Ex Parte Neel et al

Patent Trial and Appeal Board

Nov 26, 2013

11181778 (P.T.A.B. Nov. 26, 2013)

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.
11/181,778 07/15/2005 Gary T. Neel 06882.0147-00 6871
22852 7590 11/26/2013
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
FRITCHMAN, REBECCA M
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
11/26/2013 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 GARY T. NEEL, BRENT E. MODZELEWSKI,
ALLAN JAVIER CABAN, ADAM MARK WILL, and
CARLOS OTI1
________________

Appeal 2012-0062612
Application 11/181,778
Technology Center 1700
________________

Before JEFFREY T. SMITH, MARK NAGUMO, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is listed as Nipro Diagnostics, Inc. (Appeal
Brief, filed 6 September 2011 (“Br.”), 3.)
2 Related Appeal 2012-006523 of Application 11/458,298, which is the
basis for the obviousness-type double patenting rejection herein, is being
decided together with this appeal.
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Application 11/181,778

2
Appellants timely appeal under 35 U.S.C. § 134(a) from the final
rejection3 of claims 1-15, 38, 39, and 41-45. We have jurisdiction.
35 U.S.C. § 6. We AFFIRM.
OPINION
A. Introduction4
The subject matter on appeal relates to diagnostic test strips for
electrochemically sensing a particular constituent within a fluid.
(Spec. [001].)
Claim 1 is representative and reads:
A diagnostic test strip, comprising:
at least one electrically insulating layer;
a conductive pattern formed on the at least one insulating
layer including at least one electrode disposed on the at
least one insulating layer at a proximal region of the strip,
electrical strip contacts disposed on at least one insulating
layer at a distal region of the strip, and conductive traces
electrically connecting the electrodes to at least some of
the electrical strip contacts;
a reagent layer contacting at least a portion of at least one
electrode; and
a machine-readable pattern readable to identify data
particular to the test strip, said machine-readable pattern
comprising: (a) at least one of said electrical strip
contacts; and (b) at least one discrete portion of electrical
insulating material disposed over said at least one of the
electrical strip contacts.

3 Office action mailed 21 March 2011 (“Final Rejection”; cited as “FR”).
4 Application 11/181,778, Diagnostic Strip Coding System and Related
Methods of Use, filed 15 July 2005. The specification is referred to as the
“Specification,” and is cited as “Spec.”
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Application 11/181,778

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(Claims App., Br. 23; key limitations in dispute italicized.)
The Examiner maintains the following rejection:5
Claims 7, 12, and 44 stand rejected under 35 U.S.C. § 103(a) as
unpatentable in view of the combined teachings of Neel6 and
Moerman.7
The Examiner raises the following new ground of rejection:8
Claims 1-6, 8-11, 13-15, 38-39, and 41-45 stand rejected under 35
U.S.C. § 102(b) as anticipated by Neel based on Neel Publication.9
In the Final Rejection, claims 1-6 and 8-15 were rejected as obvious
in view of Neel and claims 7 and 38-45 were rejected as obvious over the
combination of Neel and Moerman. FR 2, 4. The Examiner modified the
§ 103 rejections to reject claims 1-6, 8-11, 13-15, 38-39, and 41-45 under
§ 102 to reflect the Examiner’s finding that the Neel Publication discloses at
least one discrete portion of electrical insulating material disposed over at
least one of the electrical strip contacts. Ans. 12.

5 Examiner’s Answer mailed 25 January 2012 (“Ans.”). The Examiner also
maintains the rejection of claims 1-15 and 38-45 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-16, 30, 33, and 35 of copending Application 11/458,298. Ans. 9-
10. Appellants do not appeal the obviousness-type double patenting
rejection. Br. 11. We have discretion as to whether or not to reach
provisional double patenting rejections. Ex parte Jerg, No. 2011-000044,
2012 WL 1375142, at *3 (BPAI April 4, 2012) (Informative Decision). In
this case, we decide not to reach the Examiner’s provisional rejection
because we affirm the Examiner’s prior art rejections of all the pending
claims.
6 U.S. Patent 6,743,635 B2, issued 1 June 2004.
7 U.S. Published Application 2002/0130042, published 19 September 2002.
8 Ans. 5.
9 U.S. Published Application 2003/0203498, published 30 October 2003.
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B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.

