Ex Parte Feldman et alDownload PDFPatent Trial and Appeal BoardJul 15, 201612717634 (P.T.A.B. Jul. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121717,634 03/04/2010 Benjamin Feldman 85783 7590 07119/2016 Abbott Diabetes Care Inc, Bozicevic, Field & Francis LLP 1900 University Ave Suite 200 East Palo Alto, CA 94303 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ADCI-146CON 3192 EXAMINER WEARE, MEREDITH H ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 07/19/2016 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): docket@bozpat.com baba@bozpat.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BENJAMIN FELDMAN, ZENGHE LIU, and TIANMEI OUY ANG Appeal2014-006533 1 Application 12/717,6342 Technology Center 3700 Before PHILIP J. HOFFMANN, BRADLEY B. BAY AT, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 129-148, 150-176, and 178-185. We have jurisdiction under 35 U.S.C. § 6(b). The Appellants' representative appeared for oral hearing in this appeal on July 7, 2016. We REVERSE. 1 Throughout this opinion, we refer to the Appellants' Appeal Brief ("Appeal Br.," filed Dec. 6, 2013), Reply Brief ("Reply Br.," filed May 13, 2014), and Specification ("Spec.," filed Mar. 4, 2010), and the Examiner's Answer ("Ans.," mailed Mar. 13, 2014) and Final Office Action ("Final Act.," mailed Apr. 8, 2013). 2 According to the Appellants, the real party in interest is Abbott Laboratories. Appeal Br. 3. Appeal2014-006533 Application 12/717,634 STATEMENT OF THE CASE The Appellants' invention "relate[s] to self-powered analyte determining devices (e.g., electrochemical analyte monitoring systems)." Spec. ,-i 4. Claims 129 and 158 are the independent claim on appeal and have substantially similar claim limitations. Claim 129 is illustrative of the subject matter on appeal and is reproduced below: 129. An intermittently interrogated analyte measuring system, comprising: an analyte sensor assembly, comprising: a self-powered electrochemical analyte sensor compnsmg: a working electrode comprising an analyte- responsive enzyme disposed on the working electrode, wherein the working electrode is configured and arranged for electrooxidizing or electroreducing a primary reactant in the presence of the analyte-responsive enzyme; a counter electrode capable of electroreducing or electrooxidizing a secondary reactant; and a resistor disposed between the working electrode and counter electrode, wherein the resistor comprises an R value where analyte sensor current output is independent of the R value, wherein the self-powered electrochemical analyte sensor maintains a current directly proportional to analyte concentration in the absence of any reference voltage; and a data processing unit in communication with the self- powered electrochemical analyte sensor; and a first wireless communication unit in communication with the data processing unit; and 2 Appeal2014-006533 Application 12/717,634 a handheld device comprising a second wireless communication unit, wherein the analyte sensor assembly is configured for intermittent interrogation by the handheld device via the first wireless communication unit and the second wireless communication unit only upon positioning of the handheld device in close proximity to the analyte sensor assembly by the subject. Appeal Br. 27 (Claims App.). REJECTIONS Claims 129-135, 143, 147, 148, and 150-153 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou (US 2005/0261562 Al, pub. Nov. 24, 2005), Willner (US 2004/0245101 Al, pub. Dec. 9, 2004), and Schneider (US 5,667,653, iss. Sept. 16, 1997). Claims 136 and 137 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou, Willner, Schneider, and He (US 2007/0232877 Al, pub. Oct. 4, 2007).3 Claim 138 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou, Willner, Schneider, and Bert Moore, "The Potential Use of Radio Frequency Identification Devices for Active Monitoring of Blood Glucose Levels," Journal of Diabetes Science & Tech., vol. 3, iss. 1, Jan. 2009 (hereinafter "Moore"). 3 We note that the Final Action does not include Schneider in the headings for the rejections of dependent claims 136-142, 144-146, 154-157, 165, 166, 172-174, and 182-185, but indicate that the claims are rejected under the art applied to independent claims 129 and 158. See Final Act. 9-12, 14- 16, 24, 26, 28, 29. The Answer includes Schneider in the grounds of rejections. Ans. 2-3. Thus, we consider the rejections of dependent claims 136-142, 144-146, and 154-157 to include Schneider. 