13426831 - (D) (P.T.A.B. Sep. 4, 2019)

John Eastman

Patent Trials and Appeals BoardSep 4, 2019

13426831 - (D) (P.T.A.B. Sep. 4, 2019)

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. 13/426,831 03/22/2012 John Eastman MCN335USPT01 3801 23403 7590 09/04/2019 SHERRILL LAW OFFICES 4756 BANNING AVE SUITE 212 WHITE BEAR LAKE, MN 55110-3205 EXAMINER TURK, NEIL N ART UNIT PAPER NUMBER 1798 NOTIFICATION DATE DELIVERY MODE 09/04/2019 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): docketing@sherrilllaw.com izag@sherrilllaw.com michaels@sherrilllaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN EASTMAN1 ____________ Appeal 2018-008406 Application 13/426,831 Technology Center 1700 ____________ Before JEFFREY T. SMITH, WESLEY B. DERRICK, and MERRELL C. CASHION, JR., Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection2 of claims 1–3, 6, and 8. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. STATEMENT OF THE CASE Appellant’s invention is generally directed to a fiber optic analyte-sensing needle. App. Br. 4. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1 According to Appellant, the real party in interest is Mocon, Inc. App. Br. 2. 2 Final Office Action entered August 4, 2017 (“Final Act.”). Appeal 2018-008406 Application 13/426,831 2 1. A fiber optic analyte sensing needle, comprising: (a) a hollow distal tipped needle having a longitudinal lumen with at least one lateral side port proximate the distal tip, (b) at least one fiber optic filament having a distal end portion sealingly jacketed with the lumen, and (c) a photoluminescent analyte-sensitive probe nonadherently entrapped within the lumen between a distal tip of the at least one fiber optic filament and the distal tip of the needle, the photoluminescent analyte- sensitive probe comprising a glass fiber carrier substrate coated with a homogeneous matrix of an analyte- sensitive photoluminescent dye and an analyte-permeable hydrophobic polymer, (d) wherein the homogeneous matrix is in direct and unimpeded fluid communication with an external environment through the at least one lateral side port in the needle. Appellant (see generally App. Br.) requests review of the following rejections maintained by the Examiner in the Answer entered June 25, 2018 (“Ans.”): I. Claims 1, 2, 6, and 8 under 35 U.S.C. § 102(b) as anticipated by Obeid et al. (US 2009/0075321 A1, published March 19, 2009) (hereinafter “Obeid”). II. Claim 3 under 35 U.S.C. § 103(a) as unpatentable over Obeid. Appeal 2018-008406 Application 13/426,831 3 OPINION3 After review of the respective positions provided by Appellant and the Examiner, we reverse the Examiner’s rejection of claims 1, 2, 6, and 8 under 35 U.S.C. § 102(b), and the rejection of claim 3 under 35 U.S.C. § 103(a). We add a rejection under 35 U.S.C. § 112, first paragraph, for failing to adequately provide written descriptive support for the claimed invention. Our reasons follow: The review of the grounds of rejection of the appealed claims necessarily entails the interpretation of the scope of the appealed claims, giving the broadest reasonable interpretation to the terms thereof consistent with the written description provided in Appellant’s Specification as it would be interpreted by one of ordinary skill in this art. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Thus, the terms in the appealed claims must be given their broadest reasonable interpretation including the ordinary meaning unless another meaning is intended by Appellant as established in the written description of their Specification. See, e.g., In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989). In this case, while the Specification describes unimpeded fluid communication with respect to the probe, an external environment through the at least one lateral side port in the needle, the Specification does not disclose such “direct” communication with respect to the homogenous matrix of the probe as recited in the claims. The claim language “direct and 3 We incorporate the findings and discussions presented in our prior decision on appeal for Application 13/426,831, Appeal 2015-004591, mailed October 28, 2016. Appeal 2018-008406 Application 13/426,831 4 unimpeded fluid communication” (emphasis added) is not specifically defined in the Specification. We note the disputed claim language was added by Appellant in the Amendment and Response filed December 28, 2016 (Appellant’s Response). On page 4 of Appellant’s Response, Appellant contends support for the amendment to the claim “can be found in original claims 4, 5 and 7, in the specification at paragraphs [0017] and [0020], and Figure 3.” Appellant states in the Appeal Brief: As to introduction of the claim term “direct” into claim 1, this term is used in accordance with its plain and ordinary meaning of “5 a: marked by an absence of an intervening agency, instrumentality, or influence”. Webster's Ninth New Collegiate Dictionary. Use of the term “direct” in combination with “unimpeded” to describe the nature of the fluid communication emphasizes this lack of any intervening element which could adversely impact the ability of the homogeneous matrix to quickly and accurately experience and sense an analyte in the external environment. App. Br. 6. The identified portions of the original Specification and Figures do not support the amendment to the claims. Appellant has failed to identify specific language from the original disclosure that supports the claimed amendment that requires the photoluminescent analyte-sensitive probe to lack any intervening element which could adversely impact the ability of the homogeneous matrix to quickly and accurately experience and sense an analyte in the external environment. We note that the Examiner withdrew this rejection from the Final Office Action in the Answer mailed June 25, 2018. Answer 7. However, the Examiner failed to provide a technical Appeal 2018-008406 Application 13/426,831 5 explanation identifying where the disputed language is supported by the present record, and such support is not apparent. For the foregoing reasons, we reject claims 1–3, 6, and 8 under 35 U.S.C. § 112, first paragraph, as lacking written description support. Prior Art Rejections4 The dispositive issue on appeal for the prior art rejections is whether the Examiner erred in finding that Obeid discloses a fiber optic, analyte- sensing needle that comprises a photoluminescent analyte-sensitive probe having direct and unimpeded fluid communication with an external environment as required by independent claim 1. On this record, we answer this question in the affirmative. Appellant argues that Obeid does not disclose a probe having direct and unimpeded fluid communication with an external environment because Obeid’s probe is encapsulated within an analyte-insensitive encapsulating material, and the target analyte must diffuse through the encapsulating material before the probe can take a reading. App. Br. 8. We agree with Appellant that Obeid’s probe is encapsulated within an analyte-insensitive encapsulating material. Obeid discloses a sensor for measuring the concentration of a substance (analyte) comprising an optical fiber 24 consisting of a glass fiber 3 positioned within a cylindrical cavity 15 of a needle tube 13. Obeid ¶¶ 53, 57; Fig. 1. Obeid discloses that a polymer material 16 fills the cylindrical cavity 15 within the needle tube 13 and completely surrounds and encapsulates the sensor layer 9. Obeid ¶ 57. As such, the polymeric material that encapsulates the sensor provides an 4 We limit our discussion to independent claim 1. Appeal 2018-008406 Application 13/426,831 6 intervening element which could adversely impact the ability of the homogeneous matrix to quickly and accurately experience and sense an analyte in the external environment. For the foregoing reasons we cannot sustain the prior art rejections of claims 1–3, 6, and 8. ORDER The prior art rejections of claims 1–3, 6, and 8 under 35 U.S.C. § 102(b) and § 103(a) are reversed. We newly reject claims 1–3, 6, and 8 under 35 U.S.C. § 112, first paragraph, as lacking written description support. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same record. . . . Appeal 2018-008406 Application 13/426,831 7 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). REVERSED; 37 C.F.R, § 41.50(b)