SENSONICS, INC.

Patent Trials and Appeals Board

Sep 11, 2020

2020001003 (P.T.A.B. Sep. 11, 2020)

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.
14/783,510 10/09/2015 DOMINICK DANIEL MARTINO 5854-16 U.S. 1895
34678 7590 09/11/2020
Norman E. Lehrer
Norman E. Lehrer, P.C.
52 Berlin Road
Suite 1000
Cherry Hill, NJ 08034
EXAMINER
SHAH, JAY B
ART UNIT PAPER NUMBER
3791
MAIL DATE DELIVERY MODE
09/11/2020 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 DOMINICK DANIEL MARTINO
____________

Appeal 2020-001003
Application 14/783,510
Technology Center 3700
____________

Before ANTON W. FETTING, ULRIKE W. JENKS, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1, 4–6, 8, and 10–12, which are all
of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Sensonics, Inc. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The Appellant’s invention “is directed toward devices for use in
administering olfactory or smell tests. The devices are hand held and
operated and can be used in threshold tests, discrimination tests and
identification tests.” Spec. 1, ll. 7–9.
Claim 1 is the only independent claim, is representative of the subject
matter on appeal, and is reproduced below:
1. A hand held olfactory tester comprising:
an elongated housing having a forward portion and a rear
portion, the forward portion including an opening adjacent the
forward most end thereof;
a single odorant chamber located within said forward
portion and containing an odorant therein, said single odorant
chamber having a nozzle at the forward end thereof and being
moveable axially between a forward position and a backward
position within said housing;
a wick having a rear end located within said odorant
chamber and a forward end extending forwardly thereof into said
nozzle;
means for moving said odorant chamber along with said
wick between said forward and backward positions, said moving
means including a thumb engagable member located on the
exterior of said housing intermediate the ends thereof and is
engagable by a person holding said housing;
spring means for biasing said odorant chamber
backwardly into its backward position;
said forward end of said wick being exposed to the outside
of said housing through said nozzle and through said opening in
said housing when said odorant chamber and said wick are
moved into their forward position so that vapors from the odorant
that had been wicked to the forward end of said wick can be
smelled by a patient, and
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means for sealing the forward end of said wick from the
outside of said housing when said wick is in its backward
position to prevent vapors from escaping from said housing, said
sealing means including an O-ring located between the forward
end of said nozzle and said forward most end of said housing.
Appeal Br. 9 (Claims App.).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Pendergrass, Jr. (“Pendergrass”) US 5,565,148 Oct. 15, 1996
Bartsch et al. (“Bartsch”) US 2002/0066967 A1 June 6, 2002
Harris US 2004/0068916 A1 Apr. 15, 2004
Djupesland US 2004/0112378 A1 June 17, 2004
Manne US 2008/0313789 A1 Dec. 25, 2008
Pardes et al. (“Pardes”) US 2009/0152306 A1 June 18, 2009

REJECTIONS
Claims 1, 8, 11, and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over by Manne, Bartsch, Djupesland, and Pendergrass.
Claims 4–6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Manne, Bartsch, Djupesland, Pendergrass, and Harris.
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Manne, Bartsch, Djupesland, Pendergrass, and Pardes.

OPINION
The Appellant contends that the Examiner’s rejection of independent
claim 1 is in error because “[c]laim 1 requires that there be a single odorant
chamber within the housing” whereas Manne “shows a plurality of scent
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containers 64 located within the tube or housing 62.” Appeal Br. 4.
Conversely, the Examiner finds
Claim 1 does not require that there only be a single odorant
chamber within the housing. Claim 1 recites “A hand held
olfactory tester comprising ... a single odorant chamber”. Per
MPEP 2111.03 I, “comprising” is a transitional phrase that is
“inclusive or open-ended and does not exclude additional,
unrecited elements or method steps”. The Office notes that by
having a plurality of chambers, as taught by Manne, the
limitation of the apparatus ‘comprising’ a single chamber is met.
The claims do not recite that the tester consists of only a single
chamber.
Ans. 3.
“During examination, ‘claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. Of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed.Cir.1990)). The term “comprising,” when used in the
preamble of a claim, permits the inclusion of other elements or materials in
addition to those specified in the claim. See In re Baxter, 656 F.2d 679, 686
(CCPA 1981); see also MPEP § 2111.03(I). Although it is “acknowledge[d]
that the term ‘comprising’ raises a presumption that the list of elements is
nonexclusive, . . . ‘[c]omprising’ is not a weasel word with which to
abrogate claim limitations.’” Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337,
1343 (Fed.Cir.2007) (citations omitted). “The presumption raised by the
term ‘comprising’ does not reach into each of the [elements] to render every
word and phrase therein open-ended” (id.), and must be read in view of the
Specification (see In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
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2010)). See also MPEP § 2111.03(I) (“The determination of what is or is
not excluded by a transitional phrase must be made on a case-by-case basis
in light of the facts of each case.”).
Here, we agree with the Appellant that the ordinary and customary
meaning of the term “single” is “one and only one.” Reply Br. 2; see also
Merriam-Webster Dictionary (“(1): consisting of or having only one part,
feature, or portion . . . (2): consisting of one as opposed to or in contrast with
many . . . (3): consisting of only one in number”) (https://www.merriam-
webster.com/dictionary/single). The Specification is consistent with this
meaning in (1) differentiating the Appellant’s tester capable of being
administered using one hand and having a chamber and thumb engagable
member from the prior art “Sniffin’ Sticks” having “a number of tubular
odorant chambers” whereby two hands are needed to administer the test,
(2) describing a housing with “an odorant chamber,” (3) consistently
referring to “the odorant chamber,” (4) describing the cylinder as “having a
chamber 22 therein,” and (5) depicting the device with only one chamber.
Spec. 2–4, Figs. 2–7. Although the preamble of claim 1 provides for a
“tester comprising” the listed elements, the term “comprising” as used in the
preamble does not reach into the element of a single chamber to negate the
meaning of single as understood by one in the art, and as indicated in the
Specification, as consisting of one and only one.
The Examiner does not dispute that Manne discloses a tester with
multiple chambers. See Final Act. 4 (“the plurality of containers shown also
include a single container”); Ans. 3. And we do not see, nor does the
Examiner direct attention to, any embodiment or teaching in Manne of a
tester with only one chamber. Thus, we agree with the Appellant that the
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Examiner’s finding that Manne teaches a single odor chamber is
unsupported. See Appeal Br. 4; Reply Br. 2. The Examiner relies solely on
Manne for teaching the claimed limitation of a single chamber (Final Act. 4;
Ans. 3) and fails to rely on the teachings of Bartsch, Djupesland,
Perndergrass, Harris, or Pardes in any manner that would remedy this
deficiency.
Therefore, we do not sustain the Examiner’s rejections of independent
claim 1 and dependent claims 4–6, 8, and 10–12 under 35 U.S.C. § 103.
CONCLUSION
The Examiner’s decision to reject claims 1, 4–6, 8, and 10–12 under
35 U.S.C. § 103(a) is not sustained.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 8, 11, 12 103 Manne, Bartsch,
Djupesland,
Pendergrass
1, 8, 11, 12
4–6 103 Manne, Bartsch,
Djupesland,
Pendergrass, Harris
4–6
10 103 Manne, Bartsch,
Djupesland,
Pendergrass, Pardes
10
Overall
Outcome
1, 4–6, 8,
10–12

REVERSED