Ex Parte SinghalDownload PDFPatent Trial and Appeal BoardDec 27, 201613134148 (P.T.A.B. Dec. 27, 2016) 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. 13/134,148 05/31/2011 Tara Chand Singhal 11195.222 2679 103550 7590 Tara Chand Sighal P.O. Box 5075 Torrance, CA 90510 12/28/2016 EXAMINER DOUGHERTY, SEAN PATRICK ART UNIT PAPER NUMBER 3736 MAIL DATE DELIVERY MODE 12/28/2016 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 TARA CHAND SINGHAL Appeal 2015-002564 Application 13/134,148 Technology Center 3700 Before EDWARD A. BROWN, JAMES P. CALVE, and LEE L. STEPINA, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Tara Chand Singhal (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—14 and 21—26.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Claims 15—20 are cancelled. Appeal Br. 4. Herein, the Corrected Appeal Brief filed on August 19, 2014 is cited as the “Appeal Brief’ or “Appeal Br. Appeal 2015-002564 Application 13/134,148 CLAIMED SUBJECT MATTER The independent claims on appeal are claims 1 and 11. Claim 1 is reproduced below. 1. A blood glucose measuring device, comprising: a. a blood glucose metering device and a metering test strip for use in the device; b. a test strip storage mechanism body has dual compartments for storing a dual stack of test strips, the mechanism body is attachable to a side of the metering device and enables the mechanism body to be removed and attached from and to the side of the metering device, the mechanism body allows a view of the test strips in the compartments; c. a test strip feeding mechanism for feeding a single test strip from one of the compartments in the storage mechanism for use with the metering device, the test strip makes electrical contact with springs on the side of the metering device, the metering device, the test strip storage mechanism and the test strip feeding mechanism are integrated into a single device for blood glucose measurement. Appeal Br. 19 (Claims App.). REJECTION Claims 24 and 25 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1—14 and 21—26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Simons (US 5,971,941, issued Oct. 26, 1999) and Chan (US 2007/0173739 Al, published July 26, 2007). ANALYSIS Indefiniteness of claims 24 and 25 Claim 24 depends from claim 1 and recites that “the stacks of test strips are positioned side by side and the mechanism body is substantially 2 Appeal 2015-002564 Application 13/134,148 sized in width and length to a twice of a width of the test strip and a length of a test strip respectively and in a height to the stacks of test strip in the bodyAppeal Br. 22—23 (Claims App., emphasis added). Claim 25 depends from claim 4 and recites that “the stacks of test strips are positioned side by side and the mechanism body is substantially sized in width to a twice of a width of the test strip and in a height to the stacks of test strip in the body.'” Id. at 23 (emphasis added). The Examiner determines that it is unclear what claims 24 and 25 are claiming as to the size of the mechanism body with respect to the test strip. Final Act. 3. Particularly, the Examiner states that “the mechanism body has a width twice of a width of the test strip, all other relative dimensions are incomprehensible[,]” and “[i]t is unclear what limitation the term ‘respectively’ imparts on the claim and how the height of the test strip relates to the width and length of the mechanism body.” Id. Appellant indicates that claims 24 and 25 define the size of the test strip storage mechanism in terms of the size of the test strip dimensions. Appeal Br. 11. As to claim 24, we understand the above-quoted limitation means: the width of the mechanism body is substantially twice the width of the test strip; the length of the mechanism body is substantially that of the length of the test strip; the height of the mechanism body is substantially that of the height of the stacks of the test strips; and “respectively” relates the width and length of the test strip to the width and length dimensions of the mechanism body. Claim 1 positively recites the test strip. Therefore, the test strip used as the basis for the comparative dimensions recited in claim 24 is not an undefined test strip, but, rather, is the particular test strip recited 3 Appeal 2015-002564 Application 13/134,148 in claim 1. Accordingly, claim 24 is sufficiently clear with respect to the width and length of the mechanism body, and the meaning of “respectively.” However, the height of the mechanism body is defined in terms of “the stacks of test strips in the body” in claim 24. (Emphasis added.) Claim 1 recites a blood glucose measuring device comprising “<2 metering strip for use in the device.” (Emphasis added). Claim 1 does not recite that the blood glucose measuring device comprises “a dual stack of test strips.” The height of the stacks of test strips is not defined in claim 24. The height limitation in appears to pertain to the condition where the compartments are filled with test strips. See Spec. 13,11. 10-19. If the claimed compartments were filled with test strips, it would then appear that the height of the mechanism body and stacks would be substantially the same. But otherwise, where the stacks were not full stacks (e.g., the stacks contained only two test strips), then the height of the mechanism body and stacks would not be substantially the same. As claim 1 requires only one test strip, and the stack height is not defined in either claim 1 or 24, claim 24 is not sufficiently clear with respect to the height of the mechanism body. For similar reasons, we determine that claim 25 is sufficiently clear with respect to the width of the mechanism body, but not the height of the mechanism body. Accordingly, we sustain the rejection of claims 24 and 25 under 35U.S.C. § 112, second paragraph. Obviousness of claims 1—14 and 21—26 over Simons and Chan Appellant argues for the patentability of claims 1—14 and 21—26 together as a group. Appeal Br. 11—18. Accordingly, we select claim 1 to decide the appeal as to the rejection, with claims 2—14 and 21—26 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). 4 Appeal 2015-002564 Application 13/134,148 The Examiner finds that Simons discloses a blood glucose measuring device comprising all limitations of claim 1 except for electrical contact between the test strip and metering device being provided by springs on the metering device. Final Act. 4—5, 7 (citing Simons, col. 7,11. 54—63, col. 8,11. 15—21, col. 13,11. 