Ex Parte Neel et alDownload PDFPatent Trial and Appeal BoardApr 3, 201412115770 (P.T.A.B. Apr. 3, 2014) Copy Citation 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. 12/115,770 05/06/2008 Gary T. Neel 06882.0147-02 5727 22852 7590 04/03/2014 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER DIETERLE, JENNIFER M ART UNIT PAPER NUMBER 1759 MAIL DATE DELIVERY MODE 04/03/2014 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 GARY T. NEEL, BRENT E. MODZELEWSKI, ALLAN JAVIER CABAN, ADAM MARK WILL, and CARLOS OTI __________ Appeal 2012-010885 Application 12/115,770 Technology Center 1700 ____________ Before JEFFREY T. SMITH, MARK NAGUMO, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-5 and 14. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is said to be directed to “diagnostic test strips including regions having a predetermined electrical property useful in identifying a test strip” (Spec. ¶ 002). Appeal 2012-010885 Application 12/115,770 2 Claim 1, the sole independent claim, is illustrative (key limitations in dispute italicized): 1. A diagnostic test strip, comprising: at least one electrically insulating layer; a conductive pattern formed on the electrically insulating layer providing electrodes disposed on the electrically insulating layer at a proximal region of the strip, electrical strip contacts disposed on the electrically insulating layer at a distal region of the strip, conductive traces electrically connecting the electrodes to at least some of the electrical strip contacts, and a distinct distal conductive region provided distal to the electrical strip contacts, which includes a set of electrical strip contacts individually electrically isolated to form a discrete set of contacting pads electrically isolated from the electrodes, at least one of the electrical strip contacts having a predetermined electrical property of a first value; at least one discrete portion of a material disposed over at least one of the contacting pads having a predetermined electrical property of a second value different from the first value, the second value being a non-zero value; and a reagent layer contacting at least a portion of at least one electrode; wherein said predetermined electrical properties of the first and second values at least partially form distinct information readable to identify data particular to the test strip. App. Br. 30 (Claims App’x). The Examiner maintains the following grounds of rejection: claims 1-5 and 14 stand provisionally rejected on the ground of nonstatutory obviousness-type double patenting over claims of co-pending application 11/181,7781; and 1 A notice of abandonment was mailed on February 18, 2014 in Application 11/458,298, mooting the corresponding rejection. Appeal 2012-010885 Application 12/115,770 3 claims 1-5 and 14 stand rejected under 35 U.S.C. § 102(b) as anticipated by Sakata (WO 2003/029804, published 10 April 2003; references are made to the equivalent English-language publication, US 7,491,303 B2). ISSUES2 Did the Examiner reversibly err in determining that Sakata teaches “a distinct distal conductive region” having a set of electrical strip contacting pads and “at least one discrete portion of a material disposed over at least one of the contacting pads having a predetermined electrical property of a second value” as recited in claim 1? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES After thoroughly reviewing the arguments of both the Appellants and the Examiner, we find the preponderance of evidence supports the Appellants’ position that Sakata fails to anticipate the claimed invention. The Examiner finds that Sakata’s Figures 18A-D disclose a distal conductive region comprising electrical strip contacts 30Ia, 30Ib, and 30c that form a set of contacting pads and have a predetermined electrical property (i.e., resistance) of a first value. Ans. 8-9. The Examiner further finds that Sakata discloses, with respect to a different embodiment shown in Figure 13, material disposed over at least one of the contacting pads [30E] 2 We summarily affirm the provisional double patenting rejection in view of the copending ʼ778 application. The Appellants acknowledge, but do not argue the merits of, the provisional rejections in the Brief, stating that “no action need be taken by Appellant at this time.” App. Br. 10. Thus, Appellants have waived substantive argument in this proceeding. Appeal 2012-010885 Application 12/115,770 4 having a predetermined electrical property (i.e., resistance) of a second value. Ans. 9. Appellants argue that the Examiner erred in rejecting claim 1 by improperly combining two distinct embodiments shown in Figures 13 and 18. App. Br. 25-27; Reply Br. 3 (“Combinations of unrelated features from various embodiments, albeit