Ex Parte Hoenes et al

Patent Trial and Appeal Board

May 31, 2016

11384951 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111384,951 0312012006
64108 7590 06/02/2016
BOSE MCKINNEY & EV ANS LLP
111 Monument Circle
Suite 2700
INDIANAPOLIS, IN 46204
FIRST NAMED INVENTOR
Joachim Hoenes
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.
9134-0238 1619
EXAMINER
SIEFKE, SAMUEL P
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
MBARTOL@BOSELA W.COM
patent@boselaw.com
pair_roche@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOACHIM HOENES, HANS LIST, KARL MILTNER, and
WILFRIED SCHMID
Appeal2014-006510
Application 11/384,951
Technology Center 1700
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 34,
35, and 41--43.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The Appellants state that "Roche Diagnostics Operations, Inc." is the real
party in interest (Appeal Brief filed November 22, 2013, hereinafter "Appeal
Br.," 1 ).
2 See Appeal Br. 2; Examiner's Answer entered March 17, 2013, hereinafter
"Ans.," 2; Advisory Action entered September 11, 2013, Item 15; Final
Office Action entered April 26, 2013, hereinafter "Final Act.," 2.
Appeal2014-006510
Application 11/384,951
BACKGROUND
The subject matter on appeal relates to a test instrument for analyzing
body fluids, such as blood or urine, and to a tape cassette for use in a test
instrument (Specification, hereinafter "Spec.," 1, 11. 7-10). Details of the
appealed subject matter are recited in independent claims 34 and 35, which
are reproduced below from pages 19-20 of the Appeal Brief(Claims App.),
with the key limitations at issue in each of the claims indicated in italicized
text:
34. A test instrument for analyzing body fluids, comprising:
a test tape that can be transported from a storage space to
a waste space by advancing the tape, the test tape having a
plurality of test sections to which body fluid can be applied at a
receiving position, the test sections comprising a reagent which
reacts with the body fluid to produce a response to a constituent
in the body fluid;
a measuring unit for detecting the constituent of the body
fluid on an active one of the test sections, wherein the
measuring unit comprises an optical measuring unit;
the test tape comprising a functional section for an
auxiliary instrument function, the functional section being
moveable to a functional position by advancing the test tape,
wherein the functional section includes a calibration field for
calibrating the measuring unit, the calibration field including a
white, black, grey, colored or transparent calibration field; and
wherein the measuring unit further comprises a
comparator configured to compare a measured value detected
on the calibration field with a target value resident in the
instrument.
35. A tape cassette for use in a test instrument, comprising:
a test tape having a plurality of test sections disposed
along its length, the test sections comprising a reagent applied
to the test tape, the reagent configured to react with a body fluid
applied thereto to produce a response to a constituent in the
body fluid; and
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Application 11/384,951
a plurality of functional sections disposed on the test tape
and configured to perform an auxiliary instrument function
when brought into a functional position in the test instrument in
which the tape cassette is used, the test sections and functional
sections alternating along the lengthwise direction of the tape
and wherein each of the functional sections comprises a
calibration field having defined optical properties configured to
calibrate an optical measuring unit and wherein the calibration
field is white, black, grey, colored or transparent.
THE REJECTION
Claims 34, 35, and 41-43 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Ishizaka et al. ("Ishizaka"). 3, 4 (Examiner's Answer
entered March 17, 2014, hereinafter "Ans.," at 2; Advisory Act., Item 15;
Final Office Action entered April 26, 2013, hereinafter "Final Act.," 2-6.)
DISCUSSION
The Appellants argue the claims in three groupings: (i) claims 34 and
42; (ii) claims 41 and 43; and (iii) claim 35 (Appeal Br. 5-17). Accordingly,
we provide our discussion below consistent with the Appellants' groupings.
1. Claims 34 and 42
Claim 34 recites, in relevant part, that "the functional section includes
a calibration field for calibrating the measuring unit, the calibration field
including a white, black, grey, colored or transparent calibration field" and
"the measuring unit further comprises a comparator configured to compare a
3 US 5,077,010 issued December 31, 1991.
4 As noted on page 2 of the Appeal Brief, the Appellants submitted an
Amendment after Final Office Action on August 26, 2013, proposing the
cancellation of all rejected claims except for claims 34, 35, and 41--43. The
Examiner appears to have entered the Amendment (Advisory Act.).
