Ex Parte Slowey et al

Patent Trial and Appeal Board

Sep 21, 2016

13165769 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/165,769 06/21/2011
23442 7590 09/21/2016
RYLANDER & ASSOCIATES PC
P.O. Box 250
VANCOUVER, WA 98660
FIRST NAMED INVENTOR
PAUL D. SLOWEY
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.
BAMM.004-CIP 4489
EXAMINER
TURK,NEILN
ART UNIT PAPER NUMBER
1798
MAILDATE DELIVERY MODE
09/21/2016 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 PAUL D. SLOWEY, JAMES WICKSTEAD,
KEITH SERITELLA, BRIAN FORBES, JOHN ENNIS,
RICHARD HERRIG, JASON GIDDINGS, and PAUL SMITH
Appeal2015-003055
Application 13/165,769
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner rejecting claims 45---66 of Application 13/165,769.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part.
BACKGROUND
The subject matter on appeal relates to a portable body fluid sample
collection device and test system. Specification ("Spec.") i-f 2. Claim 45,
1 Appellants identify the real party in interest as Bammburgh Marsh, LLC,
which is a wholly owned subsidiary of Oasis Diagnostics Corp. App. Br. 1.
Appeal2015-003055
Application 13/165,769
reproduced belo\v from the Claims Appendix of the Appeal Rrief, is
representative of the subject matter on appeal:
45. A specimen sample collection device and test system
comprising an electro-optical reader to receive a sample
collector, the sample collector having a handle, an absorbent
pad partially contained within the handle, a sufficiency
indicator contained in the handle, one or more test strips
contained within the handle in fluid communication with the
absorbent pad, a window to observe indications on the one or
more test strips from a test, and a pad compression tube
insertable over the absorbent pad and at least part of the handle
to express liquid sample from the absorbent pad, wherein the
window remains unobscured when the pad compression tube is
inserted over the handle, the electro-optical reader further
compnsmg:
a housing including an aperture to view and operate a
programmable data handling device touch screen, and a sample
collector port to receive a portion of the sample collector
including the window with the pad compression tube inserted
over the handle;
an imaging device mounted within the housing and having a
field of view oriented to image a selected portion of the sample
collector inserted into the sample collector port;
an imaging processor mounted within the housing and m
electronic communication with the imaging device and data
handing device, the imaging processor to at least receive
imaging data from the imaging device, process the imaging data
for use by the data handing device, and transmit the imaging
data to the data handling device;
a programmable data handling device removably mounted
within the housing, the data handling device including a touch
screen, wherein the touch screen is aligned with the housing
aperture when mounted within the housing.
App. Br. 22-23 (Claims Appendix).
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Appeal2015-003055
Application 13/165,769
F l=lFEF l=lNCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Matzinger et al.
Koh et al.
Lennox et al.
Veit et al.
Borich et al.
US 6, 168,957 B 1
US 2001/0016800 Al
US 6,478,939 Bl
US 2005/0182358 Al
US 7,267,799 Bl
THE REJECTIONS
Jan.2,2001
Aug.23,2001
Nov. 12, 2002
Aug. 18, 2005
Sept. 11, 2007
1. Claims 45--49, 53-57, 61, and 62 are rejected under 35 U.S.C.
§ 102( e) as anticipated by Borich. Ans. 2.
2. Claims 50 and 51 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Borich in view of Matzinger. Id. at 5.
3. Claim 52 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Borich in view of Veit. Id. at 6.
4. Ciaims 58---60 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Borich in view of Lennox. Id. at 7.
5. Claim 63 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Borich in view of Veit. Id. at 8.
6. Claim 64 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Borich in view of Veit and further in view of Koh. Id. at 9.
7. Claims 65 and 66 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Borich in view of Fendrock. Id.
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Appeal2015-003055
Application 13/165,769
Anticipation Rejection
nrsCUSSION
Appellants argue that Borich does not anticipate because it does not
disclose a "sample collector" as recited in the preamble of claim 45. App.
Br. 10-11; Reply Br. 1-2. Specifically, Appellants argue that the "sample
collector" gives meaning to the claim because inserting the sample collector
itself into the electro-optical reader obviates a need to handle test strips or
collect a liquid sample by a separate device, which are disadvantages that
Appellants' system is intended to overcome. App. Br. 11-12, citing Spec.
i-fi-13-8. Appellants further argue that claim 45 "encompasses a 'sample
