Ex Parte Huang et al

Patent Trial and Appeal Board

Feb 25, 2019

13779584 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/779,584 02/27/2013 Ting Huang
12813 7590 02/27/2019
Gates & Cooper LLP - Minimed
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ATTORNEY DOCKET NO. CONFIRMATION NO.
130.121-US-Ul 6618
EXAMINER
BERHANU, ETSUB D
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
docketing-us@gates-cooper.com
gates-cooper@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TING HUANG, ASHWIN K. RAO, RAJIV SHAH, and
QINGLING YANG 1
Appeal 2018-002788
Application 13/779,584
Technology Center 3700
Before STEVEN D.A. McCARTHY, DANIEL S. SONG, and
JILL D. HILL, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Office Action, mailed May 9, 2017 ("Final Act."), rejecting claims 1-
3, 5-9, and 19-25 in the present application. App. Br. 3. We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We REVERSE.
1 The Appellant is the Applicant, Medtronic MiniMed, Inc., which is
identified as the real party in interest. Appeal Brief, filed Oct. 9, 2017
("App. Br.") 2.
Appeal 2018-002788
Application 13/779,584
The claimed invention is directed to an analyte sensor apparatus, such
as those used to detect glucose for treatment of diabetes. Abstract.
Representative independent claim 1 reads as follows:
1. An analyte sensor apparatus comprising:
a base substrate comprising a well;
a platinum composition disposed in the well, wherein:
the platinum composition is disposed in the well as
a layer of electrodeposited platinum black comprising a
central planar region having a first thickness and an edge
region having a second thickness that surrounds the central
planar region;
the first thickness is different from the second
thickness;
the average thickness of the platinum black layer in
the edge region is less than 2X the average thickness of the
platinum black layer in the central planar region;
the central planar region and the edge region
comprise platinum dendrites; and
the layer of electrodeposited platinum black forms
an electroactive surface of a working electrode;
an analyte sensing layer disposed over the working
electrode, wherein the analyte sensing layer detectably alters the
electrical current at the working electrode in the presence of an
analyte; and
an analyte modulating layer disposed over the analyte
sensing layer, wherein the analyte modulating layer modulates
the diffusion of analyte therethrough.
App. Br. 7, (Claims App., italics added for emphasis).
Independent claims 19 and 20 also recite the above italicized
limitations. App. Br. 9--10 (Claims App.).
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Application 13/779,584
REJECTIONS
The Examiner rejects claims 1-3, 5-8, 19, and 22-24 under 35 U.S.C.
§ 103 as obvious over Shah et al. (US 2010/0096278 Al, pub. Apr. 22, 2010
("Shah")). Final Act. 2.
The Examiner rejects claims 9, 20, 21, and 25 under 35 U.S.C.
§ I03(a) as obvious over Shah in view of Wolfe et al. (US 2011/0230735
Al, pub. Sep. 22, 2011 ("Wolfe")). Final Act. 5.
ANALYSIS
In rejecting independent claims 1 and 19, the Examiner finds that
Shah discloses the limitations recited therein, and finds that Figure 2 of Shah
"shows the average thickness of layers in the edge region being less than 2X
the average thickness of layers in the central planar region." Final Act. 3.
While conceding that Shah does not explicitly disclose that "the first
thickness is different from the second thickness," the Examiner further finds
that Shah discloses
in sections [O 179-0181] that a pulse electrodeposition technique
as described by Feltham and Spiro in Chemical Reviews, 1971,
Vol. 71, No. 2, pp:177-193, may be used to form the electrode,
wherein the pulsed electrodeposition technique inhibits
excessive edge growth. To 'inhibit' means to make it difficult to
do something, not to completely prevent or eliminate. This
indicates that some edge growth is still present.
Final Act. 3; see also Ans. 8.
The Examiner observes that the Appellant's Specification "also
describes using the same pulsed electrodeposition technique as described by
Feltham and Spiro to form the electrode." Final Act. 3. Based thereon, the
Examiner concludes that
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Application 13/779,584
It would have been obvious to one of ordinary skill in the art at
the time of the invention that in using the same pulsed
electrodeposition technique to create the electrode, the analyte
sensor apparatus taught by Shah [] would have the same multi-
thickness platinum composition disposed in the well of the base
substrate as that of the claimed invention.
Final Act. 3 ( emphasis added); see also Ans. 8.
We agree with the Appellant that the Examiner's rejections cannot be
sustained. The Appellant is correct that "Figure 2 [ of Shah] does not show
this edge in combination with a central planar region in element 104, much
less one having the claimed physical/geometric properties (i.e. 'less than 2X
... ')." App. Br. 3. One simply cannot tell, from Figure 2 of Shah, the
recited relative thickness as it does not show the central planar region
relative to the edge region. Accordingly, the Examiner's finding with
respect to Figure 2 of Shah is unsubstantiated.
The Examiner clarifies that
while Figure 2 alone does not show an average thickness of
layers in the edge region being less than 2X the average thickness
of layers in the central planar region, Figure 2 along with the
other cited sections of Shah teach that the average thickness of
layers in the edge region are less than 2X the average thickness
of layers in the central planar region.
Answer ("Ans.") 7.
In particular, the Examiner states that
