Ex Parte Reynolds et alDownload PDFPatent Trial and Appeal BoardJun 19, 201714570613 (P.T.A.B. Jun. 19, 2017) 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. 14/570,613 12/15/2014 Jeffery S. Reynolds 2707 PCT-US D N 4444 71331 7590 NIXON PEABODY LLP 70 West Madison, Suite 3500 CHICAGO, IL 60602 06/21/2017 EXAMINER WHITE, DENNIS MICHAEL ART UNIT PAPER NUMBER 1798 NOTIFICATION DATE DELIVERY MODE 06/21/2017 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): docketingchicago @ nixonpeabody.com ipairlink @ nixonpeabody. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFFERY S. REYNOLDS, STEVEN C. CHARLTON, SUNG-KWON JUNG, and SUNY J. GEORGE Appeal 2016-007459 Application 14/570,613 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner’s decision finally rejecting claims 1 and 15—24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is reproduced below from the Claims Appendix of the Appeal Brief dated January 4, 2016 (“App. Br.”). The limitation at issue is italicized. 1. An optic light guide test sensor comprising: a light guide having an input end and an output end; Appeal 2016-007459 Application 14/570,613 a reagent-coated membrane, the membrane being located at the output end of the light guide and being attached to the light guide, the reagent being adapted to react with a fluid sample to indicate the level of an analyte in the sample; and a mesh layer being attached to the membrane, the mesh layer having pore sizes from about 10 micrometer (0.01 mm) to about 200 micrometer (0.2 mm). The claims on appeal stand rejected as follows: (1) claims 1, 15—17, 19, 21, and 24 under 35 U.S.C. § 103(a) as unpatentable over Petrich et al.1 in view of Jurik et al.;2 (2) claim 18 under 35 U.S.C. § 103(a) as unpatentable over Petrich in view of Jurik, and further in view of Lowne;3 and (3) claims 20, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable over Petrich in view of Jurik, and further in view of Hardy et al.4 B. DISCUSSION The Examiner finds Petrich discloses an optic light guide test sensor comprising a light guide and a reagent-coated membrane located at the output end of the light guide. The Examiner finds the reagent reacts with a fluid sample at test field 7 (see Petrich Fig. 2) to indicate the level of an analyte in the sample. Ans. 2.5 The Examiner finds Petrich discloses that the test sensor also comprises spreading layer 40 attached to the test field for wetting the test field with the sample. Ans. 2 (citing Petrich 144). 1 US 2003/0157724 Al, published August 21, 2003 (“Petrich”). 2 US 2003/0082074 Al, published May 1, 2003 (“Jurik”). 3 US 4,552,458, issued November 12, 1985 (“Lowne”). 4 US 4,050,895, issued September 27, 1977 (“Hardy”). 5 Examiner’s Answer dated May 31, 2016. 2 Appeal 2016-007459 Application 14/570,613 The Examiner finds Petrich does not disclose that the spreading layer is a mesh layer as recited in claim 1. Ans. 2. Thus, the Examiner turns to Jurik. The Examiner finds Jurik discloses a blood glucose test strip for detecting glucose in blood.6 7Ans. 2. The Examiner finds the test strip uses spreading mesh layer 12. Ans. 2. Jurik discloses that “[preferred materials require minimum sample sizes, absorb the sample quickly, distribute it uniformly to the membranes, and do not interfere with the reagent chemistry in the membrane.” Jurik 130. The Examiner finds, and the Appellants do not dispute, that the spreading mesh layer has a pore size of 20 microns to 350 microns. Ans. 2 (citing Jurik 131). The Examiner determines that: Simple substitution of one known element for another to obtain predictable results is held to be obvious. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the hydrophilic mesh layer of Jurik for the spreading layer of Petrich because they are known layers to allow sample to penetrate to the reagent layer and to provide . . . advantages [including] . . . spread evenly the sample on the reagent layer.[7] Ans. 3; see also In re Font, 675 F.2d 297, 301 (CPA 1982) (“Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.”). The Appellants argue that “the function or purpose of the spreading top layer 12 of Jurik differs substantially from the function or purpose of the layer 40 of 6 Petrich discloses that the test sensor may be used to measure glucose concentration in blood. Petrich || 45, 47. 7 The Examiner finds additional advantages are “reducing the sample on the exterior” and “increasing] absorption of the sample.” Ans. 3. It is not necessary to address those additional advantages where, as explained infra, the single advantage of “spreading] evenly the sample on the reagent layer” would have led one of ordinary skill in the art to modify Petrich’s spreading layer as proposed. 