Ex Parte Popovich et al

Patent Trial and Appeal Board

Nov 26, 2013

11458298 (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.
11/458,298 07/18/2006 Natasha Popovich 06882.0178-00000 8554
22852 7590 11/26/2013
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
OLSEN, KAJ K
ART UNIT PAPER NUMBER
1731
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 NATASHA POPOVICH, GARY NEEL,
DENNIS SLOMSKI, and GRETA WEGNER1
________________

Appeal 2012-0065232
Application 11/458,298
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 29 November 2011 (“Br.”), 3.)
2 This appeal is being decided together with Appeal 2012-006261, in
11/181,778. Claims pending in this appeal are the basis for an obviousness-
type double patenting rejection in Appeal 2012-006261.
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Appellants timely appeal under 35 U.S.C. § 134(a) from the final
rejection3 of claims 1-5, 7-20, and 38. 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. [0001].)
Claim 1 is representative and reads:
A diagnostic test strip comprising:
at least one electrically insulating substrate layer; and
a plurality of electrical strip contacts disposed on the at
least one insulating substrate layer,
wherein the electrical strip contacts include a first
conductive layer disposed on the substrate and a second
conductive layer disposed on top of the first conductive
layer, and
wherein the second conductive layer is thicker than the
first conductive layer.
(Claims App., Br. 27; key limitations in dispute italicized.)

3 Office action mailed 3 June 2011 (“Final Rejection”; cited as “FR”).
4 Application 11/458,298, Diagnostic Strip Coding System with Conductive
Layers, filed 18 July 2006. The specification is referred to as the
“Specification,” and is cited as “Spec.”
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The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):5
1. Claims 1, 10-12, 18-20, and 38 over Groll6 in view of any
one of Takizawa,7 Maley,8 or Gotoh;9
2. Claims 1, 10-12, 16, 17, 19, and 38 over Bhullar10 in view of
Morris;11
3. Claims 1, 10-12, 16-20, and 38 over Liamos12 in view of
Gӧtz;13
4. Claims 2-5 and 7-9 over Groll in view of any of Takizawa,
Maley, or Gotoh and in further view of Kawanaka;14
5. Claims 2-5 and 7-9 over Bhullar in view of Morris and in
further view of Kawanaka;
6. Claims 2-5, 7-9, and 13-15 over Liamos in view of Gӧtz and
in further view of Kawanaka;
7. Claims 13-15 over Groll in view of any of Takizawa, Maley,
or Gotoh and Kawanaka, or Bhullar in view of Morris and
Kawanaka, and further in view of Liamos;
8. Claim 16 over Groll in view of any of Takizawa, Maley, or
Gotoh and in further view of Liamos;

5 Examiner’s Answer mailed 18 January 2012 (“Ans.”).
6 U.S. Published Application 2005/0019953, published 27 January 2005.
7 U.S. Patent 4,894,137, issued 16 January 1990.
8 U.S. Patent 5,494,562, issued 27 February 1996.
9 U.S. Patent 6,071,391, issued 6 June 2000.
10 U.S. Published Application 2004/0200721 A1, published 14 October
2004.
11 U.S. Patent 4,714,874, issued 22 December 1987.
12 U.S. Patent 6,616,819 B1, issued 9 September 2003.
13 DE 102 22 271 A1, published 26 June 2003 (Machine Translation). This
reference is also referred to in the record as “DE ‘271.”
14 U.S. Patent 6,599,406 B1, issued 29 July 2003.
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9. Claims 16 and 17 over Groll in view of any of Takizawa,
Maley, or Gotoh and in further view of Bhullar; and
10. Claims 18 and 20 over Bhullar in view of Morris and in
further view of Nath.15
B. Issues
The dispositive issues in this appeal are:
1. Did the Examiner reversibly err in determining that the combined
disclosures of Groll with any of Takizawa, Maley, or Gotoh would have
rendered obvious the claimed second conductive layer on top of the first
conductive layer and thicker than the first conductive layer? We decide this
issue in the negative.
2. Did the Examiner reversibly err in determining that the combined
disclosures of Bhullar and Morris would have rendered obvious the claimed
second conductive layer on top of the first conductive layer and thicker than
the first conductive layer? We decide this issue in the negative.
3. Did the Examiner reversibly err in determining that the combined
disclosures of Liamos and Gӧtz would have rendered obvious the claimed
second conductive layer on top of the first conductive layer and thicker than
the first conductive layer? We decide this issue in the negative.

