DIAGNOSTEAR LTD.

Patent Trials and Appeals BoardAug 16, 2021

2021002010 (P.T.A.B. Aug. 16, 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. 14/361,945 05/30/2014 Eran Eilat 152287-010101/US 7596 67395 7590 08/16/2021 GREENBERG TRAURIG (NJ) 500 CAMPUS DRIVE, SUITE 400 P.O. BOX 677 FLORHAM PARK, NJ 07932 EXAMINER WEARE, MEREDITH H ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 08/16/2021 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): cadanoc@gtlaw.com clairt@gtlaw.com njdocket@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERAN EILAT and ROBERT DAVID Appeal 2021-002010 Application 14/361,945 Technology Center 3700 Before EDWARD A. BROWN, JEREMY M. PLENZLER, and CARL M. DEFRANCO, 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 11–13, 15, 18, 20, 23–26, and 29. An oral hearing was held on July 14, 2021. A transcript of that hearing is included in the record. 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 DIAGNOSTEAR, LTD. Appeal Br. 3. Appeal 2021-002010 Application 14/361,945 2 CLAIMED SUBJECT MATTER The claims are directed to a dry eye syndrome diagnostic device and method. Claim 11, reproduced below and reformatted for clarity, is illustrative of the claimed subject matter: 11. A dry eye syndrome diagnostic device consisting of: an elongated body, wherein the elongated body comprises a single proximal portion at a single proximal end and a single distal portion at a single opposing distal end, wherein the proximal portion and the distal portion are interconnected by a main longitudinal axis; at least one channel; and at least one dry chemical pad, wherein the at least one channel is configured to allow a tear sample to flow therethrough to the at least one dry chemical pad, wherein the elongated body consists of a paper, a filter paper or a combination thereof, wherein the at least one dry chemical pad comprises a first, a second, and a third discrete dry chemical pad, wherein the first, second and third dry chemical pads are not in contact with one another, wherein the first dry chemical pad comprises a reagent that produces a chemical reaction with a first predetermined protein present in the tear sample, wherein the chemical reaction produces a first visible color that is indicative of a first concentration of the first predetermined protein in the tear sample, wherein the first predetermined protein is albumin, wherein the second dry chemical pad comprises a reagent that produces a chemical reaction with a second predetermined protein present in the tear sample, Appeal 2021-002010 Application 14/361,945 3 wherein the chemical reaction produces a second visible color that is indicative of a second concentration of the second predetermined protein in the tear sample, wherein the second predetermined protein is an enzyme and, wherein the third dry chemical pad comprises a reagent that produces a chemical reaction with a third predetermined protein present in the tear sample, wherein the chemical reaction produces a third visible color that is indicative of a third concentration of the third predetermined protein in the tear sample, and wherein the first, second, third visible colors are indicative of dry eye syndrome. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Siu Yu US 2004/0161365 A1 Aug. 19, 2004 Sibbett US 2008/0317633 A1 Dec. 25, 2008 Clausen US 2011/039290 A1 Feb. 17, 2011 Siegel US 2011/0111517 A1 May 12, 2011 DEWS Methodologies to Diagnose and Monitor Dry EyeDisease January 2007 Chiva Electrophoresis of Tear Proteins as New Diagnostic 2011 Appeal 2021-002010 Application 14/361,945 4 REJECTIONS Claims 11–13, 15, 18, 23, 26, and 29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sibbett, DEWS, and Chiva; or alternatively, over Sibbett, Siu Yu, DEWS, and Chiva. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Sibbett, DEWS, Chiva, and Siegel; or alternatively, over Sibbett, Siu Yu, DEWS, Chiva, and Siegel. Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sibbett, DEWS, Chiva, and Clausen; or alternatively, over Sibbett, Siu Yu, DEWS, Chiva, and Clausen. OPINION Appellant argues claims 11–13, 15, 18, 23, 26, and 29 as a group. Appeal Br. 7. We select claim 11 as representative. Claims 12, 13, 15, 18, 23, 26, and 29 stand or fall with claim 11. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant relies on the contentions presented with respect to claim 11 for the patentability of claims 20, 24, and 25. Appeal Br. 15–16. The main dispute between Appellant and the Examiner concerns the “main longitudinal axis” limitation recited in claim 11. The Examiner provides a number of alternative rejections for claim 11 addressing that limitation in the Non-Final Action. See Non-Final Act. 3–4, 6; see also Ans. 3 (noting the multiple prior art rejections). The Examiner finds with reference to Figure 9, for example, that Sibbett teaches its elongated body (porous medium layer 10) having a single proximal portion at a single proximal end (fluid-receiving region B) and a single distal portion at a single opposing distal end (fluid-receiving region B'). Id. at 3–4. Sibbett’s Figure 9 is reproduced below. Appeal 2021-002010 Application 14/361,945 5 “F[igure] 9 is [a] plan view of a 5-arm double candelabra device.” Sibbett ¶ 29. Sibbett explains that “fluid flows from the one fluid sample-receiving base B and through the candelabra arms A to the other of the first and second bases B' by capillary action.” Id. ¶ 54. The majority of Appellant’s Appeal Brief consists of block quotes of portions of the rejection and the disclosure of Sibbett, with little accompanying explanation. Indeed, Appellant never addresses, let alone persuasively disputes, the Examiner’s findings noted above. At oral hearing, Appellant was asked repeatedly where these findings were addressed in its Appeal Brief and was unable to identify adequately any portion of the brief addressing those findings. See Tr., generally; see also id. at 13:8–15:3 (acknowledging that these issues were not raised in the brief). Appellant focuses on modifications to Sibbett’s teachings relied on by the Examiner in alternate ones of the rejections noted above. See Appeal Br. 9–15. The Examiner notes this in the Answer, explaining that “Appellant neither addresses these embodiments of Sibbett that, without any modification, meet the requirements of the elongated body structure recited in the present claims nor addresses the prior art rejection made in view of Appeal 2021-002010 Application 14/361,945 6 these embodiments.” Ans. 4. As the Examiner additionally notes, the closest Appellant comes to addressing the findings noted above is by “merely provid[ing] an annotated version of Figure 9 of Sibbett ([Appeal Br.] pg. 11) labelling the middle portion of the device with the testing regions as a ‘distal portion.’” Id. The Examiner notes that the “additionally applied alternative (second and third) prior art rejections [were provided] to address not only the broader claim language, but also Appellant’s illustrated structure.” Ans. 5. That is, the Examiner provided additional findings and rationale in the alternate rejections to address the potential scope of amendments afforded to Appellant by its Specification and drawings. Regardless of the reasons for the additional rejections, one of the bases for rejecting the claims is that based on the findings related to Figure 9 discussed above. Because Appellant does not dispute those findings in any meaningful way, we are not apprised of error in the Examiner’s decision to reject claims 11–13, 15, 18, 20, 23–26, and 29. Although Appellant’s Reply Brief purports to be in response to the Answer (see, e.g., Reply Br. 3–5), those new arguments are not necessitated by the Answer because the findings addressed in the Reply Brief are found in the Non-Final Action (see Non-Final Act. 3–4). We do not consider Appellant’s new arguments. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer . . . will not be Appeal 2021-002010 Application 14/361,945 7 considered by the Board for purposes of the present appeal, unless good cause is shown.”).2 CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11–13, 15, 18, 23, 26, 29 103 Sibbett, DEWS, Chiva; or alternatively, Sibbett, Siu Yu, DEWS, Chiva 11–13, 15, 18, 23, 26, 29 20 103 Sibbett, DEWS, Chiva, Siegel; or alternatively, Sibbett, Siu Yu, DEWS, Chiva, Siegel 20 24, 25 103 Sibbett, DEWS, Chiva, Clausen; or alternatively, Sibbett, Siu Yu, DEWS, Chiva, Clausen 24, 25 Overall Outcome 11–13, 15, 18, 20, 23–26, 29 2 The Examiner pointing out in the Answer that Appellant did not respond, in its Appeal Brief, to the rejection presented in the Answer is not good cause for Appellant to respond to that rejection for the first time in its Reply Brief. Appeal 2021-002010 Application 14/361,945 8 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