Ex Parte Shraga

Board of Patent Appeals and Interferences

Aug 29, 2008

10441065 (B.P.A.I. Aug. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEVEN SHRAGA
__________

Appeal 2008-04511
Application 10/441,065
Technology Center 3700
__________

Decided: August 29, 2008
__________

Before TONI R. SCHEINER, ERIC GRIMES, and RICHARD M. LEBOVITZ,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a lancet
device. The Examiner has rejected the claims as anticipated, and under the
doctrine of obviousness-type double patenting. We have jurisdiction under
35 U.S.C. § 6(b).

1 Heard August 14, 2008.
Appeal 2008-0451
Application 10/441,065

BACKGROUND
The present invention is directed to a lancet device which uses a cam
disk “to adjust the penetration depth of the lancet needle” (Spec. ¶ 25).
STATEMENT OF THE CASE
Claims 1-74 are pending in the application. Claims 41, 42, 49, 50,
and 74 have been withdrawn from consideration, while claims 10, 12, 14,
24, 25, 31, 36-39, 44, 63, 64, and 69-71 have either been indicated
allowable, or objected to as dependent on a rejected base claim.
Claims 1-9, 11, 13, 15-23, 26-30, 32-35, 40, 45-48, 51-62, 65-68, and 73
stand rejected under 35 U.S.C. § 102(b) as anticipated by Zhadanov (U.S.
Patent 5,304,193, issued April 19, 1994).
Claim 43 stands rejected under the doctrine of obviousness-type double
patenting as unpatentable over claim 43 of application serial no. 10/641,101
(now U.S. Patent 7,105,006).
Independent claims 1 and 43 are representative of the subject matter
on appeal:
1. A lancet device, comprising:
a body;
a trigger mounted to the body;
a front cover comprising a skin engaging end that includes a
lancet opening through which a lancet needle extends;
a holding member movably mounted within the body and
comprising a front end and a rear end;
the front end being configured to receive a lancet;
a stop surface that moves with the holding member; and
a cam disk comprising cam surfaces which can be contacted by
the stop surface;
the cam disk being configured to rotate at least partially,
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Application 10/441,065

wherein the cam disk rotates about an axis that is not parallel to
an axis running through at least one of the lancet opening and the
holding member.

43. A lancet device, comprising:
a body;
a trigger;
a front cover comprising a skin engaging end that includes a
lancet opening through which a lancet needle extends;
a holding member movably mounted within the body and
comprising a front end and a rear end;
the front end being configured to receive a lancet;
a stop projection coupled to the holding member; and
a cam disk comprising indicia and cam surfaces which can be
contacted by the stop projection;
the cam disk being configured to rotate at least partially,
wherein the cam disk is mounted to a projection that extends
inwardly from the body.

FINDINGS OF FACT
FF1. The lancet device of claim 1 on appeal comprises a lancet
holding member movably mounted within the body of the device, and a stop
surface that moves with the lancet holding member. The device further
comprises a rotatable cam disk comprising cam surfaces which can be
contacted by the stop surface.
FF2. The lancet device of claim 43 on appeal is similar to that of
claim 1 and comprises a stop projection coupled to the lancet holding
member, and a cam disk with indicia and cam surfaces which can be
contacted by the stop projection. The cam disk is mounted to a projection
that extends inwardly from the body of the device.

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Application 10/441,065

FF3. Zhadanov describes a blood lancing device as shown the single
figure, reproduced immediately below:

Zhadanov’s figure shows “an elevational view of a blood lancing device . . .
in section along a central longitudinal plane” (Zhadanov, col. 1, ll. 50-53).
FF4. In Zhadanov’s device, “[t]he lancet 1 is held in a lancet holder 2
. . . The lancet holder 2 has a[n] . . . opening portion provided with an inner
thread 3” (Zhadanov, col. 1, ll. 59-64), and the depth of penetration is
controlled by “screwing of the lancet holder 2 relative to the member 20,
thus reducing or increasing the distance between the points 15 and 18 and
thereby the stroke of the member 20, the lancet holder 2 and the lancet 1”
(Zhadanov, col. 3, ll. 12-17).
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FF5. “A compression spring 12 has an active, relaxation stroke
downwardly so as to displace the lancet 1 during its active stroke also
downwardly in order to pierce a skin of the patient” (Zhadanov, col. 2, ll.
11-14).
FF6. “The active stroke of the spring 12 is directly applied to a
toothed rack 13 which has teeth engaging with teeth of a toothed pinion 14.
The latter is rotatably mounted on an axel 15 . . . The device further has a
lever 16 having a first leg 17 which is connected with the pinion 14, for
example by fixed connection to the axel 15” (Zhadanov, col. 2, ll. 14-22).
FF7. When Zhadanov’s device is activated, “[t]he spring 12 is . . .
relaxed and displaces the toothed rack 13 downwardly . . . so that the latter
rotates the toothed pinion 14. During the rotation of the toothed pinion the
lever 16 is turned from the bent position . . . to a straightened position so that
it extend[s] vertically, and . . . displaces downwardly the member 20, the
lancet holder 2 and thereby the lancet 1 . . . punctur[ing] the skin of a
patient. Then the toothed rack 13 continues to move downwardly and the
toothed p[i]nion 14 continues to rotate, causing the lever 16 to bend in an
opposite direction so as to . . . withdraw the lancet 1 from the skin”
(Zhadanov, col. 2. l. 56 to col. 3, l. 4).
FF8. The Examiner finds that Zhadanov’s toothed pinion 14 is a
rotating cam with cam surfaces, and the outer surface of lever 16 is a stop
surface that moves with the holding member of the lancet (Ans. 4-5).

