Ex Parte Cooper et al

Patent Trial and Appeal Board

Dec 1, 2015

12361413 (P.T.A.B. Dec. 1, 2015)

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.
12/361,413 01/28/2009 Kenneth W. Cooper G&C 130.91-US-U1 8221
12813 7590 12/02/2015
Gates & Cooper LLP - Minimed
6701 Center Drive West
Los Angeles, CA 90045
EXAMINER
BROWN, MELANIE YU
ART UNIT PAPER NUMBER
1677
MAIL DATE DELIVERY MODE
12/02/2015 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 KENNETH W. COOPER, RATNAKAR VEJELLA,
GOPIKRISHNAN SOUNDARARAJAN, and RAJIV SHAH1
__________

Appeal 2013-000538
Application 12/361,413
Technology Center 1600
__________

Before MELANIE L. McCOLLUM, ULRIKE W. JENKS, and ROBERT A.
POLLOCK, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a glucose
sensing method. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 10–13 are on appeal (App. Br. 3–5). We will focus on
claim 10, the only independent claim on appeal, which reads as follows
(emphasis added):

1 Appellants identify the real party in interest as Medtronic MiniMed, Inc.
(App. Br. 2.)
Appeal 2013-000538
Application 12/361,413

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10. A method of sensing glucose within the body of a mammal, the
method comprising implanting a glucose sensor into a mammal, wherein the
glucose sensor comprises:
a base layer;
a conductive layer disposed upon the base layer wherein the
conductive layer includes a working electrode comprising a plurality of
conductive nanotubes;
an analyte sensing layer comprising glucose oxidase disposed on the
conductive nanotubes, wherein the glucose oxidase generates hydrogen
peroxide in the presence of glucose; and
an analyte modulating layer disposed on the analyte sensing layer,
wherein the analyte modulating layer:
modulates the diffusion of glucose therethrough; and
includes a composition of matter comprising a hydrophilic
comb-copolymer having a central chain and a plurality of side chains
coupled to the central chain, wherein at least one side chain
comprises a silicone moiety; and
sensing an alteration in electrical potential at the working electrode
that results from hydrogen peroxide produced by the glucose oxidase in the
presence of glucose;
and correlating the alteration in electrical potential with the presence
of glucose, so that glucose is sensed.
Claims 10, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
obvious over Say et al. (US 6,175,752 B1, Jan. 16, 2001) in view of Joshi et
al. (US 2009/0084678 A1, Apr. 2, 2009) and Tapsak et al. (US
2005/0090607 A1, Apr. 28, 2005) (Ans. 5).
Claim 11 stands rejected under 35 U.S.C. § 103(a) as obvious over
Say in view of Joshi, Tapsak, and Willis (US 2007/0299617 A1, Dec. 27,
2007) (Ans. 9).
Appeal 2013-000538
Application 12/361,413

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I
The Examiner relies on Say for teaching a glucose sensing method
that is similar to the method recited in claim 10 (Ans. 5–6). However, the
Examiner finds:
Say et al. fails to specifically teach the electrode comprising a
plurality of conductive nanotubes and the analyte modulating
layer including a composition of matter comprising a
hydrophilic comb-copolymer having a central chain and a
plurality of side chains coupled to the central chain, wherein at
least one side chain comprises a silicone moiety.
(Id. at 6.)
The Examiner relies on Joshi for teaching “an electrode comprising a
plurality of carbon nanotubes having a layer of glucose oxidase there on”
(id.). The Examiner concludes that it would have been obvious “to include
on the electrode taught by Say et al., conductive nanotubes as taught by
Joshi et al., in order to better electrode stability and increase[] surface area”
(id. at 7).
The Examiner relies on Tapsak for teaching an implantable glucose
biosensor having “an analyte modulating layer on the conductive layer . . .
that modulates the diffusion of glucose therethrough . . . comprising a
hydrophilic comb-copolymer having a central chain and a plurality of side
chains coupled to the central chain, wherein at least one side chain
comprises a silicone moiety” (id.). The Examiner concludes:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the system
taught by Say et al. in view of Joshi et al., with a hydrophilic
comb-copolymer . . . as taught by Tapsak et al., in order to
provide a potential membrane that would be highly susceptible
to oxygen diffusion through its layer while limiting the
Appeal 2013-000538
Application 12/361,413

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diffusion of analytes that is advantageously strong, tear resistant
stable and tough enough for in vivo use.
(Id.)
Analysis
Appellants argue that the applied references fail “to teach or suggest
the specific copolymer architecture that is recited in the claim 10, [that is,]
one having a three dimensional comb like architecture designed to include a
silicone material as side chain” (App. Br. 4). We conclude that Appellants
have the better position.
The Examiner finds that Tapsak discloses a polymer “wherein the left
most side chain is a silicone moiety,” which is marked with a square in the
formula depicted in the Examiner’s Answer (Ans. 10–11).2 However, the
Examiner has not provided adequate basis for the position that this group
would be considered a side chain. In addition, the Examiner does not
explain how Say or Joshi overcome this deficiency.
Conclusion
The Examiner has not set forth a prima facie case that Say, Joshi, and
Tapsak suggest the method of claim 10. We, therefore, reverse the
obviousness rejection of claim 10 and of claims 12 and 13, which depend
from claim 10.

2 The Examiner does not clearly indicate whether the left most vinyl group is
being considered part of the “side chain.” However, even if we assume that
this is the case, it would not change our opinion. The Examiner has not
provided adequate basis for the position that Tapsak’s polymer end group
would be considered a side chain.
Appeal 2013-000538
Application 12/361,413

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II
In rejecting claim 11, which also depends from claim 10, the
Examiner additionally relies on Willis for teaching “a working electrode
wherein an amount of glucose analyte is electrochemically detected at . . . a
plurality of operating potentials” (Ans. 9). However, the Examiner does not
explain how Willis overcomes the deficiency discussed above. We,
therefore, also reverse the obviousness rejection of claim 11.

REVERSED

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