Ex Parte Sørensen et al

Patent Trial and Appeal Board

Jan 23, 2018

12644241 (P.T.A.B. Jan. 23, 2018)

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.
12/644,241 12/22/2009 Poul Ravn S0rensen 12203.0004-00000 6021
22852 7590 01/25/2018
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
RUFO, LOUIS J
ART UNIT PAPER NUMBER
1759
NOTIFICATION DATE DELIVERY MODE
01/25/2018 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL RAVN SORENSEN and DORTHE KRABBE
MUNCK
Appeal 2016-005373
Application 12/644,2411
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAN D. RANGE, and JANE E.
INGLESE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3-8, 11-24, and 27-29. We have jurisdiction.
35 U.S.C. § 6(b). An oral hearing was held on January 17, 2018.2
We REVERSE.
1 According to Appellants, the real party in interest is Radiometer Medical
APS. Appeal Br. 3.
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal 2016-005373
Application 12/644,241
STATEMENT OF THE CASE3
Appellants describe the invention as relating to a planar carbon
dioxide sensor that may be used in a clinical environment. Spec. ^ 2. Claim
1, reproduced below with formatting added for readability, is the only
independent claim on appeal and is illustrative of the claimed subject matter:
1. A planar C02-sensing device comprising:
an electrode with an ion-selective layer,
an electrolyte layer comprising osmotically active species
in an amount of 0.8 to 6.0 milliosmol per m2 of the electrolyte
layer area,
wherein the electrolyte layer comprises
at least two hydrophilic osmolarity increasing
components having a weight average molecular weight in
the range of 80 to 5,000 g/mole, wherein at least one of the
at least two osmolarity increasing components has a
weight average molecular weight in the range of 800 to
3,000 g/mole,
and wherein the at least two hydrophilic osmolarity
increasing components do not add bicarbonate ions or
chloride ions to the electrolyte layer and are present in the
electrolyte layer in an amount ranging from 0.05 to 1.2
millimol per m2 of the electrolyte layer area; and
an outer layer, wherein the electrolyte layer is arranged
between the ion-selective layer and the outer layer.
3 In this opinion, we refer to the Final Office Action dated November 7,
2014 (“Final Act.”), the Appeal Brief filed October 1, 2015 (“Appeal Br.”),
the Examiner’s Answer dated February 25, 2016 (“Ans.”), and the Reply
Brief filed April 25, 2016 (“Reply Br.”).
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Appeal 2016-005373
Application 12/644,241
Appeal Br. 25 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Hobbs et al. US 5,522,980 June 4, 1996
(hereinafter “Hobbs”)
Benco et al. US 5,554,272 Sept. 10, 1996
(hereinafter “Benco”)
Clausen et al. US 6,099,804 Aug. 8, 2000
(hereinafter “Clausen”)
Hsiung et al. US 2007/0175769 Al Aug. 2, 2007
(hereinafter “Hsiung”)
Chuang et al. US 2008/0121523 Al May 29, 2008
(hereinafter “Chuang”)
Collier et al. US 2009/0159442 A1 June 25, 2009
(hereinafter “Collier”)
Omtveit et al. WO 2006/027586 A1 March 16, 2006
(hereinafter “Omtveit”)
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 3-8, 11, 12, 17, 18, and 27-29 under 35
U.S.C. § 103(a) as unpatentable over Hsiung in view of Omtveit, Hobbs,
Collier, and Clausen. Ans. 2.
Rejection 2. Claims 13-16 under 35 U.S.C. § 103(a) as unpatentable
over Hsiung in view of Omtveit, Hobbs, Collier, and Clausen and further in
viewofBenco. Id. at 11.
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Application 12/644,241
Rejection 3. Claims 19-24 under 35 U.S.C. § 103(a) as unpatentable
over Hsiung in view of Omtveit, Hobbs, Collier, and Clausen and further in
view of Chuang. Id. at 14.
ANALYSIS
The Examiner rejects claim 1 as obvious over Hsiung in view of
Omtveit, Hobbs, Collier, and Clausen. Ans. 2. The Examiner finds that
Hsiung teaches the basic structure of a planar carbon dioxide sensing device
as recited in claim 1. Ans. 2 (citing, e.g., Hsiung Fig. lc). The Examiner
finds that Hsiung fails to explicitly disclose the use of at least two
hydrophilic osmolarity increasing components having the molecular weight
recited by claim 1. Id. at 3. The Examiner finds that Omtveit discloses
hydrophilic osmolarity increasing components, that Hobbs discloses suitable
excipients for use in carbon dioxide sensors, and that Collier discloses
humectants for planar sensors. Id. (citing Omtveit, Hobbs, and Collier). The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to use Omtveif s hydrophilic osmolarity increasing components in
the electrolyte layer of Hsiung “to increase the osmolarity of the electrolyte
and prevent fluid from egressing across the membrane.” Id. at 4 (citing
Omtveit 5:7-26). The Examiner also concludes that it would have been
obvious to use more than one hydrophilic osmolarity increasing component
to control osmolarity (as in Omtveit) or for use as an excipient as suggested
by Hobbs or Collier.
Appellants argue that a person of skill in the art would not have
reason to combine Omtveif s osmolarity increasing components with the
device of Hsiung because Hsiung’s electrolyte layer is a solid layer whereas
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Appeal 2016-005373
Application 12/644,241