Because the pulse electrodeposition technique used to create the
electrode of Shah does not fully eliminate excessive edge growth,
one of ordinary skill in the art would realize that some edge
growth is still present. Furthermore, section [0038] of Shah
explicitly teaches that its invention is aimed at contributing to the
uniformity of a layer in an analyte sensing device, wherein an
electrode disposed on a base substrate "also exhibits a relatively
flat geometry". "Relatively" flat geometry, in combination with
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Application 13/779,584
the teachings of sections [O 179-0181 ], indicates that the
electrode is not completely planar. The combination of inhibiting
edge growth and having a relatively flat geometry yields an edge
region with a thickness different from the thickness of the central
planar region and an average thickness of the edge region less
than 2X the average thickness of the central planar region.
Ans. 8-9 ( emphasis added).
In rebuttal, the Appellant responds that
it is not known whether pulsed deposition process disclosed in
sections [O 179-0181] of Shah yields an edge region with a
thickness different from the thickness of the central planar region
and an average thickness of the edge region less than 2X the
average thickness of the central planar region. In particular, this
pulsed electrodeposition could, for example, yield an edge region
with a thickness different from the thickness of the central planar
region and an average thickness of the edge region is 2X or 3X
or more the average thickness of the central planar region.
Consequently, the Examiner is merely speculating that this
untaught element occurs in Shah in order to make the rejections.
Reply Brief, filed Jan. 18, 2018 ("Reply Br.") 4; see also id. at 5.
The Appellant has the better position. Firstly, while Shah does teach
inhibiting "excessive edge growth," it is not apparent what is considered
"excessive." While paragraph 38 of Shah does suggest a flat geometry, it
suggests attaining this via selecting the base substrate instead of the
thickness of the deposited platinum. Shah ,r 3 8 ("the base substrate is
selected to exhibit an essentially or predominantly flat geometry"; "the base
substrate is selected to exhibit a flat geometry by avoiding disposing the
electrode on a ridge, lip, shoulder or edge generated by an insulating
composition that is disposed in an area where the electrode is disposed.").
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Application 13/779,584
Fundamentally, the Examiner's position appears to be that, because
Shah and the present Specification reference the same pulsed deposition
process of Feltham et al., the resultant sensor would exhibit the recited
thickness of the edge region that is less than 2X the thickness of the central
planar region as required by the claims. However, this reasoning is flawed
because the evidence indicates that the electrodeposition process disclosed in
Feltham et al. is not a single, fixed process. Instead, Shah describes the
electrodeposition process of Feltham et al. as having variables that impact
the resulting deposition. Shah ,r 179 (Feltham "teach[es] illustrative
protocols and conditions for making electrodes via electroplating and further
teach how these conditions (e.g. current density) can be controlled to affect
the material properties of the electrodeposited metal layers, for example their
density and roughness (factors which correlate to surface area)."). In that
regard, Shah also teaches that even using the "the recommended platinizing
solutions and procedures described at page 193 of[] Feltham," in certain
circumstances,
excessive metal ( e.g. platinum) "growth" may be observed along
the periphery of the electrode made by electrodepositing layers
of a metal( s) onto a substrate having a planar surface and the edge
or lip at the boundary of the planar surface. This "growth" is for
example the result of an uneven deposition of the metal layer
electrodeposited onto the planar surface and the edge or lip at the
boundary of the planar surface.
Shah ,r 180.
Accordingly, the Examiner's finding that the use of the
electrodeposition process disclosed in Feltham et al. results in the claimed
thicknesses is not supported by the evidence. To be clear, because the
electrodeposition process of Feltham et al. is used both by the Appellant and
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Application 13/779,584
in Shah, the evidence does indicate that the pulsed deposition process of
Feltham et al. would be capable of providing the thickness recited in the
claims at issue. However, that does not mean that it actually discloses the
recited relative thickness, or that such thicknesses would necessarily occur,
which is the apparent position of the Examiner in this rejection. Moreover,
the Examiner's rejection does not set forth a reason with rational
underpinnings as to why it may have been obvious to a person of ordinary
skill in the art to use this electrodeposition process to attain the recited
relative thickness.
Therefore, in view of the above considerations, we reverse the
Examiner's rejection of independent claims 1, 19, and 23. The Appellant
relies on dependency for patentability of dependent claims 2, 3, 5-8, 22, 24,
and 25. App. Br. 4. Accordingly, we reverse the Examiner's rejection of the
dependent claims as well. In that regard, as noted by the Appellant (App.
Br. 4), the Examiner's application of Wolfe in Rejection 2 as to certain
claims does not remedy this deficiency in the rejection based on Shah.
CONCLUSION
The Examiner's rejections are REVERSED.
REVERSED
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