Ex Parte Eisenhardt et al

Patent Trial and Appeal Board

Aug 27, 2013

12638347 (P.T.A.B. Aug. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/638,347 12/15/2009 Christoph Eisenhardt 24352 US-dc 4891
77589 7590 08/27/2013
KRIEG DEVAULT/ROCHE
2800 ONE INDIANA SQUARE
INDIANAPOLIS, IN 46204
EXAMINER
ALEXANDER, LYLE
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
08/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPH EISENHARDT and HEINO EIKMEIER
____________

Appeal 2012-006236
Application 12/638,347
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
GEORGE C. BEST, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006236
Application 12/638,347
2
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-18. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.

Appellants claim a system for measuring an analyte concentration in a
body fluid sample comprising consumables 3 (e.g., detection reagents (Spec.
6:18-19)), a cartridge 2 containing consumables, a data carrier 6 which is
affixed to the cartridge and contains calibration information for the
consumables contained in the cartridge, the calibration information
specifying sensitivity of a test field (see id. at 10:18-29), a hand-held device
4 having a cartridge reception compartment 7, and a replaceable data storage
unit 5 in which supplementary data is stored that functions in combination
with the calibration information that is stored on the data carrier of the
cartridge (claim 1; see Figs. 1-5). Appellants also claim the above noted
cartridge (claim 16) and the above noted data storage unit (claim 18).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, is set forth below:
1. A system for measuring an analyte concentration in a
body fluid sample, comprising consumables having a plurality
of test fields with detection reagents that effect a detection
reaction when exposed to the body fluid sample, at least one
cartridge that contains consumables of this type for multiple
measurements, a data carrier which is affixed to the cartridge
and contains calibration information for the consumables
contained in the cartridge, said calibration information
specifying sensitivity of a test field, and a hand-held device that
comprises a display facility and a cartridge reception
compartment including a reading facility for receiving a
cartridge of this type and for reading its data carrier, a
measuring facility for measuring the result of a detection
reaction, a transport facility for moving consumables of the
Appeal 2012-006236
Application 12/638,347
3
cartridge that is inserted in the cartridge reception compartment,
for reception of a sample and measurement of the analyte
concentration in the received body fluid sample, a processor
that is connected to the measuring facility and the reading
facility for controlling the measuring facility, said processor
being adapted for determining a concentration value by
analyzing the measuring signal, and a memory that is connected
to the processor and contains software for the processor,
the system further comprising at least one replaceable data
storage unit in which supplementary data is stored that
functions in combination with the calibration information that is
stored on the data carrier of the cartridge that is inserted in the
device during the analysis of a measuring signal, the hand-held
device comprising an interface for transmission of
supplementary data from the replaceable data storage unit to the
device, and a consumables identification being stored on the
data carrier and configured to be used by the processor after
insertion of the cartridge to check whether the calibration
information of the data carrier affixed to the inserted cartridge
matches the available supplementary data and thereby to enable
the system to determine whether the consumables of the
inserted cartridge combined with the supplementary data that is
available to the processor renders a reliable measurement of an
analyte concentration in the body fluid sample feasible, or if
determined no feasible then to generate a signal in order to
indicate to a user that the available supplementary data and the
consumables of the inserted cartridge do not allow a valid
measurement of an analyte concentration in the body fluid
sample to be carried out.

The Examiner rejects claims 8 and 17 under the 2nd paragraph of 35
U.S.C. § 112 as being indefinite because each of these claims "recites the
limitation 'the magazine' . . . [and] [t]here is insufficient antecedent basis for
this limitation" (Ans. 5).

Appeal 2012-006236
Application 12/638,347
4
Contrary to the Examiner's above quoted statement, neither of the
rejected claims as reproduced in the Claims Appendix1 contains the
recitation "the magazine." As remarked by Appellants in the Appeal Brief
(App. Br. 6) and again in the Reply Brief (Reply Br. 2), the record reflects
that claims 8 and 17 were amended to replace the phrase "the magazine"
with the phrase "the cartridge" and that the Examiner responded to this
amendment by mailing an Advisory Action on 15 August 2011 stating "the
rejection will be vacated upon further appeal" (Adv. Act. 2). It appears the
Examiner unmindfully retained the now inapplicable § 112, 2nd paragraph,
rejection by copying it from the Final Office Action into the Answer without
regard to the claim amendment, the prosecution history, Appellants' remarks
in the Appeal Brief and Reply Brief, or the current propriety of the rejection.
We do not sustain the Examiner's § 112, 2nd paragraph, rejection of
claims 8 and 17.
Under 35 U.S.C. § 103(a), the Examiner rejects:
independent claim 16 and dependent claim 17 as unpatentable over
Borich (US 7,267,799 B1, issued Sept. 11, 2007) in view of Betts (US
3,907,503, issued Sept. 23, 1975); and
independent claims 1 and 18 as unpatentable over Boecker (US
2004/0260204 A1, published Dec. 23, 2004) in view of Borich and
dependent claims 2-15 as unpatentable over these references alone or in
combination with other prior art.

1 Because the Examiner has not stated otherwise, the claim copies
presented in the Claims Appendix of the Appeal Brief are presumed to be
accurate reproductions.
Appeal 2012-006236
Application 12/638,347
5
Each of independent claims 1 and 16 requires a data carrier which is
affixed to the claimed cartridge and which contains calibration information
for the consumables contained in the cartridge, the calibration information
specifying sensitivity of a test field. The Examiner finds that this claim
requirement is satisfied by each of Boecker (see, e.g., Ans. 7-9, 11) and
Borich (id. at 6, 9-11). As correctly argued by Appellants, the Examiner's
finding is not supported by the applied reference evidence (see, e.g., App.
Br. 11, 14).
Alternatively, the Examiner contends that the claimed calibration
information is "intended use of an apparatus [and] . . . of no patentable
moment with respect to the pending apparatus claims" (Ans. 17). The
Examiner's contention is erroneous for the reasons explained by Appellants
(see, e.g., Reply Br. 4-6).
For these reasons, we do not sustain the above § 103 rejections of
independent claims 1 and 16 and of claims 2-15 and 17 which depend
therefrom.
The Examiner finds that the data storage unit defined by independent
claim 18 is taught by each of Boecker and Borich (see, e.g., Ans. 8, 10).
Appellants do not dispute this finding with any reasonable specificity in the
record of this appeal (see, e.g., App. Br. 18). It appears that Appellants
consider claim 18 to be a dependent claim which depends from claim 1 (id.).
This is not correct.
Claim 18 is directed to "[a] data storage unit for a system according to
claim 1" wherein the recitation "for a system according to claim 1" merely
describes the intended use of the claimed data storage unit. This intended
use recitation does not cause claim 18 to be a dependent claim which
includes all the claim 1 limitations and further limits claim 1 in accordance
Appeal 2012-006236
Application 12/638,347
6
with 37 C.F.R. § 1.75(c). See also Ex parte Gillis, No. 2011-007483, 2013
WL 860588 at *2-*4 (PTAB March 4, 2013) ("[C]laims that refer to other
claims are not necessarily dependent claims. . . . [T] the statute does not say
that a dependent claim is one that contains a reference to another claim,
merely that a dependent claim shall have a reference to another claim.").
The only subject matter defined and required by claim 18 is the data storage
unit by itself which on this record is indisputably taught by each of the
applied references.
We sustain, therefore, the § 103 rejection of claim 18 as unpatentable
over Boecker in view of Borich.
The decision of the Examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

kmm