Christian HoeraufDownload PDFPatent Trials and Appeals BoardApr 7, 20212020004939 (P.T.A.B. Apr. 7, 2021) Copy Citation 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. 13/097,164 04/29/2011 Christian Hoerauf 25359 US (15878A-034/CO) 5979 98067 7590 04/07/2021 Harness Dickey (Roche) 5445 Corporate Drive, Suite 200 Troy, MI 48098-2683 EXAMINER TOWA, RENE T ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 04/07/2021 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): pair_roche@firsttofile.com troymailroom@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN HOERAUF Appeal 2020-004939 Application 13/097,164 Technology Center 3700 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 16–20, 40, 52, 53, 57–62, 64, and 66. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Roche Diabetes Care, Inc. Appeal Br. 3. Appeal 2020-004939 Application 13/097,164 2 CLAIMED SUBJECT MATTER The claims are directed to a system for producing a sample of a body fluid. Claim 16, reproduced below, is illustrative of the claimed subject matter: 16. A system for producing a sample of body liquid from a human or animal subject for analysis by piercing skin of the subject, comprising: a reusable hand-held instrument having - a housing; - a lancing element having a skin piercing tip; - a lancing drive within said housing connected to the lancing element and for driving the lancing element in a puncturing movement in which the lancing element moves, after triggering the puncturing movement, in a puncture direction until the lancing element reaches a point (P) of maximum displacement and in a reverse direction after the lancing element has reached the point (P) of maximum displacement; and - a pressure ring that is psi of a pressure piece that includes a peripheral surface portion that surrounds the pressure ring and is recessed from the pressure ring, the pressure ring protruding in a puncturing direction from the peripheral surface of the pressure piece, and the pressure ring defining a skin contact opening and being adapted for pressing against the skin of a finger or other body part, wherein, in order to achieve high reliability of sample generation, the skin contact opening has an opening area corresponding to a circle with a diameter of at least 1.5 mm and not more than 4 mm, and the instrument comprises a pressing force control device comprising a spring that exerts a force between the pressure ring and the housing, Appeal 2020-004939 Application 13/097,164 3 the instrument is configured so that at the time of triggering and in the entire movement range of the pressure ring, the pressing force acting between the finger or other body part and the pressure ring is borne only by the pressure ring and balanced by the spring, and the pressing force control device comprises a pressure-ring movement detection device for the automatic triggering of the puncturing movement immediately without delay at a predetermined pressing force between the pressure ring and the finger or other body part, the predetermined pressing force being at least 3 N. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Nitzsche US 4,577,630 Mar. 25, 1986 Allen US 2005/0096686 A1 May 5, 2005 Vos US 2006/0036187 A1 Feb. 16, 2006 Calasso US 2007/0016103 A1 Jan. 18, 2007 Alvarez-Icaza US 2007/0060844 A1 Mar. 15, 2007 Korner US 2007/0118051 A1 May 24, 2007 List ’870 WO 2007/073870 A2 July 5, 2007 List US 2008/0262388 A1 Oct. 23, 2008 REJECTIONS Claims 16–20, 40, 52, 53, 57–59, 64, and 66 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Korner, Alvarez-Icaza, Vos, and Nitzsche. Claims 60 and 61 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Korner, Alvarez-Icaza, Vos, Nitzsche, and List. Claim 62 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Korner, Alvarez-Icaza, Vos, Nitzsche, and Calasso. Appeal 2020-004939 Application 13/097,164 4 OPINION Appellant argues claims 16–20, 40, 52, 53, 57–59, 64, and 66 as a group. Appeal Br. 11–16. We select claim 16 as representative. See 37 C.F.R. § 41.37(c)(iv). Claims 17–20, 40, 52, 53, 57–59, 64, and 66 stand or fall with claim 16. Appellant further relies on the arguments presented with respect to claim 16 for the patentability of claims 60–62. Appeal Br. 16. Appellant alleges that “the references provide no rationale for selecting the features of these references to ‘obtain predictable results’ as alleged by the Examiner” and “[i]t is only through improper hindsight analysis guided by Appellant’s claims can one of ordinary skill of the art arrive at something approaching Appellant’s invention.” Appeal Br. 13. Appellant, however, does nothing to support these allegations, other than summarize portions of the rejection and state the conclusions noted above. See id. at 12–13. Notably, the Examiner’s statement regarding “obtain[ing] predicable results,” is in connection with the rationale that it would have been obvious . . . to provide the system of Korner et al. as modified by Alvarez-Icaza et al. and Vos et al. with a pressure ring that is part of a pressure piece that includes a peripheral surface portion that surrounds the pressure ring and is recessed from the pressure ring, the pressure ring protruding in a puncturing direction from the peripheral surface of the pressure piece as taught by Nitzsche et al. since such a modification would amount to a simple substitution of one known element (i.e. as taught by Korner et al.) for another (i.e. as taught by Nitzsche et al.) to obtain predictable results such as engaging a target site and creating a target site bulge. Final Act. 7. That is, the rationale is a “simple substitution.” Appellant’s conclusory assertions do not address the Examiner’s rationale in any meaningful way and, therefore, do not apprise us of Examiner error. Appeal 2020-004939 Application 13/097,164 5 The main dispute before us is whether Korner teaches “the instrument is configured so that at the time of triggering and in the entire movement range of the pressure ring, the pressing force acting between the finger or other body part and the pressure ring is