`
`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
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`APPLICATION NO.
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`
`
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` FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
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`CONFIRMATIONNO.
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`13/457,675
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`04/27/2012
`
`Yasuhiko Yokoi
`
`120508
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`1066
`
`38834
`
`7590
`
`04/28/2014
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`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`1250 CONNECTICUT AVENUE, NW
`SUITE 700
`WASHINGTON,DC 20036
`
`EDWARDS, LYDIA E
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`1775
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`
`
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`NOTIFICATION DATE
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`DELIVERY MODE
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`04/28/2014
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`ELECTRONIC
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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.
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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 @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`Application No.
`Applicant(s)
`
` 13/457,675 YOKOI ET AL.
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`1775LYDIA EDWARDS No
`
`-- 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 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`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).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
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`-
`-
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`Status
`1) Responsive to communication(s)filed on 4/27/2012.
`L] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filedon___
`2a)L] This action is FINAL.
`2b)X] This action is non-final.
`3)L] An election was made bythe applicant in responseto a restriction requirementset forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`4)L] Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordancewith the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5) Claim(s) 1-72 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) 1-72 is/are rejected.
`8)L] Claim(s)___ is/are objectedto.
`
`9)L] Claim(s)
`are subjectto 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
`hito-//Awww.usoto.gov/oatenis/init events/
`
`
` nvindex.isp or send an inquiry to PPHfeecback@uspto.aoy.
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)KX] The drawing(s)filed on 4/27/2012 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) 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.X] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] 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.
`
`
`
`Attachment(s)
`3) TC Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`.
`.
`4) O Other
`—_
`2) X Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date 4/27/2012 and 10/31/2012.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20140406
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`

`

`Application/Control Number: 13/457,675
`Art Unit: 1775
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`Page 2
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which formsthe basis forall
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`obviousnessrejections set forth in this Office action:
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`(a) A patent may not be obtained though the inventionis not identically disclosed or described as set
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`forth in section 102 ofthistitle, if the differences between the subject matter sought to be patented and
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`the prior art are such that the subject matter as a whole would have been obvious at the time the
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`invention was madeto a person having ordinary skill in the art to which said subject matter pertains.
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`Patentability shall not be negatived by the manner in which the invention was made.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness underpre-
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`AIA 35 U.S.C. 103(a) are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claimsat issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousnessor
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`nonobviousness.
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`This application currently namesjoint inventors. In considering patentability of the
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`claims under pre-AIA 35 U.S.C. 103(a), the examiner presumesthat the subject matter of the
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`various claims was commonly ownedat the time any inventions covered therein were made
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`absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and invention dates of each claim that was not commonly ownedat the
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`

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`Application/Control Number: 13/457,675
`Art Unit: 1775
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`Page 3
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`time a later invention was madein order for the examinerto consider the applicability of pre-
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`AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-ATA
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`35 U.S.C. 103 (a).
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`Claims 1-12 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
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`Herbert et al. (US 2010/0291664) in view of Barbera-Guillem (US 20030040104).
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`Regarding Claims 1 and 11-12 Herbert et al. teaches an isolator capable of having a
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`culture apparatus demountably mounted thereto, the isolator comprising:
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`a working chamber
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`[14-15 and 39]; a storage chamber [5, 8, 10, 12, 16, 37 and 38]; a first opening [32, 34 and 40]
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`configured to allow a culture chamber of the culture apparatus and the working chamber to
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`communicate with each other, when the culture apparatus has been mounted; a second opening
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`[17 and 40] configured to allow the working chamberand the storage chamber to communicate
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`with each other; a first door [25] configured to close the second opening so as to hermetically
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`seal the storage chamber(see paragraphs 27-28 and 52-64; also see whole document).
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`Herbert does not teach a temperature adjusting device.
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`Barbera-Guillem teaches
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`an automated cell management
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`system comprising a
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`temperature adjusting device (see paragraph 37; also see whole document).
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`It would have been obvious to one of ordinary skill in the art at the time the invention
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`was made to modify Herbert with a temperature adjusting device as taught by Barbera-Guillem
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`in order to avoid a breach in maintenanceofsterility of the cell culture environment..
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`

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`Application/Control Number: 13/457,675
`Art Unit: 1775
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`Page 4
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`Regarding Claim 2 Herbert et al. teaches a second door configured to close the first
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`opening when the culture apparatus is demounted(see paragraphs 52-56).
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`Regarding Claim 3 Herbertet al. teaches a third opening [28 and 40] configured to allow
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`the storage chamber and exterior to communicate with each other; and a third door configured to
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`open or close the third opening, wherein the third door is opened, when the second opening has
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`been closed bythe first door and an article is brought into the storage chamber (see paragraphs
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`28 and 52).
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`Regarding Claims 4-6 Herbert et al.
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`teaches a concentration adjusting device (see
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`paragraph 27).
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`With respect to the intended use limitations, the device disclosed by the combination of
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`Herbert and Barbera-Guillem is structurally the same as the instantly claimed. Thus, in the
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`absence of further positively recited structure the device of the combination of Herbert and
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`Barbera-Guillem is capable of providing the operating conditions as listed in the intended use
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`section of the claim.
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`It is noted that the manner of operating the disclosed device does not further limit an
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`apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP
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`§ 2114. Further, it has been held that process limitations do not have patentable weight in an
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`apparatus claim.
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`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 are of no
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`significance in determining patentability of the apparatus claim.”
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`

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`Application/Control Number: 13/457,675
`Art Unit: 1775
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`Page 5
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`Regarding Claims 7-10 Herbert et al. teaches a humidity adjusting device (see paragraph
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`28).
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`With respect to the intended use limitations, the device disclosed by the combination of
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`Herbert and Barbera-Guillem is structurally the same as the instantly claimed. Thus, in the
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`absence of further positively recited structure the device of the combination of Herbert and
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`Barbera-Guillem is capable of providing the operating conditions as listed in the intended use
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`section of the claim.
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`It is noted that the manner of operating the disclosed device does not further limit an
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`apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP
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`§ 2114. Further, it has been held that process limitations do not have patentable weight in an
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`apparatus claim.
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`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 are of no
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`significance in determining patentability of the apparatus claim.”
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to LYDIA EDWARDS whose telephone numberis (571)270-3242.
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`The examiner can normally be reached on Mon-Thur6:30-5:00.
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`If attempts to reach the examiner by telephone are unsuccessful,
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`the examiner’s
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`supervisor, Michael Marcheschi can be reached on 571.272.1374. The fax phone numberfor the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 13/457,675
`Art Unit: 1775
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`Page 6
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`
`/NATHAN BOWERS/
`
`/LYDIA EDWARDS/
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`Primary Examiner, Art Unit 1775
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`Examiner
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`Art Unit 1775
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`LE
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`