`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMlVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`13/457,675
`
`04/27/2012
`
`Yasuhiko YOkOi
`
`P51 19US00
`
`1066
`
`03/29/2017 —WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP m
`7590
`38834
`1250 CONNECTICUT AVENUE, NW
`BOWERS’ NATHAN ANDREW
`SUITE 700
`WASHINGTON, DC 20036
`
`PAPER NUMBER
`
`1799
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`03/29/2017
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patentmail @ tha.c0m
`
`PTOL—90A (Rev. 04/07)
`
`
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.uspfo.gov
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Application Number: 13/457,675
`Filing Date: April 27, 2012
`Appellant(s): YOKOI ET AL.
`
`Ryan B. Chirnomas
`For Appellant
`
`EXAMINER’S ANSWER
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`This is in response to the appeal brief filed 22 February 2017 appealing from the
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`Office action mailed 30 June 2016.
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`
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`Application/Control Number: 13/457,675
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`Page 2
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`Art Unit: 1799
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`(1) Grounds of Rejection to be Reviewed on Appeal
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`Every ground of rejection set forth in the Office action dated 30 June 2016 from
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`which the appeal is taken is being maintained by the examiner except for the grounds of
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`rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.” New
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`grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF
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`REJECTION.”
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`(2) Response to Argument
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`Claims 1, 2, 4, 5, 7, 8 and 10-12 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Herbert (US 20100291664) in view of Cox (US 3907389) and
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`Barbera-Guillem (US 20030040104).
`
`Appellant’s principal arguments are
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`(a) Barbera-Guillem teaches an environmental controlling mechanism in a culture
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`apparatus, which corresponds to the claimed working chamber (and not the storage
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`chamber). Accordingly, there would be no reason to add an environmental controlling
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`mechanism to the storage chamber of Herbert (pages 10-11).
`
`In response, please consider the following.
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`Appellant is wrong to suggest that the chamber 14 of Barbera-Guillem does not
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`correspond to the claimed storage chamber because the chamber 14 taught by
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`Barbera-Guillem i_s a storage chamber. Paragraphs [0010], [0038]-[0044] and [0048]
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`repeatedly describe the chamber 14 as containing a storage array 20. The storage
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`array is used to store cell culture containers 22. Because the storage array 20 stores
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`
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`Application/Control Number: 13/457,675
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`Page 3
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`Art Unit: 1799
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`the containers in the chamber 14, chamber 14 is considered to be a storage chamber.
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`Although Barbera-Guillem also describes the containers 22 as culture containers, the
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`culture containers are stored in the storage array 20 within the storage chamber 14.
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`The storage chamber 14 allows cells to be stored during culture, wherein “culture”
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`simply means that the cells are allowed to grow on the container surfaces while they are
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`being stored.
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`The storage chamber 14 of Barbera-Guillem therefore naturally corresponds to
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`the storage chamber 2 of Herbert.
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`In view of Barbera-Guillem, one of ordinary skill
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`would have been motivated to include an environment controlling mechanism in the
`
`storage chamber 2 of Herbert when the Herbert storage chamber is used to store cells
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`for cell culture or any other temperature material. As evidenced by Barbera-Guillem,
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`environment controlling mechanisms, such as heaters/coolers, can affect the conditions
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`within a sealed room in a highly predictable way. Barbera-Guillem further teaches that it
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`is appropriate to keep viable cells at desirable temperatures at all times, as it is common
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`knowledge that different cells grow best at different temperatures.
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`(b) There are key differences between culture chambers and storage chambers,
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`and it would not have been obvious to provide a temperature control device to a storage
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`chamber. There is no reason to apply a temperature control device to the storage
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`chamber of Herbert (page 1 1).
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`In response, please consider the following.
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`
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`Application/Control Number: 13/457,675
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`Page 4
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`Art Unit: 1799
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`For the reasons expressed above, the chamber 14 of Barbera-Guillem is a
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`storage chamber.
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`It stores culture containers. The fact that cells are allowed to grow
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`(and are not intentionally killed) in the Barbera-Guillem chamber 14 does not defeat the
`
`
`fact that the chamber 14 holds, retains and stores the containers. Because Barbera-
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`Guillem clearly teaches the value of a temperature controlled storage chamber, one of
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`ordinary skill would have also considered making other similar storage chambers, such
`
`as the storage chamber of Herbert, temperature controlled for the same reasons.
`
`Even if, for the sake of argument, Appellant is correct that there is no rigid,
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`cookie-cutter type teaching-suggestion-motivation statement indicating why a
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`temperature adjusting device should be added to the Herbert storage chamber, it is
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`emphasized that adding a heater or a cooling element to the Herbert storage chamber
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`merely represents combining prior art elements according to known methods to yield
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`predictable results, which is prima facie obvious. See MPEP 2143. Heating elements
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`(which are generally taught by all of Herbert, Cox and Barbera-Guillem) are well known
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`in the art and are characterized by a predictable operation. A heating/cooling means
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`added to the storage chamber of Herbert would operate in exactly the same way as it
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`would in essentially any other type of chamber (“The rationale to support a conclusion
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`that the claim would have been obvious is that all the claimed elements were known in
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`the prior art and one skilled in the art could have combined the elements as claimed by
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`known methods with no change in their respective functions”).