Therefore, claims 34, 35, and 41--43 are the only claims before us.
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Application 11/384,951
measured value detected on the calibration field with a target value resident
in the instrument" (Appeal Br. 19). Claim 42 recites these same limitations
(id. at 19-20).
The Examiner found that Ishizaka discloses every limitation of claim
34 (Final Act. 2-6). With respect to the "the calibration field" limitations,
the Examiner found that Ishizaka discloses color areas 705a, 705b, 705c and
705d and stated that these color areas may be considered as colored
calibration fields within the scope of the disputed claim limitation (id. at 3).
With respect to the "comparator configured to ... " limitations, the Examiner
found that Ishizaka discloses a computer that "comprises a known list of
possible information parameters (target values resident in the instrument)
residing in a database ... and the optical unit reads and discriminates the
specific color tone, color density, shapes, etc[.] that provides instruction to
the instrument on which analysis conditions, analysis method, etc[.] are to be
performed" (Ans. 9). According to the Examiner, "Ishizaka discloses a
comparator configured to compare a measured value detected on a
calibration field with a target value resident in the instrument" because
Ishizaka discloses a computer that compares, or is capable of comparing, the
information parameters obtained by optical reading of the color areas with a
database of information (id. at 9-10). Additionally, the Examiner stated that
"Ishizaka is structurally configured to perform the function of comparing a
measured value detected on the calibration field with a target value resident
in the instrument" (id at 10).
The Appellants argue that "[t]he idea of calibrating using the color
codes 705a-705d is not mentioned in Ishizaka" (Appeal Br. 9) and that
"[ n ]othing in [the cited portions of Ishizaka] suggests a calibration field or
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Application 11/384,951
comparing a value measured on a calibration field with a target value to
calibrate the instrument as claimed" (id. at 10). The Appellants contend that
Ishizaka does not describe a "calibration field" because Ishizaka "teach[ es]
of using color areas to record information about the test film that will be
read at a later time," whereas "'calibration' is a real time event involving a
comparison of a measured value to a target value" (id.). According to the
Appellants, "there is no mention in Ishizaka of a comparator configured to
calibrate the measuring unit" (id.).
We agree with the Appellants as to these claims. The current
Specification explains that "calibration can compensate for aging and other
change between the time was manufactured and the time of use to ... ensure
accuracy of measurement" (Spec. 6, 11. 3-7). According to the Specification,
the measuring unit is calibrated using a comparator (id. at 6, 11. 14-16). By
contrast, Ishizaka does not describe such "calibration" using a "comparator"
as required by claims 34 and 42.
Instead, Ishizaka discloses a recording region 702 comprising color
areas 705a-705d, which provide various information (e.g., analysis method,
analysis conditions, number of analysis operations, and lot number) on the
test film (Fig. 50; col 35, 11. 29-35; col 36, 11. 3-11 ). In a further discussion
of the recording region, Ishizaka discloses that reading the information
recorded on the recording region "prior to analysis" allows for the "analysis
[to] be carried out quickly, automatically and sequentially" because
"erroneous analysis operations can be prevented" and "the analysis method,
the analysis conditions and the like can be adjusted automatically based on
the information" (col. 37, 11. 3-17).
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Thus, although Ishizaka reasonably discloses comparing the recorded
information with a database to determine the appropriate "analysis method,
the analysis conditions and the like" to be adjusted automatically, that
disclosure falls short as evidence supporting a finding that Ishizaka describes
"a comparator configured to compare a measured value detected on a
calibration field with a target value" (emphasis added), as required by
claims 34 and 42. In re Giannelli, 739 F.3d 1375, 1379 (Fed Cir. 2014)
(written description can make clear that "configured to" has a narrower
meaning than merely "capable of' or "suitable for"). See also Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) ("A
construction that is unreasonably broad and which does not reasonably
reflect the plain language and disclosure will not pass muster.").
For these reasons, we cannot uphold the Examiner's rejection of
claims 34 and 42.
Rejection of Claims 41and43
Claims 41 and 43 depend from claims 34 and 42, respectively.
Therefore, we do not uphold the rejection with respect to claims 41 and 43
for the same reasons discussed above for claims 34 and 42.
Rejection of Claim 35
Unlike claims 34 and 41--43, claim 35 does not recite a "comparator"
(Appeal Br. 19). Instead, claim 35 recites: "wherein each of the functional
sections comprises a calibration field having defined optical properties
configured to calibrate an optical measuring unit and wherein the calibration
field is white, black, grey, colored or transparent" (id.).