20-24, Fig. 7). Particularly, the Examiner finds that Simons discloses blood glucose measuring device 166, blood glucose metering device 168, metering test strip 100, test strip storage mechanism body 150 with dual compartments 152/155 for storing a dual stack of test strips, and test strip feeding mechanism 156/160A. Id. at 4—5, Fig. 7. The Examiner finds that Chan teaches that an end of a test element (36) contacts spring-biased contacts (42) to form an electrical connection between the test element (36) and a metering device. Id. at 7 (citing Chan 153). The Examiner concludes that it would have been obvious to modify the connection between the test strip and metering device of Simons to include a spring to provide the electrical connection taught by Chan. Final Act. 7. The Examiner reasons that Chan teaches this would provide an electrical coupling between the two elements (citing Chan || 42, 53), and would allow a blood testing design that provides a supply test strip unit configured to store testing elements prior to use to analyze body fluid, store waste, and store the testing elements in a stacked manner (citing id. 1 8). Id. Appellant contends that the Examiner improperly equates a “metering test strip,” as claimed, to Simon’s “test cartridge.” Appeal Br. 13. The Examiner responds that the entirety of Simons’ test cartridge has not been “equated” with the claimed metering test strip. Ans. 9. Rather, the Examiner explains, Figure 7 and column 6, lines 31—35, of Simons clarify that test cartridge 100 includes test strips for analysis of blood. Id. The 5 Appeal 2015-002564 Application 13/134,148 Examiner also indicates that the recitation of a “metering test strip” does not imply “only test strips and no cartridge.” Id. The Examiner adds that Simon’s test cartridge, which includes test strips, meets the claimed limitation. Id. at 10. Claim 1 recites the transition term “comprising.” This term is open- ended and does not exclude additional, unrecited elements. See Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). Accordingly, recitation of the transition term “comprising” and “a metering test strip” in claim 1 does not exclude a prior art element that includes “a metering test strip,” but may include additional features. We further note that Appellant’s Specification does not provide a definition of a “metering test strip.” Nor has Appellant directed us to any disclosure therein that clearly disavows Simon’s test cartridge being considered to correspond to a “metering test strip,” as claimed. Appellant also does not apprise us of any error in the Examiner’s finding that Simon’s test cartridge 100 includes “a metering test strip,” as claimed. Therefore, even if test cartridge 100 does not include only “a metering test strip,” Appellant has not provided any persuasive argument why Simon fails to meet the claim limitation of “a metering test strip.” We also note that the Examiner does not equate Simon’s test cartridge 100 with the claimed “test strip storage mechanism body,” as Appellant contends. Appeal Br. 13. Rather, the Examiner finds, Simons discloses test strip storage mechanism body 150, which is a cassette. Final Act. 4. Appellant also contends that Chan teaches a “test cartridge” that is different from the claimed “metering test strip.” Appeal Br. 14—15. 6 Appeal 2015-002564 Application 13/134,148 Even if this contention is correct, the Examiner only relies on Chan’s teaching of using springs to contact the test strip. Final Act. 7. Accordingly, Appellant’s contention does not address the Examiner’s rejection. Appellant also contends that Simons and Chan would not render obvious “use of prior art test strips with lower cost and complexity.” Appeal Br. 15. This contention appears to be premised on Appellant’s position that Simons fails to teach “a metering test strip.” For reasons discussed above, however, that position is unpersuasive. Furthermore, claim 1 recites no structural limitation that defines how the “metering test strip” is of such alleged “lower cost and complexity” as compared to something else. Limitations that do not appear in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellant also contends that “the storage capacity of test strip storage body by using a dual stack of test strips would not be in the purview of a person of ordinary skill in the art with the knowledge of Simons and Chan, as they both use a single stack of test cartridges.'’'’ Appeal Br. 15 (emphases added). According to Appellant: Further still, other elements of the claimed subject matter that teach a meter body with external to the meter body spring loaded contacts and a storage mechanism body that is detachably attached to the meter body enabling a test strip feeding mechanism that enables single test strip from either stack of the storage body to be used to make electrical contacts with the meter would not be obvious to a person or ordinary skill in the art with the knowledge of the Simons and Chan prior arts. Appeal Br. 16 (emphasis added). These further contentions also are not persuasive for several reasons. First, Simons teaches that cassette 150 includes both compartment 152 and 7 Appeal 2015-002564 Application 13/134,148 compartment 158, each for storing test cartridges. See Simons, col. 12,11. 13—21, Fig. 7. Second, claim 1 recites “a test strip feeding mechanism for feeding a single test strip from one of the compartments in the storage mechanism for use with the metering device.” Appeal Br. 19 (Claims App., emphasis added). Claim 1 does not require that the test strip feeding mechanism enables a single test strip from either stack of the storage body to be used to make electrical contact with the metering device. Consequently, such unclaimed limitations cannot be relied upon for patentability. In re Self 671 F.2d at 1348. Appellants do not provide any persuasive reason why Simons’ apparatus does not meet the recited limitations of the test strip feeding mechanism. Appellant’s general contentions regarding the Examiner’s purported errors in applying the requirements of Graham v. Deere and KSR in the rejection do not apprise us of any specific error in either the Examiner’s findings or reasoning. See Appeal Br. 16—17. As such, these contentions are not persuasive. Accordingly, we sustain the rejection of claims 1—14 and 21—26 as unpatentable over Simons and Chan. DECISION We affirm the Examiner’s decision to reject claims 1—14 and 21-26. No time period for taking any subsequent action in connection with this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation