Ex Parte Fritz et al

Patent Trial and Appeal Board

Sep 25, 2017

12253702 (P.T.A.B. Sep. 25, 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.
12/253,702 10/17/2008 Michael Fritz 007804-000042 9908
19023-US-l
124540 7590 09/27/2017
Woodard, Emhardt, Moriarty, McNett & Henry LLP
Roche Diabetes Care, Inc. (DC)
111 Monument Circle
Suite 3700
Indianapolis, IN 46204
EXAMINER
BUI, VY Q
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
pair_roche@firsttofile.com
DocketDept @ u spatent. com
meg.ward@roche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL FRITZ, HERBERT ARGAUER, HANS LIST,
THOMAS WEISS, FRANK DECK, and CALUDIO IMMEKUS
Appeal 2016-0006721
Application 12/253,7022
Technology Center 3700
Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1, 3, 23—30, 40, and 41.3 We have jurisdiction
under 35 U.S.C. § 6(b).
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed Jan. 5,
2015), Reply Brief (“Reply Br.,” filed Sept. 28, 2015), the Examiner’s
Answer (“Ans.,” mailed July 27, 2015), and the Final Office Action (“Final
Act.,” mailed July 2, 2014).
2 Appellants identify “Roche Diagnostics Operations, Inc.” as the real party
in interest. App. Br. 3.
3 Claims 4, 5, 31, 32, and 42-48 are withdrawn and claims 2, 6—22, and 33—
39 have been canceled. See App. Br., Claims Appendix.
Appeal 2016-000672
Application 12/253,702
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to a blood lancet with
hygienic tip protection. Spec., Title.
Claims 1 and 28 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. Lancet containing
a lancet needle with a tip;
a lancet body which completely surrounds the lancet needle at
least in the area of the tip, the tip being able to move relative to
the lancet body and able to protrude from the lancet body and
the lancet body consisting of an elastic material at least in the
area of the tip of the lancet needle, characterized in that before
its use, the tip of the lancet needle is embedded in the elastic
material without a hollow space remaining, wherein the elastic
material is a thermoplastic elastomer;
wherein the tip of the lancet needle has a first position in
which the tip is embedded within the elastic material of the
lancet body;
wherein the tip of the lancet needle has a second position
in which the tip protrudes from the lancet body,
the tip of the lancet needle being moveable from the first
position to the second position; and a lancing device having a
drive device engaging the lancet needle to move the tip of the
lancet needle from the first position to the second position.
REJECTIONS4
Claims 1, 3, 23—30, 40, and 41 are rejected under 35 U.S.C. § 102(b)
as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Heinz (US 5,980,495, iss. Nov. 9, 1999). Final Act. 2.
4 The rejection of withdrawn claim 32 under § 103 (Final Act. 3—4) is not
before us on appeal.
2
Appeal 2016-000672
Application 12/253,702
ANALYSIS
Anticipation by Heinz
Independent claim 1 and dependent claims 3, and 23—27
We are persuaded by Appellants’ arguments that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 102(b) because Heinz does not
expressly or inherently disclose “wherein the tip of the lancet needle has a
second position in which the tip protrudes from the lancet body.” App.
Br. 12..15; Reply Br. 2-3.
In rejecting claim 1, the Examiner acknowledges that Heinz does not
explicitly disclose a lancet needle tip that protrudes from the lancet body, but
maintains that the rejection is proper because “[ijnherently, needle 4 is
capable of distally penetrating through lancet body 6 as recited in the claims
as lancet needle 4 is sharp and much harder than soft thermoplastic
elastomer lancet body 6.” Ans. 2 (citing Heinz, Fig. 2); see also Final
Act. 3. In support of this finding, the Examiner reproduces three paragraphs
from Heinz, and concludes that Heinz clearly acknowledges that soft elastic
material
can be penetrated by a needle to cause a significant danger
of injury to a user, and hard elastic material, such as
casing/cap 5 of Heinz, is for protective function, and naturally
the hard elastic casing 5 will prevent a penetration of needle 4
through needle cap 5/casing 5 to protect a user from injury.
Id. at 7 (citing Heinz, 1:48—51, 2:39-47, and 4:23—27). Additionally, the
Examiner relies on annotations made to a different embodiment depicted in
Figure 4 of Heinz, and asserts that:
Needle 4, for example, is fully capable of penetrating and
protruding from body 6 to a second position as recited in the
claim. Especially, when a person un-intentionally, or
accidentally pushes cap 5 too hard (and disengages the
3
Appeal 2016-000672
Application 12/253,702
engagement between bulged portion 12 of cap 5 and depression
11 of injection head 2) toward lancing device 3 a distance “D”
to the second position, wherein D>C and D