Ex Parte Stafford et al

Patent Trial and Appeal Board

Nov 30, 2018

12495662 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/495,662 06/30/2009
146167 7590 12/04/2018
V orys, Sater, Seymour and Pease LLP
1909 K St., NW
9th Floor
WASHINGTON, DC 20006-1152
FIRST NAMED INVENTOR
Gary A. Stafford
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.
075403-000622 3156
EXAMINER
TURK,NEILN
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
patlaw@vorys.com
VDocketHou@vorys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte GARY A. STAFFORD
and RICHARD G. RIES
Appeal2017-001285
Application 12/495,662
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
JANEE. INGLESE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 31-33, 35-37, and 39-88 of
Application 12/495,662 under 35 U.S.C. § 103(a) as obvious. Final Act.
(July 16, 2015). Appellants 1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
1 Abbott Diabetes Care, Inc. is identified as the real party in interest. Appeal
Br. 3.
Appeal2017-001285
Application 12/495,662
BACKGROUND
The '662 Application describes test strip-based measurement devices
such as blood glucose meters. Spec. ,r,r 2-3. In such devices, a test strip is
inserted into a port on the measurement device. Id. ,r 4. The user then
lances his or her finger to obtain a small sample of blood and touches the test
strip to the blood. Id. Next, the measurement device analyzes the blood on
the test strip. Id. Contamination of the test port with blood, for example,
can compromise the accuracy of the results. Id. ,r 5. The '662 Application
describes test strip ports that are corrosion resistant, washable, impervious to
liquid ingress, dust proof, conductive, and/or replaceable. Id. ,r 6. Such test
strip ports are intended to address and reduce problems created by
contamination.
Claim 32 is representative of the '662 Application's claims and is
reproduced below from the Claims Appendix:
32. An analyte measurement system, the system comprising:
an analyte test strip;
an analyte monitoring device comprising circuitry to
measure an analyte using the test strip, and an outer surface of a
periphery that defines a receptacle; and
a strip port removably insertable into the receptacle and
comprising a first portion comprising a plurality of conductive
contacts to electrically interface the strip port with the device,
and a second portion having an outer peripheral surface and
configured to receive the analyte test strip, and comprising a
plurality of conductive contacts to electrically interface with the
analyte test strip;
wherein the outer swface of the periphery that defines
the receptacle is flush with the outer peripheral surface of the
second portion of the strip port when the strip port is inserted
in the receptacle.
Appeal Br. 9 (emphasis added).
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Appeal2017-001285
Application 12/495,662
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 31-33, 35-37, 39-58, 61-79, 81, 82, and 85-88 are
rejected under 35 U.S.C. § I03(a) as unpatentable over the
combination of Drucker2 and Liamos. 3 Final Act. 3.
2. Claims 59, 60, 80, 83, and 84 are rejected under 35 U.S.C. § I03(a)
as unpatentable over the combination of Drucker, Liamos, and
Allen. 4 Final Act. 7.
DISCUSSION
Appellants argue for reversal of the Examiner's rejections as a group
based upon the limitations of independent claims 31 and 32. See Appeal
Br. 4--8. Each dependent claim will stand or fall with its parent independent
claim. 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 31 and 32 are directed to a measurement device comprising a
case and a removable strip port. These claims further specify that the
surface of the case is flush with the outer surface of the strip port when the
strip port is inserted into the case. See Appeal Br. 9 ( claims 31 and 32).
The Examiner rejected claims 31 and 32 as unpatentable over the
combination of Drucker and Liamos. In so doing, the Examiner found that
"Drucker does not specifically disclose that the outer surface of the
periphery that defines the receptacle is flush with the outer peripheral
2 US 2003/0176183 Al, published September 18, 2003.
3 US 6,616,819 Bl, issued September 9, 2003.
4 US 2006/0030789 Al, published February 9, 2006.
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Appeal2017-001285
Application 12/495,662
surface of the outer portion of the strip port when the strip port is inserted
into the receptacle." Final Act. 4.
Appellants argue that the Examiner's proposed modification would
render Drucker's device unsatisfactory for its intended purpose. Appeal
Br. 5-7. In particular, Appellants note that Drucker specifically discusses
advantages derived from the specific shape of Drucker's strip port. Id. at 6
( quoting Drucker ,r,r 94--96).
Notwithstanding this disclosure, the Examiner asserts that "it would
have been obvious design choice" to modify Drucker's strip port so that the
outer peripheral surface of its outer portion is flush with the outer surface of
the periphery that defines the receptacle. Final Act. 6. The Examiner posits
that a person of ordinary skill in the art would have done so "to produce a
less bulky, and space-saving device that is more aesthetically pleasing in a
conformed, seamless package." Id. The Examiner, however, does not cite
any authority for the notion that the proposed modification would result in a
more aesthetically pleasing device.
In this case, the prior art relied upon by the Examiner identifies
specific advantages that result from aspects of the prior art device that the
Examiner proposes modifying as part of the rejection. Furthermore, the
Examiner's proposed modification would eliminate the advantages discussed
in the prior art. Where, as here, the basis for the proposed modification is
"design choice," an examiner's ipse dixit is not a sufficient rationale to
support the proposed modification. Rather, an examiner must identify a
reason in the prior art for making the proposed design choice or explain why
the proposed design choice would not eliminate the advantages achieved by
the prior art design. Because the Examiner has not done so here, we cannot
affirm the Examiner's rejection.
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Appeal2017-001285
Application 12/495,662
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 31-
33, 35-37, and 39-88 of the '662 Application.
REVERSED
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