11276841 (B.P.A.I. May. 21, 2012)

Ex Parte Flaherty et al

Board of Patent Appeals and InterferencesMay 21, 2012

11276841 (B.P.A.I. May. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/276,841 03/16/2006 Joseph Flaherty AGAM.P-043 3853 57381 7590 05/22/2012 Larson & Anderson, LLC P.O. BOX 4928 DILLON, CO 80435 EXAMINER WHITE, DENNIS MICHAEL ART UNIT PAPER NUMBER 1772 MAIL DATE DELIVERY MODE 05/22/2012 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 JOSEPH FLAHERTY and TIMOTHY GOLNIK ____________________ Appeal 2010-009250 Application 11/276,841 Technology Center 1700 ____________________ Before ADRIENE LEPIANE HANLON, ANDREW H. METZ, and CATHERINE Q. TIMM, Administrative Patent Judges. METZ, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the adverse decision of the Examiner finally rejecting claims 1 through 25 of Appellants’ application, which are all the claims in the application We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-009250 Application 11/276,841 2 THE INVENTION Appellants’ invention is directed to an analyte measurement device for use with a test strip for determining the amount of an analyte in a sample provided. The device comprises (1) an analyte meter; (2) a housing, and (3); a rotatable user interface. The rotatable user interface is communicatively coupled to a processor and is accessible on the outside of the housing. The rotatable user interface is rotationally and translationally connected about the housing to permit rotation around an axis of rotation and translation along the axis of rotation. Appellants also disclose and claim a nominal method of using the analyte measurement device to determine the amount of analyte in a sample by rotating and translating the user interface to select information stored in the processor. Claim 1 is considered to be adequately representative of the claimed subject matter and is set forth fully below for a more facile understanding of appellants’ invention. Claim 1. An analyte measurement device, for use with a test strip for determining the amount of an analyte in a sample, the device comprising: (1) an analyte meter comprising: (i) a processor programmed to display a hierarchy of information or options having a plurality of levels; (ii) a test strip interface for receiving a diagnostic test strip; and (iii) a meter display communicatively coupled to the processor for displaying the hierarchy of information or options to a user, wherein each level of the plurality of levels comprises information or options selected from the group consisting of: a selectable lower level, a selectable upper level, a selectable subroutine performable by the processor, and a selectable parameter, and Appeal 2010-009250 Application 11/276,841 3 one of the plurality of levels includes a selectable subroutine performable by the processor that is a diagnostic test subroutine where the processor is programmed to perform a diagnostic test on a sample applied to a test strip received within the test strip interface to determine a concentration of an analyte within the sample, and to store data in the hierarchy of information related to the test, (2) a housing having the meter disposed therein and having a display opening sized to receive the meter display and to make it externally visible to a user, and a test strip opening sized to receive a test strip, and (3) a rotatable user interface communicatively coupled to the processor and accessible on the outside of the housing, wherein the rotatable user interface is rotationally and transitionally connected about the housing to permit rotation around an axis of rotation, wherein when the rotatable user interface is: (i) rotated around the axis of rotation, the meter display scrolls through information or options in an open level, and (ii) transitionally moved along the axis of rotation, a lower level of information is selected, an upper level of information is selected, a subroutine is selected, or a parameter is selected from an open level wherein a combination of rotation and translation of the rotatable user interface allows scrolling to and the selection of the diagnostic test subroutine. The references of record which are being relied upon by the Examiner as evidence of obviousness are: Castellano et al. (Castellano) 5,593,390 Jan. 14, 1997 Ellingboe et al. (Ellingboe) US 2002/0085952 A1 July 4, 2002 Appeal 2010-009250 Application 11/276,841 4 THE REJECTION Claims 1 through 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Castellano considered with Ellingboe. OPINION We begin by interpreting the claims. Although there is no specific limitation in any of the dependent claims (Claims 1, 14, 17, and 18) which limits the size of Appellants’ analyte measurement device, based on Appellants’ Specification and Appellants’ Brief, we interpret the claims to be directed to meters small enough to be held by hand to allow a user to carry the meters on their person. Indeed, Appellants have urged that interpretation in their Brief, and the Specification supports that interpretation. In setting forth his rationale in support of the rejection, the Examiner reads the various components described by Castellano on the components required by the claims. The Examiner concludes that Castellano’s meter and clock panel 48 corresponds to the claimed “user interface” except that the meter and clock panel of