Ex Parte Shah et al

Patent Trial and Appeal Board

May 11, 2016

12731567 (P.T.A.B. May. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121731,567 03/25/2010
22462 7590 05/11/2016
GATES & COOPER LLP (General)
HOW ARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
FIRST NAMED INVENTOR
Rajiv Shah
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.
G&C 130.77-US-D3 1372
EXAMINER
CARLSON, KOURTNEY SALZMAN
ART UNIT PAPER NUMBER
1756
MAILDATE DELIVERY MODE
05/11/2016 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 RAJIV SHAH, UDO HOSS, REBECCA K. GOTTLIEB,
GOPIKRISHNAN SOUNDARARAJAN, and JAMES D. HOLKER1
Appeal2014-009173
Application 12/731,567
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's maintained final rejection of claims 1, 3, 4, 6, 7, 14, and 16.2
We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Medtronic MiniMed, Inc. as the real party in interest.
App. Br. 1.
2 Appellants canceled claims 20 and 21-mooting a rejection of those claims
under 35 U.S.C. § 112, second paragraph for being indefinite-in an
amendment filed with the Appeal Brief on October 7, 2013.
Appeal2014-009173
Application 12/731,567
CLAIMED SUBJECT MATTER
Appellants' claimed invention is directed to an amperometric sensor
electrode comprising a base substrate and first and second metal layers.
Claim 1.
Claim I-the sole independent claim-is illustrative:
1. An amperometric sensor electrode comprising a plurality
of electrodeposited metal layers comprising:
(a) a base substrate comprising a polyimide;
(b) a first metal layer comprising gold or chrome
disposed on the base substrate and having a first surface area
and a first adhesion strength with the base substrate on which
the first metal layer is disposed; and
( c) a second metal layer comprising platinum
electrodeposited on the first metal layer, the second metal layer
having a second surface area and a second adhesion strength
with the first layer on which the second layer is
electrodeposited, wherein the second surface area is greater
than the first surface area and the second adhesion strength is
greater than the first adhesion strength.
REJECTION
The Examiner maintains the following grounds of rejection under
35 U.S.C. § 103(a):
I. Claims 1, 3, 4, 6, 7, and 16 stand rejected over Groll (US
2005/0019953 Al, published January 27, 2005) in view of Moser et al. (US
2005/0205422 Al, published September 22, 2005.
II. Claims 1, 3, 4, 6, 7, and 16 stand rejected over Gundel (US
2005/0098433 Al, published May 12, 2005) in view of Moser.
III. Claim 14 stands rejected over Groll or Gundel, each in view of
Moser and Holker et al. (US 2004/0074785 Al, published April 22, 2004).
2
Appeal2014-009173
Application 12/731,567
DISCUSSION
Having carefully reviewed the Examiner's obviousness rejections in
light of arguments advanced by Appellants in the Reply and Appeal Briefs,
we are unable to sustain the current rejections because we are persuaded that
the Examiner has failed to establish a prima facie case of unpatentability for
obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he
examiner bears the initial burden ... of presenting a prima facie case of
unpatentability."); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). It
follows we reverse the appealed rejections under 35 U.S.C. § 103(a). We
add the following for emphasis. 3
Independent claim 1, the broadest claim on appeal, is representative,
and we render our decision as to all of the claims on the basis of this claim
alone. Claim 1 requires a sensor electrode comprising a first metal layer,
comprising gold or chrome, disposed on a substrate comprising polyimide,
and a second metal layer, comprising platinum, disposed on the first metal
layer. Claim 1 also requires, inter alia, that the second metal layer to have a
surface area greater than the surface area of the first metal layer.
The Examiner relies on Groll or Gundel for a sensor electrode, which
is substantially identical to a sensor electrode having the features recited in
claim 1. Ans. 2, 4, 6, 8. As to the second metal layer having a surface area
greater than the surface area of the first metal layer as recited in claim 1, the
Examiner concedes both Groll and Gundel are silent. Ans. 2, 4.
3 We refer to the Final Office Action (mailed May 7, 2013), the Appeal Brief
(filed October 7, 2013), the Examiner's Answer (mailed June 13, 2014), and
the Reply Brief (filed August 13, 2014).
3
Appeal2014-009173
Application 12/731,567
To address this difference, the Examiner relies on Moser's disclosure
of a biosensor comprising a substrate 74 having a surface roughness, a metal
electrode layer 5 placed on the substrate, and a semipermeable membrane 15
placed on top of the metal electrode layer. Ans. 3, 6-7. The Examiner finds
that when multiple layers are plated on top of a rough layer, each subsequent
layer would inherently have a surface area greater than the previous layer, or
would have been expected to have a greater surface area, "as is shown
between layers 5 and 15 in the cross section of figure 3 [of Moser]." Final
Act. 4; Ans. 3, 7. The Examiner then determines that it would have been
obvious to one of ordinary skill in the art at the time of the invention "to
utilize a roughed substrate, with increasing area of each deposited layer,
because this construction allows for more accuracy of measurement with
greater contact with the electrochemical members of the sensor and sample,
as disclosed in the background section of [Moser]." Final Act. 4; Ans. 3--4,
7.
On this record, we do not find the various bases for the second layer