borne only by the pressure ring and balanced by the spring” recited in claim 16. Appeal Br. 13–15. Appellant cites paragraph 76 of its Specification as disclosing this feature. Id. at 7.2 Appellant’s Figures 3 and 5 are reproduced below. Figure 3 is “a longitudinal section of [Appellant’s] instrument.” Spec. ¶ 54. Figure 5 is “a schematic sketch regarding an aspect of the function of the instrument shown in Figure 3.” Id. ¶ 56. Paragraph 76 of Appellant’s Specification explains “that in the entire movement range the pressing-force acting between the finger 2 (or other body part) and the pressure ring 1 is controlled only by the force of spring 38 balanced by the pressing-down- force of finger 2.” The Specification distinguishes its arrangement from that where “the movement of pressure ring 1 [i]s influenced or limited by some kind of abutting member or obstacle acting - within its possible movement range - 2 Appellant references paragraph 93 of the published application, which corresponds to paragraph 76 of the original filing. Appeal 2020-004939 Application 13/097,164 6 on ring 1.” Spec. ¶ 76. “[A] pressure ring movement limiting arrangement 44 (figure 5) is provided by which the maximum displacement of the pressure ring 1 possible by pressing with a finger 2 or other body part is limited within a fully spring-loaded movement range of the pressure ring.” Id. Korner’s instrument has similarities to Appellant’s instrument discussed above. Korner’s Figures 1 and 3 are reproduced below. Figure 1 is “a diagrammatic view of a device for withdrawing and analysing blood.” Korner ¶ 23. Appeal 2020-004939 Application 13/097,164 7 Figure 3 illustrates Korner’s device in operation, providing eight positions (a–h). Id. ¶ 25. Korner explains that “[a]ccording to FIGS. 3a and b the pressure piece 20 extended out of the instrument housing is moved towards the support 14 against a resisting force by pressing from the body part 16.” Id. ¶ 33. “When the positioning surface 42 is reached, a release signal is generated by a touch sensor 46 (FIG. 3c),” and “[t]he lancing member 22 is then rapidly inserted to a defined lancing depth (FIG. 3d) and then retracted or pulled back into a collecting position at a smaller lancing depth (FIG. 3e).” Id. ¶ 34. Figures 3g and 3h show the retraction of pressure ring 20 at the end of the process. Id. ¶ 35. Appeal 2020-004939 Application 13/097,164 8 Appellant contends that in Korner, “the user’s finger 16 must contact the touch sensor 46 that is separate and apart from the pressure ring 20 in order to initiate lancing.” Appeal Br. 14. Appellant contends that “[b]ecause the user’s finger 16 must contact the touch sensor 46, at least a part of the pressing force by the finger 16 is borne by the touch sensor 46 and NOT ‘at the time of triggering . . . only by the pressure ring.” Appeal Br. 14. Appellant further contends that “[b]ecause the pressure ring 20 is moved away from the support 14, the device of Korner is not ‘configured so that . . . in the entire movement range of the pressure ring, the pressing force acting between the finger or other body part and the pressure ring is borne only by the pressure ring and balanced by the spring.” Appeal Br. 15; see also Reply Br. 4–6. Appellant’s contentions rely on an incorrect characterization of claim 16’s requirements.3 As the Examiner explains (Ans. 11), the plain language of the claim indicates that we are concerned with “the pressing force acting between the finger . . . and the pressure ring.” That is, the claim relates to what is acting on the pressure ring, not anything else that may be acting on the finger. Based on the portions of Appellant’s Specification discussed above, we understand Appellant’s “pressing force acting between the finger or other body part and the pressure ring [being] borne only by the pressure ring and balanced by the spring” to relate to the absence of an abutting member that would provide a stop for Appellant’s pressure piece 42, limiting its downward travel. That is, Appellant’s arrangement prohibits an abutting member acting on pressure piece 42 until the body part (e.g., finger) 3 Indeed, we fail to see where written description support exists for the purported requirements of the claim advanced by Appellant. Appeal 2020-004939 Application 13/097,164 9 fully depresses pressure piece 42. It is entirely consistent with the plain language of the claim, and Appellant’s Specification, to consider the “entire movement range of the pressure ring” as the movement from when the finger first engages pressure piece 42 until the finger abuts contact surface 46. See Spec. ¶ 77. Appellant does not allege that anything inhibits this “entire movement range of the pressure ring” (20) in Korner. That is, Appellant does not allege that anything other than Korner’s spring acts on pressure ring 20 before the finger fully depresses pressure ring 20 and engages sensor 46. Moreover, as the Examiner explains, “[e]ven if Appellant’s assertion that ‘the entire movement range of the pressure ring’ of Korner also includes the pressure ring positions shown in figs. 3g & 3f when the pressure ring 20 is retracted into the instrument,” Korner still teaches the claim limitation at issue “because the pressing force acting between the finger 16 . . . and the pressure ring 20 is borne only by the pressure ring 20 and balanced by the spring 36 . . . in the entire movement range of the pressure ring 20 shown in figs. 3a to 3f.” Ans. 14. Appellant’s contentions are not persuasive of Examiner error because they rely on features not present in the claims. CONCLUSION The Examiner’s rejections are affirmed. Appeal 2020-004939 Application 13/097,164 10 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16–20, 40, 52, 53, 57–59, 64, 66 103(a) Korner, Alvarez- Icaza, Vos, Nitzsche 16–20, 40, 52, 53, 57–59, 64, 66 60, 61 103(a) Korner, Alvarez- Icaza, Vos, Nitzsche, List 60, 61 62 103(a) Korner, Alvarez- Icaza, Vos, Nitzsche, Calasso 62 Overall Outcome 16–20, 40, 52, 53, 57–62, 64, 66 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation