Ex Parte MarkesDownload PDFBoard of Patent Appeals and InterferencesJul 10, 201210659291 (B.P.A.I. Jul. 10, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/659,291 09/11/2003 Robert Markes 1339BGN-US 5615 7590 07/10/2012 Dekel Patent Ltd. Beit HaRofim Room 27 18 Menuha VeNahala Street Rehovot, ISRAEL EXAMINER ALEXANDER, LYLE ART UNIT PAPER NUMBER 1773 MAIL DATE DELIVERY MODE 07/10/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROBERT MARKES ____________ Appeal 2010-011474 Application 10/659,291 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and LINDA M. GAUDETTE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011474 Application 10/659,291 2 Appellant appeals under 35 U.S.C. § 134 from the Examiner's rejections under 35 U.S.C. § 103(a) of claims 1, 5-10, and 12-19 as unpatentable over Stiene (US 2004/0096959 A1 published May 20, 2004) in view of Eason (US 5,186,897 issued Feb. 16, 1993) alone or further in view of Tenerz (US 4,941,473 issued July 17, 1990) and of claim 20 as unpatentable over these references and further in view of Stanton (US 2004/0219523 A1 published Nov. 4, 2004). We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellant claims a sampling instrument comprising a housing containing a needle for drawing therethrough a fluid and a reagent capable of producing an optically-sensible reaction with the fluid, an optical sensor adapted to sense the optically-sensible reaction and a processor in communication with the optical sensor "adapted to process a signal from said optical sensor, said signal being a function of said optically-sensible reaction, wherein said processor comprises a microprocessor and a photodiode" (independent claims 1 and 15). The optical sensor may comprise a surface plasmon resonance sensor (dependent claim 20). Representative claim 1 reads as follows: 1. A sampling instrument comprising: a first housing comprising a needle arranged for protrusion therefrom, said needle being adapted to draw therethrough a fluid; a reagent disposed in said first housing in fluid communication with said needle, capable of producing an optically-sensible reaction with a fluid; Appeal 2010-011474 Application 10/659,291 3 an optical sensor disposed in said first housing adapted to sense said optically-sensible reaction; a first optical waveguide in said first housing connected to said optical sensor and to a first optical connector; and a processor disposed in a second housing in communication with said optical sensor adapted to process a signal from said optical sensor, said signal being a function of said optically-sensible reaction, wherein said processor comprises a microprocessor and a photodiode, said processor being connected to a second optical waveguide disposed in said second housing, said second optical waveguide being connected to a second optical connector which mates with said first optical connector so as to effect optical communication between said processor and said optical sensor, wherein said photodiode is adapted to convert light emission transmitted thereto from said optical waveguide to a current. We will sustain the above rejections for the reasons expressed in the Answer and below. The Rejection based on Stiene and Eason alone or in view of Tenerz Because Appellant does not separately argue the rejected claims (Br. 7), these claims will stand or fall together with representative independent claim 1. Appellant does not contest the Examiner's conclusion that it would have been obvious to combine the applied references in such a manner as to satisfy the waveguide requirement of the rejected claims. Rather, Appellant's sole argument is directed to the processor limitation of representative claim 1. This argument is reproduced below: Appeal 2010-011474 Application 10/659,291 4 Stiene et al. only mentions a processor once in paragraph [0154]: "The chip 400 has an edge connector 401 for electrically connecting electrodes (as will be described) to a controller (not shown). A controller can contain logic, memory and processors for controlling the electronics of the chip 400 and optionally displaying any outputs (as, for example, the function and operation of controller 102 in FIG. 3)." With the utmost respect, this processor has nothing to do with the claimed feature of "process a signal from said optical sensor, said signal being a function of said optically-sensible reaction, wherein said processor comprises a microprocessor and a photodiode." (Br. 10). This argument is unpersuasive for two reasons. First, the argument does not address the relevant Stiene disclosures cited by the Examiner. For this reason alone, Appellant's argument fails to reveal error in the Examiner's finding that these cited disclosures teach the processor limitation under review. Second, the argument does not explain why the referenced controller of Stiene "has nothing to do with the claimed [processor] feature" (id.). On the other hand, Stiene's disclosures regarding the controller referred to by Appellant as well as the control unit and other elements referred to by the Examiner teach (or would have suggested) the processor feature and function required by claim 1 (see, e.g., Stiene paras. [0027], [0071], [0116]-[0118], [0154]-[0155]). Appeal 2010-011474 Application 10/659,291 5 The Rejection based on Stiene and Eason alone or in view of Tenerz and further in view of Stanton The Examiner concludes that it would have been obvious to provide Stiene's optical sensor in the form of a surface plasmon resonance sensor as required by claim 20 in view of Stanton (Ans. 8). Appellant argues that "[t]he SPR [i.e., surface plasmon resonance] sensor system of [Stanton's] paragraph [0138] has nothing to do with the optical sensor comprising a surface plasmon resonance sensor as claimed in claim 20" (Br. 11) because "there is no mention here [i.e., in para. [0138]] at all of an optical sensor" (id.). This argument is unpersuasive for the reasons given in the Answer (Ans. 10 first full para.) which have not been contested by Appellant in the appeal record (no Reply Brief has been filed). Conclusion For the reasons expressed in the Answer and above, we sustain each of the § 103 rejections before us. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED bar Copy with citationCopy as parenthetical citation