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The Examiner found that Ishizaka discloses a test cassette for use in a
test instrument that comprises a test tape with alternating test (analysis)
sections 214 and functional (barrier) sections 215 as required by the claim
(Final Act. 6) (citing Ishizaka Fig. l lB). Additionally, the Examiner found
that "the function section 215 comprises a calibration field having an
inherent defined optical property that is capable of calibrating an optical
measuring unit" (id.). The Examiner found further that the "functional
section 215 is inherently white, black, grey, colored, or transparent because
these colors or shades of material cover the entire spectrum of the visual
spectrum" (id.).
The Appellants argue the Examiner's finding that the barrier portions
215 are "functional sections" within the scope of claim 3 5 is erroneous
because these barrier portions are "unrelated to calibration" and "could be
wholly unsuitable for calibration by optical means" (App. Br. 16-17).
Specifically, the Appellants argue the barrier portions function to prevent
migration of the liquid sample and there is no indication that the material of
the barrier sections can "provide a suitable surface for reflecting incident
light and may thus be wholly unsuitable for calibration by the optical means
as claimed" (id.). In view of these deficiencies and because the Appellants
contend the Examiner has not sufficiently explained why the barrier sections
"would necessarily have the 'defined optical properties to be configured to
calibrate an optical measuring unit,'" the Appellants argue the Examiner's
rejection is improper (Reply Br. 7-9).
We have fully considered the Appellants' arguments; however we
find the arguments do not reveal any reversible error in the Examiner's
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factual findings, analysis and conclusions. In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011).
As found by the Examiner (Final Act. 6), Ishizaka discloses a test
cassette with a test tape that includes analysis regions 214 and barrier
portions 215 alternating along the lengthwise direction of the tape (Fig.
l lB-1 lC; col. 21, 1. 62-col. 22, 1. 6). Regarding barrier portions 215, we
discern no error in the Examiner's finding (Final Act. 6) that these portions
will necessarily have an optical property as recited in claim 35-i.e., one of
"white, black, grey, colored or transparent"-because the list specified in the
claim broadly includes all possible optical properties. Because Ishizaka' s
barrier portions 215 have the same optical characteristics required for the
Appellants' specified "functional sections," it would reasonably appear that
Ishizaka' s barrier portions 215, which are structurally indistinguishable from
the "functional sections" recited in claim 35, would inherently possess the
characteristic of a "calibration field having defined optical properties
configured to calibrate an optical measuring unit" as required for the
"functional sections" recited in the claim. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997) ("[T]he absence of a disclosure relating to function
does not defeat the Board's finding of anticipation."); see also id. at 14 78
("the burden shifted to Schreiber to show that the prior art structure did not
inherently possess the functionally defined limitations of his claimed
apparatus").
The Appellants argue that "the material from which [Ishizaka' s]
section 211 and/or section 215 is made might not provide a suitable surface
for reflecting incident light and may thus be wholly unsuitable for
calibration by the optical means as claimed" (Appeal. Br. 16-17). Such
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speculative argument in the Appeal Brief, however, is not supported by any
factual evidence and is therefore entitled to little or no probative weight.
See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (mere lawyer's
arguments and conclusory statements, which are unsupported by concrete
factual evidence, are entitled to little probative value).
In any event, the Appellants' unsupported argument appears to be
contradicted by their own Specification, which states that "[a Jn area of the
transparent carrier foil which reflects almost no light may already be
sufficient for the dark calibration" (Spec. 6, 11. 9-10). Neither claim 35 nor
any other part of the Specification indicates any requirement to the effect
that the calibration field is required to provide reflective light in order to be
"configured to calibrate an optical measuring unit." See In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998) (The "name of the game is the claim"
and unclaimed features cannot impart patentability to claims); In re Van
Geuns, 998 F.2d 1181, 1184 (Fed. Cir 1993) (although claims are interpreted
in light of the specification, limitations found as embodiments in the
specification are not read into the claims).
For these reasons, we uphold the Examiner's rejection of claim 35.
SUMMARY
The Examiner's final decision to reject claims 34, 35, and 41--43 is
affirmed as to claim 35 but reversed as to claims 34 and 41-43.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).
AFFIRMED-IN-PART
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