Ex Parte Feldman et al

Patent Trial and Appeal Board

Jul 15, 2016

12717634 (P.T.A.B. Jul. 15, 2016)

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
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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.
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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.
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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
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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
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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
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