Ex Parte Müller et al

Patent Trial and Appeal Board

Aug 22, 2017

13122087 (P.T.A.B. Aug. 22, 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.
13/122,087 05/31/2011 Achim Muller HFP0017-00US 5415
48394 7590 08/24/2017
SFRVTT T A WHTTNFY T T C EXAMINER
33 WOOD AVE SOUTH FARDANESH, MARJAN
SUITE 830
ISELIN, NJ 08830 ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
08/24/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket @ dsiplaw. com
j escobar @ dsiplaw. com
lmurphy @ dsiplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ACHIM MULLER and PETER HERBRECHTSMEIER1
Appeal 2016-004589
Application 13/122,087
Technology Center 3700
Before ULRIKE W. JENKS, JOHN E. SCHNEIDER,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to sensors
for detecting an analyte in a bodily fluid which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the Real Party in Interest as EYESENSE AG. Appeal
Br. 3.
Appeal 2016-004589
Application 13/122,087
STATEMENT OF THE CASE
Conventional systems for determining analyte or
metabolite concentrations are in many cases based on
generating a sample of a body fluid, for example a drop of
blood, which is then tested with respect to its analyte content by
means of a suitable measurement appliance. For example,
optical and/or electrochemical measurement methods can be
used.
Spec. 1. The Specification describes a minimally invasive device for the
testing of analytes. Spec. 4. The device is designed to permit reliable and
mechanically stable coupling with an optical detector for measuring an
analyte. Id.
Claims 24-44 are on appeal. Claim 24 is representative of the
rejected claims and reads as follows:
24. Sensor element for detecting at least one analyte in a body
fluid or in a body tissue, particularly for determining at least
one metabolite concentration in a body fluid, wherein the
sensor element comprises an implantable, one-piece shaped
body, wherein the shaped body comprises a sensor end and a
coupling end, wherein the shaped body comprises, in the area
of the sensor end, at least one sensor area, wherein the sensor
area comprises at least one sensor material which changes at
least one optically measurable property in the presence of the
analyte, wherein the shaped body also has at least one optically
transparent coupling part, wherein the coupling part is designed
to transmit electromagnetic radiation in at least one spectral
range between the sensor area and the coupling end, wherein
the shaped body has, in the sensor area, at least one optically
transparent matrix material, wherein the analyte can at least
partially diffuse through the matrix material to the sensor
material, wherein the sensor material is embedded in the matrix
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Application 13/122,087
material, wherein the coupling part has a length between 1
millimetre and 8 millimetres and is formed at least partially by
the matrix material, wherein the sensor material is at least
partially embedded in the matrix material in microcapsules,
wherein the matrix material comprises at least one curable
plastic, in particular a crosslinkable plastic.
The claims stand rejected2 as follows:
Claims 24-44 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Petersson.3
Claims 24-44 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Lubbers.4
PETERSSON
Issue
The issue with respect to this rejection is whether a preponderance of
evidence supports the Examiner’s conclusion that claims 24-44 would have
been obvious over Petersson.
The Examiner finds that Petersson discloses a sensor element for
detecting an analyte in a bodily fluid which comprises a one-piece shaped
body with a sensor end and a coupling end. Final Act. 3^4. The Examiner
finds that the sensor element of Petersson comprises a sensor area containing
a sensor material which changes an optical property in the presence of an
analyte. Final Act. 4. The Examiner finds that although Petersson does not
2 Claims 24-44 were rejected under 35 U.S.C. § 112, second paragraph as
indefinite. Final Act. 2. That rejection was withdrawn by the Examiner.
Advisory Act. dated Feb. 23, 2015.
3 Petersson et al., US 2002/0058863 Al, published May 16, 2002
(“Petersson”).
4 Lubbers et al., US 5,353,792, issued Oct. 11, 1994 (“Lubbers”).
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Application 13/122,087
teach that the sensor has a length from 1 to 8 millimeters, it would have been
obvious to one skilled in the art to select that length so as to adapt the sensor
element to the particular target area of interest. Final Act. 5.
Appellants contend that Petersson does not teach a sensor element
with a coupling end or a sensor end, nor does Petersson teach an element
with a length from 1 to 8 millimeters. Appeal Br. 10. Appellants argue that
Petersson teaches a sensor element that is essentially spherical in shape and
has the sensor material homogenously dispersed throughout the sensor. Id.
Appellants argue that Petersson teaches away from the present invention in
that the sensor of Petersson is designed to rest wholly within the epidermis
whereas the sensor of the present invention extends from the epidermis into
the dermis. Appeal Br. 11.
Principles of Law
[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming forward
with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to persuasiveness
of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
A proper § 103 analysis requires “a searching comparison of the
