`
`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.
`
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`12/530,555
`
`09/09/2009
`
`Hiroki Busujima
`
`090224
`
`1966
`
`23850
`7590
`04/08/2013
`KRATZ, QUINTOS& HANSON, LLP
`1420 K Street, N.W.
`4th Floor
`WASHINGTON,DC 20005
`
`HURST, JONATHAN M
`
`1775
`
`MAIL DATE
`
`04/08/2013
`
`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) Responsive to communication(s)filed on18September2012.
`LJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon__
`2a)X] This action is FINAL.
`2b)L] 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) XJ Information
`Disclosure
`Statement(s)
`(PTO/SB/08
`)
`4 O Other:
`)
`nformation Disclosure
`Statement(s) (
`Paper No(s)/Mail Date 12/27/2012.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 03-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20130405
`
`

`

`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 2
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 102 and/oralternatively 35 USC § 103
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`1.
`
`The following is a quotation of the appropriate paragraphsof 35 U.S.C. 102 that
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`form the basis for the rejections underthis section madein this Office action:
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`A person shall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one yearprior to the date of application for patent in
`the United States.
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`2.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousnessrejections setforth 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 ofthis title, 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 obviousat 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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`3.
`
`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 under 35 U.S.C. 103(a) are summarized asfollows:
`
`PoNn>
`
`Determining the scope and contentsof the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinentart.
`Considering objective evidence presentin the application indicating
`obviousness or nonobviousness.
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`4.
`
`Claims 1 and 4-5 are rejected under 35 U.S.C. 102(b) as anticipated by or, in the
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`alternative, under 35 U.S.C. 103(a) as obvious over Haddadet al. (US 4,033,825).
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`

