Ex Parte Draudt et al

Patent Trial and Appeal Board

Dec 21, 2016

13330330 (P.T.A.B. Dec. 21, 2016)

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.
13/330,330 12/19/2011 Gregg R. Draudt P6267C1C1 (66810-469) 6677
47058 7590 12/23/2016
David W. Highet, VP & Chief IP Counsel
Becton, Dickinson and Company
(Dickinson Wright PLLC)
1 Becton Drive, MC 110
Franklin Lakes, NJ 07417-1880
EXAMINER
HOEKSTRA, JEFFREY GERBEN
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
lorraine_kow alchuk @ bd .com
ip_docket @bd.com
DWPatents @ dickinson wright. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGG R. DRAUDT, DIRK AHLGRIM, JAN SCHMINKE,
MARK FOLLMAN, JOSE COLUCCI, JR., RAYMOND YAO,
ROBERT J. MCCAFFREY, AND VICTOR CHAN
Appeal 2014-0066271
Application 13/330,3302
Technology Center 3700
Before MICHAEL C. ASTORINO, KEVIN W. CHERRY,
MATTHEW S. MEYERS, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gregg R. Draudt et al. (Appellants) seek review under
35U.S.C. § 134 of a Final Rejection of claims 1—13, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
1 Our decision references the Appellants’ Appeal Brief (“Appeal Br.”), filed
December 17, 2013, Appellants’ Reply Brief (“Reply Br.”), filed May 19,
2014, the Examiner’s Final Action (“Final Act.”), mailed July 19, 2013, and
the Examiner’s Answer (“Ans.”), mailed March 18, 2014.
2 Appellants’ Appeal Brief identifies “Becton, Dickinson and Company,” as
the real party in interest for this appeal (Appeal Br. 4).
Appeal 2014-006627
Application 13/330,330
pursuant to 35 U.S.C. § 6(b). Appellants failed to appear for the oral hearing
scheduled for November 4, 2016.
We REVERSE.
Appellants’ claimed invention relates to “a blood glucose meter with
an integral lancet device, and a location on the device to store test strip vials
such that one-handed use for lancet device, meter and test strip access
functions are possible” (Spec. 12).
Claims 1 and 10-13 are independent. Claim 1 is a device claim and
claims 10—13 are method claims. Claims 1 and 10 are illustrative of the
subject matter on appeal and are reproduced below (with paragraphing
added).
1. A blood glucose meter device for single handed use,
comprising:
a body having first and second ends;
a lancet device disposed at said first end of said body, said
lancet device comprising a trigger button disposed on
said body for activating said lancet device, an arming
slide disposed on said body for arming said lancet
device, a cylindrical depth control mechanism for
setting a lancet skin penetration depth and for
engaging a skin surface, and a surface for supporting
said skin surface when rolled toward an adjacent test
strip;
a test strip port disposed at said first end of said body for
positioning a test strip substantially parallel and
adjacent to said lancet device; and
an enclosure for housing a test strip vial disposed at said
second end of said body.
(Appeal Br. 35, Claims App.).
10. A method of facilitating one-handed use of a blood
glucose meter device, comprising:
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Appeal 2014-006627
Application 13/330,330
providing a test strip port adjacent to a lancet mechanism;
transferring a test strip from a test strip vial contained in
said device to said test strip port such that said test strip
is located substantially parallel and adjacent to said
lancet mechanism;
activating said lancet mechanism against a skin surface to
provide a blood drop; and
transferring said blood drop from said skin surface to said
adjacent test strip by resting said skin surface upon
said lancet mechanism and rolling said skin surface
toward said test strip in a substantially continuous
motion to move said blood drop to said adjacent test
strip.
(Appeal Br. 36—37, Claims App.).
Rejections
Claims 1—13 stand rejected under 35 U.S.C. § 112, second paragraph,
as being unpatentable, as being indefinite for failing to particularly point out
and distinctly claim the subject matter the applicant regards as the invention.
ANALYSIS
“Substantially parallel ”
Claim 1 recites “a test strip port disposed at said first end of said body
for positioning a test strip substantially parallel and adjacent to said lancet
device” (Appeal Br. 35, Claims App.). Claims 10-13 similarly require that
“said test strip is located substantially parallel and adjacent to a lancet
mechanism” {id. at 36—38, Claims App.). In the Final Action, the Examiner
based the rejection on the use of the term “substantially” because the term
was not defined by the claims, the Specification does not provide a standard
for ascertaining the requisite degree of the term, and one of ordinary skill
