Ex Parte Feldman et al

Patent Trial and Appeal Board

Apr 21, 2017

13767350 (P.T.A.B. Apr. 21, 2017)

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.
13/767,350 02/14/2013 Benjamin J. Feldman ADCI-263 4004
85783 7590 04/25/2017
Abbott Diabetes Care Inc.
Bozicevic, Field & Francis LLP
201 REDWOOD SHORES PARKWAY
SUITE 200
REDWOOD CITY, CA 94065
EXAMINER
DIETERLE, JENNIFER M
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
04/25/2017 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):
docket@bozpat.com
baba@bozpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN J. FELDMAN,
LAM N. TRAN, ZENGHE LIU, and
YI WANG
Appeal 2016-004816
Application 13/767,350
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision finally rejecting claims 1—11 and 13—19. We have
jurisdiction under 35 U.S.C. § 6(b).
1 Our decision refers to Appellants’ Specification filed Feb. 14, 2013
(Spec.), the Final Office Action mailed Apr. 9, 2015 (Final Act.),
Appellants’ Appeal Brief filed Oct. 6, 2015 (Br.), and the Examiner’s
Answer mailed Jan. 15, 2016 (Ans.).
2 Appellants identify the real party in interest as Abbott Diabetes Care Inc.
Br. 3.
Appeal 2016-004816
Application 13/767,350
We AFFIRM.
The claims on appeal are directed to methods of manufacturing an
analyte sensor (see, e.g., claim 1) and an analyte sensor for analyzing an
analyte (see, e.g., claim 10). The sensor includes a first electrode including
carbon, gold or palladium and a second electrode including platinized carbon
(see, e.g., claims 1 and 10).
Independent claim 1 is illustrative. We reproduce claim 1 from the
Claims Appendix of the Appeal Brief with the limitations at issue italicized
and indenting added:
1. A method of manufacturing an analyte sensor, the method
comprising:
providing a first substrate and a second substrate, the first
substrate comprising a first major surface and a second major
surface, the second substrate comprising a first major surface and
a second major surface;
disposing carbon, gold or palladium on the second major
surface of the first substrate or the first major surface of the
second substrate to form a first electrode;
disposing platinized carbon on the second major surface
of the first substrate or the first major surface of the second
substrate to form a second electrode in absence of disposing a
silver/silver chloride layer on the first or the second substrate;
combining the first and second substrates to provide an
analyte sensor,
wherein the platinum is a catalyst for reducing
atmospheric oxygen, and wherein the sensor does not include
Ag/AgCl,
wherein the catalyst mediates transfer of electrons
generated from oxidation of the analyte to atmospheric oxygen.
Br. Claims Appendix 13 (emphasis and indenting added).
The claims on appeal stand rejected as follows:
(1) claims 1, 3—5, 10, 11, 13, and 14 under 35 U.S.C. § 103(a) as
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Application 13/767,350
being unpatentable over Davies;3
(2) claims 2 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Davies in view of Wilsey;4
(3) claims 6, 8, 9, 15, 17, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Davies in view of Feldman;5 and
(4) claims 7 and 16 under 35 U.S.C. § 103(a) as being unpatentable
over Davies in view of Zhang.6
OPINION
The dispositive issue on appeal is whether Appellants have identified
a reversible error in the Examiner’s finding that Davies would have
suggested to those of ordinary skill in the art forming a first electrode of
gold or carbon and forming a second electrode of platinized carbon with the
reasonable expectation of obtaining an electrochemical sensor with
electrodes with predictable conductive properties.
Appellants have not persuaded us of such an error.
Appellants contend claim 1 requires a specific combination of
electrode materials that Davies does not teach or suggest because Davies
“simply discloses that electrodes in an analyte sensor ‘may be formed of any
conductive material which can be deposited in patterns in a continuous
printing process.’” Br. 7 (quoting Davies 37). Appellants assert this “is
not [a] teaching or suggestion of a specific composition of electrodes where
3 Davies et al., US 2004/0026243 Al, published Feb. 12, 2004 (“Davies”).
4 Wilsey, US 7,276,147 B2, issued Oct. 2, 2007 (“Wilsey”).
5 Feldman et al., US 2006/0169599 Al, published Aug. 3, 2006
(“Feldman”).
