Ex Parte Reynolds et al

Patent Trial and Appeal Board

Jun 19, 2017

14570613 (P.T.A.B. Jun. 19, 2017)

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
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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
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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).
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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
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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