Ex Parte Sacherer et al

Patent Trial and Appeal Board

Jul 26, 2016

12751178 (P.T.A.B. Jul. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121751,178 03/31/2010 Klaus-Dieter Sacherer
41577 7590 07/28/2016
Woodard, Emhardt, Moriarty, McNett & Henry LLP
Roche Diagnostics Operations, Inc. (PD)
111 Monument Circle, Suite 3700
Indianapolis, IN 46204-5137
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.
007804-000005 21582us1 1175
EXAMINER
STOUT, MICHAEL C
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
07/28/2016 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):
DocketDept@uspatent.com
pair_roche@firsttofile.com
meg.ward@contractors.roche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS-DIETER SACHERER, RONALD MONCH,
MICHAEL SCHABBACH, and JORG SCHERER1
Appeal2013-009264
Application 12/751,178
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
systems and methods for receiving a body fluid for analysis. The claims are
rejected as failing to comply with the written description requirement,
indefinite, and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the Real Party in Interest is Roche Diagnostics
Operations, Inc. (App. Br. 3).
Appeal2013-009264
Application 12/751,178
STATEMENT OF THE CASE
The Specification describes a system and method for receiving a body
fluid for analysis, in which a sample receiving unit is coupled to a drive unit
for a forwards and backwards movement between a guide chamber and a
receiving site (Spec. 1:11; 2:7-8). Claims 1-9, 21-27, 29, 30, 34--36, and
38--43 are on appeal. Claim 1 is illustrative and reads as follows:
1. Device for receiving a body fluid for analytical purposes
comprising a container and at least one sample receiving unit-
preferably for a single-use test that can be pushed out of a guide
chamber of the container by means of a drive unit and to which
the body fluid can be applied at a receiving site, wherein the
container is designed as a magazine for storing a plurality of
sample receiving units and a coupling device to couple the
sample receiving unit to the drive unit for a forwards and
backwards movement between the guide chamber and the
receiving site.
The claims stand rejected as follows:
I. Claims 21-27, 29, 30, 34--36, and 41--43 stand rejected under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.
II. Claims 1-9, 38, and 39 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
III. Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as obvious
based on Fritz2 and Mauze. 3
IV. Claim 1 stands rejected under 35 U.S.C. § 103(a) as obvious
based on Perez4 and Fritz.
2 Fritz et al., WO 2002/36010 Al, published May 10, 2002.
3 Mauze et al., US 6,375,627 Bl, issued Apr. 23, 2002.
4 Perez et al., US 2002/0188223 Al, published Dec. 12, 2002.
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V. Claims 1, 21, 22, 24, 25, 29, 30, 34, 36, 38, 39, and 40-43 stand
rejected under 35 U.S.C. § 103(a) as obvious based on DeNuzzio5 and Fritz.
VI. Claim 23 stands rejected under 35 U.S.C. § 103(a) as obvious
based on DeNuzzio, Fritz, and Kloepfer. 6
VII. Claim 26 stands rejected under 35 U.S.C. § 103(a) as obvious
based on DeNuzzio, Fritz, and Sacherer.7
VIII. Claims 27 and 35 stand rejected under 35 U.S.C. § 103(a) as
obvious based on DeNuzzio, Fritz, and Bonner. 8
I.
The Examiner has rejected claims 21-27, 29, 30, 34--36, and 41--43
under 35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement. In response, Appellants submit that amendments,
which "were believed to place the application in better condition for appeal,"
were filed on September 24, 2012 (App. Br. 11). Appellants acknowledge,
however, that "the amendments were not entered in the October 19, 2012
Advisory Action" (id.). The Examiner explains that "the amendments
required further consideration and/ or search," and, therefore, were not
entered (Ans. 24). Accordingly, because Appellants do not contest the
merits of this rejection, we summarily affirm.
II.
The Examiner has rejected claims 1-9, 38, and 39 under 35 U.S.C.
§ 112, second paragraph, as indefinite. As with the written description
5 DeNuzzio et al., US 7,959,583 B2, issued June 14, 2011.
6 Kloepfer et al., US 6,840,912 B2, issued Jan. 11, 2005.
7 Sacherer, US 6,497 ,845 B 1, issued Dec. 24, 2002.
8 Bonner et al., US 5,510,266, issued Apr. 23, 1996.
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Application 12/751,178
rejection described above, Appellants' filed amendments to remedy this
rejection on September 24, 2012, however, those amendments were not
entered into record because they required further consideration and/ or search
(see App. Br. 11; Ans. 24). Because Appellants do not contest the merits of
this rejection, we summarily affirm.
