Docket No. 2016-2745, 2017-1057
LOURIE, MOORE, O’MALLEY
November 3, 2017
Brief summary: Board’s conclusion of obviousness affirmed (e.g., no “change in…basic principles” of operation of prior art vessels and no teaching away).
Summary: Maryland appealed from PTAB decision after inter partes reexamination affirming the examiner’s rejection of claims 1-3 of US 6,673,532 relating to methods for “measuring at least two cultivatin parameters in a cell culture” as obvious. It is explained that the methods require a culture vessel and light-sensitive sensors for detecting analytes within the vessel. The claims were rejected over the “Bambot” and “Weigl” references. Bambot was found to “implement the same set of components as the ‘532 patent.” Weigl was explained to describe a system with “sensors…located in individual flow-through units outside the cultivation vessel.” “[T]he Board concluded that ‘it would have been obvious to arrange more than one sensor inside a cultivation vessel and [use] the light excitation and detection means described in Bambot for each one.’” The FC panel explained that its “review of a Board decision is limited”; legal determinations are reviewed de novo (In re Elsner, FC 2004; Graham, US 1966; KSR, US 2007) and factual findings underlying those determinations are reviewed fro substantial evidence (In re Gartside, FC 2000; Consol. Edison, US 1938 (substantial evidence is that a reasonable mind might accept as adequate to support the finding)). Under KSR, the FC panel “look[s] with care at a patent application that claims as innovation the combination of two known devices according to their established functions” and must “exercise caution before holding a claimed invention obvious when combining references would violate the principle of operation of the modified reference” (In re Mouttet, FC 2012 (discussing In re Ratti, CCPA 1959); In re Gordon, FC 1984; In re Etter, FC 1985). Maryland argued “that because Weigel’s sensors are not positioned outside the cultivation vessel, Weigl cannot be modified in view of Bambot without ‘completely chang[ing] the fundamental principle of operation of Weigl.” Presens argued “that the Board’s obviousness holding was based on Bambot’s sensor configuration, not Weigel’s, so Maryland’s application of Ratti is misplaced. The FC panel agreed with Presens, noting that “[a] person of ordinary skill is ‘not an automaton’…limited to physically combining references”, and that “[t]he Board’s findings regarding Weigl are consistent with Bambot’s principle of operation”. “Unlike in Ratti,” the FC panel explained, “we cannot say here that the ‘suggested combination of references would require a substantial reconstruction and redesign of the elements shown’ in Bambot, or a ‘change in ‘[its] basic principles.” And “[t]he combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results” (KSR), as “is the case here.” The FC panel also disagreed with Maryland’s teaching away arguments as “narrowly focus[ed] on Weigl’s physical arrangement” and “mere disclosure of alternative designs does not teach away” (In re Fulton, FC 2004; In re Ethicon, FC 2017 (“teaching away requires ‘clear discouragement’ from implementing a technical feature”)). Thus, the Board decision was affirmed.