Ex Parte Newman et al

Patent Trial and Appeal Board

Aug 29, 2013

11682663 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL JOHN NEWMAN, EDWIN PAUL EARNSHAW,
YANNICK PIERRE HOURMAND, ANDREW MACLEOD,
BENJAMIN ERLAND IMPEY, and BARRY WEBER
____________________

Appeal 2011-010574
Application 11/682,663
Technology Center 3600
____________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-16 under 35 U.S.C. § 102(b) as anticipated by Funke
(US 2005/0281706 A1; pub. Dec. 22, 2005). App. Br. 4. Claims 17-20
have been withdrawn from consideration. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal and reads:
1. A test strip dispenser, comprising
an inner housing within an outer housing
and moveable in the outer housing, the inner
housing having an interior volume to store a
plurality of test strips including a test strip to be
dispensed, the inner housing having an aperture
through which the test strip to be dispensed is
dispensed, the inner housing including a groove;
a device that biases the inner housing in a
first direction; and
the outer housing having an opening in
substantial alignment with the aperture of the inner
housing to allow for passage of the test strip, the
outer housing having a guide member that mates
with the groove of the inner housing so that the test
strip to be dispensed remains stationary when the
inner housing and the remaining plurality of test
strips are moved along the guide member of the
outer housing in a direction generally opposite the
first direction.

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ANALYSIS
The Examiner found that Funke discloses an outer housing (housing
22 and trigger 24) having a guide member (pusher head 136) that mates with
a groove (138) of an inner housing (cassette 84) so that the test strip (34) to
be dispensed remains stationary when the inner housing and the remaining
test strips are moved along the guide member in a direction generally
opposite the first direction. Final Rej. 4-5 (citing Funke figs. 1-4, 7, 8, and
16); see also Funke, paras. [0041], [0048], [0053].
The Examiner also found that pusher head 136 is attached to element
94 (flexible arm member), which, in turn, is attached to the outer housing
member 24, and therefore “in as much as member 136 is a part of the inner
housing member (84) it is likewise a part of the outer housing member (24)
as described above.” Ans. 3; see also Funke, para. [0053]. In contrast,
Appellants contend that Funke shows the pusher head 136 as part of the
cassette 84 (“inner housing”), and not part of the outer housing (housing 22
or trigger 24). App. Br. 5 (citing para. [0053]; figs. 4, 6). Appellants also
contend that pusher head 136 mates with groove 138, which is part of the
cassette 84. App. Br. 5.
Appellants’ contentions are persuasive. Figure 4 of Funke shows that
the pusher head 136 is a component of the cassette 84, and that the cassette
84 is a separate component from trigger 24. While the pusher head 136 is
connected to flexible arm member 94, which connects to trigger 24 in the
assembled device, this connection does not make the pusher head 136 a part
of the trigger 24. We further note that Figure 6 of Funke shows the pusher
head 136 and flexible arm member 94 as being part of the cassette or “inner
housing” 84. Thus, the Examiner’s finding that Funke’s outer housing (i.e.,
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trigger 24) has a guide member, as claimed, is not supported by a
preponderance of the evidence.
Appellants also contend that in Funke’s device, the test strip to be
dispensed (i.e., top strip) cannot remain stationary while the remaining test
strips are moved, because outer housing members 22 and 24 can only move
by pivoting relative to one another. App. Br. 5 (citing Funke, paras. [0041],
[0043], [0044]). Appellants contend that this pivoting actuates arm member
94, and because pusher head 136 is the terminal part of arm member 94,
once pusher head 136 is put in motion by arm member 94 and begins
moving along groove 138, the movement of the top test strip is unavoidable.
App. Br. 5 (citing Funke, paras. [0055], [0056]).
In response, the Examiner stated:
As seen in Funke Fig. 3, the outer housing is
biased in relation the inner housing (84) by way of
spring member (62). By moving the outer housing
member (24) from a left to right direction, guide
member (136) will engage an uppermost test strip
and dispense said strip from the inner housing (84)
while allowing the stack of strips to remain still.
Examiner notes, that as taught above in view of
relative movement, the device is also capable of
being operated in an opposite direction because of
spring member (62), which would mean that as
outer housing member (22) moves from a right to
left direction, the stack of strips will move from a
right to left direction and the uppermost test strip
will remain still while the stack is moved, thus,
resulting in a dispensed strip.
Ans. 5-6 (emphasis added). Appellants respond that Funke is incapable of
keeping the test strip stationary as claimed, due to the required pivoting of
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housing 22 and trigger 24 toward one another during dispensing of a strip.
Reply Br. 4.
We agree with Appellants that the Examiner has not adequately
explained how Funke’s dispenser operates such that “the test strip to be
dispensed remains stationary when the inner housing and the remaining
plurality of test strips are moved along the guide member of the outer
housing in a direction generally opposite the first direction,” as claimed.
Emphasis added. We understand that the claim term “remains stationary”
means stationary with respect to the outer housing, as the claim recites that
the inner housing is moved along the guide member of the outer housing.
This construction is consistent with the movement of the inner housing with
respect to the outer housing during operation of dispenser 100 as depicted in
Figures 9A and 9B of Appellants’ application. The Examiner found that
Funke’s housing includes housing 22 and trigger 24. We understand the
Examiner’s position is that Funke’s dispenser can alternatively be operated
by pivoting housing 22 while trigger 24 somehow is kept stationary. This
pivoting movement of housing 22 would appear to move the stack of strips
34 from right to left along with the cassette 84, as may be visualized by
reference to, for example, Figure 7a of Funke. However, even assuming that
Funke’s device is capable of providing this operation, which the Examiner
does not appear to support by reference to any disclosure in Funke’s
Specification, the Examiner did not adequately explain how, during this
pivoting of housing 22, the top strip 34 would remain stationary with respect
to the housing 22. Thus, the Examiner’s finding that Funke’s dispenser is
capable of being operated to meet the claim limitation reciting “the test strip
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to be dispensed remains stationary . . . the first direction,” also is not
supported by a preponderance of the evidence.
In view of the above, we do not sustain the anticipation rejection of
claims 1-16.

DECISION
The Examiner’s rejection of claims 1-16 is REVERSED.

REVERSED

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