III.
The Examiner has rejected claims 1-9 under 35 U.S.C. § 103(a) as
obvious based on Fritz and Mauze. Because the claims are not separately
argued, we focus our discussion on independent claim 1, which is
representative.
Findings of Fact
FF 1. Fritz9 discloses
a system for withdrawing body fluids [that] includes a drive unit
having a plunger which is moved from a resting position into a
lancing position in order to carry out a lancing process and a
lancing unit containing a lancet with a needle. The plunger and
lancet are coupled together by a form fit in order to carry out a
lancing process.
(Fritz Abstract; see also Ans. 6-7, 11-16, 18-19.)
FF 2. Fritz discloses that the system, "on the one hand, avoids
contamination or infection by used lancets and, on the other hand, allows a
substantially pain-reduced lancing for the user," that the system "operates
with lancets in magazines and allows a user to change a lancet that has not
yet been used without having to carry out complicated handling steps," and
9 The Examiner refers to the English equivalent of Fritz, US 2004/003438
Al, published Feb. 19, 2004 (Ans. 6). For purposes of this Appeal, we will
refer to this English equivalent.
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that the lancing unit is designed "so that the shock caused by the impact has
no influence on the lancing process in the tissue which thus avoids incision
pain caused by such a vibration" (Fritz i-fi-16, 42; see also Ans. 6, I I-I6, I8-
I9, 27-28).
FF 3. Fritz depicts in Figures I A-IC cross-sectional views of a
lancing unit having a holding device on the lancet at three different positions
(Fritz i124). Figures IA-IC are reproduced below.
Fig.1
(Id. at Figs. IA-IC.) Figures IA-IC show "how the form-fitting coupling
between the driving plunger 10 and the lancet 30 occurs during the actual
lancing process," that "as the plunger 10 penetrates the lancet 30 further it
pushes the lancet 30 within the sleeve 40 towards the exit opening 41 such
that finally the tip of the needle 31 protrudes beyond the exit opening 41 and
pierces a tissue lying underneath," and "that a form-fitting connection is
formed which not only enables a forward movement of the lancet 30 in order
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Application 12/751,178
to carry out an incision, but also an active retraction of the lancet 30
controlled by the drive unit which is essentially without play" (id. at i-fi-138,
39; see also Ans. 6-7, 11-15, 18-19).
FF 4. Fritz depicts in Figures 1 OA-1 OB "cross-sectional views of a
barrel-shaped magazine" (Fritz i136). Figure lOA-lOB are reproduced
below.
A B
Fig.10
(Id. at Figs. lOA-lOB.) Figures lOA and lOB show a cylindrical magazine
500 that "enables new lancets 502 to be coupled to the drive 503" (id. at
i160; see also Ans. 6-7, 11-16, 18-19). As depicted in Figures lOA and
lOB, driving plunger 504 can "be fixed relative to a lancet 502 and the
barrel-shaped magazine 500" and "rotated like a revolver barrel such that
unused lancets 502 are moved into the position for coupling to the driving
plunger 504" (id. at i160; see also Ans. 6-7, 11-16, 18-19).
FF 5. Mauze discloses
[a] device for sampling and analyzing a physiological fluid from
the skin of a patient by puncture. The device includes a body
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[that] has a needle with a point for puncturing a physiological
tissue and a channel in the body for conducting the physiological
fluid away from the point. . . . The device can be used to lance
the skin and obtain a representative sample of the physiological
fluid[].
(Mauze Abstract; see also Ans. 7.)
FF 6. Mauze discloses that "in the finger-stick methods, the process
of milking and drawing blood sample to the surface leads to changes in the
analyte concentration, ... due to exposure of the sample to the ambient
environment (e.g., exposure to air)," and therefore, "the current methods of
finger-stick sampling cannot be used to measure parameters such as blood
gas contents" (Mauze 1 :35--42; see also Reply Br. 3).
FF 7. Mauze discloses that
[ s ]ince pain is related to the amount of blood extracted,
venipuncture inflicts significant amount of unnecessary pain and
trauma to the patient. Thus, there is a need for an apparatus and
method for sampling and quickly analyzing blood from a patient
with minimal pain using a small volume of sample blood.
