Ex Parte Schraga et al

Patent Trial and Appeal Board

May 24, 2016

12515724 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/515,724 03/17/2010
7055 7590 05/26/2016
GREENBLUM & BERNSTEIN, PLC
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Steven Schraga
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.
P36170 2089
EXAMINER
NGUYEN, HUONG Q
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
05/26/2016 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEVEN SCHRAGA, PAUL R. FULLER, BRIAN SCHWARTZ,
DAVID A. CARHART, and STEVE FRAGASSI
Appeal2014-003356 1
Application 12/515,7242
Technology Center 3700
Before CYNTHIA L. MURPHY, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-22, 24, and 25. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
Nov. 4, 2013), the Reply Brief ("Reply Br.," filed Jan. 22, 2014), the
Examiner's Answer ("Ans.," mailed Nov. 21, 2013), the Final Action
("Final Act.," mailed May 31, 2013), and the Specification ("Spec.," filed
May 20, 2009).
2 According to Appellants, the real party in interest is Stat Medical Devices,
Inc. Appeal Br. 3.
Appeal2014-003356
Application 12/515,724
STATEMENT OF THE CASE
Appellants' invention generally "relates to a cartridge which includes
a plurality of movably mounted lancets or lancet needles," and is particularly
directed to "a cartridge having lancet needles and which may be disposable,
i.e., which cartridge can be used once and discarded, and/or which utilizes
an arrangement which protects a user from contacting his or her skin with
the lancet needles after the cartridge has been used." Spec. i-f 2.
Claims 1 and 24 are the independent claims on appeal. Independent
claim 1 (Claims Appendix), reproduced below, is illustrative of the subject
matter on appeal:
1. A cartridge for a device, the cartridge comprising:
a generally cylindrical cartridge body;
a plurality of generally axially movably mounted lancets
or lancet needles; and
a plurality of biasing members, each adapted to apply a
biasing force to one of the lancets or lancet needles.
REJECTIONS
Claims 1-22, 24, and 25 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 2.
Claims 1-22, 24, and 25 stand rejected under 35 U.S.C. § 102(a) as
being anticipated by Schraga (US 2006/0161078 Al, pub. July 20, 2006).
Final Act. 3.
2
Appeal2014-003356
Application 12/515,724
FINDfNGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 3
Indefiniteness
Claims 1-22, 24, 25
ANALYSIS
The Examiner concludes that claims 1-22, 24, and 25 are indefinite
under 35 U.S.C. § 112. The Examiner finds that independent claims 1
and 24 and dependent claims 8, 9, and 25 each recite a relative term, i.e.,
"generally," "about/approximately," or "substantially," for which the
Specification does not provide "a standard for ascertaining the requisite
degree," such that "one of ordinary skill in the art would not be reasonably
apprised of the scope of the invention[;] thus[,] rendering the metes and
bounds of the invention unclear." Final Act. 2-3; see also Ans. 2-3. The
Examiner finds "the specification does not clearly define which dimensions
of a shape are encompassed by 'generally cylindrical' nor a direction
encompassed by 'generally axially,' for example in terms of values."
Ans. 2.
Appellants do not persuasively show that the Examiner's findings are
in error. Appellants' contention that "the term ["generally"] is a recognized
term of approximation" (Appeal Br. 5) is a statement not supported by
adequate evidence. Although Appellants state "Appellant[ s] ha[ ve] used
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-003356
Application 12/515,724
terms of degree in the knowledge that it is difficult to make anything that is
truly cylindrical, truly axially oriented, or has an exact diameter or length,"
(Reply Br. 2), the Specification (including the claims) does not describe to
what degree the body must be cylindrical, how close to the cited dimension,
or how axial the needles need to be mounted to meet the claim limitations to
avoid infringement. In other words, Appellants have not shown that there is
"enough certainty to one of skill in the art when read in the context of the
invention". Interval Licensing LLC v. AOL Inc., 766 F.3d 1364, 1371 (Fed.
Cir. 2014 ). Appellants' argument that the terms are "not per se indefinite"
(Appeal Br. 5, 6) does not show why, in this case, the terms are not
indefinite for the reasons presented by the Examiner.
Thus, for at least these reasons, we sustain the Examiner's rejection of
claims 1, 8, 9, 24, and 25, and also dependent claims 2-7 and 10-22, as
being indefinite under 35 U.S.C. § 112, second paragraph.
Claims 5, 17, 18, 21, and 22
With respect to dependent claims 5, 17, 18, 21, and 22, the Examiner
provides additional rationale for rejecting these claims under 35 U.S.C.
§ 112, second paragraph. Namely, the Examiner finds that claims 5, 17, 18,
21, and 22 recite both apparatus and method limitations, such that it is
unclear if the claims are directed to a method or apparatus, rendering the
claims indefinite. See Ans. 3; see also Final Act. 3.
Appellants contend the claims are not indefinite because "[t]he use of
terms in a claim describing 'action' does not render such terms method
limitations per se," and because the Examiner does not identify a basis in the
MPEP or patent law to support the finding. Appeal Br. 6-9.
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Appeal2014-003356
Application 12/515,724
However, claims 5 and 18 recite a cartridge (apparatus) with a method
step of moving the lancet or needle. Appeal Br. 21, 23. We agree with the
Examiner that the claims recite both an apparatus and a method, and, thus,
do not apprise a person of ordinary skill in the art of the claims' scope. See
IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1382-1384
(Fed. Cir. 2005).
On the other hand, claim 1 7 recites a cartridge with a device
contacting a lancet, and claims 21 and 22 recite a cartridge with a
mechanism and a projection preventing rotation. Thus, we agree with
Appellants that claims 1 7, 21, and 22 recite an apparatus with components
capable of performing a function, i.e., contacting the lancet or preventing
rotation, but the claims are not directed to both an apparatus and method.
Thus, we agree with the Examiner's further rationale for rejecting
claims 5 and 18 as being indefinite under 35 U.S.C. § 112, second
paragraph. However, we do not agree with the Examiner's additional
rationale for rejecting claims 17, 21, and 22 under 35 U.S.C. § 112.
Anticipation
For the reasons set forth above, claims 1-22, 24, and 25 are indefinite.
Accordingly, we cannot sustain the rejections of these claims under
35 U.S.C. § 102(a) because to do so would require speculation as to the
scope of the claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir.
2011) (holding that the Board erred in affirming an anticipation rejection of
indefinite claims); In re Steele, 305 F.2d 859, 862---63(CCPA1962) (holding
that the Board erred in affirming a rejection of indefinite claims under
35 U.S.C. § 103(a), because the rejection was based on speculative
assumptions as to the meaning of the claims).
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Appeal2014-003356
Application 12/515,724
DECISION
The Examiner's rejection of claims 1-22, 24, and 25 under 35 U.S.C.
§ 112, second paragraph, is AFFIRMED.
The Examiner's rejection of claim 1-22, 24, and 25 under 35 U.S.C.
§ 102(a) is summarily REVERSED.
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 )(iv).
AFFIRMED
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