10954078 (P.T.A.B. Jun. 19, 2013)

Ex Parte Gau

Patent Trial and Appeal BoardJun 19, 2013

10954078 (P.T.A.B. Jun. 19, 2013)

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. 10/954,078 09/28/2004 Jen-Jr Gau GF1701 2273 7590 06/20/2013 ATTN: Travis Dodd LAW OFFICES OF TRAVIS L. DODD, PC 2490 Heyneman Hollow Fallbrook, CA 92028 EXAMINER BALL, JOHN C ART UNIT PAPER NUMBER 1759 MAIL DATE DELIVERY MODE 06/20/2013 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 JEN-JR GAU ____________ Appeal 2012-003850 Application 10/954,078 Technology Center 1700 ____________ Before PETER F. KRATZ, LINDA M. GAUDETTE, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. OBERMANN, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks relief from the final rejection of claims 1-8, 10-15, 17-22, and 42-44 directed to an interface between a computer and electrochemical sensors. We REVERSE. STATEMENT OF THE CASE Claim 1 is illustrative of the subject matter on appeal (emphasis added): 1. An interface between a computer and electrochemical sensors, comprising: a circuit board including a plurality of sensor circuits that are each configured to operate a different electrochemical sensor where each of the sensors includes a different reference electrode and the reference electrode included in each sensor is one of multiple electrodes included in the sensor, Appeal 2012-003850 Application 10/954,078 2 each sensor circuit including a plurality of electrode lines that are each configured to be in communication with the electrodes included in each of the electrochemical sensors; and common electronics that receive and process signals from a plurality of the sensor circuits. REJECTIONS The Examiner maintains the following rejections under 35 U.S.C. § 103(a): 1. Claims 1-8, 12, 13, and 42-44 as unpatentable over Glass (US 5,120,421, issued June 9, 1992) and Alhussiny (US 2004/0006265 A1, published January 8, 2004). 2. Claims 10, 11, 14, 15, and 17-22 as unpatentable over Glass, Alhussiny, and Steger (US 2003/0040881 A1, published February 27, 2003). ISSUE The following dispositive issue arises: Does the Examiner err in finding that Alhussiny’s disclosure of an electrocardiography (EKG) patch, equipped with multiple reference electrodes, would have prompted a skilled artisan to modify Glass’ electrochemical detection system to include of a plurality of electrochemical sensors, “where each of the sensors includes a different reference electrode and the reference electrode included in each sensor is one of multiple electrodes included in the sensor” as specified in claim 1? We answer this question in the affirmative and REVERSE. Appeal 2012-003850 Application 10/954,078 3 ANALYSIS Our analysis of claim 1, the only independent claim, disposes of all issues raised in this appeal. The rejection of claim 1 depends upon the Examiner’s finding that Alhussiny’s disclosure of an EKG patch, equipped with multiple reference electrodes, would have prompted a skilled artisan to modify Glass’ electrochemical detection system to include of a plurality of electrochemical sensors, “where each of the sensors includes a different reference electrode and the reference electrode included in each sensor is one of multiple electrodes included in the sensor” as specified in claim 1. Ans. 6. Glass discloses an electrochemical detection system having a single reference electrode (146) and a plurality of electrochemical sensors (attached to 150). Ans. 6 (citing Glass Fig. 2). The Examiner reasons that a skilled artisan would have been prompted by Alhussiny’s disclosure to modify Glass to include Alhussiny’s multiple reference electrodes. Id. In this regard, the Examiner finds that Alhussiny discloses “an electrochemical sensor in the form of an electrode patch which is equipped with multiple reference electrodes[.]” Id. (citing Alhussiny [0029]). Alhussiny’s EKG patch is not, however, an “electrochemical sensor” within the meaning of claim 1. See App. Br. 9. The Specification explains that “[e]lectrochemical sensors can be employed to detect the presence of biological and/or chemical agents in a sample.” Spec. 1. For example, “an electrochemical sensor” may include “a plurality of electrodes arranged on a substrate.” Id. A “sample to be tested is positioned on the substrate such that the electrodes are covered by the sample.” Id. “After the sample is positioned on the sensor, a variety of techniques are available for operating Appeal 2012-003850 Application 10/954,078 4 the sensor.” Id. One suitable technique involves a working electrode that “is held at a constant potential relative to” a reference electrode. Id. at 9-10 (bridging sentence). “The potential gradient in the sample is held at a level sufficient to cause electron transfer between the working electrode [] and at least one component in the sample.” Id. at 10. Like the electrochemical sensor disclosed in Appellant’s Specification, Glass’ electrochemical sensor detects the presence of a chemical agent in a sample. Glass 1:12-24 (field of invention relates to an “electrochemical sensor” useful for “detecting and measuring the amounts of elements and substances in solutions and in the environment”); Spec. 9-10 (discussing coulometry technique for detecting chemical agent in a sample). The Examiner fails to establish that a skilled artisan would have recognized Alhussiny’s EKG patch as an “electrochemical sensor” as that term is understood in the relevant art. Ans. 6. The Examiner finds that Alhussiny’s EKG patch is an “electrochemical sensor” because “EKG measurements are physiological measurements of potentials generated via the pumping of ions across a cell membrane due to passive and/or active pumping biochemical mechanisms.” Ans. 15. However, the Examiner directs us to no evidence that Alhussiny’s EKG patch in fact “can be employed to detect the presence of biological and/or chemical agents in a sample.” Spec. 1; see Ans. 6, 15. On this record, we agree with Appellant that the Examiner does not adequately explain why a skilled artisan, seeking to improve Glass’ electrochemical detection system, would have been prompted to incorporate therein the multiple reference electrodes of Alhussiny’s EKG patch. App. Br. 9. Although it may be necessary “to look to interrelated teachings of Appeal 2012-003850 Application 10/954,078 5 multiple patents . . . in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue[,]” the Examiner fails to articulate a rational reason in this case. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). CONCLUSION We reverse the rejections of claims 1-8, 10-15, 17-22, and 42-44. REVERSED tc