3 Appeal 2016-007459 Application 14/570,613 Petrich.” App. Br. 6 (citing Reynolds Decl. 178). In particular, the Appellants argue that “layer 40 in Petrich is directed to sample preparation including separating red blood cells from the whole blood sample or withdrawing excessive amounts of sample liquid.” App. Br. 6 (citing Petrich 144; Reynolds Decl. 17). The Appellants argue that “Jurik is directed to a dry reagent strip that measures blood glucose concentration”9 and the function of layer 12 is to ‘“substantially uniformly’” distribute a sample to the reagent-containing membranes.10 The Appellants’ arguments are not persuasive of reversible error. Petrich layer 40 and Jurik layer 12 are both described as “spreading” layers that are disposed above reagent-containing membranes. See Petrich || 27, 44; Jurik 129. Petrich discloses that the spreading layer performs three alternative functions, including “even wetting of the upper side of the test field 7 with the sample liquid 21.” Petrich 144 (emphasis added). Jurik discloses that preferred materials must, inter alia, “distribute [the sample] uniformly to the membranes.” Jurik 130. Thus, we find that the spreading layers disclosed in Petrich and Jurik perform a common function (i.e., even or uniform wetting of the reagent-containing membrane). The Appellants argue: Sample preparation in Petrich as understood by one skilled in the art (Mr. Jeffery Reynolds) relates to separating red blood cells from the whole blood sample or withdrawing excessive amounts of sample liquid — not the spreading the sample for even wetting. By ignoring the importance of the term “sample preparation”, the Examiner has interpreted [paragraph 44] of Petrich incorrectly. App. Br. 6. 8 Second Declaration of Jeffery S. Reynolds dated April 11, 2014 (“Reynolds Declaration” or “Reynolds Decl.”). 9 App. Br. 5 (citing Jurik 12; Reynolds Decl. 1 6). 10 App. Br. 6 (quoting Jurik 129). 4 Appeal 2016-007459 Application 14/570,613 The disclosure of Petrich does not support the Appellants’ argument. Petrich discloses that the spreading layer: may serve for sample preparation purposes. In particular, it may [1] serve for even wetting of the upper side of the test field 7 with the sample liquid 21, or [2] in order to separate the red blood cells from the whole blood or [3] to withdraw excessive amounts of sample liquid. Petrich 144 (emphasis added). Thus, Petrich teaches that each of the three functions disclosed in paragraph 44 relate to sample preparation, including even wetting of the test field by the sample. The Appellants direct our attention to paragraph 8 of the Reynolds Declaration which states that “it is not clear that the spreading top layer 12 of Jurik could function as layer 40 in Petrich, which is to separate the red blood cells or to withdraw excessive amounts of sample liquid.” App. Br. 8 (citing Reynolds Decl. 1 8). The Appellants, however, do not direct us to any evidence showing that the spreading layer materials of Jurik, including the mesh material, would not have been expected to cause a sample to evenly wet the upper surface of Petrich’s test field. Finally, for the first time on appeal, the Appellants argue in the Reply Brief that: the phrase in [0044] of Petrich ... is not a complete sentence: “In particular, it may serve for even wetting of the upper side of the test field 7 with the sample liquid 21, or in order to separate the red blood cells from the whole blood or to withdraw excessive amounts of sample liquid”. It appears that the first instance of the term ‘or’ should have been included and, thus, even wetting is not a separate and distinct concept from the separation of the red blood cells and the withdrawing of the excessive amounts of sample liquid. This would be consistent with Mr. Reynold’s understanding of the term sample preparation used in Petrich. 5 Appeal 2016-007459 Application 14/570,613 Reply Br. 3.11 The Appellants’ argument does not respond to an argument raised in the Examiner’s Answer. See Final Office Action dated July 17, 2015, at 2 (finding that the functions disclosed in Petrich paragraph 44 are listed in the alternative). Moreover, the Appellants do not show good cause why the argument could not have been raised in the Appeal Brief. Thus, the Appellants’ argument is untimely and will not be considered on appeal. See 37 C.F.R. § 41.41(b)(2) (2015). In sum, a preponderance of the evidence supports the Examiner’s conclusion of obviousness. Therefore, the § 103(a) rejection of claim 1 is sustained. As for dependent claims 15—24, the Appellants argue that “Fowne and Hardy do not address the deficiencies discussed above with respect to Petrich and Jurik with respect to claim 1.” App. Br. 8—9. For the reasons set forth above, there are no deficiencies in the § 103(a) rejection of claim 1 that must be overcome by either Fowne or Hardy. Therefore, the § 103(a) rejections of claims 15—24 are also sustained. C. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 11 Reply Brief dated July 27, 2016. 6 Copy with citationCopy as parenthetical citation