Rejection Under 35 U.S.C. § 102(b)
Appellants do not separately argue the patentability of claims 1-6, 8-
11, 13-15, 38-39, and 41-45 on appeal. We select claim 1 as representative.
Accordingly, claims 2-6, 8-11, 13-15, 38-39, and 41-45 will stand or fall
together with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2007) (in force
when the Brief was filed).
In Appellants’ view, the Examiner failed to identify in Neel all of the
elements common to claim 1. Br. 13; Reply Br.10 11. In response to the
new ground of rejection, Appellants maintain their position that Neel does
not disclose the limitations of claim 1 italicized above. Reply Br. 11.
Appellants concede that “Neel discloses detecting the presence or absence of
a current and measuring a voltage drop.” Id. at 13. However, Appellants
argue that Neel does not disclose a machine-readable pattern because
“[h]aving a different voltage-drop across the auto-on conductor serves only
to distinguish an analyte test strip from a maintenance check strip[.]” Id. at
12. Appellants further argue that Neel does not contain data particular to the
test strip because “[t]he only identifying data is whether the test strip is a test
strip[.]” Id. at 13; see Br. 15. In addition, Appellants contend that “[t]here
is no pattern of currents or pattern of voltage drops. They are simply present

10 Reply Brief filed 1 March 2012 (“Reply Br.”).
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or absent and then quantified if present. This does not constitute a machine-
readable pattern as disclosed by Applicants.” Reply Br. 13; see Br. 15.
Appellants further argue that “one of skill in the art . . . would not read
Neel as teaching the placement of cover 72 over the electrical contacts 32-
38” because “Neel discloses that both a current flow and a voltage drop are
measured through and across the auto-on conductor 48 surrounded by the
electrical contacts 32-38.” Reply Br. 14; see Br. 15-16.
The dispositive issues in this appeal are (1) the meaning of the
limitation “a machine-readable pattern readable to identify data particular to
the test strip” and (2) whether Neel discloses this element of claim 1.
We begin with the language of the claim itself, consulting the
supporting Specification for definitions and to determine whether persons of
ordinary skill in the art would have attributed to particular words or phrases
specialized meanings distinct from the general meaning of those words or
phrases in everyday use. Cf. In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997).
Here, “a machine-readable pattern readable to identify data particular
to the test strip” is on its face a broad limitation. Within the context of the
claim itself, the “machine-readable pattern” comprises only two parts: (a) “at
least one . . . electrical strip contact[]” and (b) “at least one discrete portion
of electrical insulating material disposed over said at least one of the
electrical strip contacts”.
Appellants direct us to passages on pages 13 and 25 in the
Specification and Figures 4D and 6 as support for the “machine-readable
pattern.” (Br. 8; Reply Br. 6). These passages refer to “an embedded code
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relating to data associated with a lot of test strips, or data particular to that
individual strip” (Spec. 13 [034]) and “[o]ne such code [] illustrated in
FIG. 6, where conductive contacting pads 60 and 64 are overprinted with an
electrical insul[a]ting material, such as, for example, a non-conductive
(insulating) ink layer 75” (Spec. 25 [058]). These passages do not define the
characteristics of “data particular to the test strip.” At most, they provide
specific embodiments of such “particular data.” We will not read limitations
from specific embodiments into the claims. In re Am. Acad. Sci. Tech Ctr.,
367 F.3d 1359, 1369 (Fed. Cir. 2004).
The Examiner reasonably finds that Neel discloses at least one
electrical strip contact (Ans. 5, citing Neel Figure 3, 50) and at least one
discrete portion of electrical insulating material disposed over said at least
one of the electrical strip contacts (id., citing Neel [0045]). The
preponderance of the evidence supports the Examiner’s finding that Neel
discloses a dielectric layer composed of an electrically insulating material
that can be used to cover portions of the conductive pattern. (See Neel
[0045] (“[a] dielectric layer 50 may also be disposed on base layer 18, so as
to cover portions of conductive pattern 20.” (emphasis added.))).
Appellants’ argument that Neel teaches against covering the electrical
contacts with such electrically insulating material is not persuasive. The
statement in Neel that Appellants rely upon to support their argument,
namely the statement that the electrically insulating material “preferably
