Ex Parte Boos et al

Board of Patent Appeals and Interferences

May 31, 2012

10483157 (B.P.A.I. May. 31, 2012)

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.
10/483,157 01/08/2004 Andreas Boos PHDE010285US 6917
7590 05/31/2012
GREENBLUM & BERNSTEIN, P.L.C.
1950 Roland Clarke Place
Reston, VA 20191
EXAMINER
FRANK, RODNEY T
ART UNIT PAPER NUMBER
2856
MAIL DATE DELIVERY MODE
05/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS BOOS, JOHANNES BACHER,
GERHARD PROSS, and JENS-PETER SEHER
____________

Appeal 2010-004485
Application 10/483,157
Technology Center 2800
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004485
Application 10/483,157

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7, 9-16, and 19-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
Appellants’ claimed invention is directed to a cartridge with storage
means for storing cartridge specific data and/or information readable for
diagnosis and/or analysis. Spec. 3.
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A cartridge of a system for point of care diagnosis and/or
analysis of bodily liquids of a patient, comprising:

a sample receiving volume in which a sample of the bodily
liquids to be diagnosed and/or analyzed is received and held,

chemistry which reacts with the bodily liquids disposed in the
sample receiving volume,

means for measuring the concentration of at least one specific
component of the sample which has reacted with the chemistry,

readable and writable storage media affixed to the cartridge for
storing:
readable cartridge specific data and/or information, and

results of each diagnosis and/or analysis of the sample in
the cartridge,

connecting means, with which the measuring means and the
storage media of the cartridge are connectable to a diagnosis and\or
analysis apparatus, such that (1) an electric or optic value correlating
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Application 10/483,157

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with the concentration of the respective component communicated via
the connecting means and the (2) cartridge specific data and/or
information from the storage media is read via the connecting means
from the cartridge to the diagnosis and/or analysis apparatus to which
the cartridge is connected and such that the diagnosis and/or analysis
results relating to the sample received by the cartridge are
communicated to the connected cartridge and stored in the storage
media.

REFERENCES and REJECTION
The Examiner rejected claims 1-7, 9-16, and 19-21 under 35 U.S.C.
§ 103(a) based upon the teachings of Sunshine (U.S. Patent Number
6,085,576 (filed March 18, 1999) (issued July 11, 2000)) and Strand (U.S.
Patent Number 6,934,836 B2 (filed December 27, 2001) (issued August 23,
2005)).

ISSUES
The pivotal issues are whether the Examiner erred:
1. in finding that the combination of Sunshine and Strand teach the
limitation of “a sample receiving volume in which a sample of the
bodily liquids to be diagnosed and/or analyzed is received and
held”; “chemistry which reacts with the bodily liquids”; and
“readable and writable storage media affixed to the cartridge for
storing” information as recited in claim 1; and
2. in articulating reasoning with some rational underpinning to
support the legal conclusion of obviousness.

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PRINCIPLES OF LAW
An artisan is presumed to possess both skill and common sense. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
The Supreme Court, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), stated that “‘[r]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.’” KSR, 550 U.S. at 418.
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981) (citation
omitted).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” Id. at
425 (citations omitted).

