Ex Parte KRIZ et al

Patent Trial and Appeal Board

Jun 22, 2018

12201898 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/201,898 08/29/2008
77238 7590 06/26/2018
HAHN LOESER & PARKS, LLP - SAN DIEGO
One America Plaza
600 W. Broadway, Suite 1500
San Diego, CA 92101
Dario KRIZ
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.
AWPT-OOlUSO 1292
EXAMINER
SASAKI, SHOGO
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
patents@hahnlaw.com
sandiegodocket@hahnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARIO KRIZ and KRISTIN ANN KRIZ
Appeal2017-000771
Application 12/201,898
Technology Center 1700
Before A VEL YN M. ROSS, BRIAND. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our Opinion, we refer to the Specification filed August 29, 2008
("Spec."); the Non-Final Action mailed January 15, 2014 ("Non-Final
Act."); the Appeal Br. filed November 13, 2014 ("App. Br."); the
Examiner's Answer mailed March 31, 2015 ("Ans."); and the Reply Brief
filed June 1, 2015 ("Reply Br.").
2 Appellants identify LifeAssays AB as the real party in interest. App. Br.
3.
Appeal2017-000771
Application 12/201,898
The invention relates to a disposable analytical microprocessor device
for determining concentration of an analyte in a biological sample. Spec.
i-fi-12, 8. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A disposable analytical microprocessor device for use
with a sensing meter and a batch of disposable consumables
wherein said disposable analytical microprocessor device
comprises a microprocessor and memory, said memory
comprising at least one stored batch-specific disposable
consumable parameter value and at least one self-executable
algorithm,
wherein said analytical microprocessor device is capable of
reversible engagement and bi-directional data transfer with said
sensing meter,
wherein said analytical microprocessor device is configured
for calculating an analyte concentration value using data
received from the sensing meter in combination with
mathematical approximation formulas comprised in said stored
batch-specific disposable consumable parameter value, and
transferring the analyte concentration value to said sensing
meter.
App. Br. 21 (Claims App'x.).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Housefield et al.
("Housefield")
Sleva et al.
("Sleva")
Brown
US 2002/0170823 Al
US 2003/0038047 Al
US 2006/0178914 Al
2
Nov. 21, 2002
Feb.27,2003
Aug. 10, 2006
Appeal2017-000771
Application 12/201,898
Wang et al.
("Wang")
Priddy
US 2006/0222568 Al
US 2006/0248554 Al
Oct. 5, 2006
Nov. 2, 2006
Christine Berggren Kriz et al., Magnetic Permeability
Measurements in Bioanalysis and Biosensors, ANAL. CHEM. 68,
1966-70 (1996) ("Kriz I")
Kirstin Kriz et al., Advancement toward magneto
immunoassays' BIOSENSOR & BIO ELECTRONICS 13 (1998)
("Kriz II")
REJECTIONS
The Examiner maintains and Appellants seek review of the following
rejections: (1) claims 1-20 under 35 U.S.C. § 112, second paragraph as
indefinite; (2) claims 1-8, 10, 12, 14, 15, and 18-20 under 35 U.S.C.
§ 103(a) as obvious over Housefield; (3) claims 9 and 11 under 35 U.S.C.
§ 103(a) as obvious over Housefield in view of Priddy, Brown, or Sleva; and
(4) claims 13, 16, and 17 under 35 U.S.C. § 103(a) as obvious over
Housefield in view of Wang, Kriz I, and Kriz II. Non-Final Act. 8-17; App.
Br. 4.
OPINION
Rejection of claims as indefinite
The Examiner rejects claims 1-20 as indefinite. Non-Final Act. 8-12.
In particular, the Examiner finds that the "mathematical approximation
formulas" in claim 1 must be part of the algorithm in the claim, and not part
of the recited "parameter value." Id. at 8. We disagree. We find no support
for the Examiner's position that a mathematical formula cannot be part of a
parameter value, and do not hold claim 1 indefinite on this basis.
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Appeal2017-000771
Application 12/201,898
The Examiner also finds that it is unclear whether the mathematical
formulas recited in claims 6 and 8 are the same mathematical formula
recited in claim 1. Id. Claim 6 recites, in relevant part, "wherein said self-
executable algorithm is based on ... a mathematical function
approximation." App. Br. 21 (Claims App'x.). Although "mathematical
function approximation" in claim 6 sounds similar to "mathematical
approximation formulas" in claim 1, we find no reason for confusion of the
terms and no reason to find either claim is indefinite for use of the terms.
