Ex Parte Kim et al

Patent Trial and Appeal Board

May 7, 2013

11400023 (P.T.A.B. May. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOHN KIM and JAMES E. PERET
__________

Appeal 2011-009101
Application 11/400,023
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a lancet
device. The Examiner has rejected the claims as anticipated and obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Figures 6 and 7 of the Specification are shown below:
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Application 11/400,023

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Figures 6 and 7 show cross-sectional views of the disclosed lancet
device ready for use (Fig. 6) and in the puncturing position (Fig. 7) (Spec. 7,
¶¶ 0027, 0028). The Specification discloses that “[t]rigger 80 … is adapted
for lateral movement into housing body 20 so as to bias the bow spring 70
against its natural state. Such movement provides a mechanism for forcing
or driving movement of the lancet structure 60 through housing body 20 to
the puncturing position.” (Id. at 11, ¶ 0045.)
Claims 1-23, 35, and 36 are on appeal. Claim 1 is representative:
1. A lancet device comprising:
a housing including an opening at a forward end thereof;
a lancet structure comprising a puncturing end, the lancet structure
adapted for movement within the housing between a retracted position with
the puncturing end within the housing and a puncturing position with the
puncturing end extending through a forward end of the housing;
a bow spring maintaining the lancet structure in the retracted position
in a first state; and
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Application 11/400,023

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a trigger adapted for lateral movement into the housing,
wherein lateral movement of the trigger into the housing biases the
bow spring from the first state to a second state, thereby extending the lancet
structure to the puncturing position.

The claims stand rejected as follows:
• Claims 1, 2, 12, 15, 35, and 36 under 35 U.S.C. § 102(b) in view of
Lloyd;1
• Claims 1, 3-11, and 13-21 under 35 U.S.C. § 102(b) in view of
Shirley;2
• Claims 21-23 under 35 U.S.C. § 103(a) in view of Lloyd and
Shirley.
I.
The Examiner has rejected claims 1, 2, 12, 15, 35, and 36 as
anticipated by Lloyd. The Examiner finds that Lloyd discloses the claimed
device, including “a trigger (74) adapted for lateral movement into the
housing, wherein lateral movement of the trigger into the housing biases the
bow spring from the first state to a second state, thereby bending the bow
spring and extending the lancet structure to the puncturing position”
(Answer 4).
Appellants argue that “Lloyd fails to disclose … a trigger adapted for
lateral movement within a housing” (Appeal Br. 10). Appellants argue that
the Specification “sets forth an explicit definition … for ‘lateral movement’
of the trigger that complements the ordinary and customary meaning” (id.);

1 Lloyd et al., US 6,322,574 B1, Nov. 27, 2001.
2 Shirley et al., US 4,539,988, Sept. 10, 1985.
Appeal 2011-009101
Application 11/400,023

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specifically, “the Specification expressly defines ‘lateral movement’ in
paragraph [0047] of the specification as follows: ‘Lateral movement is
intended to encompass any movement of the actuator or trigger in a direction
other than parallel to the lancet axis, i.e., the axis of movement of the lancet
to the puncturing position.’” (Id. at 11.) Appellants argue that this
“definition specifically excludes a trigger or actuator that is moved parallel
to the lancet axis” (id.).
We agree with Appellants that the Examiner’s interpretation of the
claim term “lateral movement” is unreasonably broad. As Appellants point
out, the Specification expressly defines “lateral movement” to exclude
movement in a direction parallel to the axis of movement of the lancet. (See
Spec. 12, ¶ 0047).
Lloyd discloses a “disposable lancet” (Lloyd, abstract). Figure 3 of
Lloyd is shown below:

Figure 3 shows a side view of the lancet in its “neutral safe position”
(id. at col. 2, ll. 31-32). Lloyd discloses that the “elongated body 14 is …
moved from its neutral position to a puncturing position by depressing the
Appeal 2011-009101
Application 11/400,023

