`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF CONINJERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 223 13-1450
`www.uspto.gov
`
`14/666,231
`
`03/23/2015
`
`WNW——W
`Koichi KOBAYASHI
`092122-0040
`4429
`
`2°”
`”9"
`“mm”
`MCDERMOTTMMEMERY Lu» —
`The McDermott Building
`BOWERS= NATHAN ANDREW
`500 North Capitol Street, N.W.
`WASHINGTON, DC 20001
`
`PAPER NUMBER
`
`ART UNIT
`1799
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/12/2017
`
`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):
`
`ipdoeketmwe@mwe.com
`
`PTOL—90A (Rev. 04/07)
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`CommissionerforPalenls
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.usplo.gov
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Application Number: 14/666,231
`
`Filing Date: 23 Mar 2015
`Appellant(s): KOBAYASHI et al.
`
`Takashi Saito
`
`For Appellant
`
`EXAMINER’S ANSWER
`
`This is in response to the appeal brief filed 01 September 2017 appealing from
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`the Office action mailed 19 April 2017.
`
`
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`Application/Control Number:14l666,231
`Art Unit: 1799
`
`Page 2
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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 19 April 2017 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`rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.”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."
`
`(2) Response to Argument
`
`Claims 1, 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Yokoi (US 20100189607) in view of Ortner (US 20120040600) and Baker (US
`
`20110315783).
`
`Appellant’s principal arguments are:
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`(a) Baker does not disclose that the fan may be operated continuously or
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`intermittently at any given time. Rather, Baker teaches that the fan operation is related
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`to the opening and closing of the door 5. One of ordinary skill would very likely employ
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`Baker’s fan operation to Yokoi in response to door opening, and not in response to a
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`spray operation (pages 5-6).
`
`In response, please consider the following.
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`Baker teaches a fan 23 that is used to circulate air inside the incubator chamber
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`in order to maintain consistent and uniform environmental conditions. This is described
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`in at least paragraphs [0008] and [0054] (“Fan assembly 23 may be operated to rotate
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`the fan in order to gently blow the gas within interior chamber 4 to maintain a
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`substantially uniform temperature, humidity and level of carbon dioxide throughout the
`
`
`
`Application/Control Number:14/666,231
`Art Unit: 1799
`
`Page 3
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`chamber”). This is a general teaching that the fan may be used to restore stabile
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`conditions within the incubator whenever there is a perturbation or external disruption to
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`the environmental conditions within the chamber.
`
`it is agreed that Baker mentions that
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`one such disruption could potentially be the opening and closing of the door (“Fan
`
`assembly 23 may be operated on a continuous basis or intermittently in a variety of
`
`predetermined patterns, which may be related to the opening and closing of door 5”
`
`(emphasis added)). However, Baker is not limited to changing the operation of the fan
`
`solely in response to the state of the door, especially given that Baker is predominant
`
`concerned with maintaining uniform environmental conditions throughout the cell culture
`
`in response to essentially any disturbance. Door opening/closing is just one example.
`
`Rather, it would have been well within the ability of one of ordinary skill to take Baker’s
`
`teachings — i.e. adjusting the fan operation in response to the detection of uneven
`
`conditions — and apply them whenever it is deemed necessary to disperse and circulate
`
`the gas within an incubator chamber, as this is Baker’s ultimate goal.
`
`One of ordinary skill would have recognized that a fan would be required to
`
`evenly disperse the sterilizing mist from Yokoi’s spray device.
`
`Indeed, this is exactly
`
`what Yokoi already teaches. Baker is simply relied upon as evidence that this could be
`
`accomplished using a fan operating either continuously or intermittently, as one of
`
`ordinary skill would recognize that the introduction of a sterilizing gas into the Yokoi
`
`chamber is an example of a localized disruption that requires uniform dispersal. To do
`
`this, Baker states that intermittent operation may be carried out “in a variety of
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`predetermined patterns”, which emphasizes that the use of a fan operating according to
`
`an intermittent protocol is notoriously well known in the art.
`
`
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`Application/Control Number:14l666,231
`Art Unit: 1799
`
`Page 4
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`Lastly,
`
`it is suggested that Baker is really not even necessary for the rejection of
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`the instant claims, but has been added out of an abundance of caution to clearly show
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`the state of the art regarding the intermittent (and continuous) operation of a fan to
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`evenly circulate incubator gases. Even in the absence of Baker, one of ordinary skill
`
`using the Yokoi fan would literally be left with exactly two options:
`
`the fan is “on” or the
`
`fan is "oft”. A continuous operation merely means that the fan is “on”.
`
`Intermittent
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`operation simply means that the fan is alternatingly “on” and “off” (perhaps only once).
`
`Given the restricted number of possible operation states, it surely would have been
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`obvious to one of ordinary skill to turn the fan on during spraying when it is necessary to
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`circulate Yokoi’s sterilizing mist, and to turn the fan off momentarily when uniform
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`conditions have temporarily been achieved. Appellant’s purported invention is exactly
`
`what Yokoi already does, except that the fan is flicked on and off. A person of ordinary
`
`skill is also a person of ordinary creativity, not an automaton.
`
`(b) Baker does not disclose anything about the relationship between a spray
`
`operation and an intermittent operation of the fan assembly 23 (page 5).
`
`In response, please consider the following.
