Ex Parte Augstein

Patent Trial and Appeal Board

May 22, 2015

13081724 (P.T.A.B. May. 22, 2015)

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.
13/081,724 04/07/2011 Manfred Augstein 04-1047-US-DIV 4583
20306 7590 05/22/2015
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
SIEFKE, SAMUEL P
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
05/22/2015 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 MANFRED AUGSTEIN
1

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Appeal 2013-005773
Application 13/081,724
Technology Center 1700
____________
Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
JAMES C. HOUSEL, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s
decision rejecting claims 13–16, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Schultheis (US 5,944,324 issued Aug. 31, 1999) in view
of Walter (US 4,489,580 issued Dec. 25, 1984). We have jurisdiction under
35 U.S.C. § 6.
We REVERSE.

1
Roche Diagnostics Operations, Inc. is identified as the real party in interest.
App. Br. 6.
Appeal 2013-005773
Application 13/081,724
2
Appellant claims a rapid diagnosis appliance (1) for evaluation of a
test strip comprising a plastic housing body (2) having an internal system-
critical area (15) and an insert (16, 50) seamlessly embedded in the system-
critical area wherein the insert is a breakable material and has a damping
lacquer layer (53) covering an exposed surface thereof in order to protect the
insert from breaking during injection molding (sole independent claim 13,
Figs. 1, 3, 6, and 7).
A copy of representative claim 13, taken from the Claims Appendix of
the Appeal Brief, appears below.
13. A rapid diagnosis appliance for evaluation of a test
strip, the appliance comprising:
a plastic housing body having an internal system-critical
area; and
an insert seamlessly embedded in a liquid-tight manner in
the system-critical area, wherein the insert is made of a
breakable material, and has a damping layer covering an
exposed surface of the insert towards an injection mould,
wherein the damping layer is a lacquer layer that protects
the insert from breaking when a maximum clamping pressure is
applied during injection moulding, and wherein the maximum
clamping pressure is predetermined by the material of the
insert.
The Examiner finds that “Schultheis teaches a rapid diagnosis device”
(Final Action 3) but not a damping layer made of lacquer (id.) and concludes
that it would have been obvious to modify Schultheis to employ a lacquer
damping layer in view of Walter (id. at 4).
Appellant argues that “Schultheis does not seem even remotely
concerned with rapid diagnosis appliances” (App. Br. 9) and that
“Schultheis’s teachings are limited to glass ceramic cooking plates, glass
Appeal 2013-005773
Application 13/081,724
3
shelves for use in refrigerators, grill appliances, induction cooking
appliances, microwave doors, cover plates for chest freezers, doors for
refrigerators or freezer cabinets and cooker hoods (id. (citing Schultheis col.
1, ll. 19–25 and col. 7, ll. 25–30)). Appellant emphasizes that “[t]he claims
should be read in light of the specification, which sets forth in detail how the
limitations of the patent claims allow the invention to function as a rapid
diagnosis appliance for the evaluation of a test strip” (id. at 13). Appellant
concludes by arguing that “[n]othing in Schultheis or Walter, individually or
in combination, teaches or suggests a rapid diagnosis appliance” (id.).
The Examiner acknowledges but does not respond to Appellant’s
above arguments (Ans. 4; see also id. at 7, 9).
Therefore, in the record before us, the Examiner does not dispute
Appellant’s position that Schultheis is limited to articles other than the
claimed rapid diagnosis appliance for evaluation of a test strip and does not
provide any support for interpreting this claimed rapid diagnosis appliance
as encompassing the articles of Schultheis. In this latter regard, we remind
the Examiner that “[d]uring examination, ‘claims . . . are to be given their
broadest reasonable interpretation consistent with the specification, and . . .
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr, 367 F.3d 1359, 1364 (Fed. Cir. 2004) quoting In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990).
Under these circumstances, Appellant has shown error in the
Examiner’s finding that Schultheis teaches a rapid diagnosis appliance for
evaluation of a test strip as required by the independent claim on appeal.
For this reason, we do not sustain the Examiner’s § 103 rejection of
claims 13–16, 19, and 20 as unpatentable over Schultheis in view of Walter.
Appeal 2013-005773
Application 13/081,724
4
The decision of the Examiner is reversed.

REVERSED
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