Castellano is not described as being capable of being rotated about an axis of rotation to scroll through information or options and is not capable of being transitionally moved along the axis of rotation to select a lower level of information. The Examiner relies on Ellingboe for the disclosure of a “user interface” 50 having a main display 54 and a user control knob 52 which is capable of being rotated to effect changes in a value displayed and capable of being transitionally moved by pressing in the knob 52 to terminate data entry. Appeal 2010-009250 Application 11/276,841 5 The Examiner states that “(s)imple substitution of one known element for another to obtain predictable results is held to be obvious” (Ans. 5) and thereafter concludes that it would have been obvious to one of ordinary skill in the art to substitute the panel 48 of Castellano with the knob 52 of Ellingboe because they are known user interfaces in monitoring systems (id.). We shall not sustain this rejection. We find lacking in either reference on which the Examiner relies any reason that would have suggested to the person of ordinary skill in the art making the substitution proposed by the Examiner. Additionally, we do not consider the proposed substitution to be “simple” or that the results obtained by making such a substitution would be “predictable.” The insulin injection pen of Castellano and the integrated blood perfusion system of Ellingboe have far too many other differences which the Examiner has failed to address in reaching his determination that the subject matter claimed would have been obvious. The basis for the Examiner’s conclusion in his Answer concerning substituting the knob for the panel appears to be based not on factual findings but on M.P.E.P. § 2143 B. See page 4 of the Answer referenced above. The section of the M.P.E.P. on which the Examiner relies is a discussion of one example from “Examples of Basic Requirements of a prima facie case of obviousness” and is founded on the basis of the examiner first making the appropriate findings and analysis under Graham v John Deere and then making certain necessary additional factual findings before invoking the rationale as the Examiner has done here. To the extent the Examiner has made such findings, they support the conclusion that substituting the knob 52 of Ellingboe for the panel 48 of Castellano would not yield predictable results because they perform different functions. Appeal 2010-009250 Application 11/276,841 6 The mode and clock setting panel 48 of Castellano is used to set the date and time, set an alarm for the time to take the next injection or store additional information in the disclosed insulin injection pen and does not utilize either rotational or translational movement to navigate through various options on the display or select various options from the display using rotational or translational movement to be performed by the analyte measurement device. The knob 52 of Ellingboe is described in connection with the user interface for selectively establishing or modifying settings for monitoring and controlling parameters in a cardiopulmonary bypass procedure. In contradistinction to Appellants’ claims, in Ellingboe, in most cases, as a setting is being adjusted on the display it is also taking immediate effect in the system, as in adjusting venous line clamps. The knob 52 may be used to terminate data entry by pressing the knob in. The Examiner has failed to explain why it would have been obvious to substitute the knob 52, which functions by rotational and translational movement but is not used to both navigate through various information on the display and select a particular diagnostic subroutine to be performed by the analyte measurement device, for the mode and clock panel 48 in Castellano’s insulin pen injector which functions by pressing buttons and is used to set the date and time, set an alarm or store information but does not navigate through various information levels and select a diagnostic test routine. We agree with Appellants that in making the rejections the Examiner has not given the claim limitation “diagnostic test subroutine” its broadest, reasonable interpretation consistent with Appellants’ disclosure. We agree with Appellants that the limitation must be taken in the context used in the claims and in light of the disclosure at page 10, lines 15 through 18 of Appellants’ Specification. When so construed the Examiner’s conclusion that the claim Appeal 2010-009250 Application 11/276,841 7 language “diagnostic test subroutine” reads on Castellano’s mode and clock panel functionality is erroneous. Accordingly, there is no basis for the examiner’s proposed substitution of elements. In passing, we observe in the last full paragraph on page 2 of Appellants’ Reply Brief1 in response to the Examiner’s Answer, Appellants’ attorneys have engaged in argument which does not comply with either the spirit or the letter of 37 C.F.R. §1.3. Such argument has no place in Appellants’ Brief and we have not considered nor given weight to the “arguments” set forth therein. SUMMARY The rejection of claims 1 through 25 as being unpatentable under 35 U.S.C. § 103 (a) is reversed. No time period for taking any subsequent action in connection with this appeal may be taken under 37 C.F.R. §1.136(a)(1)(iv). REVERSED cam 1 Reply Brief dated April 5, 2010.