15 U.S. Patent 4,590,327, issued 20 May 1986.
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C. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Issue 1: Groll
In Appellants’ view, the Examiner failed to establish a prima facie
case of obviousness because the Examiner “fails to identify a reason why
one of ordinary skill in the art at the time the invention was made would
have deposited a conductive layer as taught by Takizawa, Maley, or Gotoh
on top of Groll’s 50 nm conductive layer” (Br. 13). Specifically, Appellants
argue, “[w]hile Groll mentions that the disclosed electrodes can be coated or
plated with additional conductive layers (e.g., Groll at para. [0048]), Groll
fails to disclose, teach, or suggest a reason for coating or plating with a
conductive layer thicker than the fine, laser-ablated, first layer.” Id. at 14.
Appellants’ position is that “Groll teaches the second conductive layer only
to make up for the electrochemical deficiencies of the cheaper, less
preferable, copper alternative in regards to the electrodes [as opposed to the
electrical contacts].” Id. at 15 (emphasis omitted).
The Examiner responds that the reason “why one of ordinary skill in
the art would have utilized a thicker second conductive coating than the first
conductive coating of Groll [is] because the first conductive coating is
merely 50 nm, which is much thinner than traditional coated electrodes in
the biosensor art (Maley, Takizawa, and Gotoh).” Ans. 20. The Examiner
further finds as a reason “Groll is utilizing this second conductive coating as
a means to improve the conductivity of the formed electrode precisely
because the first conductive coating was so thin. Hence, there is absolutely
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no reason why Groll would need to limit this second conductive coating to
50 nm or less.” Id. at 20-21 (citing Arnold,16 col. 4, ll. 44-51 as support for
plating additional metal on a laser-formed conductive trace pattern to
improve the conductiveness of the formed conductive trace). The Examiner
further notes that the conductive layer of Groll forms the electrodes and the
contacts and the claims do not require the electrodes be free of the claimed
second coating. Id. at 21.
In the Reply,17 Appellants argue that the Examiner’s explanation for
why Groll would employ a thicker second conductive layer is “unsupported
speculation” (Reply 3) and would result in “inadequately conductive (and
therefore inoperative) test strips” because Groll provides gold-coating
copper conductive elements as an example making a second coating not
enabled since it is not necessary (id. at 3-4). Appellants argue that the only
reason that Groll would use copper as the first layer would be for cost
savings and not to preserve conductivity. Id. at 8. Appellants also argue that
the Examiner conflates the claimed “contacts” with “electrodes” taught in
Groll. Id. at 6.
These arguments are not persuasive of harmful error. The proper
analysis under KSR18 is whether the Examiner’s conclusion of obviousness
is reasonable and based on rational underpinning, not whether the
Examiner’s rejection points to an explicit teaching, suggestion, or motivation
in the cited references to make the disclosed second conductive layer thicker
than the first and selectively present on contacts rather than the conductive

