Ex Parte Singhal

Patent Trial and Appeal Board

Dec 27, 2016

13134148 (P.T.A.B. Dec. 27, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/134,148 05/31/2011 Tara Chand Singhal 11195.222 2679
103550 7590
Tara Chand Sighal
P.O. Box 5075
Torrance, CA 90510
12/28/2016 EXAMINER
DOUGHERTY, SEAN PATRICK
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
12/28/2016 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 TARA CHAND SINGHAL
Appeal 2015-002564
Application 13/134,148
Technology Center 3700
Before EDWARD A. BROWN, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tara Chand Singhal (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—14 and 21—26.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 15—20 are cancelled. Appeal Br. 4. Herein, the Corrected Appeal
Brief filed on August 19, 2014 is cited as the “Appeal Brief’ or “Appeal
Br.
Appeal 2015-002564
Application 13/134,148
CLAIMED SUBJECT MATTER
The independent claims on appeal are claims 1 and 11. Claim 1 is
reproduced below.
1. A blood glucose measuring device, comprising:
a. a blood glucose metering device and a metering test
strip for use in the device;
b. a test strip storage mechanism body has dual
compartments for storing a dual stack of test strips, the
mechanism body is attachable to a side of the metering device
and enables the mechanism body to be removed and attached
from and to the side of the metering device, the mechanism body
allows a view of the test strips in the compartments;
c. a test strip feeding mechanism for feeding a single
test strip from one of the compartments in the storage mechanism
for use with the metering device, the test strip makes electrical
contact with springs on the side of the metering device, the
metering device, the test strip storage mechanism and the test
strip feeding mechanism are integrated into a single device for
blood glucose measurement.
Appeal Br. 19 (Claims App.).
REJECTION
Claims 24 and 25 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 1—14 and 21—26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Simons (US 5,971,941, issued Oct. 26, 1999) and Chan
(US 2007/0173739 Al, published July 26, 2007).
ANALYSIS
Indefiniteness of claims 24 and 25
Claim 24 depends from claim 1 and recites that “the stacks of test
strips are positioned side by side and the mechanism body is substantially
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Application 13/134,148
sized in width and length to a twice of a width of the test strip and a length
of a test strip respectively and in a height to the stacks of test strip in the
bodyAppeal Br. 22—23 (Claims App., emphasis added). Claim 25
depends from claim 4 and recites that “the stacks of test strips are positioned
side by side and the mechanism body is substantially sized in width to a
twice of a width of the test strip and in a height to the stacks of test strip in
the body.'” Id. at 23 (emphasis added).
The Examiner determines that it is unclear what claims 24 and 25 are
claiming as to the size of the mechanism body with respect to the test strip.
Final Act. 3. Particularly, the Examiner states that “the mechanism body has
a width twice of a width of the test strip, all other relative dimensions are
incomprehensible[,]” and “[i]t is unclear what limitation the term
‘respectively’ imparts on the claim and how the height of the test strip
relates to the width and length of the mechanism body.” Id.
Appellant indicates that claims 24 and 25 define the size of the test
strip storage mechanism in terms of the size of the test strip dimensions.
Appeal Br. 11. As to claim 24, we understand the above-quoted limitation
means: the width of the mechanism body is substantially twice the width of
the test strip; the length of the mechanism body is substantially that of the
length of the test strip; the height of the mechanism body is substantially that
of the height of the stacks of the test strips; and “respectively” relates the
width and length of the test strip to the width and length dimensions of the
mechanism body. Claim 1 positively recites the test strip. Therefore, the
test strip used as the basis for the comparative dimensions recited in claim
24 is not an undefined test strip, but, rather, is the particular test strip recited
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Application 13/134,148
in claim 1. Accordingly, claim 24 is sufficiently clear with respect to the
width and length of the mechanism body, and the meaning of “respectively.”
However, the height of the mechanism body is defined in terms of
“the stacks of test strips in the body” in claim 24. (Emphasis added.) Claim
1 recites a blood glucose measuring device comprising “<2 metering strip for
use in the device.” (Emphasis added). Claim 1 does not recite that the blood
glucose measuring device comprises “a dual stack of test strips.” The height
of the stacks of test strips is not defined in claim 24. The height limitation in
appears to pertain to the condition where the compartments are filled with
test strips. See Spec. 13,11. 10-19. If the claimed compartments were filled
with test strips, it would then appear that the height of the mechanism body
and stacks would be substantially the same. But otherwise, where the stacks
were not full stacks (e.g., the stacks contained only two test strips), then the
height of the mechanism body and stacks would not be substantially the
same. As claim 1 requires only one test strip, and the stack height is not
defined in either claim 1 or 24, claim 24 is not sufficiently clear with respect
to the height of the mechanism body.
For similar reasons, we determine that claim 25 is sufficiently clear
with respect to the width of the mechanism body, but not the height of the
mechanism body. Accordingly, we sustain the rejection of claims 24 and 25
under 35U.S.C. § 112, second paragraph.
Obviousness of claims 1—14 and 21—26 over Simons and Chan
Appellant argues for the patentability of claims 1—14 and 21—26
together as a group. Appeal Br. 11—18. Accordingly, we select claim 1 to
decide the appeal as to the rejection, with claims 2—14 and 21—26 standing or
falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/134,148
The Examiner finds that Simons discloses a blood glucose measuring
device comprising all limitations of claim 1 except for electrical contact
between the test strip and metering device being provided by springs on the
metering device. Final Act. 4—5, 7 (citing Simons, col. 7,11. 54—63, col. 8,11.
15—21, col. 13,11. 20-24, Fig. 7). Particularly, the Examiner finds that
