Ex Parte Boozer et al

Patent Trial and Appeal Board

Nov 22, 2013

11677701 (P.T.A.B. Nov. 22, 2013)

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.
11/677,701 02/22/2007 Brad Boozer AGAM.P-046 1397
57381 7590 11/25/2013
Larson & Anderson, LLC
P.O. BOX 4928
DILLON, CO 80435
EXAMINER
HURST, JONATHAN M
ART UNIT PAPER NUMBER
1775
MAIL DATE DELIVERY MODE
11/25/2013 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 BRAD BOOZER, JOSEPH FLAHERTY, and
TIMOTHY GOLNIK
____________

Appeal 2012-009305
Application 11/677,701
Technology Center 1700
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
ROMULO H. DELMENDO, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 26-45, 47, and 48. We have jurisdiction
pursuant to 35 U.S.C. § 6. An oral hearing was conducted on November 07,
2013.

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Application 11/677,701

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Appellants’ claimed invention is directed to a container for storing
diagnostic test strips. According to the subject Specification, Appellants’
“container allows a user to carry with them at all times a disposal device that
receives used test strips” that, in one embodiment, includes “a test strip
opening connecting the outside environment with the enclosed container
space, wherein the test strip opening is sized to receive a test strip and allow
its passage from the outside environment to the enclosed container space”
and which opening is disposed and/or shaped “to restrain a test strip
disposed in the container space from falling out of the container through the
test strip opening” (Spec. 1, 2).
Appellants provide that “[p]referably the fit between the test strip and
the test strip opening is loose enough to allow a user to slide the test strip
through the test strip opening and into the container space with minimal
force and without breaking the test strip, for example, the force applied by
one finger of a user” (Spec. 5-6). Certain disclosed embodiments are
provided wherein “when the test strip is inserted into the container space it
deflects against a wall or an internal structure disposed within the container
space such that after full insertion it regains its original shape within the
container space” (Spec. 6). However, the Specification states that “the
containers may be any shape” and “[the] test strips that are suitable for use
with any of the embodiments of the present invention are not limited” (Spec.
14, 16).
Claims 26 and 36 are illustrative of the claimed subject matter and
reproduced below from the copy presented in the Appeal Brief (App. Br.;
Claims App’x):
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26. A container for storing diagnostic test strips, the container
comprising a used test strip compartment and a unused test strip
compartment, wherein:

the unused test strip compartment comprises a plurality of test strips,

the used test strip compartment is connected to the outside
environment via an opening,

the opening and the used strip compartment are sized to receive at
least one of the plurality of test strips and to allow its entire insertion from
the outside environment into the used test strip compartment,

the opening, the used test strip compartment, or both in combination
work to deflect the test strip upon insertion into the used test strip
compartment, and

the entire insertion of the test strip into the used test strip compartment
requires the deflection of the test strip.

36. A container combination for storing a diagnostic test strip, the
container combination comprising a used test strip compartment and a test
strip, wherein:

the used test strip compartment is connected to the outside
environment via an opening,

the opening and the used strip compartment are sized to receive the
test strip and to allow its entire insertion from the outside environment into
the used test strip compartment,

the opening, the used test strip compartment, or both in combination
work to deflect the test strip upon insertion into the used test strip
compartment, and

the entire insertion of the test strip into the used test strip compartment
requires the deflection of the test strip.

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The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Griffin U.S. 2004/0173488 A1 September 9, 2004

The Examiner maintains the following grounds of rejection:
Claims 36-41, 43-45, and 48 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Griffin. Claims 26-35, 42, and 47 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Griffin.
We affirm the stated rejections for substantially the factual findings
and for reasons as set forth by the Examiner in the Final Office Action
(FOA) and/or in the Examiner’s Answer (Ans.).1 We offer the following for
emphasis.

Anticipation Rejection
The factual determination of anticipation requires the disclosure in a
single reference of every element of the claimed invention, either explicitly
or inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Anticipation by a prior art reference does not require that the reference
recognize either the inventive concept of the claimed subject matter or the
inherent properties that may be possessed by the prior art reference. See
Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 633 (Fed. Cir.), cert.
denied, 484 U.S. 827 (1987).