16 U.S. Patent 6,553,661 B2, issued 29 April 2003.
17 Reply Brief filed 14 March 2012 (“Reply”).
18 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
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layer as a whole. The preponderance of the evidence supports the
Examiner’s finding that Groll teaches the use of a second conductive layer
on top of a first conductive layer without restriction to electrode and/or
contact regions of the conductive pattern (Ans. 5), that conductive layers are
known to be used in a thickness greater than the thickness of the first
conductive layer exemplified in Groll (id.), and that reasons exist for using a
second conductive layer that is thicker than a 50 nm first conductive layer
(id. at 5, 20-21 (citing Arnold19 as support)). Appellants have not come
forward with credible evidence to the contrary. In particular, Appellants
have not come forward with credible evidence that the level of skill in the art
indicated by the applied references is such that undue experimentation
would have been required to select thicknesses for the unspecified second
conductive layer of Groll. Rather, Appellants argue that cost savings was a
reason Groll selected materials for first and second conductive layers. See
Reply 8-9. Appellants have not demonstrated, however, that cost would
have been the overriding reason one of ordinary skill in the art would have
selected materials and thicknesses for electrode layers.
On this record, for the reasons stated above and in the Answer, we
affirm the rejection under 35 U.S.C. § 103(a) of claim 1 over Groll in view
of any one of Takizawa, Maley, or Gotoh. Appellants have not presented
substantively distinct arguments for the patentability of separately rejected
claims 2-5, 7-9, 10-12, 13-15, 18-20, and 38. (Ans. 16, 22-23, 24). Nor
have Appellants argued for patentability based on unexpected results or
other so-called secondary considerations.

19 U.S. Patent 6,553,661 B2, issued 29 April 2003.
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We conclude that harmful error has not been demonstrated in the
Examiner’s rejections based on the teachings of Groll.
Issue 2: Bhullar
In Appellants’ view, a prima facie case of obviousness has not been
made because the Examiner “fails to identify a reason why one of ordinary
skill in the art at the time the invention was made would have deposited a
conductive layer as taught by Morris on top of Bhullar’s 50 nm layer” (Br.
18). Specifically, Appellants argue, “while Bhullar mentions that the
electrical conductors taught can be coated or plated with additional
conductive layers (e.g., Bhullar at para. [0057]), Bhullar fails to disclose,
teach, or suggest a reason for coating or plating with a conductive layer
thicker than the first layer.” Id. Similar to Appellants’ arguments regarding
Groll, Appellants argue that it is preferable to not use a second conductive
layer at all despite conceding that the references disclose a second
conductive layer. Id. at 18-19 (citing the preferred embodiment of Groll
having a single layer).
The Examiner responds that “Bhullar already set forth two conductive
layers and Morris is only being relied on to show that one in the art would
have recognized that coating thicknesses in excess of 50 nm were known in
the art for a similar second conductive coating.” Ans. 24-25.
In the Reply, Appellants argue that “there is no enabling disclosure of
record teaching how to apply a second coating to only the remaining
conductive regions all in one go.” Reply 10.
These arguments are not persuasive of harmful error. The Examiner
reasonably finds that Bhullar teaches a code pattern formed from an
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electrical conductor having a thickness of only 50 nm and that the code
pattern “can also be coated with a second electrical conductor (not shown) to
modify the electrical resistivity of the pattern [].” Bhullar [0057], [0060].
The Examiner also reasonably finds that one of ordinary skill in the art
would have used known thicknesses of resistive ink formulations that are
300-700 microns thick that are used on biosensors for the second conductive
layer taught by Bhullar. See Ans. 7. Appellants have not come forward with
credible evidence to the contrary. Appellants have not established a
teaching away from the claimed subject matter. A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.
1989) (“the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered”) (quoting In re Lamberti, 545 F.2d 747,
750, 192 U.S.P.Q. 278, 280 (CCPA 1976)). Thus, the preference for a single
thin layer of conductive material is not an affirmative teaching away from
the disclosed embodiment with a second layer of conductive material, but,
rather, an alternative with a motivating benefit of reduced expense as noted
by Appellants (Br. 18-19). Nor have Appellants come forward with credible
evidence that the level of skill in the art indicated by the applied references
is such that undue experimentation would have been required to dispose a
second conductive layer over the first conductive layer.
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On this record, for the reasons stated above and in the Answer, we
affirm the rejection under 35 U.S.C. § 103(a) of claim 1 over Bhullar in view
of Morris. Appellants have not presented substantively distinct arguments
for the patentability of separately rejected claims 2-5, 7-9, 10-12, 16-20, and
38. (Ans. 19, 23, 25). Nor have Appellants argued for patentability based
on unexpected results or other so-called secondary considerations.
We conclude that harmful error has not been demonstrated in the
Examiner’s rejections based on the teachings of Bhullar.
Issue 3: Liamos
Appellants argue that the Examiner failed to establish a prima facie
case of obviousness because “there exists no reason for one of ordinary skill
in the art to modify Liamos’s device as proposed by the Examiner” (Br. 20).
Specifically, Appellants argue the rejection “lacks any explanation as to why
one of ordinary skill in the art at the time the invention was made would
have modified [with a second conductive layer in the range of 10-200
microns taught by Gӧtz] the contacts [having a 12.3 micron first conductive
layer] taught by Liamos in such a manner.” Id. at 21. Appellants assert that
the process in Gӧtz is “for increasing mechanical and/or chemical resistance
of electrical contact[s] by coating the contacts” (id.) using “thermal spraying
at high temperatures” (id.) which are “unsuitable for test elements whose test
supports are very often composed of thin plastic foils” (id. at 22, citing
Augstein20).