`
`Baker teaches the general notion that a fan should be used to evenly disperse
`
`concentrated pockets of gas throughout the incubator chamber. Baker expressly
`
`teaches that the fan may be operated continuously or intermittently according to a
`
`variety of predetermined patterns to accomplish this. Although Baker mainly discusses
`
`temperature, 002 concentrations and humidity, one of ordinary skill would have
`
`recognized that a fan would be required to likewise disperse a sterilizing mist sprayed
`
`
`
`Application/Control Number:14l666,231
`Art Unit: 1799
`
`Page 5
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`into the chamber volume.
`
`Indeed, Yokoi teaches that a fan is used to do this.
`
`In other
`
`words, Yokoi already establishes a relationship between a spray operation and the use
`
`of a fan assembly. Baker is merely relied upon as evidence that the Yokoi fan could be
`
`operated either continuously or intermittently both during the spraying processing and
`
`after the spraying process.
`
`In response to Appellant’s arguments against the
`
`references individually, one cannot show nonobviousness by attacking references
`
`individually where the rejections are based on combinations of references. See in re
`
`Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); in re Merck& Co., 800 F.2d 1091,
`
`231 USPQ 375 (Fed. Cir. 1986).
`
`(c) The current invention produces advantageous effects that cannot be expected
`
`from Yokoi and Baker. Because the inner wall surface is intermittently brought into
`
`contact with the gas, it is possible to restrain the particulates of the sterilizing liquid from
`
`growing into large droplets, and thus it is possible to reduce the period of time required
`
`for evaporating the droplets (page 7).
`
`In response, please consider the following.
`
`In response to Appellant’s argument that the references fail to show certain
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`features of Appellant’s invention,
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`it is noted that the features upon which Appellant relies
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`(i.e., the prevention of sterilizing liquid from growing into large droplets) are not recited
`
`in the rejected claims. Although the claims are interpreted in light of the specification,
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`limitations from the specification are not read into the claims. See in re Van Geuns, 988
`
`F.2d 1181, 26 USPQZd 1057 (Fed. Cir. 1993).
`
`
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`Application/Control Number:14l666,231
`Art Unit: 1799
`
`Page 6
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`Furthermore, it is noted that Appellant’s result — i.e. preventing the growth of
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`large droplets by intermittently (not continuously) contacting the incubator walls with the
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`mist —would be inherently replicated by any other incubator assembly that intermittently
`
`operates the fan during the operation of the spraying device. These advantageous
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`effects would absolutely be expected from the combination of Yokoi with Baker.
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`Appellant has not provided any evidence or data which shows that this is an unexpected
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`or otherwise significant result.
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`Lastly,
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`in response to Appellant’s argument that the cited references do not
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`expressly recognize that an intermittent fan operation produces smaller droplets, the
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`fact that Appellant has recognized another advantage which would flow naturally from
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`following the suggestion of the prior art cannot be the basis for patentability when the
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`differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd.
`
`Pat. App. & Inter. 1985).
`
`(d) The alleged fan 48 of Yokoi is not the claimed diffusion fan. The fan 48
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`merely supplies a sterilizing material to the sterilizing chamber (page 7).
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`In response, please consider the following.
`
`The fan of Yokoi is used to circulate sterilizing mist into and throughout the
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`sterilizing chamber of the incubator. A similar fan 22 is used to circulate the sterilizing
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`mist into and throughout the remainder of the incubator. Both fans inherently operate to
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`blow sterilizing mist into and throughout the incubator, and therefore they are
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`understood to be “diffusion fans”. They are no different in structure or design or
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`positioning relative to the incubator than the diffusion fans disclosed by Appellant. For
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`
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`Application/Control Number:14/666,231
`Art Unit: 1799
`
`Page
`
`7
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`the reasons expressed in previous Office Actions, Ortner and Baker each additionally
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`teach the state of the art regarding diffusion fans configured to evenly circulate and
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`disperse gases within an incubator chamber.
`
`Claims 2, 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Yokoi (US 20100189607) in view of Ortner (US 20120040600) and Baker (US
`
`20110315783) as applied to claim 1, and further in View of McVey (US
`
`20050084415).
`
`Appellant offers no additional arguments to overcome this rejection. For the
`
`reasons presented above, this rejection should be affirmed.
`
`Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yokoi
`
`(US 20100189607) in view of Ortner (US 20120040600) and Baker (US
`
`20110315783), and further in view of Fanning (US 20100062522).
`
`Appellant offers no additional arguments to overcome this rejection. For the
`
`reasons presented above, this rejection should be affirmed.
`
`Claims 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Yokoi (US 20100189607) in view of Ortner (US 20120040600), Baker (US
`
`20110315783) and Fanning (US 20100062522) as applied to claim 7, and further in
`
`View of McVey (US 20050084415).
`
`Appellant offers no additional arguments to overcome this rejection. For the
`
`reasons presented above, this rejection should be affirmed.
`
`
`
`Application/Control Number:14/666,231
`Art Unit: 1799
`
`Page 8
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`For the above reasons, it is believed that the rejections should be sustained.
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`Respectfully submitted,
`
`INATHAN A BOWERS/
`
`Primary Examiner, Art Unit 1799
`
`Conferees:
`
`Michael Marcheschi
`
`MICHAEL A MARCHESCHI/
`
`Supervisory Patent Examiner, Art Unit 1799
`
`lTHOMAS G DUNN/
`
`Quality Assurance Specialist, Art Unit 1700
`
`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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`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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