Ex Parte Petruno et alDownload PDFPatent Trial and Appeal BoardAug 17, 201612409877 (P.T.A.B. Aug. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/409,877 0312412009 95896 7590 08/19/2016 David W. Highet, VP and Chief IP Counsel Becton, Dickinson and Company (Knobbe Martens) 1 Becton Drive, MC-110 Franklin Lakes, NJ 07417 FIRST NAMED INVENTOR Patrick T. Petruno 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3717604-00087 2198 EXAMINER MERKLING, SALLY ANNE ART UNIT PAPER NUMBER 1798 NOTIFICATION DATE DELIVERY MODE 08/19/2016 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): efiling@knobbe.com ip_docket@bd.com j ayna.cartee@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ExpartePATRICK T. PETRUNO, JOHNF. PETRILLA, MICHAEL J. BROSNAN, RONG ZHOU, DANIEL B. ROITMAN, and BOU. CURRY Appeal2015-004477 Application 12/409,877 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 31--43. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Claim 31 is illustrative of the subject matter on appeal and is reproduced below: 31. A diagnostic test system, comprising: a housing comprising a port constructed and arranged to receive a test strip that comprises a flow path for a fluid sample, Appeal2015-004477 Application 12/409,877 a sample receiving zone coupled to the flow path, a label that specifically binds a target analyte, a detection zone coupled to the flow path and comprising a test region exposed for optical inspection and having an immobilized test reagent that specifically binds the target analyte, and at least one reference feature; a reader that obtains light intensity measurements from exposed regions of the test strip when the test strip is loaded in the port; and a data analyzer programmed to perform operations comprising generating a control signal modifying at least one operational parameter of the reader based on at least one measurement obtained from the at least one reference feature. Appellants request review of the Examiner's rejection of claims 31- 43 rejected under 35 U.S.C. § 102(b) as anticipated by Polito (US 2004/0018637 Al, published January 29, 2004). App. Br. 9; Off. Act. 2. 1 OPfNION Prior Art Rejection2 After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner's prior art rejection under 1 The appealed Final Action of January 6, 2014 refers to the statement of rejection as presented in the prior Final Action of October 10, 2013. Final Act. 2. For purposes of this opinion, we will refer to the Final Action of October 10, 2013 as the Office Action (Off. Act.) when addressing the Examiner's findings. 2 Appellants present arguments only for independent claim 31. App. Br. 10. Accordingly, we select claim 31 as representative of the subject matter before us on appeal. Claims 32--43 stand or fall with claim 31. 2 Appeal2015-004477 Application 12/409,877 35 U.S.C. § 102(b) for the reasons presented by the Examiner and add the following for emphasis. Independent claim 31 is directed to a diagnostic test system including a data analyzer programmed to generate a control signal to modify at least one operational parameter of a reader based on at least one measurement obtained from an at least one reference feature. We refer to the Examiner's Office Action of October 10, 2013 for the statement of the rejection. Off. Act. 2-3. Appellants argue Polito does not disclose a diagnostic test system wherein a data analyzer is programmed to generate a control signal that modifies at least one operational parameter of the reader based on at least one measurement obtained from the at least one reference feature. App. Br. 11. According to Appellants, the barcode (230) of Polito does not generate a signal that modifies an operational parameter of the reader (e.g., the light source or the light detector). App. Br. 11; Polito i-fi-167, 71, and 92. Appellants argue Polito merely provides that the reader may include resources such as the processor 300 and memory resources 310 that retain parameters and information for controlling and analyzing the assay. App. Br. 11. We are unpersuaded by these arguments. "[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification." In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in patent applications is not determined solely on the basis of the claim language, but upon giving claims 3 Appeal2015-004477 Application 12/409,877 their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art.) (citations omitted); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) ("[T]he specification 'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" (Citation omitted)). As noted by the Examiner, the claim language does not describe the operational parameter of the reader that is modified by the data analyzer. Ans. 3. In addition, Appellants have not directed us to any portion of the Specification that supports the narrow definition asserted. App. Br. 11. In fact, the claimed operational parameter is a term not defined in the Specification and not limited to argued parameters. Therefore, we agree with the Examiner's determination that the language of the claim is sufficiently broad to include the Examiner's interpretation that Polito's modification of the device to access the appropriate assay table for the reader in response to reading the barcode on the test strip also modifies an operational parameter of Polito's reader. Ans. 3--4. Accordingly, we sustain the Examiner's prior art rejection under 35 U.S.C. § 102(b) for the reasons presented by the Examiner and given above. ORDER The Examiner's prior art rejection under 35 U.S.C. § 102(b) is affirmed. 4 Appeal2015-004477 Application 12/409,877 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 5 Copy with citationCopy as parenthetical citation