1 See the Final Office Action mail dated August 11, 2011and the Examiner’s
Answer mail dated March 21, 2012.
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Anticipation is a factual determination. See In re Baxter Travenol
Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990)).
Appellants argue the rejected claims 36-41 and 44 together as a group
and identify dependent claims 43, 45, and 48 as being separately argued
(App. Br. 5-8). We select claim 36 as the representative claim for the above-
identified group of claims on which we decide this appeal with the exception
that we shall consider claims 43, 45, and 48 separately to the extent any
separate substantive arguments have been presented in the Appeal Brief
respecting the latter dependent claims.
Concerning representative claim 36, the Examiner has found, inter
alia, that Griffin describes a device/container combination for storing a
diagnostic test strip including a used test strip compartment having an
opening to the environment outside the container, wherein the opening and
the used test strip compartment are sized to receive the test strip and to allow
its entire insertion into the compartment (FOA 2; Ans. 5; Griffin; Figs. 1-10;
see e.g., container openings 50, 50’, 50’’ and disposable test strip 16, Figs.
1-3, 5 and 6). Appellants do not contend that Griffin fails to describe such a
device/container combination, as determined by the Examiner (see generally
App. Br. and Reply Br.).
Rather, Appellants urge that Griffin fails to describe a container that
satisfies the limitations of claim 36 with respect to (a) the container used test
strip compartment or the opening thereto, or the combination thereof having
the functionality to “work to deflect the test strip upon insertion into the used
test strip compartment” and (b) the limitation of claim 36 that reads “the
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entire insertion of the test strip into the used test strip compartment requires
the deflection of the test strip” (App. Br. 5 and 6; Reply Br. 1-4).
Appellants maintain that, as required by these limitations, “[t]he size,
shape, position, and/or internal features of the opening and/or the used strip
compartment MUST be selected in combination with the specified test strip
so that deflection [sic] the specific test strip is REQUIRED upon its
complete insertion into the used test strip compartment” and “[t]he Examiner
has failed to explain exactly where in Griffin these limitations can be found,
and thus has failed to establish a prima facie case for anticipation of these
claims” (App. Br. 6) .
Contrary to Appellants’ contention however, representative claim 36
does not require any specifics as to the selected shape, position and/or
internal features of the opening and/or used test strip compartment. All that
is specifically required as to the opening and used test strip compartment
structures by the plain language of claim 36 is that “the opening and used
test strip compartment are sized to receive the test strip and to permit the
entire insertion from the outside environment into the used test strip
compartment” and that the opening and/or used test strip compartment are
functionally capable of working to deflect the test strip upon insertion in a
manner such that the entire insertion of the test strip into the used test strip
compartment requires the deflection of the test strip (claim 36). Indeed, the
Specification states that “the containers may be any shape” and “[the] test
strips that are suitable for use with any of the embodiments of the present
invention are not [particularly] limited” (Spec. 14, 16).
In this regard, it is well settled that during prosecution of a patent
application, the claims therein are given the broadest reasonable
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interpretation consistent with the Specification as it would be understood by
one of ordinary skill in the art. Gechter v. Davidson, 116 F.3d 1454, 1457,
1460 n.3 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir.
1989).
Concerning Appellants’ representative claim 36, we determine that
the argued functional limitations require a container opening and/or used test
strip compartment structures that is/are capable of imparting any amount or
any type of deflection to the test strip upon insertion into the container used
test strip compartment.
Of course, “there is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting patent claims.”
In re Schreiber, 128 F.3d at 1478. “Yet, choosing to define an element
functionally, i.e., by what it does, [or can do,] carries with it a risk.” Id.
As our reviewing court stated in Schreiber, 128 F.3d at 1478 quoting
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971):
[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority
to require the applicant to prove that the subject matter shown
to be in the prior art does not possess the characteristic relied
on.

