Changsha Sinocare Inc.Download PDFPatent Trials and Appeals BoardSep 15, 20212020005760 (P.T.A.B. Sep. 15, 2021) Copy Citation 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. CONFIRMATION NO. 15/868,225 01/11/2018 Xiaohua Cai 17-164-CS 1076 32118 7590 09/15/2021 LAMBERT SHORTELL & CONNAUGHTON 100 Franklin Street Suite 903 BOSTON, MA 02110 EXAMINER TRAN, VIVIAN AILINH ART UNIT PAPER NUMBER 1794 NOTIFICATION DATE DELIVERY MODE 09/15/2021 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): info@lambertpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIAOHUA CAI, HONGLI CHE, and SHAOBO LI Appeal 2020-005760 Application 15/868,225 Technology Center 1700 Before TERRY J. OWENS, JOHN A. EVANS, and BRIAN D. RANGE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Changsha Sinocare, Inc. (Appeal Br. 2). Appeal 2020-005760 Application 15/868,225 2 CLAIMED SUBJECT MATTER The claims are directed to an electrochemical test sensor. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electrochemical test sensor comprising: a base layer having a base layer sampling end and a base layer electric contact end; a middle layer formed of an electrically insulating material having a width approximately equal to a width of the base layer, and having a middle layer sampling end and a middle layer electric contact end, the middle layer forming a cutout region; an upper layer having an upper layer sampling end and an upper layer electric contact end; and a fluid chamber formed by the middle layer defining the cutout region, wherein the cutout region extends from the middle layer sampling end towards the middle layer electric contact end away from the middle layer sampling end; wherein the middle layer sampling end is slightly recessed from a front edge of the upper layer sampling end and a front edge of the base layer sampling end, wherein the upper layer, middle layer, and base layer define two side openings in communication with the fluid chamber, a first side opening being on a first side of the electrochemical test sensor, a second side opening being on a second opposite side of the electrochemical test sensor, the two side openings being defined by the middle layer sampling end being slightly recessed from the front edge of the upper layer and base layer sampling ends; the fluid chamber having a continuous sampling entrance defined by an open front opposite to the recessed edge of the middle layer and the two side openings; wherein a combined length of the open front and the two side openings of the fluid chamber is less than a perimeter length of the cutout region. REFERENCE The prior art relied upon by the Examiner is: Appeal 2020-005760 Application 15/868,225 3 Name Reference Date Cai US 2015/0233861 A1 Aug. 20, 2015 REJECTIONS The claims stand rejected over Cai as follows: claims 1–8, 10–16, and 18–20 under 35 U.S.C. § 102(a)(1/102(a)2), and claims 9 and 17 under 35 U.S.C. § 103. OPINION The Appellant challenges the rejections solely on the ground that Cai, which was published before the Appellant’s January 11, 2018 effective filing date and was filed on February 20, 1014, is not prior art because the Appellant has priority to parent application 14/153,654 filed on January 13, 2014 (Appeal Br. 13–14). The Examiner finds that the Appellant is not entitled to priority benefit of parent application 14/153,654 because, although it discloses a preferred cutout 41b width of 5.2 mm for a test sensor (200) width around 6 mm (Spec. 9), and a side opening (91) length of preferably 0.1–2.5 mm, most preferably around 0.25 mm (Spec. 10), it “does not disclose the perimeter length or the relationship between the lengths” (Final Act. 4) and, therefore, does not provide written descriptive support for the Appellant’s independent claims (1, 15) limitation “wherein a combined length of the open front and the two side openings of the fluid chamber is less than a perimeter length of the middle layer cutout region” (Final 3). The Appellant argues that “[a]nyone skilled in the art can look at Fig. 3b of the 14/153,654 application and conclude that the inventor had possession of an electrochemical test sensor ‘wherein a combined length of the open front and the two side openings of the fluid chamber is less than a Appeal 2020-005760 Application 15/868,225 4 perimeter length of the middle layer cutout region’ (the ‘relative length limitation’) as required by claims 1 and 15” (Appeal Br. 7). The Appellant argues that Adobe Acrobat Reader estimates the perimeter length of the middle layer cutout region as 94.44 pt and the combined length of the open front and the two side openings