Ex Parte Markes

Board of Patent Appeals and Interferences

Jul 10, 2012

10659291 (B.P.A.I. Jul. 10, 2012)

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
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