from a single reference, is not appropriate where the reference is silent on such a combination.”). The Appellants further argue that Sakata does not teach or suggest combining the features selected by the Examiner from these two separate embodiments: . . . Sakata fails to disclose that the lamination method mentioned in reference to Figure 13 could be used in any other embodiment, including Figure 18....Nothing in Sakata discloses laminating a second material over the attribute information section of Figure 18 to achieve a specific resistance. In essence, the two embodiments of Figures 13 and 18 disclose alternative, independent options. One option uses a laminating layer to allow for greater precision, and the other incorporates large ranges to allow for more variability and imprecision. These divergent approaches are not anywhere disclosed as interoperative or combinable by Sakata, and such combination is by no means inherent. [App. Br. 27.] In response, the Examiner concedes that Figure 13 does not disclose a set of contacting pads in a distinct distal region, but emphasizes that these particular limitations are found in elements 30Ia-c of Figure 18. Ans. 16-17. The Examiner also responds that “figures 13 and 17 and 18 may provide for a ‘best mode,’” but Sakata as a whole discloses the claimed invention because it discloses “known and utilized ways in which resistance can be varied to convey attribute information to a meter can be met by either by varying length, thickness, width, or by selecting material for the attribute Appeal 2012-010885 Application 12/115,770 5 information output section.” Ans. 15 (citing Sakata col. 2 ll. 50-60, col. 3 ll. 25-50, col. 5 ll. 45-55). In the Reply Brief, Appellants state that Sakata’s general disclosure of selecting a material for the various attribute information sections of each embodiment does not disclose the particular lamination described only with respect to Figure 13: Sakata specifies that a resistance material may be laminated onto the attribute information section of a test strip only after the attribute information section has been formed in order to compensate for previously unknown and unpredictable variability in the materials used. Sakata at col. 14., l. 64 - col 15, l. 6 (emphasis added). . . . Therefore, the ‘material selection,’ as described in Sakata and relied upon by the Examiner, is unrelated to later modification of material that has already been selected, as described in reference to Figure 13. [Reply Br. 5.] “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). On this record, the Examiner does not find that Sakata’s Figure 18 inherently includes features described with respect to Figure 13. The Examiner also does not explain adequately how one skilled in the art would understand “clearly and unequivocally” that Sakata teaches the combination of the selected features of Figures 13 and 18 in order to arrive at laminating a resistance material over the information output section 30IA-C in Figure 18. For Sakata to be said to anticipate claim 1, the reference: must clearly and unequivocally disclose the claimed [product] or direct those skilled in the art to the [product] without any need for picking, choosing, and combining various disclosures Appeal 2012-010885 Application 12/115,770 6 not directly related to each other by the teachings of the cited reference. Such picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence any inference of obviousness which may arise from the similarity of the subject matter which he claims to the prior art, but it has not place in the making of a 102, anticipation rejection. In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972) (cited with approval in NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed Cir. 2008)). On this record, the general teaching in Sakata that “[w]hen the attribute information is provided based on the resistance, the resistance is adjusted . . . by selecting material for the attribute information output section” (Sakata col. 3 ll. 30-33; see Ans. 15-16) does not teach unequivocally “material disposed over at least one of the contacting pads having a predetermined electrical property of a second value,” as recited in claim 1, by laminating the contacting pads in the diagnostic test strip of Example 18. While the Examiner’s findings may be sufficient for an obviousness rejection, we agree with Appellants that claim 1 is not anticipated by Sakata. Accordingly, on this record, we reverse the Examiner’s § 102 rejections and affirm the Examiner’s provisional double patenting rejections. DECISION The Examiner’s decision 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. Appeal 2012-010885 Application 12/115,770 7 ORDER AFFIRMED tc Copy with citationCopy as parenthetical citation