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`
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`Application/Control Number: 13/457,675
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`Page 5
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`Art Unit: 1799
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`(c) The present disclosure is based on the idea of temporarily storing culture in a
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`space in which culture is not stored conventionally. As a result, temperature in the
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`storage chamber is adjusted to protect culture from changes in the environment (page
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`12).
`
`In response, please consider the following.
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`The storage chamber of Herbert also temporarily stores culture containers. The
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`storage chamber is a hatch that holds material as it moves from one chamber to
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`another.
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`It can be used to hold a culture container for essentially any period of time.
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`It
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`would make sense, especially in view of Barbera-Guillem, to subject biological cells to
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`appropriate temperatures at all times wherever they are located, including in all storage
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`locations. One of ordinary skill would not have wanted growing cells to be in conditions
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`that are too hot or too cold, even for short periods of time.
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`Appellant’s argument essentially boils down to the assertion that the claimed
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`storage chamber holds culture containers for a longer period of time than the Herbert
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`storage chamber. However, this is a question of intended use. A recitation of the
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`intended use of the claimed invention (here, the amount of time a culture container
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`resides within the storage space) must result in a structural difference between the
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`claimed invention and the prior art in order to patentably distinguish the claimed
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`invention from the prior art.
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`If the prior art structure is capable of performing the
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`intended use, then it meets the claim.
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`In this case, the Herbert storage chamber is
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`structurally capable of holding a cell culture container for essentially any period of time.
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`
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`Application/Control Number: 13/457,675
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`Page 6
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`Art Unit: 1799
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`(d) With respect to claims 1 1 and 12, the claimed method involves adjusting the
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`temperature of the culture stored in the working chamber when culture taken out of the
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`culture chamber has been stored in the working chamber and the working chamber has
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`been hermetically sealed. Based on Barbera-Guillem, one of ordinary skill in the art
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`would have no reason to modify Herbert such that the temperature of either of the
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`isolation cabinets 3, 6, 9, 11 and 13 is controlled or the temperature of the transfer
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`hatch 2 (regarded as a "storage chamber’Q is controlled (pages 13 and 14).
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`In response, please consider the following.
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`Again, one of ordinary skill would have found it obvious to control the
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`temperature of any room, including storage chambers, where biological cells are
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`located. Barbera-Guillem shows one such storage chamber that includes a temperature
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`control element. A heater/cooler added to the Herbert storage chambers 2, 17 would
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`allow cells to remain at temperatures appropriate for cell growth while they reside within
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`the storage chamber. Furthermore, a heater/cooler added to the Herbert storage
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`chambers 2, 17 would keep the storage chamber and the working chamber at
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`approximately the same temperature, which would prevent too hot or too cold air from
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`entering into the working chamber when the door between the storage chamber and the
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`working chamber is opened. A heater/cooler added to the Herbert storage chambers 2,
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`17 could also function as a "back-up" emergency temperature control means in the
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`event that the heating/cooling system in the working chamber became inoperative and
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`cell culture containers needed to be moved into the storage chamber.
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`
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`Application/Control Number: 13/457,675
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`Page 7
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`Art Unit: 1799
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`Claims 1, 2, 4, 5, 7, 8 and 10-12 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Cox (US 3907389) in view of Barbera-Guillem (US
`
`20030040104).
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`Appellant’s arguments are essentially the same as those presented above (i.e.
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`regarding the Barbera-Guillem teachings and that there would be no reason to add an
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`environmental controlling mechanism to the storage chamber of an isolator
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`(environmental chamber)). Because these arguments are not persuasive, the rejections
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`involving the combination of Cox with Barbera-Guillem should be sustained.
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`For the above reasons, it is believed that the rejections should be sustained.
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`Respectfully submitted,
`
`Nathan Bowers
`
`/NATHAN BOWERS/
`
`Primary Examiner, Art Unit 1799
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`Conferees:
`
`Michael Marcheschi
`
`/M|CHAEL MARCHESCHI/
`
`Supervisory Patent Examiner, Art Unit 1799
`
`Lyle Alexander
`/LYLE ALEXANDER/
`
`Supervisory Patent Examiner, Art Unit 1797
`
`Requirement to pay appeal forwarding fee.
`
`In order to avoid dismissal of the instant
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`appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires
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`payment of an appeal forwarding fee within the time permitted by 37 CFR 41 .45(a),
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`
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`Application/Control Number: 13/457,675
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`Page 8
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`Art Unit: 1799
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`unless appellant had timely paid the fee for filing a brief required by 37 CFR 41 .20(b) in
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`effect on March 18, 2013.
`
`
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