Ex Parte Adlassnig

Patent Trial and Appeal Board

Aug 28, 2017

12441716 (P.T.A.B. Aug. 28, 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.
12/441,716 10/09/2009 Alexander Adlassnig 7942-82882-01 4728
24197 7590 08/30/2017
KLARQUIST SPARKMAN, LLP
121 SW SALMON STREET
SUITE 1600
PORTLAND, OR 97204
EXAMINER
RUFO, LOUIS J
ART UNIT PAPER NUMBER
1759
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
docketing @klarquist.com
AS CChair @klarquist. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER ADLASSNIG
Appeal 2016-003035
Application 12/441J161
Technology Center 1700
Before WESLEY B. DERRICK, CHRISTOPHER L. OGDEN, and
DEBRA L. DENNETT, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals2 under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1—5, 7—9, 11—21, and 26 in the above-
identified application.3 We have jurisdiction pursuant to 35 U.S.C. § 6(b).
A hearing was held on August 10, 2017. We reverse.
1 According to Appellant, the real party in interest is diabetes online AG.
See Appeal Br. 3, July 6, 2015.
2 See Appeal Br.; Reply Br., Jan. 29, 2016.
3 Final Office Action, Oct. 3, 2014 [hereinafter Final Action]; Examiner’s
Answer, Nov. 30, 2015 [hereinafter Answer],
Appeal 2016-003035
Application 12/441,716
BACKGROUND
Appellant’s invention relates to a method “for determining hydrogen
peroxide concentrations in fluids, in particular an improved determination of
hydrogen peroxide concentrations in blood, sweat, urine, or milk.” Spec. 1.
The sole independent claim 1 is illustrative:
1. Method for determining glucose concentration in a fluid
sample, in which the fluid sample is brought into contact with
glucose oxidase and an amount of hydrogen peroxide forming
thereby is amperometrically measured with electrodes to which
different potential steps are applied, the method comprising:
applying an activation potential so as to form a catalytic
quantity of oxide on an electrode surface for shifting a potential
for the measurement of hydrogen peroxide concentration into a
cathodic range;
applying a first measurement potential different than the
activation potential that is suitable for measuring the hydrogen
peroxide concentration in the fluid sample and which was
shifted into the cathodic range by previously applying the
activation potential, and measurement at the first measurement
potential;
applying at least a second measurement potential at
which the current between the electrodes is nonlinear with
respect to the hydrogen peroxide concentration but that is
suitable for measuring a concentration of a substance in the
fluid sample that acts as an interfering substance during
measurement of the hydrogen peroxide concentration, and
measurement at the second measurement potential; and
estimating, based on the measurement at the second
measurement potential an influence of the interfering substance
on the result of the measurement at the first measurement
potential.
Appeal Br. 24 (key limitations emphasized).
2
Appeal 2016-003035
Application 12/441,716
The Examiner maintains the following grounds of rejection:4
1. Claims 1—5, 7—9, 13—21, and 26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Simpson5 in view of Bisenberger.6 See
Final Action 3—11.
2. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Simpson in view of Bisenberger and Morita.7 See
id. at 8—9.
DISCUSSION
The Examiner finds that Simpson teaches a method for determining
glucose concentration in a fluid sample, using separate measurements at
potentials of 0.4 V and -0.6 V. See Final Action 4; Answer 8. The
Examiner states that “Simpson fails to explicitly disclose the application of
an activation potential so as to form a catalytic quantity of oxide on an
electrode surface for shifting a potential for the measurement of hydrogen
peroxide concentration into a cathodic range.” Final Action 4. However, the
Examiner finds that Bisenberger discloses, before measurement, the
application of a voltage Eox that “results in surface oxide formation at the
electrode.” Id. (citing Bisenberger 183, col. 2,11. 11—14). The Examiner
determines as follows:
4 In the Answer, the Examiner withdrew rejections under 35 U.S.C. § 112,
first and second paragraphs. See Answer 10-11.
5 Simpson et al., US 7,081,195 B2 (issued July 25, 2006).
6 Bisenberger et al., A Triple-step Potential Waveform at Enzyme
Multisensors with Thick-fdm Gold Electrodes for Detection of Glucose and
Sucrose, 28 Sensors & Actuators B 181-189 (1995).
7 Morita et al., US 2004/0259264 Al (published Dec. 23, 2004).
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Appeal 2016-003035
Application 12/441,716
It would have been obvious to one of ordinary skill in the
art at the time of invention the invention was made to apply the
two voltage potentials of Bisenberger (800 mV and 100 mV) be­
fore the measurement potentials of Simpson (0.4 V and -0.6 V).
The motivation for doing so would have been to allow for a stable
baseline and high response of the sensor (pg. 184 col. 1 lines 6—
9). Thus, the result of the application of the initial voltage allows
for the formation of oxide on the electrode surface as described
by Bisenberger (pg. 183 col. 2 lines 11—14).
Id. at 5.
Appellant argues that after application of the oxidizing potential //ox,
Bisenberger teaches the application of a reduction potential Eied “for time
periods sufficient to clean the surface and completely reduce surface
oxides.” Appeal Br. 11—12 (citing Bisenberger 183, col. 2 (“within the
reduction potential period tred surface oxides should be reduced
completely.”)). Appellant also points to other statements in Bisenberger, and
argues that these passages indicate that the purpose of applying //ox followed
by /Ad potentials is to thoroughly clean the surface of contaminants
including oxides before measurement. See id. (citing Bisenberger pp. 181
col. 2, Abstract, 186 col. 1, 188 col. 1). Therefore, according to Appellant,
the Examiner has not established a reason why a person of ordinary skill in
the art would have formed a catalytic quantity of an oxide to shift a
measurement potential into a cathodic range where the measurement is
performed. See id.
We find these arguments persuasive of reversible error in the
Examiner’s rejection. The broadest reasonable interpretation of claim 1 is
that a catalytic quantity of oxide must be present on an electrode surface at
the time of the first measurement. Because neither Simpson nor Bisenberger
teaches a reason to include a catalytic quantity of surface oxide on an
4
Appeal 2016-003035
Application 12/441,716
electrode while measuring at a shifted potential, the Examiner has not
established a prima facie case that claim 1 is unpatentable. The Examiner’s
rejections of dependent claims 2—5, 7—9, 11—21, and 26 do not cure this
error. Thus, we reverse the Examiner’s rejection of 1—5, 7—9, 11—21, and 26.
DECISION
The Examiner’s decision is reversed.
REVERSED
5