Christian Hoerauf

Patent Trials and Appeals Board

Apr 7, 2021

2020004939 (P.T.A.B. Apr. 7, 2021)

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

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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,
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Application 13/097,164

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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.
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Application 13/097,164

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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.
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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.
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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.
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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.
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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.
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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.
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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