UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`15/713,435
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`09/22/2017
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`Manami BABA
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`092122-0056
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`1064
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`MCDERMOTT WILL & EMERY LLP
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`THE MCDERMOTT BUILDING
`500 NORTH CAPITAL STREET, NW.
`WASHINGTON, DC 20001
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`EDWARDS LYDIAE
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`1799
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`01/3 0/2020
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`ELECTRONIC
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`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
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`following e—mail address(es):
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`ipdoeketmwe @ mwe. com
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`PTOL-90A (Rev. 04/07)
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`

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`017/09 A0170” Summary
`
`Application No.
`15/713,435
`Examiner
`LYDIA EDWARDS
`
`Applicant(s)
`BABA et al.
`Art Unit
`1799
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`AIA (FITF) Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS 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.
`|f 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, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 9/22/2017.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)[:] This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
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`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above Claim(s)
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`is/are withdrawn from consideration.
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`
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`[:1 Claim(ss)
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`is/are allowed.
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`8)
`Claim(s 119Is/are rejected
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`D Claim(ss_) is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
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`10)|:I The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 9/22/2017 is/are: a)[:] 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).
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`Priority under 35 U.S.C. § 119
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`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)C] Some**
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`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`SD Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)[j Notice of References Cited (PTO-892)
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`2) .Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper N0(s)/Mai| Date 11/6/2019, 6/18/2019, 12/11/2018, 3/6/2018 and
`9/22/2017_
`U.S. Patent and Trademark Office
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`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20200103
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`

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`Application/Control Number: 15/713,435
`Art Unit: 1799
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`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA 0r AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Drawings
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`The drawings are objected to under 37 CFR 1.83(a). The drawings must show every
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`feature of the invention specified in the claims. Therefore, the curved portion (claims 4 and 5)
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`must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the
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`Office action to avoid abandonment of the application. Any amended replacement drawing sheet
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`should include all of the figures appearing on the immediate prior version of the sheet, even if only
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`one figure is being amended. The figure or figure number of an amended drawing should not be
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`labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed
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`from the replacement sheet, and where necessary, the remaining figures must be renumbered and
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`appropriate changes made to the brief description of the several views of the drawings for
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`consistency. Additional replacement sheets may be necessary to show the renumbering of the
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`remaining figures. Each drawing sheet submitted after the filing date of an application must be
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`labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR
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`1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and
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`informed of any required corrective action in the next Office action. The objection to the drawings
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`will not be held in abeyance.
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`

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`Application/Control Number: 15/713,435
`Art Unit: 1799
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`Page 3
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 USC. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not
`identically disclosed as set forth in section 102, if the differences between the claimed invention and the
`prior art are such that the claimed invention as a whole would have been obvious before the effective
`filing date of the claimed invention to a person having ordinary skill in the art to which the claimed
`invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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`The factual inquiries set forth in Graham v. John Deere C0., 383 US. 1, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35 US .C.
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`103 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 claims at 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 obviousness or
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`nonobviousness.
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`This application currently names joint inventors. In considering patentability of the claims,
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`the examiner presumes that the subject matter of the various claims was commonly owned as of
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`the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant
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`is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates
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`of each claim that was not commonly owned as of the effective filing date of the later invention in
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`order for the examiner to consider the applicability of 35 USC. 102(b)(2)(C) for any potential 35
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`USC. 102(a)(2) prior art against the later invention.
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`

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`Application/Control Number: 15/713,435
`Art Unit: 1799
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`Page 4
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`Claim 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi
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`et al. (hereinafter Kobayashi) US 2010/0173401 in View of Shinohara JP 2007020964.
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`Regarding Claim 1, Kobayashi discloses a culture apparatus comprising: an inner case [4b]
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`having an opening in a front surface as discussed in at least paragraph 41 and stainless—steel shelf
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`rests [42] as discussed in at least paragraph 43 on left and right side surfaces, the inner case
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`configured to be sterilized with hydrogen peroxide or by dry heat sterilization as discussed in at
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`least paragraphs 8 and 49; and a stainless—steel shelf plate [43] to be placed on the shelf rests and
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`slid in a front—back direction as discussed in at least paragraph 42, the stainless—steel shelf plate
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`configured to be sterilized with hydrogen peroxide as discussed in at least paragraph 49, the shelf
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`plate having a base surface on which a culture is to be placed, flanges (side pieces 432 in a pair
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`are plate—shaped members connected to the +/—X side ends of the bottom plate 431 and formed by
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`bending upward +Z side at a right angle) respectively formed by being bent upward as discussed
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`in at least paragraphs 64—65, at bent portions in end portions on left and right sides of the base
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`surface as shown in at least FIG. 5B.
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`Kobayashi does not explicitly disclose sliding members.
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`Shinohara discloses sliding members (slide members 91 and 92) respectively provided to
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`outer surfaces of shelf plate (drawer 5) on the left and right sides as shown in at least FIGS. 16—18,
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`at least on a front side in a direction of movement when the shelf plate is being inserted as discussed
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`in at least paragraphs 45—46, the sliding members made of a material different from a material of
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`the inner case as discussed in at least paragraph 30, the sliding members attached each side surface,
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`each of the outer surfaces as attached to a lower surface of the base surface of the flanges [51] on
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`the left and right sides, on each of the left and right ends shown in at least FIGS. 16 and 18, at least
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`on the front side in the direction of movement when the shelf plate is being inserted.
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`