Here, the Examiner has reasonably articulated how the device
(container including a test strip opening), including the test strips disclosed
by Griffin would have been expected to possess the functionality/capability
of working to deflect the test strip, such as by the action of Griffin’s fin 60
(Fig. 3) on Griffin’s test strip (such as test strip 16, Fig. 6), upon the
insertion of the test strip in the used test strip container compartment via the
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container opening (50, 50’, or 50’’) (Ans. 16-17; see also Ans. 21). In this
regard, the test strip 16 depicted in Figure 6 of Griffin, has a relative size
compared to the container 10 and position of opening 50, as well as relative
to the position of fin 60, as depicted in Figure 3, that supports the
Examiner’s determination that the container structure, including the fin 60,
and relative position of opening 50 would be expected to be capable of
causing deflection of the test strip 16 upon insertion. Also, the Examiner has
reasonably found that the test strip of Griffin is not rigid and will deflect or
bend upon insertion, particularly when inserted so as to be acted on by an
adjoining wall or fin of the container as disclosed by Griffin (Ans. 16-17, 19,
21; Griffin, paras. 0006-0010, 0027, and 0029-0031).
On the other hand, Appellants argue that fin 60 of Griffin is a flexible
piece that would move out of the way upon insertion of the test strip just as
it arguably would upon insertion of a syringe (Reply Br. 3).2 The difficulty
with this argument is that Appellants have not substantiated that a test strip
would be expected to be as inflexible as a syringe and, in addition, that the
fin 60 of Griffin is not capable of working to deflect the non-rigid (flexible)
test strip of Griffin at least to some minimal degree upon insertion via
opening 50.
On this appeal record, Appellants have not proven or substantiated
that the container structures and container opening of Griffin are not capable
of deflecting a glucose meter test strip as described by Griffin, upon

2 Appellants’ attempt at separately arguing anticipatorily rejected dependent
claims 38 and 40 for the first time in the Reply Brief is belated and will not
be considered as separate arguments for a commonly rejected claim are
required to be presented in the Appeal Brief (Reply Br. 3-4; see 37 C.F.R. §
41.37(c)(1)(vii)).
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insertion as described by Griffin (Griffin, abstract, paras. 0002-0008, 0024-
0027, and 0029 -0031; Figs. 1-10).
Consequently, we shall sustain the Examiner’s anticipation rejection
of representative claim 36.
As for the purported separate arguments for dependent claims 43, 45,
and 48, Appellants acknowledgement that Griffin’s Figs. 1 and 2 appear to
show a crowned surface concerning claim 43 and Appellant’s articulation
that “[u]pon proper explicit construction of the term ‘deflection’ in claim 36,
claim 48 will be withdrawn” are not separate substantive arguments for the
separate patentability of dependent claims 43 and/or 48.
As for separately argued dependent claim 45, the Examiner has
reasonably found that Griffin describes a device/container including a test
strip and a used test strip container compartment wherein the container
opening 50 and/or used test strip compartment, including the fin 60 as
described by Griffin, have the capability to deflect the test strip of Griffin
upon the entire insertion of the test strip into the used test strip compartment
past the fin 60, as discussed above, and wherein the test strip can regain its
original shape after entire insertion into the used test strip compartment as
recited in dependent claim 45, (claim 48) (Ans. 8, 18-19).
Appellants’ arguments respecting claim 45 are substantially the same
arguments presented with respect to the deflection feature of claim 36 and
do not constitute additional arguments for the separate patentability of
dependent claim 45 based on the additional features of claim 45 in so far as
the Examiner relies on the fin 60 for deflecting a test strip, such as strip 16,
having a size less than at least one dimension of the container compartment
as depicted/described by Griffin (App. Br. 7 and 8; compare App. Br. 8, 18-
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19). Thus, the arguments presented as to claim 45 as set forth in the Appeal
Brief are not considered to be substantive as to the separate patentability of
claim 45.
Consequently, claims 43, 45 and 48 are properly grouped with claim
36 and stand or fall therewith as the purported separate arguments pertaining
thereto are skeletal. In particular, skeletal arguments such as presented in
the Appeal Brief here are not arguments in support of the separate
patentability of these dependent claims. See In re Lovin, 652 F.3d 1349,
1356-57 (Fed. Cir. 2011).
It follows that we shall affirm the Examiner’s anticipation rejection of
36-41, 43-45, and 48 by Griffin, on this appeal record.