Omtveit’s electrolyte layer is liquid. Appeal Br. 9-14 (citing Hsiung and
Omtveit). The Examiner responds by stating that what Hsiung refers to as a
“solid electrolyte layer” is not necessarily solid. Ans. 15-16. We resolve
this dispute by finding, for the reasons explained below, that a
preponderance of the evidence indicates that a person having ordinary skill
in the art would have understood that Hsiung’s “solid electrolyte layer” is
either or solid or, at a minimum, thick like a gel.
Both Appellants and the Examiner emphasize Hsiung’s description of
how its electrolyte layer is formed to support their respective positions.
Appeal Br. 10-11; Ans. 15-16. Hsiung explains that the “solid electrolyte
layer 22” is formed by combining a solution of sodium bicarbonate, sodium
chloride, and water with a solution of 4% polyvinyl alcohol, adding carbonic
anhydrase, and then dripping the liquid onto the sensor “to stay still under
room temperature for ca. 30-60 minutes.” Hsiung ^ 18. Hsiung does not
state whether this “staying] still” leads to the liquid drying or not. Thus,
standing alone, this description of layer formation does not clarify whether
the solid electrolyte layer dries but remains liquid, dries to become solid, or
dries only to a gel state.
Appellants are correct that Hsiung repeatedly and consistently refers
to its electrolyte layer as a “solid electrolyte layer.” See, e.g., Hsiung
Abstract. This plain language teaching, of course, suggests that the
electrolyte layer is indeed solid. On the other hand, Hsiung refers to
determining the pH of the “solid electrolyte layer” (see, e.g., Hsiung 7, 8),
and pH is typically “defined as the logarithm of the reciprocal of the
hydrogen-ion concentration of a solution.” Richard J. Lewis, Sr., Hawley’s
Condensed Chemical Dictionary 857 (1997) (emphasis added). Moreover,
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Application 12/644,241
the Hobbs reference further provides at least some indication that, in the
field of sensors, a solid may be a gel. Hobbs 3:12-15 (“Examples of
suitable solids are gels and polymers.”). Considering all evidence before us,
the preponderance of the evidence indicates that a person of skill in the art
would have understood that Hsiung’s electrolyte layer is a solid (as Hsiung
states) or could possibly be a gel.
Regardless of whether Hsiung’s solid electrolyte layer is solid or is a
“solid” gel, it is quite different from the liquid taught by Omtveit. Omtveit
adds excipient to increase “osmolarity of the liquid in the chamber ... to
prevent egress of the liquid across the membrane, without affecting the
electrical characteristics of the liquid.” Omtveit 5:8-10. The liquid Omtveit
refers to is “aqueous and especially preferably is water, substantially
electrolyte-free . . . .” Id. at 4:30-31. The water could be deionized or
distilled with or without adding a small addition of strong acid. Id. at 5:1-7.
Similarly, while Hobbs explains that its electrolyte can be a solid (and
further explains that its “solid” could be a gel) “[i]n some cases” (Hobbs
3:13-15), Hobbs only suggests adding an additive to prevent desiccation
“[i]n the case of a liquid electrolyte, particularly an aqueous electrolyte” (id.
at 3:61-4:2). See also Collier 55-56 (indicating that “some
embodiments” comprise a humectant for a liquid “microdispensed drop”).
As an alternative theory, the Examiner finds that even if Hsiung
teaches a solid electrolyte layer, the solid electrolyte layer would be
rehydrated upon application of a sample solution. Ans. 17-18. The
Examiner cites Benco as teaching such a rehydrating sensor and finds that
Hsiung’s sensor is similar. Id. Appellants, however, correctly explain that
Hsiung teaches a top gas permeable layer 24 that is mostly made of silicon
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Application 12/644,241
rubber. Reply Br. 3 (citing Hsiung 19); see also Hsiung Fig. lc (depicting
gas permeable layer 24 above solid electrolyte layer 22). Because Hsiung
describes layer 24 as “gas permeable,” Hsiung implies that the layer is not
substantially liquid permeable. In contrast, Benco teaches a layer with
completely different components. Reply Br. 3—4 (citing Benco 7:65-8:5).
The evidence thus supports Appellants’ position that the rehydration method
of Benco would not necessarily work in conjunction with Hsiung.
In sum, the preponderance of the evidence supports Appellants’
position that the electrolyte layer of Hsiung has a substantially different
composition (i.e., is solid or is at least more solid-like) than the liquid layer
of Omtveit. Given these differences, the Examiner has not adequately
explained why a person of skill in the art would have had reason to add
hydrophilic osmolarity increasing components into the solid electrolyte layer
of Hsiung. We therefore do not sustain the Examiner’s rejection of claim 1.
We also do not sustain the Examiner’s rejection of claims 3-8, 11-24, and
27-29 because each of those claims depend from claim 1, and the
Examiner’s explanation of additional applied references does not cure the
error addressed above.
DECISION
For the above reasons, we reverse the Examiner’s rejections of
claims 1, 3-8, 11-24, and 27-29.
REVERSED
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