Ex Parte Freeman et al

Patent Trial and Appeal Board

Dec 16, 2015

12421776 (P.T.A.B. Dec. 16, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/421,776 04/10/2009 Dominique Freeman
129011 7590 12/18/2015
Beyer Law Group LLP/SNF
P.O. Box 51887
Palo Alto, CA 94303
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PEL 2957 5145
EXAMINER
HENSON, DEVIN B
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
12/18/2015 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):
USPTOmail@beyerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOMINIQUE FREEMAN, DIRK BOECKER, and
DON ALDEN
Appeal2013-003980
Application 12/421,776
Technology Center 3700
Before LYNNE H. BROWNE, MICHAEL L. WOODS, and
JASON W. MELVIN, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dominique Freeman et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1-25. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to an integrated analyte measurement system.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
Appeal2013-003980
Application 12/421,776
1. An integrated analyte measurement system, comprising:
a housing;
a disposable configured to be positioned in the housing;
a plurality of penetrating members positioned in the
disposable;
a driver configured to be coupled to the penetrating
member, the driver coupled to a processor and having position
and velocity sensing capabilities to advance a penetrating
member into a target tissue to create a wound from which body
fluid will flow, the processor and driver providing control of
drive power to a penetrating member and velocity of a
penetrating member to account for variations in a skin
thickness; and
a plurality of analyte sensors positioned in the disposable,
the disposable housing used and unused penetrating members
as well as analyte sensors.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lum
Escutia
Bryer
Le Vaughn
Hein
US 2002/0042594 Al
US 200710179404 A 1
US 2008/0167578 Al
US 2008/0255598 Al
US 7,833,172 B2
REJECTIONS
Apr. 11, 2002
Aug.2,2007
July 10, 2008
Oct. 16, 2008
Nov. 16, 2010
I. Claims 1--4, 7-10, 14, 16, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Escutia and Hein.
II. Claims 1, 11-13, and 17-24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bryer and Hein.
III. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Escutia, Hein, and Le Vaughn.
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Application 12/421,776
IV. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Escutia, Hein, and Lum.
OPINION
Rejection I
The Examiner finds, inter alia, that Escutia discloses a driver "having
position and velocity sensing capabilities to advance a penetrating member
into a target tissue to create a wound from which body fluid will flow."
Final Act. 3 (citing Escutia i-fi-141, 43, 45-53, 57, and 71).
Appellants argue that none of the paragraphs cited by the Examiner
pertain to position and velocity sensing capabilities. See Appeal Br. 14--15.
Appellants further contend that the Examiner's characterization of
paragraphs 52 and 53 as teaching penetrating members that can be driven at
any speed "is a misreading of' of these paragraphs. Id. at 15.
Appellants are correct. None of Escutia's paragraphs 41, 43, 45-53,
57, and 71 describes a driver having pos1t10n and velocity sensing
capabilities as required by claim 1. Appeal Br. 32. Although paragraph 71
describes a device with a footprint that detects when a finger is placed on it
for a set period of time - which could reasonably be construed to describe a
position sensing capability- the device described as having this capability
is not a driver. Escutia i1 71. Moreover, although acceleration along a
curved or rotational path is described in paragraph 45 and rapid oscillation is
described in paragraph 52, no mention is made of the driver having the
capability of sensing the velocity. Escutia i-fi-1 52, 71. Thus, the Examiner's
finding is in error.
Appellants further argue that Hein fails to teach "providing control of
drive power and velocity of a penetrating member to account for variations
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Appeal2013-003980
Application 12/421,776
in skin thickness." Appeal Br. 16-17. In support of this argument,
Appellants note that "[ c ]olumn 2, lines 1-12 says nothing about control of
drive power and velocity, and more particularly fails to address variation in
skin thickness." Id. at 17.
In column 2 at lines 5-8, Hein states, "[t]his process is also
appropriate for situations which also consider user-specific parameters such
as the local skin condition and blood circulation." Hein, col. 2, 11. 5-8
(emphasis added). Although skin thickness is possibly one of the conditions
contemplated by Hein, the Examiner's finding that Hein teaches providing
control of drive power to account for variations in skin thickness (see Final
Act. 4) is speculative. Thus again, Appellants are correct. Accordingly,
Hein does not cure the deficiencies in Escutia.
For these reasons, we do not sustain the Examiner's decision rejecting
claim 1 as unpatentable over Escutia and Hein. Claims 2--4, 7-10, 14, 16,
and 25 depend from claim 1. The rejection of these claims suffers from the
1 ,. • • ,1 • ,• ,.. 1 • -1 1 1•1 • 1 ' ' • same aenc1enc1es as me reJecuon or cia1m i, ana we 11Kew1se ao nm sustam
the Examiner's decision rejecting claims 2--4, 7-10, 14, 16, and 25 as
unpatentable over Escutia and Hein.
Rejection II
The Examiner finds, inter alia, that Bryer discloses "a driver
configured to be coupled to the penetrating member, the driver coupled to a
processor and having position and velocity sensing capabilities to advance a
penetrating member into a target tissue to create a wound from which body
fluid will flow." Final Act. 6 (citing Bryer i-fi-f 108, 158, and 203-206).
Appellants argue that Bryer fails to disclose a driver having position
and velocity sensing capabilities as claimed. See Appeal Br. 23. In support
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Appeal2013-003980
Application 12/421,776
of this argument, Appellants note that "[ t ]here is only one mention of the
motor that serves as the driver for the lancet." Id.
Appellants are correct. The paragraphs cited by the Examiner in
support of this finding make no mention of a driver having position and
velocity sensing capabilities to advance a penetrating member into a target
tissue as required by claim 1. Appeal Br. 32. Thus, the Examiner's finding
is in error. Hein does not cure the deficiencies in Bryer for the same reasons
it does not cure the deficiencies in Escutia as discussed supra.
For these reasons, we do not sustain the Examiner's decision rejecting
claim 1 as unpatentable over the combined teachings of Bryer and Hein.
Claims 11-13, and 17-24 depend from claim 1. Accordingly, the rejection
of these claims suffers from the same deficiencies as the rejection of claim 1;
and, we likewise do not sustain the Examiner's decision rejecting claims 11-
13 and 17-24 as unpatentable over the combined teachings of Bryer and
Hein.
T'lo • , • TTT 1 TT T
KeJecnons 111ana1 v
Claims 5, 6, and 15 depend from claim 1. Neither Le Vaughn nor Lum
cure the deficiencies in the rejection of claim 1 as unpatentable over the
combined teachings of Escutia and Hein. Accordingly, the rejection of
claims 5, 6, and 15 suffers from the same deficiencies as the rejection of
claim 1. We likewise do not sustain the Examiner's decision rejecting
claims 5 and 6 as unpatentable over the combined teachings of Escutia,
Hein, and Le Vaughn, or the Examiner's decision rejecting claim 15 as
unpatentable over the combined teachings of Escutia, Hein, and Lum.
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Appeal2013-003980
Application 12/421,776
DECISION
The Examiner's rejections of claims 1-25 is REVERSED.
REVERSED
mls
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