Obviousness Rejection
Appellants argue the rejected claims 26 -31, and 34 together as a
group and identify rejected dependent claims 32, 33, 35, 42, and 47 as being
separately argued (App. Br. 5-8).3 We select claim 26 as the representative
claim for all of the above-identified claims on which we decide this appeal
with the exception that we shall consider claims 32, 33, 35, 42, and 47
separately to the extent the separate arguments that have been presented in
the Appeal Brief respecting the latter dependent claims are substantive
arguments for the separate patentability of these latter dependent claims as
discussed below.

3 Appellants’ attempt at separately arguing rejected dependent claims 28 and
30 subject to the obviousness rejection for the first time in the Reply Brief is
belated and will not be considered as such separate arguments are required
to be presented in the Appeal Brief (Reply Br. 3-4; see 37 C.F.R. §
41.37(c)(1)(vii)).
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Representative claim 26 essentially differs from previously discussed
representative claim 36 in requiring that the container to include an unused
test strip compartment comprising a plurality of test strips in addition to a
used test strip compartment. The Examiner has found that Griffin does not
disclose that the container includes a compartment comprising unused test
strips but includes a clip 40 allowing it to be attached to a glucose meter
system and has determined that providing for such an unused test strip
compartment in the portable container of Griffin “would have been obvious
to one of ordinary skill in the art at the time of [the] invention . . . in order to
allow the kits to be fully functional in glucose testing” (Ans. 10; Griffin,
paras. 0007 and 0026; Fig. 2).
Appellants do not contest the Examiner’s obviousness position with
respect to claim 26 other than by essentially repeating the arguments made
with respect to the functional limitations of claim 36 that claim 26 has in
common with claim 36 as discussed above in considering the Examiner’s
anticipation rejection of claim 36 (App. Br 8-10). For the reasons expressed
above and in the Examiner’s Answer, these arguments are not persuasive of
reversible error in the Examiner’s obviousness rejection of representative
claim 26.
Accordingly, we shall sustain the Examiner’s obviousness rejection as
to representative claim 26 and the claims that stand or fall together
therewith.
Concerning separately presented dependent claim 42, Appellants
present no additional particular arguments for this dependent claim, as noted
by the Examiner (App. Br. 12; Ans. 23). Concerning dependent claims 33,
35, and 47, as separately presented for argument, Appellants principally
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argue for the patentability of these claims on the basis of features found in
claim 26 and like our consideration of anticipatorily rejected dependent
claims 43, 45, and 48, the additional arguments furnished respecting the
obviousness rejection applied to these dependent claims are not considered
to be substantive as to the additional features added thereby for substantially
the same reasons discussed above with respect to claims 43, 45, and 48. As
such, we shall likewise affirm the Examiner’s obviousness rejection as to
dependent claims 42, 33, 35, and 47 on this appeal record.
As for dependent claim 32, this latter claim requires that the two test
strip compartments are formed integrally and are both defined by a formed
housing of the container. Appellants maintain that the clipped on
arrangement described by Griffin for the used test strip and unused test strip
compartments does not serve to describe such an integrally formed
arrangement (App. Br. 11). However, Appellants have not articulated why
making the two compartments integral would not have been within the skill
level possessed by one of ordinary skill in this art exercising that skill to
make routine modifications. After all, “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.
In an obviousness analysis, it is appropriate to consider
interrelated teachings of multiple patents; the effects of
demands known to the design community or present in the
marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine
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whether there was an apparent reason to combine the known
elements in the fashion claimed.

Id. at 417-18.
Under the flexible inquiry set forth by the Supreme Court, the PTO
must take account of the “inferences and creative steps,” or even routine
steps, that an ordinary artisan would employ. Ball Aerosol and Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009).
It is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in this art would have
reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d
1260, 1264-65 (Fed. Cir. 1992); Preda, 401 F.2d at 826, presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985).
Here, making the compartments integral would have been reasonably
expected to yield the predictable result of an integral container structure
including the two compartments within a common housing.
On this record, we shall affirm the Examiner’s obviousness rejection.

CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims 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).

AFFIRMED

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