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Application 13/330,330
would not be reasonably apprised of the scope of the invention (Final Act.
2). In the Answer, the Examiner submitted that there was no ordinary
meaning of the term “substantially parallel,” and no standard definition of
the term (Ans. 3, 4). In addition, the Examiner noted that “substantially
parallel” is unclear because neither the figures nor the claims have sufficient
detail to provide a definition for the term {id. at 3 4). Finally, the Examiner
notes that the meaning of “parallel” is “equidistant,” so something is either
parallel or it is not parallel and there is no such thing as “substantially
parallel” {id. at 4).
Appellants argue, and we agree, that the term “substantially parallel”
does not render the claims indefinite (Appeal Br. 4; see also Reply Br. 2—8).
Although the Specification does not expressly recite “substantially parallel,”
Figures 3—11 depict test strip 76 disposed in a position that is essentially
parallel with lancet device 30 {see Spec., Figs. 3—11). In light of these
Figures, one of ordinary skill in the art would readily understand the claim
language “substantially parallel,” in light of the ordinary meaning of
“substantially” and when read in the context of the Specification, to mean
that the test strip is largely but not wholly parallel with the lancet.3 See, e.g.,
Anchor Wall Sys., Inc. v. RockwoodRetaining Walls, Inc., 340 F.3d 1298
(Fed. Cir. 2003) (Finding the term “generally parallel” definite noting that
the term “envision[s] some amount of deviation from exactly parallel.”);
Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001)
(noting that terms such as “substantially” are used ubiquitously in patent
3 An ordinary meaning of “substantially” is “being largely but not wholly
that which is specified.” See
www.merriam-webster.com/dictionary/substantially, last visited on Dec. 20,
2016.
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Appeal 2014-006627
Application 13/330,330
claims to avoid a strict numerical boundary to the specified parameter
without necessarily rendering the claims indefinite). As such, the claim
language defines the claimed subject matter with an adequate degree of
particularity and distinctness such that one of ordinary skill in the art would
understand what is being claimed as to the position of the test strip relative
to the lancet as called for in claims 1 and 10—13 (and in claims 2—9 that
depend from claim 1).
“Substantially continuous motion ”
Claims 10—13 also recite that the step of transferring or applying the
blood drop on the user’s skin surface to the test strip occurs using “a
substantially continuous motion” (Appeal Br. 37—39, Claims App.). The
Examiner raised a similar faults, as we considered above with respect to
“substantially parallel,” regarding the use of the word “substantially” in
“substantially continuous” (Final Act. 2; see also Ans. 6—7). The Examiner
submitted that there was uncertainty in the amount of non-continuous
motion permissible (Final Act. 2; see also Ans. 6—7). The Examiner further
submitted that the Specification, figures, and claims do not provide any
teaching of a standard of measuring the relative term of degree
“substantially” in any instance of the claimed subject matter, and therefore
the relative term of degree of “substantially” renders claims 10—13 indefinite
(Ans. 6—7).
We agree with Appellants that the term “substantially continuous
motion” recited in claims 10-13 is not indefinite (Appeal Br. 16—33; see also
Reply Br. 12—13). The Specification uses the term and describes in detail
the method of using the glucose meter (see Spec. 39, 40, 42). In light of
this explanation, one of ordinary skill in the art would readily understand the
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claim language “substantially continuous motion,” in light of the ordinary
meaning of “substantially,” discussed above, and when read in the context of
the Specification, to mean that the motion is mostly, but not exactly
continuous. As such, the claim language defines the claimed subject matter
with an adequate degree of particularity and distinctness such that one of
ordinary skill in the art would understand what is being claimed as to the
type of motion called for in claims 10—13.
Summary
Accordingly, we reverse the rejection of claims 1—13 under 35 U.S.C.
§112, second paragraph, as being indefinite.
DECISION
The Examiner’s decision to reject claims 1—13 is reversed.
REVERSED
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