(Mauze 1 :46-51.)
FF 8. The Specification teaches that "the sample receiving unit is
formed by a hollow needle to suck in the sample fluid which is preferably at
the same time designed as a guide for the lancing unit" (Spec. 5: 20-21 ).
Analysis
We have considered, but do not find persuasive Appellants'
arguments that the Examiner erred in concluding that the claimed device for
receiving a body fluid is obvious over the combination of Fritz and Mauze.
We address Appellants' arguments below.
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Appellants argue that "even together[,] the cited references do not
disclose or even suggest a magazine system for sample receiving units that
has a coupling device configured to facilitate forward and, more importantly,
backward movement of the sample receiving unit" (App. Br. I3).
Appellants assert that neither Fritz nor Mauze teaches a container that is
"designed as a magazine for storing a plurality of sample receiving units and
a coupling device to couple the sample receiving unit to the drive unit for a
forwards and backwards movement between the guide chamber and the
receiving site" (id.). Appellants also contend that "the Mauze reference
never discloses any type of magazine let alone any type of coupling structure
between the driver as well as other devices" (id. at I4).
We are not persuaded. We agree with the Examiner that
Fritz teaches a device for receiving a body fluid for analytical
purposes [] comprising a container (cylindrical magazine 500[])
and at least one sample unit (lancet 502 having a needle 3 I) for
a single-use test that can be pushed out of a guide chamber of the
container by means of a drive unit (503) and to which the body
fluid can be applied at a receiving site[], wherein the container[]
is designed as a magazine for storing a plurality of sample units
[] and a coupling device to couple the sample receiving unit to
the drive unit [] for a forwards and backwards movement
between the guide chamber and the receiving site[].
(Ans. 6-7 (citing Fritz i-fi-13, 60, Abstract, Figs. IA-IC, IO); see also FF I-
4.) We also agree with the Examiner that "Mauze teaches a needle device
for sampling and analyzing fluid comprising a needle I 0 having a tip I 8 and
a channel 20 for fluid to enter via capillary action" (Ans. 7 (citing Mauze
3:7-38), see also FF 5-7). As the Examiner explains, the Specification does
not define "sample receiving unit" in such a way as to exclude the fluid
collecting lancet of Mauze (Ans. 26; see also FF 8).
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Accordingly, we agree with the Examiner that the combination of
Fritz and Mauze discloses each element of claim 1, and furthermore would
yield the predictable result of "draw[ing] fluid to sensors for determining the
parameters of the sampled physiological fluid" (Ans. 7 (citing Mauze 3:7-
38)). See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.").
Appellants contend that "Fritz focuses on the use of lancets" instead
of a test strip, and that "[t]he operational needs for lancets are quite different
from sample receiving units, like test strips" (App. Br. 13). Appellants
assert that the lancet would need to be extended and retracted quickly to
avoid significant pain while test strips just need to be extended (id. at 13-
14). Appellants further argue that "the approaches in Fritz and Mauze are
incompatible to one another such that one skilled in the art would not have
considered combining the references" (Reply Br. 3). In particular,
Appellants contend that modifying Mauze' s sampling needle, which is
silicon and brittle, to achieve the desired flexibility for the holding elements
of Fritz, would require significant and dramatic modifications (id.).
We do not find these arguments persuasive. As an initial matter, we
observe that the claims subject to this rejection do not require that the
sample receiving unit is a test strip (see also Ans. 26). The absence of such
a requirement is consistent with the Specification, which teaches that the
sample receiving unit can be a hollow needle designed as a guide for the
lancing unit (FF 8).
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Appellants' arguments concerning avoidance of pain and the
requirement for sampling needle flexibility are similarly unavailing.
Claim 1 does not require any degree of pain avoidance or lancet flexibility,
and Appellants have not provided evidentiary support for the assertion that
the combined teachings of Fritz and Mauze would result in an inoperable
device. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's
argument in a brief cannot take the place of evidence."). Furthermore, as the
Examiner notes, "lancet systems which cause more pain than the system
disclosed by Fritz are still suitable for the intended purpose of sampling and
have been used in the past and are still used today, see background section of
Fritz" (Ans. 27). In addition, we observe that Fritz and Mauze each teach
techniques for reducing the pain associated with sample acquisition (FF 2,
7).