Claim 8 recites "mathematical approximation formulas," the same term
recited in claim 1, thus claim 8 is not indefinite for reciting the term.
The Examiner states that "it is unclear if applicant intends to
positively claim: 'a disposable consumable;' and/or 'a disposable reagent
vials or strips' as part of the claimed subject matter." Non-Final Act. 10.
The term "a disposable reagent vials or strips" is not recited in any pending
claim. See App. Br. 21-25. Appellants argue that "a disposable
consumable," although present in the claims, is not a positively claimed
element. See id. at 15. We agree, and do not find the claims indefinite on
this basis.
In sum, we find that the claims do not contain words or phrases whose
meaning is unclear. See In re Packard, 751F.3d1307, 1314--15 (Fed. Cir.
2014).
Rejection of claims as obvious
The Examiner finds claims 1-8, 10, 12, 14, 15, and 18-20 obvious
over Housefield. Non-Final Act. 13-16. "The claims as drafted only
requires that the microprocessor to be structurally capable of receiving and
sending data to another system; and performing calculations." Id. at 9.
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Appeal2017-000771
Application 12/201,898
Housefield discloses a test apparatus having a base that performs a
plurality of tests for different analytes in body fluids and a portable tester,
such as a glucose meter that is detachably mounted to the base and can be
data linked to the base. Housefield Abstract.
Appellants argue, inter alia, that Housefield is silent with respect to
"stored batch-specific disposable consumable parameter value" and
therefore fails to teach or suggest all claim limitations. App. Br. 16.
The Examiner interprets "stored batch specific disposable consumable
parameter value" broadly by stating the recitation "does not limit the recited
value to any specific value." Final Act. 16. Examiner also responds that
Housefield teaches that the base station can be configured to perform a
variety of tests, and the tests must include "some calculations based of [sic]
sensed data and instruction provided on the microprocessor." Ans. 29. The
Examiner finds that the microprocessor of the base is programmed to
receive, analyze and store data from the microprocessor of the meter and
communicates with the meter. Id. at 30. The Examiner concludes that
Housefield's microprocessor would have instructions and/or algorithms pre-
stored in the microprocessor. Id.
"Stored batch-specific disposable consumable parameter value" is a
required claimed element. Whether Housefield teaches or suggests this
claim element turns on our interpretation of the term. During prosecution,
an application's claims are given their broadest reasonable scope consistent
with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The words used in a claim must be read in light of
the specification, as it would have been interpreted by one of ordinary skill
in the art at the time of the invention. Id.
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Appeal2017-000771
Application 12/201,898
"Stored batch-specific parameter values" are described in the
Specification in relation to, for example, the formula y=kx+m, where y is the
analyte concentration, x is the received measuring data, k is a stored batch
specific slope constant, and m is a stored batch specific intercept constant.
Spec. i-f 51---61 (providing various algorithms/formulas for calculating
analyte concentration and where the formulas include denoting constants ki,2
and m1 that "represent stored batch specific parameter values"). We
interpret "stored" as referring to information stored in the claimed memory
and "batch specific" as referring to parameter values tied to a particular lot
or quantity of disposable consumables, such as test strips. Therefore,
"stored batch-specific disposable consumable parameter values" are values
for specific parameters, such as a slope constant or intercept constant, for a
particular lot or quantity of disposable consumables, such as test strips.
Using this interpretation of "stored batch-specific disposable
consumable," we find that the Examiner has not adequately explained how
Housefield discloses this element of the claims. As a consequence, the
Examiner cannot be said to have provided a prima facie case of obviousness.
DECISION
For the above reasons, the Examiner's rejection of claims 1-20 is
reversed.
REVERSED
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