Ex Parte Liu

Patent Trial and Appeal Board

Sep 29, 2017

13568078 (P.T.A.B. Sep. 29, 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.
13/568,078 08/06/2012 Zenghe Liu 12-1375 5824
136353 7590 09/29/2017
McDonnell Boehnen Hulbert & Berghoff LLP
Verily Life Sciences LLC
300 South Wacker Drive
Chicago, IL 60606
EXAMINER
KESSEL, MARIS R
ART UNIT PAPER NUMBER
1759
MAIL DATE DELIVERY MODE
09/29/2017 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 ZENGHE LIU1
Appeal 2016-001945
Application 13/568,078
Technology Center 1700
Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies the real party in interest as Google Inc. Appeal Br. 1.
Appeal 2016-001945
Application 13/568,078
Appellant requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 19 and 21—31. An oral hearing was
held on September 26, 2017.2 We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 19 is illustrative of Appellant’s subject matter on appeal and is
set forth below:
19. A method, comprising:
sensing, by a two-electrode electrochemical sensor in a
contact lens, an analyte in a solution on or within the contact
lens, wherein the two-electrode electrochemical sensor
comprises a working electrode, a reference-counter electrode,
and sensor circuitry, and wherein a ratio of an area of the
reference-counter electrode and an area of the working
electrode is between approximately 2 and approximately 1000.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Abreu US 6,120,460 Sept. 19, 2000
Karinka US 2003/0146110 A1 Aug. 7, 2003
Hyland US 2008/0190783 A1 Aug. 14, 2008
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
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Appeal 2016-001945
Application 13/568,078
Liao, Yu-Te. A 3-/iW CMOS Glucose Sensor for Wireless Contact-
Lens Tear Glucose Monitoring. IEEE Journal of Solid-State Circuits, Vol.
47, No. 1, (Jan. 2012).
THE REJECTIONS
1. Claims 19 and 21—303 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Liao, Karinka, and Hyland.
2. Claim 31 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Liao, Karinka, Hyland and in further view of Abreu.
ANALYSIS
To the extent that Appellant has presented substantive arguments for
the separate patentability of any individual claims on appeal, we will address
them separately consistent with 37 C.F.R. § 41.37(c)(l)(vii). As such, we
consider claim 19 in this appeal.
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellant’s claims is unpatentable over the applied prior art. Accordingly,
we sustain each of the Examiner’s rejections on appeal essentially for the
reasons set forth in the Final Office Action and in the Answer, and add the
following for emphasis.
For each argument presented by Appellant in the Appeal Brief and
Reply Brief, we are unpersuaded of error for essentially the reasons stated in
3 We include claim 30 in this rejection. Final Act. 6; Ans. 5. Appeal Br. 1.
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Appeal 2016-001945
Application 13/568,078
the record, including the Examiner’s response to such argument made on
pages 6—11 of the Answer, which we do not repeat herein. We add the
following. Appellant argues that the teachings of Hyland are specific to a
multilevel design and therefore not combinable with Liao because Liao
teaches a design in which the electrodes are coplanar (Appeal Br. 14—17,
Reply Br. 12—14). We are unpersuaded by such argument because Hyland is
directed to a typical electrode which may be made suitable for a given
system. Hyland, 141. Moreover, Karinka teaches that a biosensor (glucose
sensor) employing either three or two electrodes were known, but suggests
using a biosensor employing two electrodes when a low sample volume is
involved. Karinka, 19. Thus, notwithstanding Appellants’ arguments to the
contrary, we concur with the Examiner that one of ordinary skill in the art
would have been led to employ the two electrode glucose sensor taught by
Karinka, in lieu of the three electrode glucose sensor in the contact lens
taught by Liao, with a reasonable expectation of successfully detecting tear
glucose level. The collective teachings of Liao, Karinka, and Hyland would
have suggested to one of ordinary skill in the art to provide such electrode
sensors in an appropriate dimension of the type of arrangement taught by
Liao. In re Keller, 642 L.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”); see also Pfizer, Inc. v.
Apotex, Inc., 480 L.3d 1348, 1364 (Led. Cir. 2007) (“the expectation of
success need only be reasonable, not absolute”).
In view of the above, we affirm the rejections.
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Appeal 2016-001945
Application 13/568,078
DECISION
Each rejection is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
AFFIRMED
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