Appellants also assert that Mauze teaches away from the finger-stick
type devices of Fritz because these devices expose the body fluid to air
(Reply Br. 3). We note, however, that the concerns expressed by Mauze
regarding exposure of a sample to ambient air pertains only to those
instances in which blood gas or a similar parameter is being measured
(FF 6). Accordingly, because claim 1 does not require the measurement of
blood gas or similar parameters, and because exposure to ambient air would
not necessarily interfere with other blood measurements, we do not find
Appellants' position persuasive. See DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006)
("[ w ]e will not read into a reference a teaching away from a process where
no such language exists.").
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IV.
The Examiner has rejected claim 1 under 35 U.S.C. § 103(a) as
obvious based on Perez and Fritz.
Findings of Fact
FF 9. Perez discloses "incising, sampling and/or testing of the bodily
fluid" (Perez Abstract; see also Ans. 10).
FF 10. Perez depicts in Figure 16 "a side, elevational view, partially
in cross-section" including movable, rigid constricting elements, "with the
elements in the constricting position" (Perez i-fi-133, 34). Figure 16 is
reproduced below.
Fig .. 16
(Id. at Fig. 16.) Figure 16 shows housing 42, capillary 45, and lancet 46, in
which "[t]he lancet 46 is extended beyond the capillary and incises the
skin[], and the resulting fluid contacts and enters the capillary passageway"
(id. i-fi-179, 82; see also Ans. 10-11).
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Analysis
We have considered, but do not find persuasive Appellants'
arguments that the Examiner erred in concluding that the claimed device for
receiving a body fluid is obvious over Perez and Fritz. We address
Appellants' arguments below.
Similar to the arguments presented regarding the combination of Fritz
and Mauze, Appellants contend that the combination of Perez and Fritz does
not teach "a magazine system for sample receiving units that has a coupling
device configured to facilitate forward and, more importantly, backward
movement of the sample receiving unit" (App. Br. 15). Appellants assert
that Perez does not teach retracting the capillary, and does not teach the
capillary being integrated into a magazine-type device (id.; Reply Br. 3).
We agree with the Examiner that Perez discloses "a device for
receiving a body fluid for analytical purposes" having
a container ( 42) and at least one sample receiving unit ( 45)
preferably for a single-use test that can be pushed out of a guide
chamber (space between the housing 42 and the capillary tube
45) of the container [] and to which the body fluid can be applied
at a receiving site[].
(Ans. 10 (citing Perez i182, Abstract, Figs. 15-16); see also FF 9-10.) As
previously discussed, we also agree with the Examiner that
Fritz teaches a device for sampling body fluids comprising a
container that is designed as a magazine for storing a plurality of
sample units [] and a coupling device to couple the sample units
to the drive unit [] for a forwards and backwards movement
between the guide chamber and the receiving site[].
(Ans. 11 (citing Fritz Figs. lA---C, 10), see also FF 1--4). We further note
that the Specification does not define "sample receiving unit" to exclude a
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capillary, as disclosed by Perez (see also Ans. 26; see also FF 8). Therefore,
we conclude that the combination of Perez and Fritz satisfies the recited
elements, and would yield predictable results of "provid[ing] a magazine
which can store multiple sample receiving units thereby allowing the user to
perform a plurality of test prior to reloading the device" (Ans. 11-12). See
In re Merck & Co., 800 F.2d at 1097.
Appellants also contend that the Examiner's rationale for combining
Fritz and Perez to arrive at the claimed invention is improperly based on
hindsight (Reply Br. 3). In particular, Appellants assert that "[a]t best, one
skilled in the art would consider incorporating the drive 503 of Fritz to
actuate the lancet in Perez. There is no hint or any suggestion in either
reference or elsewhere of the need for retracting the capillary in Perez"
(Reply Br. 3).
While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that
"combination of familiar elements according to known methods is likely to
be obvious when it does no more than yield predictable results." KSR, 550
U.S. at 416. In this instance, we agree with the Examiner that it would have
been obvious to a skilled artisan to combine the needle devices for sampling
fluid taught by Fritz and Perez to arrive at the claimed invention (Ans. 11-
12), absent any impermissible hindsight.
Fritz discloses a magazine for storing sample units, as well as a
coupling device to couple the sample units to a drive unit to permit forward
and backward movement between the guide chamber and the receiving site
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(FF 1--4), and Perez discloses a sample receiving unit (FF 9-10).