3 Appeal2014-006533 Application 12/717,634 Claims 139-141 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou, Willner, Schneider, and Heller (US 2009/0000961 Al, pub. Jan. 1, 2009 (hereinafter "Heller '961"). Claims 142, 144, and 146 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou, Willner, Schneider, and Say (US 2004/0236200 Al, pub. Nov. 25, 2004). Claim 145 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou, Willner, Schneider, and Say, and Diebold (US 5,437,999, iss. Aug. 1, 1995). Claims 154 and 155 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou, Willner, Schneider, and Diebold. Claims 156 and 157 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou, Willner, Schneider, and Heller (US 2006/0003398 Al, pub. Jan. 5, 2006) (hereinafter "Heller '398"). Claims 158-164, 167-171, 175, 176, and 178-181 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou, Willner, Schneider, and Say. Claims 165 and 166 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou, Willner, Schneider, Say, and He. Claims 172-174 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou, Willner, Schneider, Say, and Heller '961. Claims 182 and 183 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhou, Willner, Schneider, Say, and Diebold. Claims 184 and 185 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Zhou, Willner, Schneider, Say, and Heller '398. 4 Appeal2014-006533 Application 12/717,634 ANALYSIS The Appellants contend the rejections of independent claims 129 and 158 are in error because Schneider, upon which the Examiner relies, does not teach or suggest the element recited in both claims of "an electrochemical sensor which a 'resistor disposed between the working electrode and counter electrode, wherein the resistor comprises an R value where analyte sensor current output is independent of the R value', as claimed." Appeal Br. 12, 20. Specifically, the Appellants argue that Schneider discloses that "changes in R value produce[] changing sensor output [and] that sensor output is indeed dependent on R value" (id. at 13), and that "[i]t cannot be presumed that the resistors of Schneider necessarily provides the property of providing sensor current output independent of resistance load without some factual or technical evidence of such characteristics" (id. at 14 ). After careful consideration and review of the Examiner's findings and reasoning (see Final Act. 6-7; see also Ans. 4-6), we agree with the Appellants. The Examiner does not adequately show that Schneider discloses a resistor that comprises an R value of which the analyte sensor current output is independent. See Appeal Br. 13-15; see also Reply Br. 3-4. The Examiner finds that Schneider teaches a sensor "comprising resistance having an R value, wherein the R value is chosen from within a range of R values for which an electrochemical analyte sensor current output at an analyte concentration at the top of the physically relevant range of the analyte is independent of R." Final Act. 6. The Examiner then determines "that it would have been obvious to one of ordinary skill in the art at the 5 Appeal2014-006533 Application 12/717,634 time of the invention to modify the analyte sensor of Zhou to optimize sensor response time and sensor output by routine experimentation." Ans. 4; see also Final Act. 6. However, the claims do not recite that an R value is chosen from a range of values for which a current output is independent of R to optimize sensor response time and sensor output; the claims require a resistor with an R value where the sensor current output is independent of the R value. The Examiner cites to Table 3 of Schneider to "illustrate[] that changes in R value produce changes in a measured potential across the resistance load," which is equivalent to the Appellants' Figure 14. Ans. 5. However, it is not clear how Schneider's measured potential that correlates to the lighter line of the Appellants' Figure 14 discloses that the current, illustrated by the darker line of the Appellants' Figure 14, is independent of the R value. The Examiner agrees "Schneider does not expressly disclose the sensor current output with varying R values," but maintains that Table 3A of Schneider would lead one of ordinary skill in the art to recognize that "the ratio of measured potential across the resistor to resistance is approximately equal for each of the 100 n load resistance and the 1 kn load resistance, indicating current output is independent of the load resistance." Ans. 6. Tables 3 and 3A of Schneider show that "that a relatively large resistance of approximately 100 kn is preferable to achieve optimum response times with regard to the UL specifications for CO set forth above." Schneider, col. 9, 11. 54-57. It is not clear how one of ordinary skill in the art would recognize from Schneider's tables that the current is independent of the R value. Rather, as the Appellants accurately point out, Tables 3 and 3A of Schneider 6 Appeal2014-006533 Application 12/717,634 demonstrate that the current output is dependent on the resistor's R value. Reply Br. 3; see also Appeal Br. 13. Thus, we are persuaded the Examiner's rejections of claims 129 and 158 are in error, and, therefore, we do not sustain the Examiner's rejections of independent claim 129 and 158. The Examiner's rejections of dependent claims 130-148, 150-157, 159-176, and 178-185 rely on the same findings discussed above with respect to claims 129 and 158 (see Ans. 4, 7-11), and, thus, we do not sustain the rejections of these claims for the same reasons we do not sustain the rejections of claims 129 and 158. DECISION The Examiner's rejections of claims 129-148, 150-176, and 178-185 under 35 U.S.C. § 103(a) are REVERSED. REVERSED 7 Copy with citationCopy as parenthetical citation