20 U.S. 2007/0202007, published 30 August 2007.
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The Examiner responds that the reason for applying the second
conductive coating of Gӧtz is for greater abrasion resistance for the contact
point of Liamos. Ans. 25. The Examiner further points out that the
substrate material is not specified in Liamos, but includes polycarbonate
having a melting temperature of 267°C which is not easily thermally
degraded. Id. at 27. The Examiner also notes that Liamos discloses
suitability with printed circuit boards, which are known substrates for
electrochemical biosensors. Id.
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 1 as obvious over Liamos in view of Gӧtz. The
Examiner reasonably finds that Liamos teaches a diagnostic test strip
comprising an electrically insulating substrate layer, a plurality of electrical
strip contacts, and at least one layer of conductive material and combines the
teachings of Liamos with that of Gӧtz, which teaches the use of a second
conductive layer of 10 to 200 micron thickness to provide a special
protective coating and exhibit good electrical conductivity on substrates such
as a circuit board that are inserted into an electrical socket, for the purpose of
providing greater abrasion resistance for the contact point of Liamos. Ans.
9, 25-26. Appellants have not come forward with credible evidence to the
contrary.21 Moreover, Appellants direct us to no limitation on the substrate

21 In the Reply, Appellants argue that Gӧtz “discloses a flame-spraying
procedure for applying a ruggedized coating to automotive components” and
Augstein specifically referenced Gӧtz “and its poor applicability to test
strips.” Reply 10. While we, like the Examiner, have considered this
argument, we note the Evidence Appendix to the Brief indicates no evidence
is relied upon. (Br. 31.) Appellants are directed to 37 C.F.R.
§ 41.37(c)(1)(ix)(2011) which provides that an appeal “brief shall contain
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material in claim 1 that might exclude the polycarbonate and circuit board
substrates suggested by Liamos. Nor do Appellants address the Examiner’s
finding that Gӧtz’s flame spraying process would be suitable with Liamos’
circuit boards and polycarbonate substrates. See generally Reply.
On this record, for the reasons stated above and in the Answer, we
affirm the rejection under 35 U.S.C. § 103(a) of claim 1 over Liamos in view
of Gӧtz. Appellants have not presented substantively distinct arguments for
the patentability of separately rejected claims 2-5, 7-9, 10-12, 13-15, 16-20,
and 38. (Ans. 22, 23). Nor have Appellants argued for patentability based
on unexpected results or other so-called secondary considerations.
We conclude that harmful error has not been demonstrated in the
Examiner’s rejections based on the teachings of Liamos.
D. Order
We affirm the rejection of claims 1-5, 7-20, and 38.
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
bar

. . . copies of any . . . evidence entered by the examiner and relied upon by
appellant in the appeal.”