claimed invention—including all its limitations—with the teaching of the
prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not. . . resort to speculation, unfounded assumptions
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Application 13/122,087
or hindsight reconstruction to supply deficiencies” in the cited references. In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Analysis
Appellants have the better argument. The Examiner has not shown
that Petersson teaches a sensor with a coupling end and a sensor end.
Because the Examiner has failed to show how all the claim elements are
taught or suggested by the reference, no prima facie case of obviousness
exists.
The Examiner points to paragraph 22 of Petersson as teaching both a
coupling end and a sensor end. Final Act. 4. We have reviewed the cited
paragraph of Petersson as well as the related paragraphs and find that
Petersson does not teach or suggest a sensor having a coupling end or a
sensor end, let alone both. We agree with Appellants that the Examiner’s
finding with respect to the sensor and coupling ends is without merit.
Appeal Br. 10.
The Examiner points to Figure 1 of Petersson as teaching an elongated
sensor which would have a coupling end. Ans. 9. The Examiner’s reliance
on Figure 1 is misplaced. Although Figure 1, reproduced below, shows an
elongated element 6, the description of Figure 1 makes it clear that element
6 is an optical fiber, not the sensor element. Petersson 177.
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Application 13/122,087
Figure 1 of Petersson is a schematic diagram of fiber optic
fluorimeter.
In addition, we are unpersuaded it would have been obvious to modify
Petersson’s design to create a device with a “coupling part [that] has a length
between 1 millimetre and 8 millimetres” as recited in claim 24. Petersson
discloses that its device is intended for implantation “wholly within the
epidermis,” and not the dermis. Petersson || 15—16, and 73 (“stopping short
of the dermis.”). Petersson discloses that the thickness of the epidermis
ranges from 50 pm to 800 pm (0.5—0.8 mm). The Examiner has not
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Application 13/122,087
provided a sufficiently persuasive reason to explain why the skilled artisan
would have increased the size of Petersson’s sensor to include components
with the dimensions claimed. Indeed, increasing the size of the sensor as
suggested by the Examiner would seemingly cause it to extend through the
epidermis and into the dermis — contrary to Petersson’s teachings. App. Br.
11. Stating, as the Examiner does, that it would have been obvious “to select
a length of the coupling part between 1 mm and 8mm in order to adapt the
size of the sensor element to a particular target area [one] would choose
according the circumstances” is a barebones, conclusory statement that is
insufficient to support the obviousness of the claims on the record here.5
Conclusion of Law
We conclude that a preponderance of the evidence does not support
the Examiner’s conclusion that claims 24-44 would have been obvious over
Petersson.
LUBBERS
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 24-44 would
have been obvious over Lubbers.
5 “[Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
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Application 13/122,087
The Examiner finds that Lubbers discloses an implantable, one-piece
shaped sensor element having a coupling end and a sensor end. Final Act.
5—6. The Examiner finds that the sensor of Lubbers comprises a sensor
material which changes an optically measurable property in the presence of
an analyte. Final Act. 6. The Examiner also finds that the sensor of Lubbers
comprises a curable plastic. Id. The Examiner finds that although Lubbers
does not teach a sensor with a length of 1 to 8 millimeters, it would have
been obvious to one skilled in the art to adapt the sensor to the particular
circumstances. Final Act. 6—7.
Appellants contend that Lubbers does not teach or suggest a one-piece
element. Appeal Br. 14. Appellants also argue that the Examiner has failed
to provide a clear articulation of the reasons for the rejection but has merely
recited the claim limitations without pointing to the specific teachings in
Lubbers where the elements can be found. Appeal Br. 15.
Analysis
We agree with Appellants that the Examiner has failed to establish a
prima facie case of obviousness. In both the Final Action and the Examiner’s
answer, the Examiner has not shown where Lubbers teaches or suggests the
various elements recited in the claims. See, Final Act. 5—8, Ans. 10. For
example, the Examiner has suggested that Lubbers teaches the use of a curable
polymeric material, however, the Examiner does not provide a citation to
Lubbers to support this finding. Final Act. 6. We have reviewed the
specification of Lubbers and do not find any teaching regarding the
composition of the sensor elements. Because the Examiner has failed to
provide a sufficient factual basis for the rejection, the rejection cannot be
maintained.
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Application 13/122,087
Conclusion of Law
We conclude that a preponderance of the evidence does not support
the Examiner’s conclusion that claims 24-44 would have been obvious over
Lubbers.
SUMMARY
We reverse the rejections under 35 U.S.C. § 103(a).
REVERSED
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