Accordingly, we agree with the Examiner that
it would have been obvious to a person having ordinary skill in
the art at the time of the invention to modify the device taught by
Perez to include a magazine for storing a plurality of sample units
with a drive unit as taught by Fritz in order to provide a magazine
which can store multiple sample receiving units thereby allowing
the user to perform a plurality of test[ s] prior to reloading the
device.
(Ans. 11-12.) See also In re Merck & Co., 800 F.2d at 1097.
V.
The Examiner has rejected claims 1, 21, 22, 24, 25, 29, 30, 34, 36, 38,
39, and 40--43 under 35 U.S.C. § 103(a) as obvious based on DeNuzzio and
Fritz. We focus our discussion on independent claims 1, 21, and 34.
Findings of Fact
FF 11. DeNuzzio discloses "[a] lancing device integrated with a
sensing strip" in which "[a] lance and analyte sensing strip are combined in a
single, preferably disposable, device" and "a slot is provided in a support
member so [that] the lance can be engaged by a lance driver and driven into
the skin producing a bodily fluid sample from a wound" (DeNuzzio
Abstract).
FF 12. DeNuzzio depicts in Figure 2a "a perspective view of a
cartridge containing lance and test strip assemblies" (id. at 2: 19-20). Figure
2a is reproduced below.
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Application 12/751,178
(Id. at Fig. 2a.) Figure 2a shows "a plurality of[] devices [that] are
packaged in a cartridge 114 []ready for insertion into a handheld, portable
glucose meter" in which "the cartridge 114 has an opening 116 adapted to
allow access to the sensing[] surface [] of the bottom-most assembly 101 in
the stack," that the "[ o ]pening 116 is also used to eject the bottom-most
assembly 101 after use," and that "[t]he lance and test strip assemblies[] are
preferably oriented within cartridge 114 such that slot 110 is aligned with a
slot [] in the bottom of cartridge 114" (id. at 4:56-5: 1; see also Ans. 12-13).
FF 13. DeNuzzio depicts in Figure 4a "the test strip [that] is brought
into position for contact with the bodily fluid sample after the lancing
action" (DeNuzzio 2:30-33). Figure 4a is reproduced below.
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JH :
F!G.40
(Id. at Fig. 4a.) Figure 4a shows that a "device 300 automatically moves the
sensing strip 304 into position after the lancet 306 is withdrawn from the
skin," that "[a] lateral displacement of one to two millimeters is created by
pressing a push button 312 on the device support structure," that "[t]he push
button 312 is used to trigger the lancet 306 when pressed, and also to
displace the strip 304 when released," that "the device 300[,] after the push
button 312 has been pressed, releas[es] the lancet 306 into the skin 313," that
"[a]s push button 312 is released, lancet 306 [is] withdrawn from the skin,
and spring 314 causes sensing strip 304 to be displaced to the location of the
wound 316," and that "[a] wick 318 is preferably included to aid bodily fluid
flow to the sensing area by capillary action" (id. at 5:43-57; see also
Ans. 12-13).
Analysis
We agree with Appellants that the Examiner erred in rejecting claims
1, 21, and 34 as being obvious over DeNuzzio and Fritz.
Fundamental to the Examiner's rejection of each of claims 1, 21, and
34 is the conclusion that
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[i]t would have been obvious to a person of ordinary skill in the
art at the time of the invention to modify ... DeNuzzio to include
a driving means and coupling device as taught by Fritz in order
to selective extend and retract a sampling device of a magazine.
(Ans. 13; see also id. at 16, 19.)
Appellants contend that the Examiner erred in determining that a
skilled artisan would have found it obvious to combine DeNuzzio and Fritz
to arrive at the claimed invention because "[ t ]he design approaches of the
magazines used in Fritz and Denuzzio are [] counter to one another such that
incorporating the two approaches together would be technically difficult
such that one skilled in the art would not have considered making such a
combination" (Reply Br. 4; see also id. at 6). In particular, Appellants assert
that
DeNuzzio never expressly or inherently discloses retracting the
sensing strip 102. In fact, by the sheer design of the cassette
having the individual devices 200 stacked upon one another in a
fashion similar to an old-fashioned razor dispenser, there is no
need to retract any type of test strip back into the device because
the individual sensors have to be removed for a new one to be
used. Fritz only discloses coupling lancets 502 to the drive 503.
At best, after reading both references, one of ordinary skill in the
art would be motivated to use the coupling structure in Fritz for
the lancets and not the sensing strips.
(App. Br. 17; see also Reply Br. 4, 6.)
