2020004206 (P.T.A.B. Jul. 2, 2021)

ASCENSIA DIABETES CARE HOLDING AG

Patent Trials and Appeals BoardJul 2, 2021

2020004206 (P.T.A.B. Jul. 2, 2021)

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. 15/076,278 03/21/2016 Daniel Brown BHDDX-073-PCT-US-C01 5369 74144 7590 07/02/2021 Dugan & Dugan, PC 138 Merlin Avenue Sleepy Hollow, NY 10591 EXAMINER KRCHA, MATTHEW D ART UNIT PAPER NUMBER 1798 NOTIFICATION DATE DELIVERY MODE 07/02/2021 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): bdugan@duganpatent.com duganemail@duganpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL BROWN, MARTIN ANTOINE MATHELIER, and SUNG-KWON JUNG Appeal 2020-004206 Application 15/076,278 Technology Center 1700 Before DONNA M. PRAISS, JEFFREY R. SNAY, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–15. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ascensia Diabetes Care Holdings AG. Appeal Br. 2. Appeal 2020-004206 Application 15/076,278 2 CLAIMED SUBJECT MATTER The claims are directed to test sensor containers for use with analyte meters. Spec. ¶ 6. Claim 1, reproduced below with emphasis to highlight a key disputed limitation, is illustrative of the claimed subject matter: 1. A test sensor container for use with an analyte measuring system, comprising: a cartridge including a base, a top portion, two opposite sidewalls extending from the base to the top portion, and a plurality of compartments arranged linearly along a longitudinal axis, wherein each compartment is dimensioned to hold a test sensor, and at least one of the two opposite sidewalls is entirely linear forming a straight line from the base to the top portion and oriented at an acute angle relative to a reference axis perpendicular to the base; at least one foil cover sealing the plurality of compartments; and an ejection mechanism adjacent the cartridge and configured to eject a test sensor from the cartridge by causing the test sensor to pierce the at least one foil cover at the at least one of the two opposite sidewalls to create an opening through which the test sensor is ejected. Appeal Br. 17 (Claims App.) (emphasis added). REJECTIONS The Examiner maintains the following rejections on appeal (Ans. 3; Final Act. 3–6): Appeal 2020-004206 Application 15/076,278 3 Rejection 1: Claims 1–4, 6–8, and 102 are rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Uchigaki;3 Rejection 2: Claim 5 is rejected under 35 U.S.C. § 103(a) as obvious over Uchigaki; Rejection 3: Claim 9 is rejected under 35 U.S.C. § 103(a) as obvious over Uchigaki and Kheiri;4 Rejection 4: Claims 11–15 are rejected under 35 U.S.C. § 103(a) as obvious over Uchigaki and Brickwood.5 DISCUSSION We confine our discussion to claim 1, which is sufficient for disposition of this rejection. The Examiner finds that Uchigaki, as shown in Figure 1 reproduced below, teaches claim 1’s test sensor container including, among other things, cartridge 1 with base 10b and top portion 10a, two opposite sidewalls 10c and 10d extending from base 10b to top portion 10a, and a plurality of compartments arranged linearly along a longitudinal axis (11). Final Act. 3. 2 The Examiner’s statement of the rejection does not include claim 10. The body of the rejection, however, does address claim 10. We, therefore, assume that the omission of claim 10 from the statement of the rejection is an inadvertent error. 3 Uchigaki et al., US 2009/0074617 A1, published March 19, 2009. 4 Kheiri at al., US 2008/0131322 A1, published June 5, 2008. 5 Brickwood, US 2004/0178216 A1, published Sept. 16, 2004. Appeal 2020-004206 Application 15/076,278 4 Figure 1 above depicts an example of Uchigaki’s sensor cartridge 1. The Examiner finds that the term “linear” means “made of or using lines.” Final Act. 3. Because Uchigaki’s sidewall 10c is made of lines, the Examiner finds sidewall 10c to be linear and oriented at an acute angle relative to a reference axis perpendicular to the base. Id. Appellant argues that Uchigaki’s front surface 10c and rounded portion 10g, which connect to upper surface 10a, do not form a straight line from bottom surface 10b and upper surface 10a, and are not oriented at an acute angle relative to a reference axis perpendicular to the bottom surface 10b, as shown in Uchigaki’s Figure 4 reproduced below. Appeal Br. 7. Appellant also argues that changing the shape of Uchigaki’s “sidewall” would not have been an obvious matter of design choice. Id. at 8. Appeal 2020-004206 Application 15/076,278 5 Figure 4 above is a sectional view along lines IV-IV in Figure 1 of Uchigaki’s sensor cartridge. Appellant’s arguments identify reversible error in the Examiner’s rejections. We agree with Appellant that the Examiner’s interpretation of the term “linear” is unreasonably broad. Appeal Br. 7. Contrary to the Examiner’s interpretation, claim 1 requires at least one of the two opposite sidewalls is “entirely linear forming a straight line from the base to the top portion” (emphasis added). As shown in Uchigaki’s Figure 4 above, Uchigaki’s sidewall, which includes front surface 10c and rounded portion 10g, is not entirely linear, does not form a straight line from bottom surface 10b to upper surface 10a, and is not oriented at an acute angle relative to a reference axis perpendicular to the bottom surface 10b. Thus, we do not sustain the § 102 rejection of claims 1–4, 6–8, and 10 based on Uchigaki. Additionally, the Examiner has not provided an adequate reason supported by sufficient evidence to explain why a person of ordinary skill in the art would have been led to modify Uchigaki’s rounded sidewall (10c, 10g) to form a straight line from bottom surface 10b to upper surface 10a as a matter of design choice. Final Act. 4; Cutsforth, Inc. v. MotivePower, Inc., Appeal 2020-004206 Application 15/076,278 6 636 Fed. Appx. 575, 578 (Fed. Cir. 2016) (explaining that there must be “a reason for why a person of ordinary skill in the art would have made the specific design choice.”). Uchigaki teaches that because the upper surface 10a and the front surface 10c of the cartridge body 10 are connected to each other via the rounded portion 10g of the cartridge body, all the sensor retaining grooves 11 can be sealed by a single sheet of sealing member 12 in a single, relatively easy process step, which enhances manufacturing efficiency. Uchigaki ¶ 55. This teaching that the shape of Uchigaki’s “sidewall” (10c, 10g) has a particular purpose and advantage cuts against the Examiner’s position that changing the shape of Uchigaki’s “sidewall” would have been an obvious matter of design choice. Thus, we do not sustain the § 103 rejection of claims 1–4, 6–8, and 10 over Uchigaki. Because the reversible errors identified by Appellant apply to each of the Examiner’s rejections, we reverse the rejections of claims 1–15. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6–8, 10 102(b) Uchigaki 1–4, 6–8, 10 1–4, 6–8, 10 103(a) Uchigaki 1–4, 6–8, 10 5 103(a) Uchigaki 5 9 103(a) Uchigaki, Kheiri 9 11–15 103(a) Uchigaki, Brickwood 11–15 Overall Outcome 1–15 REVERSED