collection device' having at least the minimally described structure in the
Preamble 'and' the test system, which includes the reader having the
detailed structure recited following the preamble." Reply Br. 2. The
Examiner's position is that the "sample collector" and its particular elements
as recited in the preamble of claim 45 are not positively claimed elements,
and that claim 45 only provides a "sample collector port" (within the
limitation reciting "a housing ... ") as a positive element which relates to a
sample collector. Thus, we first must determine if a "sample collector" is a
limitation of claim 45.
Having considered the claim language and Specification in light of the
Appellants' arguments and the Examiner's position, we determine that the
"sample collector" and its recited structure are not limitations of claim 45.
The limitations in the body of the claim only refer back to the "sample
collector" as something received by the "sample collector port;" otherwise,
the claim does not rely upon or derive antecedent basis from the structure of
the sample collector as recited in the preamble.
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Application 13/165,769
Appellants do not argue any other limitation of claim 45 as applied to
Borich. Thus, we are not persuaded that the Examiner reversibly erred in
finding that Borich anticipates claim 45. Further, Appellants do not
separately argue claims 46-49, 54--57 or 62; therefore, we sustain the
rejection of those claims as well. 37 C.F.R. § 41.37(c)(l)(vii).
Appellants separately argue claims 53 and 61. Claim 53 depends
from claim 45 and further recites "detection means to detect an optical target
disposed on a sample collector positioned within the imaging device field of
view when the sample collector handle is inserted into the receiving portion,
the optical target to provide a reference to electronically adjust the
orientation of an image received by the imaging device." Claims Appx. 23-
24. Appellants identify Specification i-f 126 and items 70, 22, 24, and 26 of
Figures 3--4 as structure for performing the claimed function. App. Br. 2-3.
The Examiner finds that Borich's cartridges have a signature label region
and optical calibration region which may be used to adjust an image. Ans. 3
and 13, citing Borich 5:25--47 and 9: 11-55. Appellants do not respond to
the Examiner's identification of corresponding structures in Borich, and
accordingly have not persuaded us of reversible error in the Examiner's
finding of anticipation of claim 53.
Claim 61 depends from claim 45 and further recites "the reader
further comprising a transparent anti-contamination shield within the
housing disposed between the sample collector receiving port interior and
housing interior." Claims Appx. 25. Appellants argue that Borich does not
disclose a transparent shield to prevent physical contamination. App. Br.
13-14; Reply Br. 2-3. We agree with Appellants that the Examiner has not
shown that Borich's gate 516 (Fig. 5B) which blocks light is a transparent
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Appeal2015-003055
Application 13/165,769
shield that prevents contamination. See Ans. 4, citing Rorich 5:65---6:3; Ans.
13. Accordingly, we do not sustain the anticipation rejection of claim 61.
Obviousness Rejections
Appellants' arguments against the rejections of claims 50-52, and 63-
66 are not distinct arguments as to the patentability of those claims.
Accordingly, those claims fall with claim 45, from which they depend. We
address below the claims for which Appellants present distinct arguments
for patentability.
Claims 5 8---60 depend from claim 45 and recite various optical
elements between the sample collector port and the imaging device. Claims
Appx. 24--25. Appellants argue that Lennox's system requiring use of a
waveguide surface with lensing and an optical filter at opposite sides of the
waveguide surface is not as compact or simple as Appellants' design, which
does not require a special surface. App. Br. 19, citing Lennox 13:21-58.
The Examiner responds that Lennox's lens and filter provide the benefit of
focusing light to the area of interest and allowing only a particular signal to
be read at the imaging device. Ans. 16. Appellants do not respond to the
Examiner's findings in the Answer; moreover, the claims do not exclude use
of a waveguide surface with the optical elements. Accordingly, Appellants'
argument is not persuasive of reversible error in the rejection of claims 58-
60.
SUMMARY
We affirm the rejection of claims 45--49, 53-57 and 62 as anticipated
by Borich. We reverse the rejection of claim 61 as anticipated by Borich.
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Appeal2015-003055
Application 13/165,769
We affirm the rejection of claims 50-52, 58---60, and 63---66 as
unpatentable under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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