9—10
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`(citing Barbera-Guillem 11 37). Appellants argue that because the
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`biochamber 14 in Barbera—Guillem is not a storage chamber but a culture
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`apparatus, “the teachings of Barbera—Guillem are completely duplicative of
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`the teachings of Herbert” because a culture apparatus “typically include[s]
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`temperature and humidity controls[.]” Id. at 10.
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`“[A]pparatus claims cover what a device is, not what a device does.”
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`Hewlett-Packard Co. v. Bausch & Lamb Inc, 909 F.2d 1464, 1468 (Fed.
`
`Cir. 1990). An inventor of a structure (machine or article of manufacture) is
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`entitled to benefit from all of its uses, even those not described, Roberts v.
`
`Ryer, 91 US. 150, 157 (1875), and conversely, patentability of the structure
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`4 Claims depend from claim 1 stand or fall with claim 1 with respect to this
`obviousness rejection. App. Br. 12.
`
`

`

`Appeal 2017-008412
`Application 13/457,675
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`cannot turn on the use or function of the structure. In re_Miehlin, 256 F.2d
`
`317, 320 (CCPA 1958) (“It is well settled that patentability of apparatus
`
`claims must depend upon structural limitations and not upon statements of
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`function”).
`
`Claims directed to an apparatus therefore must be distinguished from
`
`the prior art in terms of structure. See In re Danly, 263 F.2d 844, 848
`
`(CCPA 1959) (“Claims drawn to an apparatus must distinguish from the
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`prior art in terms of structure rather than function”); In re Gardiner, 171
`
`F.2d 313, 315—16 (CCPA 1948) (“It is trite to state that the patentability of
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`apparatus claims must be shown in the structure claimed and not merely
`
`upon a use, function, or result thereof.”). “‘By its own literal terms a claim
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`employing [functional] language covers any and all embodiments which
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`perform the recited function.” Swinehart, 439 F.2d 213. Where there is
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`reason to believe that the structure of the prior art is inherently capable of
`
`performing the claimed function, the burden shifts to the applicant to show
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`that the claimed function patentably distinguishes the claimed structure from
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`the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
`
`1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981).
`
`In this case, Appellants acknowledge that Barbera—Guillem teaches an
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`environmental controlling mechanism for a cell culture device which
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`includes a storage array. Reply Br. 3 (“Applicant does not dispute that it is
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`possible to store cells in the biochamber 14 of Barbera—Guillem.”); see
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`Barbera—Guillem 1H] 37, 38. Whether the prior art teachings are duplicative —
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`as argued by Appellants (App. Br. 10) — does not identify reversible error in
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`the Examiner’s finding that each component of the recited isolator is taught
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`in the prior art. Appellants’ argument that “the biochamber 14 of Barbera-
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`

`

`Appeal 2017-008412
`Application 13/457,675
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`Guillem is most analogous to the incubator 21 of Herbert” (Reply Br. 3;
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`App. Br. 11) also does not distinguish the recited isolator from the prior art
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`in terms of structure. See In re Danly, 263 F.2d at 848.
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`Appellants argue that there are “key differences between culture
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`chambers and storage chambers” because culture chambers are “for
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`cultivating culture, while storage chambers are not for cultivating culture.”
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`App. Br. 11. Appellants also argue that the claim is “based on an idea of
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`temporarily storing culture” in the storage chambers. Id. at 12. Appellants
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`thus reason that there would be no reason to implement temperature control
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`for a storage chamber. Id. at 11; Reply Br. 3—4. Appellants, however, do
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`not disagree with the Examiner’s finding that the biochamber 14 of
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`Barbera-Guillem is partly used as a storage chamber. Compare Ans. 4 with
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`Reply Br. 3 (“In fact, as noted by the Examiner’s Answer, a storage array 20
`
`including cell culture devices 22 is disposed within the biochamber”). We
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`further note that Barbera-Guillem states “[b]asic operations for culturing
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`cells may include .
`
`.
`
`. maintenance of cell culture” such as “storage under
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`appropriate environmental conditions.” Barbera-Guillem 11 2.
`
`Appellants’ argument that “it is well known to those having ordinary
`
`skill in the art that adding temperature control to [a storage] chamber would
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`be unnecessary, and add unnecessary cost and complexity to systems” is
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`unsupported by factual evidence. Reply Br. 5. “Attorneys’ argument is no
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`substitute for evidence.” Johnston v. IVAC Corp, 885 F.2d 1574, 1581
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`(Fed. Cir. 1989). In any case, even if this assertion is supported by evidence,
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`“a given course of action often has simultaneous advantages and
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`disadvantages, and this does not necessarily obviate motivation to combine.”
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`Medichem, SA. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
`
`

`

`Appeal 2017-008412
`Application 13/457,675
`
`Appellants have not identified reversible error in the Examiner’s rationale
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`that a skilled artisan, based on the prior art teaching of temperature
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`controlling a cell culture deVice which includes a storage array, would
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`predictably implement the temperature control component for a storage
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`array. Compare Final Act. 4 with App. Br. 9—11; compare Ans. 4 with
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`Reply Br. 5.
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`Rejection of Claims I] and I2 (Herbert, Cox, and Barbera-Guillem)
`
`From the outset, Appellants’ argument that claim 11 “requires
`
`adjusting the temperature of the culture stored in the working chamber by a
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`temperature adjusting deVice .
`
`.
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`. when culture taken out of the culture
`
`chamber has been stored in the working chamber and the working chamber
`
`has been hermetically sealed. Thereafter, the culture apparatus is
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`demounted” is not commensurate in scope with the language of the claim.
`
`See App. Br. 12—13. For example, claim 11 does not recite an order
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`performing a step of “adjusting the temperature .
`
`.
`
`. when culture taken out
`
`of the culture chamber has been stored in the working chamber and the
`
`working chamber has been hermetically sealed” and a step of “[t]hereafter,
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`the culture apparatus is demounted.” Appellants’ arguments with regard to
`
`claim 11 mirror those for claim 1 (id.) which have been addressed in detail
`
`supra.5
`
`Appellants’ arguments with regard to claim 12 are identical to those
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`for claim 11 (compare App. Br. 12—13 with App. Br. 13—14) which have
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`5 Claims depend from claim 11 stand or fall with claim 11 with respect to
`this obViousness rejection. App. Br. 13.
`
`8
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`

`

`Appeal 2017-008412
`Application 13/457,675
`
`been considered supra and are not persuasive of reversible error in the
`
`Examiner’ s fact findings. 6
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`Rejection of Claims I, I], and 12 (Cox and Barbera-Guillem)
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`Appellants’ arguments with regard to the rejection based on Cox and
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`Barbera-Guillem are identical to those for the rejection based on Herbert,
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`Cox, and Barbera-Guillem (compare App. Br. 9—14 with App. Br. 14—18)
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`which have been considered supra and are not persuasive of reversible error
`
`in the Examiner’s fact findings.
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`DECISION
`
`The Examiner’s rejections of claims 1, 2, 4, 5, 7, 8, and 10—12 are
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`affirmed.
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`No time period for taking any subsequent action in connection with
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`this appeal may be extended under 37 C.F.R. § l.l36(a). See 37 C.F.R.
`
`§ l.l36(a)(l)(iv).
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`AFFIRMED
`
`6 Claims depend from claim 12 stand or fall with claim 12 with respect to
`this obviousness rejection. App. Br. 14.
`
`9
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`