Simons discloses blood glucose measuring device 166, blood glucose
metering device 168, metering test strip 100, test strip storage mechanism
body 150 with dual compartments 152/155 for storing a dual stack of test
strips, and test strip feeding mechanism 156/160A. Id. at 4—5, Fig. 7. The
Examiner finds that Chan teaches that an end of a test element (36) contacts
spring-biased contacts (42) to form an electrical connection between the test
element (36) and a metering device. Id. at 7 (citing Chan 153).
The Examiner concludes that it would have been obvious to modify
the connection between the test strip and metering device of Simons to
include a spring to provide the electrical connection taught by Chan. Final
Act. 7. The Examiner reasons that Chan teaches this would provide an
electrical coupling between the two elements (citing Chan || 42, 53), and
would allow a blood testing design that provides a supply test strip unit
configured to store testing elements prior to use to analyze body fluid, store
waste, and store the testing elements in a stacked manner (citing id. 1 8). Id.
Appellant contends that the Examiner improperly equates a “metering
test strip,” as claimed, to Simon’s “test cartridge.” Appeal Br. 13. The
Examiner responds that the entirety of Simons’ test cartridge has not been
“equated” with the claimed metering test strip. Ans. 9. Rather, the
Examiner explains, Figure 7 and column 6, lines 31—35, of Simons clarify
that test cartridge 100 includes test strips for analysis of blood. Id. The
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Application 13/134,148
Examiner also indicates that the recitation of a “metering test strip” does not
imply “only test strips and no cartridge.” Id. The Examiner adds that
Simon’s test cartridge, which includes test strips, meets the claimed
limitation. Id. at 10.
Claim 1 recites the transition term “comprising.” This term is open-
ended and does not exclude additional, unrecited elements. See Mars Inc. v.
H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). Accordingly,
recitation of the transition term “comprising” and “a metering test strip” in
claim 1 does not exclude a prior art element that includes “a metering test
strip,” but may include additional features. We further note that Appellant’s
Specification does not provide a definition of a “metering test strip.” Nor
has Appellant directed us to any disclosure therein that clearly disavows
Simon’s test cartridge being considered to correspond to a “metering test
strip,” as claimed.
Appellant also does not apprise us of any error in the Examiner’s
finding that Simon’s test cartridge 100 includes “a metering test strip,” as
claimed. Therefore, even if test cartridge 100 does not include only “a
metering test strip,” Appellant has not provided any persuasive argument
why Simon fails to meet the claim limitation of “a metering test strip.”
We also note that the Examiner does not equate Simon’s test cartridge
100 with the claimed “test strip storage mechanism body,” as Appellant
contends. Appeal Br. 13. Rather, the Examiner finds, Simons discloses test
strip storage mechanism body 150, which is a cassette. Final Act. 4.
Appellant also contends that Chan teaches a “test cartridge” that is
different from the claimed “metering test strip.” Appeal Br. 14—15.
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Application 13/134,148
Even if this contention is correct, the Examiner only relies on Chan’s
teaching of using springs to contact the test strip. Final Act. 7. Accordingly,
Appellant’s contention does not address the Examiner’s rejection.
Appellant also contends that Simons and Chan would not render
obvious “use of prior art test strips with lower cost and complexity.” Appeal
Br. 15. This contention appears to be premised on Appellant’s position that
Simons fails to teach “a metering test strip.” For reasons discussed above,
however, that position is unpersuasive. Furthermore, claim 1 recites no
structural limitation that defines how the “metering test strip” is of such
alleged “lower cost and complexity” as compared to something else.
Limitations that do not appear in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellant also contends that “the storage capacity of test strip storage
body by using a dual stack of test strips would not be in the purview of a
person of ordinary skill in the art with the knowledge of Simons and Chan,
as they both use a single stack of test cartridges.'’'’ Appeal Br. 15 (emphases
added). According to Appellant:
Further still, other elements of the claimed subject matter
that teach a meter body with external to the meter body spring
loaded contacts and a storage mechanism body that is detachably
attached to the meter body enabling a test strip feeding
mechanism that enables single test strip from either stack of the
storage body to be used to make electrical contacts with the
meter would not be obvious to a person or ordinary skill in the
art with the knowledge of the Simons and Chan prior arts.
Appeal Br. 16 (emphasis added).
These further contentions also are not persuasive for several reasons.
First, Simons teaches that cassette 150 includes both compartment 152 and
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compartment 158, each for storing test cartridges. See Simons, col. 12,11.
13—21, Fig. 7. Second, claim 1 recites “a test strip feeding mechanism for
feeding a single test strip from one of the compartments in the storage
mechanism for use with the metering device.” Appeal Br. 19 (Claims App.,
emphasis added). Claim 1 does not require that the test strip feeding
mechanism enables a single test strip from either stack of the storage body to
be used to make electrical contact with the metering device. Consequently,
such unclaimed limitations cannot be relied upon for patentability. In re
Self 671 F.2d at 1348. Appellants do not provide any persuasive reason
why Simons’ apparatus does not meet the recited limitations of the test strip
feeding mechanism.
Appellant’s general contentions regarding the Examiner’s purported
errors in applying the requirements of Graham v. Deere and KSR in the
rejection do not apprise us of any specific error in either the Examiner’s
findings or reasoning. See Appeal Br. 16—17. As such, these contentions are
not persuasive.
Accordingly, we sustain the rejection of claims 1—14 and 21—26 as
unpatentable over Simons and Chan.
DECISION
We affirm the Examiner’s decision to reject claims 1—14 and
21-26.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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