does not cover electrical contacts 32-38 or auto-on conductor 48” (Neel
[0045]), is not only a statement of a preferred embodiment, but it also does
not preclude the electrically insulating material from being disposed on
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portions of the electrical contacts or auto-on conductor as required by
claim 1. Appellants’ argument that an insulating material would prevent the
flow of electrical current and therefore “one of skill in the art [] would not
read Neel as teaching the placement of cover 72 over the electrical contacts
32-38” (Reply Br. 14) only addresses an embodiment where the contacts are
completely covered, rather than where the electrically insulating material is
disposed to “cover portions” as stated in Neel (Neel [0045]). Appellants
direct us to an embodiment where strips of non-conductive insulating ink 72,
73 create non-conductive regions on the test strip rather than completely
cover the contacts (Br. 8, citing elements 72 and 73 of Fig. 4D) as well as an
embodiment where contacting pads 60 and 64 are completely covered or
“overprinted” (Spec. [058]) with insulating material 75 (Br. 8, citing element
75 of Fig. 6). Thus claim 1 does not require that a contact be completely
covered with an insulating material in order to meet the limitation of a
machine-readable pattern readable to identify data particular to the test strip.
Therefore, Neel discloses a machine-readable pattern as claimed in claim 1.
The Examiner also reasonably finds that the machine-readable pattern
is readable to identify data particular to the test strip (Ans. 5, citing Neel
Figure 3, 48 (auto-on conductor)). As noted by the Examiner, since the
voltage drop detected by the meter for the test strip is distinct for the test
strip, it is used to identify data particular to the test strip as required by
claim 1. Id. at 11. Appellants’ argument that this particular data is not
sufficient to meet the requirements of claim 1 is not persuasive for the
reason that it would impermissibly read limitations into the claim that are
not present. Appellants direct us to page 13, lines 17-22, of the
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Specification for support for their interpretation of the claim requirement
that that the test strip includes “a machine-readable pattern readable to
identify data particular to the test strip” (Br. 8). Page 13 refers to the test
strip having “an embedded code” and “embedded information presents data
readable by the meter signaling the meter’s microprocessor to access and
utilize a specific set of stored calibration parameters particular to test strips
from a manufacturing lot to which the individual strip belongs, or to an
individual test strip.” Spec. 13. The Examiner finds that the voltage data of
Neel is used in the same way. Ans. 12. Appellants do not dispute this
specific finding by the Examiner, but assert broadly that in Neel “[t]he only
identifying data is whether the test strip is a test strip; there is no data
particular to the test strip.” Reply 13. This argument is unpersuasive
because it is the Appellants’ burden to precisely define the invention, not the
PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellants
always have the opportunity to amend the claims during prosecution, and
broad interpretation by the examiner reduces the possibility that the claim,
once issued, will be interpreted more broadly than is justified. In re Prater,
415 F.2d 1393, 1404-05 (CCPA 1969).
Therefore, the preponderance of the evidence supports the Examiner’s
determination that claim 1, properly interpreted, is anticipated by Neel.
Rejection Under 35 U.S.C. § 103(a)
Appellants argue in the Appeal Brief that claim 7 “is allowable for the
same reasons as claim 1 discussed above” (Br. 18) and rely on arguments
made with respect to claim 1 for claim 44 in the Reply Br (Reply 15).
Appellants also argue that claim 12 should be allowed for the same reasons
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provided for the patentability of claim 1. Reply 18. In addition, Appellants
assert that the Examiner’s reasoning for the determination of obviousness is
unsupported and, therefore, the Examiner has not established a prima facie
case of obviousness. Id.
These arguments are not substantively distinct from the arguments
against the rejection of the independent claim. Merely reciting what a claim
states is not a separate argument under the rules governing appeals. We
therefore do not find these arguments persuasive of harmful error in the
Examiner’s rejections under § 103.
We conclude that harmful error has not been demonstrated in the
Examiner’s rejections.
C. Order
We affirm the rejections of claims 1-15, 38, 39, and 41-45.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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