Ex Parte Kalveram et al

Patent Trial and Appeal Board

Jul 29, 2014

11838950 (P.T.A.B. Jul. 29, 2014)

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.
11/838,950 08/15/2007 Stefan Kalveram 23803 US-dc 7606
77589 7590 07/30/2014
KRIEG DEVAULT/ROCHE
2800 ONE INDIANA SQUARE
INDIANAPOLIS, IN 46204
EXAMINER
IGYARTO, CAROLYN
ART UNIT PAPER NUMBER
2884
MAIL DATE DELIVERY MODE
07/30/2014 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 PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte STEFAN KALVERAM, BERND ROESICKE,
FREDERIC WEHOWSKI, JEAN-MICHEL ASFOUR
____________

Appeal 2012-004622
Application 11/838,950
Technology Center 2800
____________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and KAREN M.
HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below (with text in bold for emphasis):
1. A method for analyzing a fluid sample, comprising:
introducing the fluid sample to a test element, the test
element comprising at least a measurement area and a detection
Appeal 2012-004622
Application 11/838,950

2
area and at least one reagent arranged at least in the
measurement area, the sample sequentially or essentially
simultaneously spreading into the detection area and the
measurement area;
photometrically measuring an extent of filling of the
detection area by the fluid sample, said measuring
comprising:
irradiating the sample in the detection area with a first
light and measuring at least one spectroscopic parameter
selected from the group of parameters consisting of absorption,
transmission, remission and fluorescence, the first light having
a first wavelength at which the at least one spectroscopic
parameter measured therefrom is substantially independent of at
least one chemical parameter of the sample comprising at least
one of composition, concentration of compounds in the sample
and activity of such compounds;
and
correlating the measured spectroscopic parameter to
the extent of the filling of the detection area; and
said method for analyzing a fluid sample further
comprising analyzing the sample in the measurement area to
determine the at least one chemical parameter of the sample.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jessop US 4,420,566 Dec. 13, 1983
Miltner US 6,707,544 B1 Mar. 16, 2004

THE REJECTIONS

1. Claims 1-17 and 19 are rejected under 35 U.S.C. § 102(b)as being
anticipated by Miltner.

Appeal 2012-004622
Application 11/838,950

3
2. Claim 18 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Miltner in view of Jessop.
ANALYSIS
We reverse the above rejections based on the findings of fact,
conclusions of law, and arguments expressed by Appellants in the Brief and
Reply Brief. We agree with Appellants that Miltner does not disclose
“measuring the extent of the filling of the detection area” or “correlating the
measured spectroscopic parameter to the extent of the filling of the detection
area” as recited in claim 1 for the reasons expressed by Appellants. Br. 9-10.
Reply Br. 5. The Examiner relies upon column 2, ll. 59-62 and column 11,
ll. 50-53 of Milner for teaching this aspect of claimed invention. Ans. 11.
However, the disclosure found therein supports Appellants’ position. We
thus reverse the anticipation rejection. Because the reference of Jessop does
not cure the deficiency of Miltner, we also reverse rejection 2.
The decision of the Examiner is reversed.
REVERSED

kmm