of the fluid chamber as 72.77 pt (Appeal Br. 9), and that because the Appellant is using those lengths to determine relative sizes, they are qualitative sizes that can be demonstrated in figures, not quantitative length measurements (Appeal Br. 10). The Appellant does not argue that the drawings are to scale but, rather, argues that the drawings provide support for what they actually show, regardless of whether they are drawn to scale (Reply Br. 3). In support of that argument, the Appellant relies upon In re Wolfensperger, 302 F.2d 950, 958–59 (CCPA 1962), wherein the Court stated that “[w]e think the showing of the drawings can be relied on to the extent they have been by applicant,” i.e., to show that a 1- inch O-ring when relaxed has a radial width smaller than that of a 1 1/8-inch groove. The Appellant’s length estimations, even if they are used only for relative size determinations, have meaning only if the drawing is to scale. As stated by the Federal Circuit in Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1351 (Fed. Cir. 2013): Aliph contends each of the species of invention, both elected and unelected, illustrates stabilizer members that are “elongated.” “Patent drawings [however] do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Hockerson-Halberstadt, Inc. v. Avia Grp. Int'l, Inc., 222 F.3d 951, 956 (Fed.Cir.2000); see also In re Wright, 569 F.2d 1124, 1127 (C.C.P.A.1977) (“Absent any written description in the specification of quantitative values, Appeal 2020-005760 Application 15/868,225 5 arguments based on measurement of a drawing are of little value.”); Manual of Patent Examining Procedure 2125 (“Proportions of features in a drawing are not evidence of actual proportions when drawings are not to scale.”). Because the figures in the ’453 patent do not evidence actual dimensions of the “stabilizer support” and the “concha stabilizer,” they cannot be relied upon to argue that the disputed terms should be limited to a particular structure. The Appellant argues: “Hockerson-Halberstadt relates to a comparison of drawings between the patent application at issue and a cited prior art reference. It is reasonable that precise and exact proportions cannot be compared between different documents because the scale between the two documents is unclear. That is what Hockerson-Halberstadt stands for” (Reply Br. 5–6). That is not at all what Hockerson-Halberstadt stands for. In that case, the Federal Circuit stated that “the relevant claim language recites a ‘central longitudinal groove in the underside of the heel part extending forwardly through the heel part into the underside of the sole part to divide the lower surface of the heel part into a pair of fins” (222 F.3d at 955), and that “[t]he only issue on appeal is whether the district court correctly construed the term ‘central longitudinal groove to require that the width of the groove’ must be less than the combined width of the fins” (222 F.3d at 954). The Court stated (222 F.3d at 956): The ‘792 patent is devoid of any indication that the proportions of the groove and fins are drawn to scale. HHI’s argument thus hinges on an inference drawn from certain figures about the quantitative relationship between the respective widths of the groove and fins. Under our precedent, however, it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show Appeal 2020-005760 Application 15/868,225 6 particular sizes if the specification is completely silent on the issue. See In re Wright, 569 F.2d 1124, 1127, 193 USPQ 332, 335 (CCPA 1977) (“Absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value.”); In re Olson, 41 C.C.P.A. 871, 212 F.2d 590, 592, 101 USPQ 401, 402 (CCPA 1954); cf. Manual of Patent Examining Procedure 2125 (1998). Thus, in the present case, a reasonable competitor, being aware that figures in a patent are not drawn to scale unless otherwise indicated, would understand the arguments in the prosecution history as clearly disclaiming a groove having a width greater than the combined width of the fins. Thus, the Appellant has not established entitlement to priority benefit of the 14/153,654 application and, accordingly, has not removed Cai as prior art. Because the Appellant’s sole argument against the Examiner’s rejections is that Cai is not prior art (Appeal Br. 13–14), we are not persuaded of reversible error in those rejections. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–8, 10– 16, 18–20 102(a)(1/102(a)2 Cai 1–8, 10– 16, 18–20 9, 17 103 Cai 9, 17 Overall Outcome 1–20 Appeal 2020-005760 Application 15/868,225 7 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation