Ex Parte Chan

Patent Trial and Appeal Board

Aug 17, 2017

13305005 (P.T.A.B. Aug. 17, 2017)

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.
13/305,005 11/28/2011 Frank A. Chan 30750 US-dc 2044
124540 7590 08/21/2017
Woodard, Emhardt, Moriarty, McNett & Henry LLP
Roche Diabetes Care, Inc. (DC)
111 Monument Circle
Suite 3700
Indianapolis, IN 46204
EXAMINER
WEINERTH, GIDEON R
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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):
pair_roche@firsttofile.com
DocketDept @ u spatent. com
meg.ward@roche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK A. CHAN
Appeal 2015-007067
Application 13/305,005
Technology Center 3700
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
GORDON D. KINDER, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’
decision2 rejecting claims 1—29. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM—IN—PART.
1 Appellant identifies the real party in interest as Roche Diagnostics
Operations, Inc. Br. 2.
2 Appeal is taken from the Final Office Action dated June 5, 2014 (“Final
Act.”).
Appeal 2015-007067
Application 13/305,005
CLAIMED SUBJECT MATTER
Claims 1, 14, and 24 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal, with
disputed limitations italicized for emphasis.
1. A component for a storage container configured to receive
vertically oriented articles, the component comprising:
a tubular sidewall extending longitudinally from a base,
said tubular sidewall comprising an inner surface and an outer
surface, said base comprising a support surface and an underside;
an interior region defined by said inner surface of said
tubular sidewall and said support surface of said base, said
interior region extending along a longitudinal axis and having a
height dimension, a width dimension, and a length dimension;
at least one spacer portion extending from said underside
of said base and configured for engagement with an interior
surface of a corresponding storage container;
at least one pair of retainer elements extending laterally
from a portion of said inner surface of said tubular sidewall and
inwardly into said interior region, said retainer elements of said
at least one pair being oppositely oriented and configured to
retain a vertically oriented article therebetween by frictional
engagement with opposite longitudinal edges of said article;
a plurality of raised ribs extending laterally from said
outer surface of said tubular sidewall and generally along said
longitudinal axis, said plurality of raised ribs configured for
retentional engagement with an interior surface of said storage
container to retain the component within an inner chamber of
said storage container;
wherein each of said retainer elements comprises a tip
portion sized and shaped to engage a corresponding one of said
longitudinal edges of said article, said at least one pair of retainer
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Application 13/305,005
elements sized and shaped for resilient deflection during
insertion and during removal of said article therebetween, said
retainer elements of said at least one pair being spaced apart
sufficiently to removably receive said article therebetween
having a nominal width between said opposite longitudinal
edges, said retainer elements of said at least one pair being
adjustable relative to one another to define a variable separation
distance or angular orientation therebetween for engagement
with a different vertically oriented article defining a different
nominal width between opposite longitudinal edges thereof; and
wherein an insertion force for resilient deflection of said
retainer elements during said insertion of said article is less than
a removal force for resilient deflection of said retainer elements
during said removal of said article.
REJECTIONS
I. Claim 24 stands rejected under 35 U.S.C. § 112, second
paragraph, for being indefinite.
II. Claims 1—13 and 23—29 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Yao (US 2011/0247949 Al; published Oct. 13, 2011),
Rosier (US 5,967,318; issued Oct. 19, 1999) or Lang (US 2005/0218024 Al;
published Oct. 6, 2005), and Miller (US 2007/0108076 Al; published May
17, 2007).
III. Claims 14—21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yao, Rosier or Lang, and Creque (US 375,412; issued
Dec. 27, 1887).
IV. Claim 22 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Yao, Rosier or Lang, Creque, and Miller.
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ANALYSIS
Rejection I
Appellant does not present any substantive arguments contesting the
Examiner’s determination that claim 24 is indefinite. See Final Act. 2; Br.
14—20. Consequently, Appellant has waived any argument of error, and we
summarily sustain the rejection of claim 24 under 35 U.S.C. § 112, second
paragraph. See In re Berger, 279 F.3d 984, 985 (Fed. Cir. 2002) (holding
that the Board did not err in sustaining a rejection under 35 U.S.C. § 112,
second paragraph, when the appellant failed to contest the rejection on
appeal); see also 37 C.F.R. § 41.31(c) (“An appeal, when taken, is presumed
to be taken from the rejection of all claims under rejection unless cancelled
by an amendment filed by applicant and entered by the Office.”).
Rejection II
Regarding independent claim 1, the Examiner finds, inter alia, that
Yao’s moveable member 105 corresponds to the claimed component,
wherein Yao’s elevator mechanism (or spring 134), which biases moveable
member 105 upwardly relative to container body 102, corresponds to the
claimed spacer portion. Final Act. 3; see, e.g., Yao 122, Fig. 2. The
Examiner also finds that Yao, as modified by Rosier or Fang to include
retainer elements (“Modified Yao”; see Final Act. 3), fails to disclose “a
plurality of raised ribs,” as claimed. Id. at 3^4. The Examiner relies on
Miller for disclosing “four longitudinally extending ribs (Element 74). . .
dimensioned to provide a constant exterior dimension against the inner
surface of the outer shell.” Id. at 4 (citing Miller 129). The Examiner
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Application 13/305,005
reasons that it would have been obvious “to modify the structure of
Modified Yao with the raised ribs of Miller in order to engage with the outer
shell and provide for a constant exterior dimension and give a user a
consistent feel when moving the inner shell relative to the outer shell.” Id.
(citing Miller 129).
Appellant submits that Yao’s analyte sensor container system has
“[a]n elevator mechanism [that] causes relative movement between the
container body and the moveable member upon opening/closing of a lid.”
Br. 16—17 (citing Yao H 22—24, Figs. 1, 2, 4, 5). Appellant also submits
that the claimed component requires “a plurality of raised ribs ... for
retentional engagement with an interior surface of the storage container.” Id.
at 17. Appellant concludes that one skilled in the art “would not have been
motivated to use raised ribs on the external surface of the moveable member
of [Yao], because such raised ribs would render the elevator mechanism
inoperable or would require a change in the principle of operation of the
elevator mechanism.” Id.
The Examiner responds, inter alia, that Miller, similar to Yao,
discloses “relative vertical telescopic motion between the inner and outer
shells.” Ans. 3 (citing Miller 133). The Examiner explains that the
proposed modification is to add Miller’s raised ribs to Modified Yao “so as
to form a constant exterior dimension while the inner storage compart moves
vertically within the outer shell.” Id. at 5.
Appellant does not dispute the Examiner’s findings with respect to
Yao and Miller. To the extent Appellant is arguing that adding Miller’s ribs
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74 to Yao’s moveable member would result in ribs that are not configured
for retentional engagement with an interior surface of the container to retain
the moveable member within the container, as claimed, we disagree. As
disclosed in Miller, “[t]he uniform outer dimension of ribs 74” results in “a
consistent feel [] experienced by a user extending or retracting inner and
outer shells 32, 34 relative to one another.” Miller 129. In other words,
Miller does not disclose that ribs 74 limit the relative movement of inner and
outer shells 32, 34, such that the use of such ribs on the device of Yao would
limit or render inoperable the movement of Yao’s elevator mechanism.
Thus, a preponderance of evidence supports the Examiner’s determination
that Modified Yao, further modified to include ribs as taught by Miller,
would continue to operate as principally intended.
Appellant also argues that Miller’s ribs “merely serve as guides to
maintain an inner shell in proper alignment with an outer shell during a
telescopic movement,” but “do not retain the inner shell within the inner
chamber of the outer shell,” as claimed. Br. 18 (emphasis added). In other
words, Appellant argues that Miller’s ribs “allow uninhibited telescopic
movement of the inner shell relative to the outer shell,” and therefore, “are
neither the same nor interchangeable with the claimed ribs, and one of skill
in the art would not have been motivated to include ribs in the claimed insert
components in view of the combination of [Yao and Miller].” Id.
To the extent Appellant construes the claim terms “retentional
engagement” and “to retain” to mean that the claimed raised ribs must
prevent movement between the component and the storage (or primary)
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container, we disagree. The Specification discloses that body 60 is provided
with “locking ribs or splines 110 ... for retentional engagement with an
inner surface of the primary container 12 to aid in retaining the insert
component 14 within the inner chamber 26 of the [storage] container 12”
(Spec. 13:31—14:5) and to “facilitate stability of the insert component 14
within the primary container 12” (id. at 22:9—10). The Specification also
discloses that “the insert component 14 may be used interchangeably with
the primary container 12 to accommodate a variety of types, sizes and
configurations of the biosensor test strips.” Id. at 9:8—10. An ordinary
meaning of the claim terms “retention” and “to retain,” consistent with the
Specification, is “to hold secure or intact (as in a fixed place or condition).”
Webster’s Third New Int’l Dictionary 1938 (1993). Thus, claim 1
requires the ribs to hold the component (which may be interchangeable)
intact within the inner chamber of the storage container—for example, in a
fixed place of longitudinal alignment within the container. However, claim
1, as written, does not require the ribs to be configured to prevent relative
motion between the component and the storage container. Accordingly, a
preponderance of evidence supports the Examiner’s determination that
Miller’s ribs, when incorporated into Modified Yao’s container system, are
configured to retain Yao’s moveable member intact (i.e., in longitudinal
alignment) within Yao’s container, as claimed.
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Accordingly, we sustain the Examiner’s rejection of independent
claim l.3 Appellant does not present separate arguments for the patentability
of claims 2—13 and 23, which depend from claim 1, and therefore, we also
sustain the Examiner’s rejection of claims 2—13 and 23 as unpatentable over
Yao, Rosier or Lang, and Miller. See Br. 14—20. Independent claim 24 does
not recite “raised ribs” (see Br. 28—29), and Appellant does not present any
arguments for the patentability of claim 24 and claims 25—29 depending
therefrom over Yao, Rosier or Lang, and Miller. Thus, we summarily affirm
the Examiner’s rejection of claim 24—29.
Rejection III
Regarding independent claim 14, the Examiner finds, inter alia, that
Yao’s spring 134 corresponds to the claimed spacer portion. Final Act. 6.
The Examiner determines that “Yao does not disclose that the spacer portion
includes at least one removable tab that is selectively removable for a
remainder of the spacer portion to vary the adjustable height dimension” and
relies on Creque for disclosing “removable tabs that adjust for the height of a
component.” Final Act. 6—7 (citing Creque, element a). The Examiner
reasons that it would have been obvious “to replace the spring of Yao for the
removable tabs of Creque as this represents the simple substitution of one
known element for another in order to obtain the predictable results of
varying the height of a component.” Id. at 7. More specifically, the
3 Notably, Appellant’s argument regarding objective indicia demonstrating
non-obviousness is made solely concerning independent claim 14 and is
therefore, not relevant to this rejection. See Br. 18—20.
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Examiner reasons that “[a] person having ordinary skill. . . would have
recognized the utility of the break off tab structure [of Creque] as being used
in place of the spring biasing member of Yao to also adjust or raise the
height of the inner compartment.” Ans. 6. The Examiner explains that Yao
“is quite clear that any type of spring biasing means may be used . . . [to]
vertically elevate[] the inner compartment towards the user” (Ans. 6 (citing
Yao 15, 16, 22)) and that because Creque discloses “[a] tab height biasing
means,” the proposed modification is a “simple substitution of one known
vertical biasing element for another to obtain predictable height adjustment
of a component.” Id. at 6—7 (emphasis added).
Appellant argues that one of ordinary skill in the art “would not have
been motivated to use [Creque’s] spacer in place of [Yao’s] spring.” Br. 17.
Yao discloses that “[t]o cause an elevation of the moveable member
105 relative to the container body 102 upon opening the lid 116, a spring
134 or other biasing member may be provided,” such as “a compression
spring, leaf spring, washer spring , or any other suitable spring type.” Yao
122. Creque discloses “[an] upright consisting] of a series of radial
flanges, a, .. . provided with grooves d, making weak points at which the
upright may be easily broken ... to reduce the height of the pedestal.”
Creque, col. 1,1. 52—col. 2,1. 65, Fig. 1. We determine that the Examiner
erred in finding that Creque’s flanges a are a biasing means or would “be
equally effective [as a spring] in positioning the test strips above a top edge
of the container body” by “adjusting] or rais[ing] the height of the inner
compartment” (Ans. 6 (citing Yao 116)), such that the Examiner’s
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modification is a simple substitution of one known element for another to
obtain predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416(2007).
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 14 and claims 15—21 depending therefrom.
Rejection IV
Claim 22 depends from independent claim 14. The Examiner’s
reliance on Miller does not cure the deficiency in the Examiner’s reasoning
with respect to claim 14. Therefore, for the reasons set forth supra, we also
do not sustain the Examiner’s rejection of claim 22.
DECISION
The Examiner’s rejection of claim 24 under 35 U.S.C. § 112, second
paragraph, is affirmed.
The Examiner’s rejection of claims 1—13 and 23—29 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner’s rejection of claims 14—22 under 35 U.S.C. § 103(a) is
reversed.
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)(l)(iv).
AFFIRMED-IN-PART
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