Ex Parte Liang et al

Patent Trial and Appeal Board

Jul 11, 2016

12345354 (P.T.A.B. Jul. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/345,354 12/29/2008 Bradley Chi Liang
12813 7590 07112/2016
Gates & Cooper LLP - Minimed
6701 Center Drive West
Suite 1050
Los Angeles, CA 90045
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
G&C 130.94-US-Ol 7648
EXAMINER
RIVERA VARGAS, MANUELA
ART UNIT PAPER NUMBER
2864
MAILDATE DELIVERY MODE
07/12/2016 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 BRADLEY CHI LIANG, LARRY E. TYLER,
MOHSEN ASKARINYA, CHARLES ROBERT GORDON,
RANDAL C. SCHULHAUSER, KENNETH W. COOPER,
KRIS R. HOLTZCLAW, BRIANT. KANNARD, andRAJIV SHAH
Appeal2015-000506
Application 12/345,354
Technology Center 2864
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 5-7, 9-11, 13, and 31-36, which constitute all
the claims pending in this application. Claims 4, 8, 12, and 14--30 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest identified by Appellants is Medtronic MiniMed,
Inc. Appeal Br. 2.
Appeal2015-000506
Application 12/345,354
STATEMENT OF THE CASE
Introduction
Appellants' invention relates generally to methods and materials for
observing the state of a sensor, such as a glucose sensor. Abstract.
Claim 1 is representative and reads as follows2:
1. A method of determining a state of a glucose sensor
having at least a counter electrode and at least one working
electrode comprising:
(a) applying a first voltage value to the at least one
working electrode over a period of time;
(b) applying a second voltage value to the at least one
working electrode over a period of time;
( c) observing a peak instantaneous electrical circuit for
each application of the first voltage value and the second voltage
value; and
( d) observing a total electrical current over the period of
time for a predetermined frequency of the voltage application;
wherein:
at least one of the first voltage value or the second voltage
value is from 0.8 to 1.34 volts; and
a combination of the peak instantaneous electrical current
and the total electrical current provides information on one or
more of:
sensor hydration;
sensor n01se;
sensor offset; and
2 The reproduction of claim 1 is modified to correct a transcription error in
Appellants' claim appendix (i.e., "(c) observing a peak instantaneous
electrical circuit" rather than "(c) observing a peak instantaneous electrical."
The correct claim language can be found in Appellants' most recent
amendment. See Amendment Under 37 C.F.R. § 1.111, dated Nov. 6, 2013.
2
Appeal2015-000506
Application 12/345,354
sensor drift,
so that the state of the sensor is determined.
Appeal Br. 8 (Claims App.).
References
Cozzette US 5, 112,455 A May 12, 1992
Fennell US 2006/0247508 Al Nov. 2, 2006
Shah US 2007/0173711 Al July 26, 2007
Wang US 2007 /0170073 Al July 26, 2007
RF Cafe, Capacitors & Capacitance Calculations, Internet Archive
Wayback Machine, Oct. 18, 2007,
http://replay.web.archive.org/2007 l 0 l 8033322/http://www.rfcafe.com/ref
erences/ electrical/ capacitance.htm
Rejections on Appeal
1. Claims 1-3, 6, 9-11, 31-33, and 36 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Cozzette,
in view of Wang.
2. Claims 34--35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cozzette, in view of Wang, and
further in view of Official Notice.
3. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cozzette, in view of Wang, and
further in view of RF Cafe.
4. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cozzette, in view of Wang, and
3
Appeal2015-000506
Application 12/345,354
further in view of Fennell.
5. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cozzette, in view of Wang, and
further in view of Shah.
Issues on Appeal
Appellants' arguments in the Appeal Brief3 and Reply Brief present us
with the following issues:
1. Is the Examiner's rationale for combining Cozzette and
Wang sufficient to establish a prima facie case of
obviousness?
2. Does the Examiner's rationale for combining Cozzette
and Wang conflict with the teachings of Wang?
ANALYSIS
We are not persuaded by Appellants' arguments that the Examiner has
erred. Appeal Br. 3-7; Reply Br. 3---6. Unless otherwise indicated, we agree
with, and adopt as our own, the Examiner's findings and reasons as set forth
in the Final Action from which this appeal is taken (Final Act. 2-10) and the
Examiner's Answer (Ans. 3--4). For emphasis, we highlight specific
arguments and findings as follows.
3 Our Decision refers to the Final Office Action (mailed Feb. 4, 2014, "Final
Act."), Appellants' Appeal Brief (filed June 24, 2014, "Appeal Br.") and
Reply Brief (filed Sept. 29, 2014, "Reply Br."), the Examiner's Answer