We agree with Appellants, and conclude that the structural and
operational differences between Fritz and DeNuzzio are such that the
combination proposed by the Examiner would change "the basic principles
under which the [prior art] was designed to operate," and is therefore
insufficient to establish a prima facie case of obviousness. In re Ratti, 270
F.2d 810, 813 (CCPA 1959).
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In particular, we note that the top-to-bottom magazine housing
containing ejectable cartridges having an integrated lance and sensing strip
assembly taught by DeNuzzio (FF 11, 12) is fundamentally different from,
and incompatible with, the barrel-shaped lancet-only magazine disclosed by
Fritz (FF 4). For example, DeNuzzio teaches that the integrated lancet and
strip containing cartridges are ejected from the magazine after use (FF 12).
In addition, DeNuzzio teaches that operation of a push button causes lateral
displacement of the lancet on the integrated cartridge to puncture the skin,
and subsequent release of the push button withdraws the lancet and activates
a spring mechanism that automatically moves the sensing strip into contact
with the sample (FF 13). Fritz, in contrast, does not include, and is not
designed to accommodate test strips (FF 1--4). In addition, Fritz utilizes a
drive unit having a plunger that is coupled to a lancet alone, and teaches
"that a form-fitting connection is formed which not only enables a forward
movement of the lancet 30 in order to carry out an incision, but also an
active retraction of the lancet 30 controlled by the drive unit" (FF 1--4).
In view of these differences in the principles of operation for
DeNuzzio and Fritz, and absent of any explanation by the Examiner as to
why a skilled artisan would have nevertheless been motivated to combine
the references, or how such combination would have been achieved, we
reverse the rejection of claims 1, 21, and 34. Because they depend from
claim 1, the rejection of claims 3 8 and 3 9 is also reversed. Because they
depend from claim 21, the rejection of claims 22, 24, 25, 29, 30, and 40 is
also reversed. Because they depend from claim 34, the rejection of claims
36 and 41--43 is also reversed.
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VI.
The Examiner has rejected claim 23 under 35 U.S.C. § 103(a) as
obvious based on DeNuzzio, Fritz, and Kloepfer. Because the Examiner has
pointed to no clear or specific teaching in Kloepfer that addresses the
deficiencies discussed above of DeNuzzio and Fritz with respect to claim 21,
we reverse this rejection as well.
VII.
The Examiner has rejected claim 26 under 35 U.S.C. § 103(a) as
obvious based on DeNuzzio, Fritz, and Sacherer. Because the Examiner has
pointed to no clear or specific teaching in Sacherer that addresses the
deficiencies discussed above of DeNuzzio and Fritz with respect to claim 21,
we reverse this rejection as well.
VIII.
The Examiner has rejected claims 27 and 35 under 35 U.S.C. § 103(a)
as obvious based on DeNuzzio, Fritz, and Bonner. Because the Examiner
has pointed to no clear or specific teaching in Bonner that addresses the
deficiencies discussed above of DeNuzzio and Fritz with respect to claims
21 and 34, we reverse this rejection as well.
SUMMARY
We summarily affirm the rejection of claims 21-27, 29, 30, 34--36,
and 41--43 under 35 U.S.C. § 112, first paragraph, for failure to comply with
the written description requirement.
We summarily affirm the rejection of claims 1-9, 38, and 39 under 35
U.S.C. § 112, second paragraph, as indefinite.
We affirm the rejection of claim 1under35 U.S.C. § 103(a) as
obvious based on Fritz and Mauze. Claims 2-9 fall with claim 1.
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Appeal2013-009264
Application 12/751,178
We atlirm the rejection of claim 1under35 U.S.C. § 103(a) as
obvious based on Perez and Fritz.
We reverse the rejection of claims 1, 21, 22, 24, 25, 29, 30, 34, 36, 38,
39, and 40-43 under 35 U.S.C. § 103(a) as obvious based on DeNuzzio and
Fritz.
We reverse the rejection of claim 23 under 35 U.S.C. § 103(a) as
obvious based on DeNuzzio, Fritz, and Kloepfer.
We reverse the rejection of claim 26 under 35 U.S.C. § 103(a) as
obvious based on DeNuzzio, Fritz, and Sacherer.
We reverse the rejection of claims 27 and 35 under 35 U.S.C. § 103(a)
as obvious based on DeNuzzio, Fritz, and Bonner.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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