5
cylindrical portion 74 of the elongated body 14” (id. at col. 4, ll. 33-37).
Thus, Lloyd discloses that the trigger 74 moves in a direction that is parallel
to the axis of movement of the lancet to the puncturing position.
As discussed above, however, the Specification defines lateral
movement of the trigger to mean movement in a direction other than parallel
to the axis of movement of the lancet. Lloyd’s lancet device has a trigger
that moves parallel to the axis of movement of the lancet, and therefore does
not meet all the limitations of claim 1. Claim 15, the only other independent
claim on appeal, includes the same relevant limitation (Appeal Br. 22
(Claims Appendix)). Thus, we reverse the rejection of independent claims 1
and 15, and dependent claims 2, 12, 35 and 36, as anticipated by Lloyd.
II.
The Examiner has rejected claims 1, 3-11, and 13-21 as anticipated by
Shirley. The Examiner finds that Shirley discloses a lancet device that meets
the limitations of claim 1, including “a bow spring (36) [for] maintaining the
lancet structure in the retracted position in a first state” (Answer 5) and a
trigger “adapted for lateral movement into the housing … wherein lateral
movement of the trigger into the housing biases the bow spring from the first
state to a second state, thereby bending the bow spring and extending the
lancet structure to the puncturing position” (id.).
Appellants argue that “Shirley fails to disclose … a bow spring as
claimed, or a trigger biasing such a bow spring” (Appeal Br. 14). Appellants
argue that a “bow spring is commonly understood by those skilled in the art
and clearly described in the specification as ‘a simple beam spring, which
may be manufactured of a flat bar or strip’ … having a natural bowed or
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Application 11/400,023

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Figure 7 shows a vertical cross-section of the lancet device with “the spring
arm cocked” (id. at col. 1, ll. 54-66). Shirley discloses that “the nurse or
doctor pushes down on the exposed cross pin 43 to move the spring arm 36
down to the cocked position shown in FIG. 7” (id. at col. 4, l. 66 to col. 5,
l. 1). Shirley discloses that the “release actuator is retracted by pushing in
on the forwardly offset lower end segment 17 on the front wall of the central
frame piece, which causes … finger 30 to be displaced from the locking
position (FIG. 7) to the right to the release position” (id. at col. 5, ll. 10-15),
and “free[s] the spring arm 36 to move up clockwise from the cocked
position shown in FIG. 7 to the position … where the lancet blade 41
projects up through the opening 14a and pierces the patient’s finger” (id. at
col. 5, ll. 15-21).
The Examiner argues that the “spring arm disclosed by Shirley has the
structural capabilities of performing as an applicant disclosed ‘bow spring’”
(Answer 9). The Examiner also argues that a “recitation of the intended use
of the claimed invention must result in a structural difference between the
claimed invention and the prior art in order to patentably distinguish the
claimed invention” (id.).
We do not agree with the Examiner that the spring arm disclosed by
Shirley meets the claim limitation requiring a bow spring. As Appellants
point out, the Specification states that the bow spring of the claimed device
“is adapted to maintain lancet structure 60 in the retracted position based on
its tendency to resist movement” (Spec. 10, ¶ 0041). In Shirley’s device, by
contrast, spring arm 36 must be manually bent in order to move it to the
cocked position; when finger 30 is displaced from the locking position, the
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Application 11/400,023

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spring arm 36 returns to its unstressed position and moves the lancet blade to
pierce the patient’s finger. Thus, Shirley’s spring arm 36 has a tendency to
resist movement away from the puncturing position, rather than having a
tendency to resist movement out of the retracted position, as required for the
bow spring of the claimed device. We therefore reverse the rejection of
independent claims 1 and 15, and dependent claims 3-11, 13, 14, and 16-21,
as anticipated by Shirley.
III.
The Examiner has rejected claims 21-23 under 35 U.S.C. § 103(a) in
view of Lloyd and Shirley. Claims 21-23 all depend on claim 15. The
Examiner relies on Lloyd, as discussed above, as disclosing the device of
claim 15 (Answer 7), and concludes that Shirley would have made obvious
the additional limitations of claims 21-23 (id.). However, as discussed
above, we conclude that Lloyd does not disclose the invention of claim 15.
Since the Examiner does not point to any disclosure in Shirley that remedies
the deficiency of Lloyd, we also reverse the rejection of claims 21-23.
SUMMARY
We reverse the rejections of claims 1-21, 35 and 36 under 35 U.S.C.
§ 102(b). We also reverse the rejection of claims 21-23 under 35 U.S.C.
§ 103(a)

REVERSED

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