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Appeal 2008-0451
Application 10/441,065

DISCUSSION
Anticipation
The Examiner rejected claims 1-9, 11, 13, 15-23, 26-30, 32-35, 40, 45-
48, 51-62, 65-68, and 73 under 35 U.S.C. § 102(b) as anticipated by Zhadanov.
According to the Examiner, Zhadanov describes a lancet device with
all of the claimed limitations, including “a holding member (2) movably
mounted within the body and comprising a front end and a rear end; the
front being configured to receive a lancet (1)” and “a stop surface that moves
with the holding member; and a circular cam disk (14) comprising cam
surfaces which can be contacted by the stop surface (outer surface of 16); the
cam disk being configured to rotate at least partially” (Ans. 4-5; FF7).
Appellant contends that Zhadanov “uses a pinion 14 with gear teeth
which are engagable with teeth of rack 13. The pinion 14 is clearly not a
cam disk with cam surfaces” (App. Br. 8). More importantly, Appellant
contends that Zhadanov’s lever 16 is not “a stop surface that moves with the
holding member and contacts one or more cam surfaces of the cam disk” as
required by all the claims on appeal (id.).
Appellant has the better argument. Even if we assume for the sake of
argument that Zhadanov’s pinion 14 is a cam disk, the pinion’s teeth are cam
surfaces, and lever 16 is a stop surface that moves with the lancet holder (see
FF8), the Examiner has not pointed to any evidence that the teeth of pinion
14 (i.e., cam surfaces) are ever in contact with lever 16 (i.e., stop surfaces or
stop projections of claims 1 and 41, respectively) as recited in the claims.
While it’s true that Zhadanov broadly states that the prior art device
comprises “a flexible lever having one end connected with the pinion”
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(Zhadanov, col. 1, ll. 30-31), the more detailed description of the device
indicates that the teeth of the pinion engage the teeth of rack 13, while the
connection between the pinion and the lever is “for example by fixed
connection to the axle 15” (Zhadanov, col. 2, ll. 15-23; FF6, 7).
All of the claims on appeal require a lancet device with a cam disk
comprising cam surfaces which can be contacted by a stop surface or stop
projection that moves with the lancet holding member. The Examiner has
not established that Zhadanov’s lancet device has the required configuration.
Accordingly, the rejection of claims 1-9, 11, 13, 15-23, 26-30, 32-35, 40, 45-
48, 51-62, 65-68, and 73 as anticipated by Zhadanov is reversed.
Obviousness-type Double Patenting
The provisional rejection of claim 43 as unpatentable over claim 43 of
application serial no. 10/641,101 is moot as application '101 issued as U.S.
Patent 7,105,006 on September 12, 2006, before the Examiner’s Answer and
Appellant’s Appeal Brief were written. Moreover, it appears from the
record that amendments were made to the issued claims prior to their
allowance.
Accordingly, the provisional rejection of claim 43 is vacated and the
application is remanded to the Examiner to determine whether a rejection of
claim 43 under the doctrine of obviousness-type double patenting is
appropriate in light of the patented claims. If so, the Examiner’s rejection
should be supported by evidence sufficient to justify a conclusion that the
presently claimed device is an obvious variant of the patented device.

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SUMMARY
The rejection of claims 1-9, 11, 13, 15-23, 26-30, 32-35, 40, 45-48,
51-62, 65-68, and 73 under 35 U.S.C. § 102(b) as anticipated by Zhadanov
is reversed.
The provisional rejection of claim 43 under the doctrine of
obviousness-type double patenting as unpatentable over claim 43 of
application serial no. 10/641,101 (now U.S. Patent 7,105,006) is vacated,
and the application is remanded to the examiner to determine whether a
rejection of claim 43 is appropriate in light of the patented claims.

REVERSED; REMANDED

clj

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191

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