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`Application/Control Number: 15/713,435
`Art Unit: 1799
`
`Page 5
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`Shinohara does not explicitly disclose wherein the sliding members are configured as a
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`sheet or a film. However, it would have been an obvious matter of design choice to change the
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`shape of the sliding members to any desired shape as such a modification would have been well
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`within the ability of one skilled in the art. See MPEP § 2144.04 (IV)(B).
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`It would have been obvious to one of ordinary skill in the art to modify Kobayashi with the
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`sliding members of Shinohara to eliminate the problem of the stainless—steel shelf plate being
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`scrapped and to smoothly insert and withdraw the stainless—steel shelf plate over a long period of
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`time.
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`Regarding Claim 2, Kobayashi in view of Shinohara does not explicitly disclose wherein
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`the sliding members each have a thickness equal to or smaller than 0.2 mm.
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`However, it is noted that such modification would require a mere change in size or
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`dimension of the device, i.e. thickness, which would have been obvious to one of ordinary skill in
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`the art at the time of invention because a mere change in the size (or dimension) of a component
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`is generally recognized as being within the level of ordinary skill in the art. Where the only
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`difference between the prior art and the claims is a recitation of relative dimensions of the claimed
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`device, and the device having the claimed dimensions would not perform differently than the prior
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`art device, the claimed device is not patentably distinct from the prior art device. See MPEP §
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`2144.04(IV)(A).
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`Regarding Claim 3, Kobayashi in view of Shinohara discloses the device of claim 3 (see
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`rejection of claim 1 above) except wherein the sliding members are provided to cover the end
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`portions on the left and right ends. However, it would have been obvious to one having ordinary
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`

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`Application/Control Number: 15/713,435
`Art Unit: 1799
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`Page 6
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`skill in the art at to arrange the sliding members on the stainless—steel shelf plate accordingly to
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`ensure the stainless—steel shelf plate slides smoothly, since it has been held that rearranging parts
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`of an invention involves only routine skill in the art. See MPEP § 2144.04(VI)(C).
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`Regarding Claim 4, Kobayashi discloses wherein the shelf rests each further include a
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`curved portion [421 and 422] provided in a portion connecting a placement surface on which the
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`shelf plate is to be placed and each of the side surfaces of the inner case as shown in at least FIGS.
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`6 and 8 and discussed in at least paragraphs 56—59.
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`Kobayashi in view of Shinohara does not explicitly disclose the sliding members each are
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`provided to at least a portion of each of the outer surfaces of the bent portions on the left and right
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`sides. However, it would have been obvious to one having ordinary skill in the art at to arrange the
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`sliding members on the stainless—steel shelf plate accordingly to ensure the stainless—steel shelf
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`plate slides smoothly, since it has been held that rearranging parts of an invention involves only
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`routine skill in the art. See MPEP § 2144.04(VI)(C).
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`Regarding Claim 5, Kobayashi discloses wherein the shelf rests each further include a
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`curved portion [421 and 422], flanges (side pieces 432 in a pair are plate—shaped members
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`connected to the +/—X side ends of the bottom plate 431 and formed by bending upward +Z side at
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`a right angle) respectively formed by being bent as discussed in at least paragraphs 64—65.
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`Shinohara discloses sliding members (slide members 91 and 92) respectively provided to
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`outer surfaces of shelf plate (drawer 5) on the left and right sides as shown in at least FIGS. 16—18.
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`It would have been obvious to one of ordinary skill in the art to modify Kobayashi with the
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`sliding members of Shinohara to eliminate the problem of the stainless—steel shelf plate being
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`

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`Application/Control Number: 15/713,435
`Art Unit: 1799
`
`Page 7
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`scrapped and to smoothly insert and withdraw the stainless—steel shelf plate over a long period of
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`time.
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`It is noted that apparatus claims cover what a device is, not what a device does. A claim
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`containing a recitation with respect to the manner in which a claimed apparatus is intended to be
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`employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art
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`apparatus teaches all the structural limitations of the claim. See MPEP § 2114.
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`Regarding Claims 6-9, Kobayashi in view of Shinohara does not explicitly disclose the
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`position(s) of the sliding members. However, it would have been obvious to one having ordinary
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`skill in the art at to arrange the sliding members on the stainless—steel shelf plate accordingly to
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`ensure the stainless—steel shelf plate slides smoothly, since it has been held that rearranging parts
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`of an invention involves only routine skill in the art. See MPEP § 2144.04(VI)(C).
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`Regarding Claim 10, Shinohara discloses wherein the sliding members are removable from
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`or integrated with the shelf plate as discussed in at least paragraphs 11 and 28.
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`Regarding Claims 11-19, Kobayashi in view of Shinohara does not explicitly disclose the
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`material properties of the sliding members. However, it would have been obvious to one having
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`ordinary skill in the art to provide a suitable material to form the sliding members, since it has been
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`held to be within the general skill of a worker in the art to select a known material on the basis of
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`its suitability for the intended use as a matter of obvious design choice. See MPEP § 2144.07.
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`

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`Application/Control Number: 15/713,435
`Art Unit: 1799
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`Page 8
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to LYDIA EDWARDS whose telephone number is (571)270—3242. The
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`examiner can normally be reached on Monday—Thursday 6:30—5:30 EST.
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`Examiner interviews are available via telephone, in—person, and video conferencing using
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`a USPTO supplied web—based collaboration tool. To schedule an interview, applicant
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`is
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`encouraged
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`to
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`use
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`the
`
`USPTO
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`Automated
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`Interview
`
`Request
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`(AIR)
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`at
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`http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Michael Marcheschi can be reached on (57 1)272— 1374. The fax phone number for the organization
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`where this application or proceeding is assigned is 571—273—8300.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR system,
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`see http://pair—direct.uspto. gov. Should you have questions on access to the Private PAIR system,
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`contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would like
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`
`/GAUTAM PRAKASH/
`
`HJYDIA EDWARDS/
`
`Primary Examiner
`Art Unit 1799
`
`Examiner
`Art Unit 1799
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`LE
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`