(mailed July 30, 2014, "Ans."), and the original Specification (filed Dec. 29,
2008, "Spec.").
4
Appeal2015-000506
Application 12/345,354
Issue 1
Appellants argue the Examiner's rationale for combining Cozzette and
Wang is conclusory and cannot support a prima facie conclusion of
obviousness. Appeal Br. 3--4. More specifically, Appellants argue the
Examiner's statement that it would have been obvious to have at least one
voltage value be from 0.8 to 1.34 volts, as taught by Wang, because "it
would protect the sensor from damage due to high currents" is
conclusory because both Cozzette and Wang fail to provide any information
required to determine what voltage ranges (if any) will protect the electrical
circuits described in Cozzette and Wang from damage due to high currents.
Appeal Br. 4--5; see also Reply Br. 3-5.
The Examiner finds Cozzette teaches all the elements of independent
claims 1 and 31, except that Cozzette fails to expressly disclose "wherein at
least one of the first voltage value or the second voltage value is from 0.8 to
1.34 volts." Final Act. 2-5. The Examiner further finds Wang teaches the
aforementioned element of independent claims 1 and 31. Final Act. 3, 5.
Regarding a motivation to combine the references, the Examiner finds Wang
provides the motivation, as Wang teaches that voltage values may be
selected based on a variety of factors, such as a type of enzyme utilized in a
sensor, membranes utilized in the sensor, an operating period of the sensor, a
length of a pulse, or a magnitude of the pulse. Ans. 4.
We do not find Appellants' arguments persuasive. As the Examiner
finds, Cozzette and Wang collectively teach all the elements of independent
claims 1 and 31. We agree with the Examiner that the motivation to
combine Cozzette and Wang is found in Wang, which expressly discloses
that different voltage values can be selected based on a variety of factors,
5
Appeal2015-000506
Application 12/345,354
including the previously enumerated factors. See Ans. 4 (citing Wang if 69).
Thus, we conclude the Examiner's rationale for combining Cozzette and
Wang is sufficient to support a prima facie conclusion of obviousness.
Issue 2
Appellants argue the Examiner's rationale for combining Cozzette and
Wang directly conflicts with Wang's technical teachings. Appeal Br. 5-7.
More specifically, Appellants argue that Wang characterizes a voltage value
range of 1.0 to 1.2 volts as a "high" voltage and a voltage value range of 0.5
to 0.6 volts as a "low" voltage, and that, if the Examiner's rationale for
combining the cited references was correct, one of ordinary skill in the art
would select the "low voltage" (e.g., between 0.5 and 0.6 volts) in order to
keep the current low and not the "higher voltage" (i.e., the claimed 0.8 to
1.34 volts). Appeal Br. 6. Appellants further argue that Wang identifies 0.3
volts as falling in a "high range," and, thus, following the Examiner's
rationale, Wang teaches away from the claimed invention, in which the
voltage value is from 0.8 to 1.34 volts. Reply Br. 5---6. The Examiner's
findings are discussed above.
We do not find Appellants' arguments persuasive. Contrary to
Appellants' contentions, Wang does not characterize any voltage range as
objectively "high" or "low." Instead, Wang merely describes applying two
voltage values to a sensor, where one of the voltage values is relatively
higher than the other. See, e.g., Wang iii! 67, 69. Thus, we conclude that the
Examiner's rationale does not conflict with Wang's teachings. Regarding
Appellants' argument that Wang teaches away from the claimed invention
(Reply Br. 5---6), assuming arguendo that Appellants did not waive this
argument for failing to explicitly raise it in their Appeal Brief, we do not
6
Appeal2015-000506
Application 12/345,354
find this argument persuasive, as the Examiner finds that Wang explicitly
discloses that a voltage value can be in a range of 0.8 to 1.34 volts. Final
Act. 3-5 (citing Wang i-f 69).
Accordingly, we sustain the Examiner's rejection of independent
claims 1 and 31, as well as dependent claims 2-3, 5-7, 9-11, 13, and 32-36,
which are not argued separately.4
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 5-7, 9-11,
13, and 31-36 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIR~v1ED
4 Appellants merely argue in their Appeal Brief that dependent claims 2-3,
5-7, 9-11, 13, and 32-36 recite additional novel elements not shown in the
cited prior art references. See Appeal Br. 7. Such an argument does not
comply with 37 C.F.R. § 41.37(c)(l)(iv) because the argument does not
sufficiently explain why the Examiner erred in rejecting the dependent
claims, and, thus, does not constitute a separate argument for patentability.
7