6 Zhang et al., US 2010/0326843 Al, published Dec. 30, 2010 (“Zhang”).
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Application 13/767,350
a first electrode consists of carbon, gold or palladium and a second electrode
includes platinized carbon” because it would have required “one of ordinary
skill in the art to pick and choose the specifically claimed electrode
composition from a large number of possibilities.” Br. 7.
Appellants’ arguments are not persuasive. Davies discloses the
following for materials of its electrodes:
The electrodes may be formed of any conductive material
which can be deposited in patterns in a continuous printing
process. This would include carbon electrodes and electrodes
formed from platinized carbon, gold, silver, and mixtures of
silver and silver chloride.
Davies 137 (emphasis added).
Therefore, Davies discloses the key feature in selection of the
electrode material is the selection of a conductive material that can be
deposited in patterns in a continuous printing process and specifically lists
carbon electrodes and electrodes formed from materials such as platinized
carbon and gold as examples. As a result, Davies discloses carbon,
platinized carbon, and gold as materials that can be successfully used for
electrodes in an analyte sensor. In re Droge, 695 F.3d 1334, 1338 (Fed. Cir.
2012) (“Obviousness does not require absolute predictability of success . . .
all that is required is a reasonable expectation of success.”) (citing In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)); In reOTarrell, 853 F.2d
894, 903-04 (Fed. Cir. 1988) (citations omitted) (“For obviousness under
§ 103, all that is required is a reasonable expectation of success.”).
In a determination of obviousness, a reference may be relied upon for
all that it would have reasonably suggested to one having ordinary skill in
the art. Merck & Co v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989)
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Application 13/767,350
(“That the [prior art] patent discloses a multitude of effective combinations
does not render any particular formulation less obvious.”). Although Davies
does not disclose a specific analyte sensor embodiment in which a first
electrode is made out of carbon or gold and a second electrode is made out
of platinized carbon, the disclosure of Davies would have reasonably
suggested to one of ordinary skill in the art that any of the combinations of
conductive materials that can be deposited in patterns in a continuous
printing process would result in useful electrodes, including combinations of
the particular electrode materials exemplified by Davies and recited in claim
1. “The 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). Under the facts of
this case, the burden shifts to Appellants to show they achieve unexpected
results for their combinations of electrode materials. Appellants have not
provided any secondary indicia, such as unexpected results, to demonstrate
the nonobviousness of the electrode material combinations recited in claim
1.
Independent claim 10 recites an analyte sensor comprising, among
other things, “a first electrode consisting of carbon, gold or palladium” and
“a second electrode consisting essentially of platinized carbon.” Br. Claims
Appendix 14. The Examiner makes findings and a conclusion of
obviousness for claim 10 similar to those for claim 1. Ans. 3—5. Appellants
do not argue claim 10 separately from claim 1. Br. 6—10. Therefore, we
sustain the § 103 rejection of claim 10 over Davies for the same reasons.
Appellants do not argue claims 3—5, 11, 13, and 14 separately. Br. 6—10.
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For these reasons and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103 rejection of claims 1, 3—5, 10, 11, 13, and 14
over Davies.
For claims 2, 6—9, and 15—19, Appellants merely reiterate the
arguments set forth in support of the patentability of claim 1 and contend
Wilsey, Feldman, and Zhang do not remedy the deficiencies of Davies in the
rejection of claim 1. Br. 10—11. For the reasons set forth above, there are no
deficiencies in the rejection of claim 1 that require curing by Wilsey,
Feldman, or Zhang.
DECISION
On the record before us, we affirm the decision of the Examiner to
reject the claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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