ANALYSIS
Appellants first argue that claim 1 requires receiving and holding a
sample of a bodily fluid, whereas in Sunshine gases flow through and are not
retained (App. Br. 10). Appellants further assert that Strand does not
provide any enabling disclosure to convert Sunshine’s sensor unit 150a from
a gaseous odor sensor into a direct analyzer of bodily fluids (id.).
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We are not persuaded by Appellants’ arguments. We agree with the
Examiner (Ans. 8) that Sunshine discloses a device that can be used with
liquid samples (col. 5, ll. 50-51, col. 7, ll. 10-15), where the sample is
described to be liquid or bodily fluid (col. 25, l. 16). We further agree with
the Examiner (Ans. 9) that Sunshine teaches that “the device can be
configured to have a longer dwell time within the sample chamber of a
sensor module. In order for there to be a longer dwell time, there must also
be a shorter dwell time to lengthen in the first place” (Ans. 9, also see
Sunshine, col. 9, ll. 56-64). Thus, we also agree with the Examiner’s
reasoning that “if the sample has a dwell time then that means that it does
not merely pass through the sample chamber, but can in fact be held, for
some dwell time, in the chamber and that the dwell time can be increased if
need be” (Ans. 9).
Appellants further argue that “the printed circuit board 510 of
Sunshine is a separate unit from the sensor unit 150a,” and that if one were
to attach the electronic components of the PCB 510 of Sunshine to the
sensor unit 150a this would cause loss of data (App. Br. 10).
We are not persuaded by Appellants’ argument. The Examiner did
not modify Sunshine alone, but proposed a combination with Strand. The
Examiner relied on Strand’s teaching of integrally attaching the memory unit
to the cartridge (col. 3, ll. 7-9) so that specific information about the sample
could be directly correlated to the specific cartridge (Ans. 9; also see col. 3,
ll. 30-55). We agree with the Examiner’s reasoning that Strand teaches the
modification and that it would be common sense to one skilled in the art to
integrally attach the memory unit so that the sample could be directly
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correlated to the specific cartridge. An artisan is presumed to possess both
skill and common sense. See KSR, 550 U.S. at 421.
Appellants also argue that claim 1 requires chemistry which reacts
with the bodily liquids and “placing chemistry in the sensor module 150a of
Sunshine would radically alter its operating parameters and that Strand
provides no enabling disclosure as to how one would modify Sunshine in
order to receive chemistry within the flow-through sensor module” (App. Br.
10-11).
We do not agree with Appellants. The Examiner noted (Ans. 10), and
we agree, that Sunshine’s cartridge is disclosed to have various sensors that
react to the sample, such as chemically sensitive resistors (col. 9, ll. 29-45).
The chemical resistive sensors provide particular resistances when exposed
to a test sample or analytes to be sensed (col. 9, ll. 29-36). Thus, there is a
reaction to a specific chemical to sense it and thus, the chemical resistive
sensors constitute functional equivalents to a “chemistry which reacts with
the bodily liquids.”
Accordingly, we affirm the Examiner’s rejection of claim 1 and also
the rejections of claims 2, 3, 5, and 7 which were not separately argued (see
App. Br. 11).
Appellants separately argue claims 4, 9, and 19 (App. Br. 11-12).
Appellants argue that neither Sunshine nor Strand teaches storing
combination information as recited in claim 4 (App. Br. 11).
We do not agree with the Appellants’ arguments. We agree and adopt
the Examiner’s findings and reasoning as our own (Ans. 11-16). In
particular, with respect to claim 4, we agree that readable and writable stored
information is disclosed in the Strand reference (col. 3, ll. 30-55). The
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writeable area is disclosed to include test results and to store any data,
results, parameters, used or generated by a cartridge (col. 2, ll. 60-66). Thus,
we agree with the Examiner that the claimed parameters are considered
within the realm of any cartridge generated information.
Appellants argue, with respect to claim 9, that replacing the sensor
unit 150a of sunshine with the chromatography cartridge of Strand would
create a large change of operation and functioning (App. Br. 11).
We do not agree with Appellants’ arguments. We agree with the
Examiner (Ans. 12) because “[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art. Keller, 642 F.2d at 425 (citations omitted).
Appellants lastly argue, with respect to claim 19, that there is no
motivation to provide the sensor 150a of Sunshine with a memory onto
which evaluation results are written (App. Br. 12). We affirm the
Examiner’s rejection for the same reasons as those stated supra with respect
to claim 1.
Accordingly, we affirm the Examiner’s rejections of claims 4, 9, and
19 and the rejections of claims 10-16, 20, and 21, which were not separately
argued (see App. Br. 11-12).

CONCLUSIONS
The Examiner did not err:
1. in finding that the combination of Sunshine and Strand teach the
limitation of “a sample receiving volume in which a sample of the
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bodily liquids to be diagnosed and/or analyzed is received and held”;
“chemistry which reacts with the bodily liquids”; and “readable and
writable storage media affixed to the cartridge for storing”
information as recited in claim 1; and
2. in articulating reasoning with some rational underpinning to support
the legal conclusion of obviousness.

DECISION
The Examiner’s decision rejecting claims 1-7, 9-16, and 19-21 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2011).

AFFIRMED

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