having a greater surface area than the first layer relied on by the Examiner to
be well-founded.
The Examiner does not establish that multiple metal layers plated on a
rough layer would inherently have increasingly greater surface areas. Figure
3 of Moser depicts a semipermeable membrane 15 disposed on a metal
electrode layer 5 (Moser i-f 29), but as Appellants point out, the surface area
of the semipermeable membrane appears to be less than that of the metal
electrode layer 5 (App. Br. 4--5), rather than necessarily greater as the
4 Reference numbers refer to Figure 3 of Moser.
4
Appeal2014-009173
Application 12/731,567
Examiner contends. In addition, even if the surface area of inner layer 5 of
Moser's electrode sensor is smaller than that of outer layer 15 at the
interface where layers 5 and 15 meet (Ans. 3, 7, 11), it would not establish
that the surface area of the outer layer 15-the surface exposed to analyte-
is necessarily greater than the surface area of the layer 5 on which the outer
layer is disposed. In other words, the Examiner does not supply sufficient
evidence to establish that subsequent metal layers plated on a rough layer
will necessarily have surface areas greater than that of the rough layer.
Accordingly, the Examiner fails to carry the burden of establishing that the
surface area of a platinum second metal layer electrodeposited on a gold or
chrome first metal layer in a sensor electrode would necessarily or inherently
exceed the surface area of the gold or chrome first metal layer, as recited in
claim 1. In re Oelrich, 666 F.2d 578, 581(CCPA1981) ("Inherency
. . . may not be established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances is not
sufficient.").
The Examiner also fails to establish that one of ordinary skill in the art
at the time of the invention would reasonably have expected that when
multiple metal layers are plated on top of a rough layer, each subsequent
metal layer would have a greater surface area than the underlying metal
layer. Even assuming that Moser's semipermeable membrane 15 did, in
fact, have a greater surface area than underlying metal layer 5----due to its
semipermeable character (Moser Abstract}-the Examiner provides no
reasoning sufficient to explain why this would have indicated or suggested
that a metal layer would similarly have a greater surface area than its
underlying metal layer (Ans., generally). Critically, the Examiner's
5
Appeal2014-009173
Application 12/731,567
reasoning fails to account for differences between the second metal layer of
Groll or Gundel and the semipermeable membrane of Moser (Ans.,
generally), particularly where the semipermeable membrane 15 is preferably
formed of organic polymeric material (Moser if 17). Therefore, the
Examiner does not establish that one of ordinary skill in the art reasonably
would have expected that the surface area of a platinum second metal layer
electrodeposited on a gold or chrome first metal layer in a sensor electrode
would exceed the surface area of the gold or chrome first metal layer, as
recited in claim 1.
The Examiner also fails to articulate an apparent reason or suggestion
that would have prompted one of ordinary skill in the art to modify the
sensor electrodes suggested by Gundel and Groll to have a platinum outer
layer with a surface area greater than that of a chrome layer on which the
platinum outer layer is deposited. Although the Examiner cites to the
background section of Moser as disclosing that a roughened substrate having
deposited layers of increased area would enhance the sensor's accuracy by
increasing the area of contact between the sensor and sample (Final Act. 4;
Ans. 3--4, 7, 12), we find no such disclosure in the relied-upon portion of
Moser (Moser iii! 2-9). In addition, although the Examiner further asserts
that "[i]t is a well-known axiom in electrochemistry for increased surface
area to increase sensitivity of the device" (Ans. 12), this suffices only as an
explanation why one skilled in the art may have been led to a sensor
electrode with an outer metal layer having an increased surface area relative
to an outer metal layer that is planar or flat. It does not explain why one
skilled in the art would have been led to a sensor electrode with an outer
metal layer having a greater surface area than that of a metal layer on which
6
Appeal2014-009173
Application 12/731,567
the outer metal layer is electrodeposited, as recited in claim 1. Accordingly,
the Examiner does not articulate sufficient reasoning why the combined
disclosures of Gundel or Groll in view of Moser would have led one of
ordinary skill in the art to a sensor electrode in which the surface area of a
platinum second metal layer electrodeposited on a gold or chrome first metal
layer exceeds that of the gold or chrome first metal layer as required by the
claims. Claim 1.
For the reasons above, on this record, it is our opinion that the
Examiner has failed to meet the burden required to establish a prima facie
case of obviousness. We will not tum to impermissible speculation or
unfounded assumptions or rationales to cure the deficiencies in the rejections
before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We likewise
decline to scour the record in the first instance for facts that might support
the rejections, inasmuch as our role is review for reversible or harmful errors
in the Examiner;s rejections, not examination de nova.
It follows that we will reverse the rejections as to all claims.
CONCLUSION
The Examiner's rejections of claims 1, 3, 4, 6, 7, 14, and 16 under
35 U.S.C. § 103(a) are REVERSED.
REVERSED
7