Ex Parte Singhal

Patent Trial and Appeal Board

Feb 2, 2017

13421620 (P.T.A.B. Feb. 2, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/421,620 03/15/2012 Tara Chand Singhal 11195.249 4086
7590 02/03/2017
TARA CHAND SINGHAL
P O BOX 5075
TORRANCE, CA 90510
EXAMINER
SZPIRA, JULIE ANN
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
02/03/2017 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 TARA CHAND SINGHAL
____________________

Appeal 2015-002277
Application 13/421,620
Technology Center 3700
____________________

Before ANNETTE R. REIMERS, ERIC C. JESCHKE, and GORDON D.
KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies herself as the real party in interest. Appeal Br. 4.
Appeal 2015-002277
Application 13/421,620

2
CLAIMED SUBJECT MATTER
The claims are directed to an apparatus and methods for a lancet
device for reuse of lancets for home-users. Claims 1, 8, 15, and 18 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A lancet device used for drawing blood sample for testing
comprising:
a. the lancet device has a lancet, a lancet holding
mechanism, a lancet activation plunger, and a lancet cap with an
opening for touching against the human body, the lancet has a
needle, where the needle is movable inside the cap with the lancet
activation plunger;
b. a disinfectant material is positioned inside the lancet
device or as part of the lancet device that disinfects the needle for
each use of the lancet.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Simons US 5,871,494 Feb. 16, 1999
Kloepfer US 2005/0177072 A1 Aug. 11, 2005

REJECTIONS
The Examiner made the following rejections:
Claims 1–6, 8–12, and 14–20 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Kloepfer. Final Act. 2–4.
Claims 7 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kloepfer and Simons. Final Act. 4–5.

Appeal 2015-002277
Application 13/421,620

3
OPINION
All the claims include a limitation describing disinfecting the needle
for each use of the lancet. Specifically, in claim 1 a limitation describes a
disinfectant material that disinfects the needle for each use of the lancet.
Appeal Br. 16 (Claims App.) Claims 8, 15, and 18 are method claims, and
each includes the step “disinfecting the lancet needle for each use.” Appeal
Br. 17, 18, and 19 (Claims App.)
The Examiner finds that disinfectant material 36 in Kloepfer
“disinfects the needle for each use of the lancet (due to the expansion
characteristics of disinfecting material, the material will expand in all
dimensions and contact the lancing device; paragraph 39).” Final Act. 2.
“The disinfectant disclosed by Kloepfer et al. is positioned around the needle
and allows for disinfectant fluid to be introduced to the needle, at which
point the needle would be disinfected. Due to the compliant nature of the
disinfectant disc disclosed by Kloepfer et al, the needle would be disinfected
during use.” Final Act. 5.
In the Answer, the Examiner makes the following finding:
Kloepfer et al. discloses disinfectant material held within a sealed
cap to prevent the disinfectant from evaporating. The
disinfectant material is to be disposed on the skin of a user in the
area where a lancet is to puncture the skin. The disinfectant
material placed on the skin disinfects the lancet, as the lancet
must pass through the disinfectant material when puncturing. A
user who places a “puddle” of disinfectant on the skin and then
lances the skin would have the lancet pass through a disinfectant
material and disinfect that lancet for use of the lancet. The claims
do not call for any specific action as to how the disinfectant
material disinfects the lancet, and therefore, Kloepfer et al. meets
the limitations.
Ans. 2–3.
Appeal 2015-002277
Application 13/421,620

4
Appellant argues that the Kloepfer device does not teach a disinfectant
to disinfect the lancet with each use. Appeal Br. 10. The cleansing pad 36
in Kloepfer is for an entirely different purpose. Appeal Br. 11. “[T]he cited
prior art is on a wholly different subject matter that of disinfecting the skin
of a person, whereas the claim limitations are directed to a lancet device and
for disinfecting the lancet itself.” Reply 4.
We are persuaded that the Examiner erred in his findings that
Kloepfer discloses either an apparatus or a method in which the lancet is
disinfected. According to Kloepfer, the absorbent cleansing member 36 is
mounted on a “bundt cake pan-shaped cleansing member receiver.”
Kloepfer ¶ 71. While not illustrated in Kloepfer’s Figures 1–4, the receiver
is shown clearly in Kloepfer’s Figure 13 at reference numeral 223. The
centrally located hollow finger 225 of the receiver is “sized and configured
for receiving a toroidal-shaped absorbent cleansing member.” Kloepfer
¶ 103. Given the presence of this hollow finger, the Examiner’s finding that
the disinfectant containing sponge will expand in all dimensions and contact
the lancing device is not supported by a preponderance of the evidence and
rests instead on speculation. For the same reason, the Examiner’s finding
that the disinfectant positioned around the needle would allow disinfectant
fluid to be introduced to the needle is not supported by a preponderance of
the evidence.
Finally, the Examiner’s speculation that a user could place a puddle of
disinfectant on his or her skin is without support. There is no explicit
suggestion that the disinfectant in Kloepfer should (or even can) be applied
in a puddle, as opposed to wiping the skin as with an alcohol swab.
Certainly, creating a puddle is not inherent or necessary to Kloepfer’s
Appeal 2015-002277
Application 13/421,620

5
device. Similarly, we find no evidence to support the Examiner’s
speculation that a lancet would be disinfected passing through skin that has
been wiped with disinfectant. It is impermissible to make guesses or to
speculate in an anticipation rejection. “Inherency . . . may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
As noted above, all the independent claims include a limitation related
to disinfecting a lancet needle for each use of the device. Simons is cited
against only claims 7 and 13 and only for specific dimensions of a disc
holding disinfectant. Simons does not cure the deficiency of Kloepfer.
Because Kloepfer does not disclose a method or apparatus that disinfects the
lancet for each use, the rejection of claims 1–20 is not sustained.
DECISION
For the above reasons, the Examiner’s rejection of claims 1–20 is
reversed.

REVERSED