`

`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 3
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`Regarding claim 1 Haddadetal. 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 Haddad Abstract)
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`a gas concentration sensor which detects a gas concentration in the incubation
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`chamber; (See Haddad Fig. 1 and Col. 6 Lines 17-35 wherein a CO2 concentration
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`sensor 42 detects CO2 concentration in the incubation chamber.)
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`a controller which controls the supply of a gas into the incubation chamberon the basis
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`of an output of the gas concentration sensor; (See Haddad Fig. 1 and Col. 6 Lines 17-
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`35 wherein carbon dioxide and other nutrient supply is controlled by some form of
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`controller on the basis of the output of the concentration sensor.)
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`a standard gas supply device which can supply the gas concentration sensor with a
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`standard gas which has been previously adjusted to an actually used gas concentration
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`or a gas concentration close thereto (See Haddad Fig.
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`1 and Col. 6 Lines 17-35 wherein
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`a standard gas supply device 46 supplies the sensor with a standard gas which is
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`adjusted to a desired actually used gas concentration.)
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`a passage control device which can connect the incubation chamber or the standard
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`gas supply device to the gas concentration sensor selectively, (See Haddad Fig. 1 and
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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 4
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`Col. 6 Lines 17-35 wherein a passage control device, i.e. valve 48, connects selectively
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`the culture chamberor standard gas supply device 46 to the CO2 sensor 42.)
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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 Haddad Fig.
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`1 and Col. 6 Lines 17-35 wherein the concentration of standard gas,
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`supply of standard gasto the sensor, and calibration of the sensor, are controlled by
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`someform of controller which controls the passage control device 48.
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`It is noted that it appears asif the passage control device, material supplies, and
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`sensor, and actions performedthereby,i.e. calibration, opening and closing of valves,
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`etc., are automatically controlled by the configured controller described by Haddadetal.
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`Assuming arguendo that such actions are not automatically performed by the controller
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`it is noted that such a modification, i.e. making the actions be performed automatically
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`by acontroller, would have been obvious to one ofordinary skill in the art at the time of
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`invention becausesince it has been held that broadly providing a mechanical or
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`automatic means to replace manual activity which has accomplished the same result
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`involves only routine skill in the art.
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`In re Venner, 120 USPQ 192 (CCPA 1958); In re
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`Rundell, 9 USPQ 220 (CCPA 1931).
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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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`Furthermoreit is noted thatlimitations directed to how the deviceis intended to
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`be used, i.e. calibration, supply of materials, sensing, etc. are considered intended uses
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`of the claimed device which do notdefine structural elements which differentiate the
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`claimed invention from the prior art. Neither the mannerof operating a disclosed device
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`nor material or article worked upon furtherlimit an apparatus claim. Said limitations do
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`not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further,
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`it has been held that processlimitations do not have patentable weight in an apparatus
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`claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states
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`“Expressions relating the apparatus to contents thereof and to an intended operation
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`are of no significance in determining patentability of the apparatus claim.”
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`Regarding claim 4 Haddadetal. disclosesall the claim limitations as set forth
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`above as well as the devicefurther 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 Haddadetal. discloses all 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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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
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`Page 6
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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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`Claim Rejections - 35 USC § 103
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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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`5.
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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 Haddadetal. (US 4,033,825) as applied to claims above andfurtherin view of
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`Loscher (GB 2,138,949).
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`Regarding claim 2 Haddad disclosesall the claim limitations as set forth above as well
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`as the device wherein outside gasses are providedto 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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`Loscher discloses an incubation chamber wherein outside air is provided from an
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`outside air supply device to a CO2 sensor and a controller controls the said supply of
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`outside air to the sensor and on the basis of an output of the gas concentration sensor
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`at the moment, is configured to perform zero-point calibration of the gas concentration
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`sensor. (See Loscher Abstract and Page 2 Lines 1-65 wherein outside air is supplied to
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`a CO2 sensor by an outside air source and zero point calibration of the sensor is
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`performed by a configured controller.)
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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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`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 configured controller as described by
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`Loscherin the device of Haddad et al. because such gas sources and control
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`mechanisms are knownin the art to be used in incubation systems such as those
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`described by Haddad et al. and such systems allow for the appropriate supply of gases
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`to an incubator such that incubation may beeffectively performed andallowsfor the
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`accurate functioning of device sensors to ensure a desired operation as is required by
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`Haddadet al.
`
`Regarding claim 4 modified Haddad disclosesall the claim limitations as set forth
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`above as well as the devicefurther 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
`
`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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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
`
`Page 8
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`6.
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`Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable overeither(1)
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`Haddadet al. (US 4,033,825) alone or (2) Haddad et al. (US 4,033,825) in view of
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`Loscher (GB 2,138,949) as applied to claims above, and both further in view of Silley
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`(US 6,265,210).
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`Regarding claim 3 Haddad et al. and modified Haddadetal. disclose all the claim
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`limitations as set forth above but does not specifically disclose the source of CO2
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`standard gas being a detachable cylinder.
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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 Haddadet al. or modified Haddad et al. because such sources of CO2 are knownin
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`the art to supply chambers with a regulated amount of gas as is required by Haddad et
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`al. or modified Haddadet al. and such cylinders represent a specific, effective, and
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`known form of CO2 source for supplying a chamberasis required by Haddadetal. or
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`modified Haddadetal.
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`

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`Application/Control Number: 12/530,555
`Art Unit: 1775
`
`Page 9
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`Response to Arguments
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`7.
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`Applicant’s arguments with respect to claims have been considered but are moot
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`because the arguments do not apply to the references or combination thereof being
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`used in the current rejection.
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`Conclusion
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`8.
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`Applicant's amendment necessitated the new ground(s)of rejection presentedin
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
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`
`
`MONTHS from the mailing date of this action. In the eventafirst replyis filed within
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`TWO MONTHS ofthe mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTHshortenedstatutory period, then the
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`shortenedstatutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuantto 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however,will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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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 M. HURST whose telephone numberis
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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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`(571)270-7065. The examiner can normally be reached on Mon. - Thurs. 6:30-4:00;
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`Every otherFri. off.
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`If attempts to reach the examinerby 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
`
`you have questions on accessto the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automatedinformation
`
`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`(JONATHAN M HURST/
`
`Examiner, Art Unit 1775
`
`/Michael A Marcheschi/
`
`Supervisory Patent Examiner, Art Unit 1775
`
`