Ex Parte Sommer et al

Board of Patent Appeals and Interferences

Mar 15, 2012

11677782 (B.P.A.I. Mar. 15, 2012)

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.
11/677,782 02/22/2007 Sabrina SOMMER 72400 1547
23872 7590 03/15/2012
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
LEONG, SUSAN DANG
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
03/15/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SABRINA SOMMER, HERBERT KIESELE, and
FRANK METT
____________________

Appeal 2011-005401
Application 11/677,782
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
RAE LYNN P. GUEST, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-20, and 22. The Examiner maintains a number of
rejections under 35 U.S.C. § 103(a) (Ans. 4-14).1 We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing was conducted on March 8, 2012.
We REVERSE.

1 The Examiner’s rejections of claims 20 and 22 under 35 U.S.C. § 112, ¶ 2
have been withdrawn (Ans. 3). Therefore, we do not review these
rejections.
Appeal 2011-005401
Application 11/677,782

2
The claims are directed to an electrochemical gas sensor (see, e.g.,
claim 1), and a process of electrochemical gas sensing using the sensor (see,
e.g., claim 19). The sensor includes electrodes in a housing (claims 1 and
19). The housing defines an electrolyte space and contains a liquid
electrolyte (id.). An analyte-selective mediator is present in the electrolyte
space (id.).
With regard to the mediator, claim 1 recites “said analyte-selective
mediator being provided in a saturated form in said electrolyte and being
present as an excess solid in the electrolyte space.” (Claim 1 (emphasis
added).) Similarly, claim 19 recites steps of “providing said analyte-
selective mediator in a saturated form in said electrolyte”, and “providing
said analyte-selective mediator as an excess solid in the electrolyte space.”
(Claim 19 (emphasis added).)
For all of the rejections, the Examiner relies upon Feldman as
teaching the claimed mediator (Ans. 5, citing Feldman, col. 9, ll. 39-50 and
col. 45, ll. 33-39). Appellants contend that Feldman does not teach or
suggest a mediator that is provided both in a saturated form in an electrolyte
and as an excess solid in the electrolyte space as claimed.
As a first matter, we agree with Appellants that the claims require that
the electrolyte contain enough mediator to both saturate the electrolyte, i.e.,
form a saturated mediator-electrolyte solution, and leave some mediator as a
solid phase, i.e. as excess undissolved solid (Br. 15-16, Spec. ¶ [0009]).
We further agree that the Examiner has failed to find that Feldman
teaches or suggests including mediator in both states, i.e., present in enough
concentration to saturate the solution and still be present as a solid.
Appeal 2011-005401
Application 11/677,782

3
Feldman describes a sensor for monitoring a biological analyte such
as a glucose monitor used by diabetic patients (Feldman, col. 1, ll. 20-24).
The sensor includes a sample chamber for holding the biological sample,
e.g., blood, in electrolyte contact with the working electrode (Feldman, col.
2, ll. 2-4). Feldman includes a non-leachable or diffusible redox mediator in
the chamber (Feldman, col. 2, ll. 1-2). When using the diffusible type of
mediator discussed in column 9, lines 39-50, Feldman discloses that the
mediator is solid before the sample enters the chamber, but dissolves in the
sample (id.). There is no evidence, or any convincing rationale provided by
the Examiner, to indicate that any solid mediator remains present after the
biological sample enters the chamber and the mediator dissolves.
The Examiner cites to column 45, lines 33-39 to support a finding that
“the mediator is present in excess in comparison to the analyte.” (Ans. 5.)
However, column 45, lines 33-39 merely discloses that the reduced form of
the mediator should be minimized, i.e., that the mediator should be mostly
present in its oxidized form before introducing the sample (id.). The
Examiner does not explain how this portion of the reference supports the
finding that the mediator is present in excess much less support a finding
that the mediator is present as an excess solid along with a saturated
solution.
The mediator is said to dissolve in the sample, but to meet the
requirements of the claim, it must both saturate the sample and still be
present as a solid. The Examiner has not convinced us that the mediator is
present as claimed.
Appeal 2011-005401
Application 11/677,782

4
The additional references applied by the Examiner do not cure the
above discussed defect. We do not sustain any of the Examiner’s rejections.
DECISION
The Examiner’s decision is reversed.
REVERSED

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