Ex Parte Schraga

Patent Trial and Appeal Board

Mar 23, 2015

11153381 (P.T.A.B. Mar. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN SCHRAGA
____________

Appeal 2012-006807
Application 11/153,381
Technology Center 3700
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
1

This appeal under 35 U.S.C. § 134 involves claims 1–10, 12–19, 21–
32, 34–39, 42–48, 51, and 52 (App. Br. 3).
2
Examiner entered rejections
under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1
The Real Party in Interest is Stat Medical Devices, Inc. (App. Br. 3.)
2
Pending “[c]laims 40, 41, 49[,] and 50 stand withdrawn” (App. Br. 3).
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STATEMENT OF THE CASE
The claims are directed to a lancet device, see Appellant’s claims 1,
42, 45, and 51, which are representative and reproduced in the Claims
Appendix of Appellant’s Brief.
Claims 1–10, 12–19, 21–32, 34–39, and 45–47 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Schraga ’327
3

and Schraga ’051.
4

Claims 42–44, 48, 51, and 52 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Schraga ’327, Schraga ’051, and
King.
5

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Schraga ’327 relates to “an adjustable length member which is part
of a lancet device to enable the lancet to have an adjustable penetration
depth” (Schraga ’327 ¶ 4).

3
Schraga, US 2001/0027327 A1, published Oct. 4, 2001.
4
Schraga, US 6,156,051, issued Dec. 5, 2000.

5
King et al., US 5,873,887, issued Feb. 23, 1999.

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FF 2. Schraga ’327’s Figures 1, 2, 3B, 6, and 8 are reproduced below:

Schraga ’327’s “FIG. 1 is a partially exploded perspective view of the lancet
device of [Schraga ’327’s] . . . invention (Schraga ’327 ¶ 40). “FIG. 2 is a
cross-sectional view along line 2-2 of [Schraga ’327’s] FIG. 1” (id. ¶ 41).
Schraga ’327’s FIG. 3B represents a “cross-sectional view[] of . . . [Schraga
’327’s] lancet device illustrating the functioning of the lancet” (id. ¶ 42; see
also id. ¶ 73 (a “piercing opening 53 is positioned [on cap 50] such that
when the needle holding member 30, containing a disposable lancet 70
therein, is moved to its fully extended position, the point 51 of the
disposable lancet 70 will protrude through the piercing opening 53 to
puncture a desired surface”)). Schraga ’327’s “FIG. 6 is an isolated
perspective view of the lancet device illustrating the positioning of a
disposable lancet [70] therein” (id. ¶ 45; see also id. ¶ 70). “FIG. 8 is an
isolated perspective view of a[n] . . . embodiment of the stopper of . . .
[Schraga ’327’s] lancet device” (id. ¶ 47; see generally Ans. 4–5).
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FF 3. Schraga ’327’s device comprises an “elongate triangular housing
20,” a “triangular cap 50,” “a second cap member 60,” arranged between
triangular cap 50 and the triangular housing 20, and “an elongate needle
holding member 30” (Schraga ’327 ¶¶ 68, 69, 71, and 74; see also Schraga
’327 ¶ 74 (“the cap 50 includes a first cap member 56 having threads . . . and
a second cap member 60 having threads”); see generally Ans. 4–5).
FF 4. Schraga ’327 suggests “that the open first side 51 of the cap 50 slides
onto the housing 20 . . . but alternatively engagement ridges or a similar
removable fastener system[, such as threads, locking clips, and locking
buttons,] may be included to secure the cap 50 on the housing 20 (Schraga
’327 ¶ 72; see also Ans. 11 (“The cap 50 is disclosed as connectable to the
body 20 using threads. Since, as evident from Figure 1, [intermediate]
member 60 of cap 50 connects cap 50 to the body 20, it must comprise the
treaded connection when constructed according to paragraph 0072”)).
FF 5. Schraga ’327 suggests that “[u]pon rotation of the first cap member
56 and the second cap member 60 relative to each other about the threaded
connection, the overall length of the cap 50 is increased or decreased
depending upon the direction of rotation” (Schraga ’327 ¶ 76; Cf. id.
¶ 90 (the device may have a number of “cap members to adjust the length of
the cap”)).
FF 6. Schraga ’327 suggests the use of protruding elements associated with
a button to allow or prevent the cap members from rotating relative to each
other to allow adjustment of the length of the cap (see Schraga ’327 ¶ 89).
FF 7. An “elongate channel . . . extends from the closed first end 22 to the
open second end 24,” of Schraga ’327’s triangular housing 20, wherein “an
elongate needle holding member 30,” “adapted to hold . . . [a] disposable
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lancet 70” is slidably positioned (Schraga ’327 ¶¶ 68–70; see generally Ans.
4).
FF 8. A “biasing element,” which is “preferably . . . a coil spring 40”
moves Schraga ’327’s “needle holding member 30 from its cocked, retracted
position to its fully extended position” (Schraga ’327 ¶ 82; see generally
Ans. 4).
FF 9. Schraga ’327 suggests that a trigger button, positioned in the
elongate triangular housing 20, holds the needle holding member 30 in its
cocked position until the trigger button is engaged, thereby releasing and
allowing the needle holding member 30 to reach a fully extended position
(see generally Schraga ’327 ¶ 86; Ans. 4).
FF 10. Schraga ’327 suggests that
The overall sliding and axial movement of the needle
holding member 30 is regulated by a stopper system. In the
preferred embodiment, detailed in FIG. 2, the stopper system
includes a guide collar 28 disposed within the housing 20. The
guide collar 28 is adapted to receive the distal segment 32 of the
needle holding member 30 slidably therethrough. The needle
holding member 30 is preferably flat such that it will slide
through the guide collar 28, but will not rotate axially therein,
thereby assuring that the needle holding member 30 will remain
properly oriented when moved into its cocked, retracted
position. Further, the guide collar 28 is sized to retain a flanged
end 33 of the distal segment 32 of the needle holding member
30 between the closed first end 22 of the housing 20 and the
guide collar 28. In this manner, inward movement of the needle
holding member within the housing 20 is limited by the flanged
end 33 contacting the closed first end 22 of the housing 20, and
outward movement of the needle holding member 20 is limited
by the flanged end 33 of the distal segment 32 contacting the
guide collar 28. In this manner, the needle holding member 30
will be retained within the channel 26.
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. . . [In] an alternative embodiment . . . the stopper system
includes an elongate slot 33’ disposed in the distal segment 32
of the needle holding member 30. The slot is positioned such
that a peg 28’ which extends from an interior of the housing 20
passes therethrough. The peg 28’ remains within the elongate
slot 33’ at all times thereby limiting movement of the needle
holding member 30 to a length of the slot 33’ and assuring that
the needle holding member 30 is retained within the channel 26
of the housing 20. Also, positioning of the peg 28’ within the
slot 33’ will not allow axial rotation of the needle holding
member 30.
Although the stopper systems of . . . [FIG. 8] involve[s]
an interaction between the distal segment 32 of the needle
holding member 30 and a stationary element, the stopper
system could involve an interaction between another segment
of the needle holding member and a stationary element. For
instance, the stopper system could involve interaction of the
central segment 35 with an element attached to the housing 20.
(Schraga ’327 ¶¶ 79–81.)
FF 11. Examiner finds that the “front of member 70 [of Schraga ’327’s
device] can be considered . . . a stop surface when it is configured to contact
cover 56” (Ans. 5; Schraga ’327 ¶ 77 (“FIG 3B shows the needle holding
member 30 in its fully extended position with the length of the cap 50
adjusted such that the disposable lancet 70 strikes the cap 50 in the fully
extended position”); see also App. Br. 25 (“SCHRAGA ‘327 utilizes contact
between the needle end of the lancet 70 and an inside surface of the front cap
as a stop surface”); see also Reply Br. 2).
FF 12. Schraga ’327 suggests that
[T]he components of the reusable lancet device . . . are made of
plastic. Examples of desirable plastics include polypropylene
(PP), polyvinyl chloride (PVC), acrylonitrile butadiene styrene
(ABS), nylon, linear polyoxymethylene-type acetal resin, e.g.,
“DELRIN”, and polycarbonate (PC), e.g., “LEXAN”.
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(Schraga ’327 ¶ 95; see also Schraga ’051, col. 16, ll. 40–45; Cf. Spec.
¶ 114.)
FF 13. Schraga ’051 “relates to a lancet device whose penetration depth is
adjustable” (Schraga ’051, col. 1, ll. 21–22).
FF 14. Schraga ’051’s Figure 16 is reproduced below:

“FIG. 16 is a cross-sectional view of an embodiment for
adjusting the length of the housing, involving a spring which
biases a needle holding member in a retracted position and
threaded members for adjusting the length of the housing,
wherein the needle holding member is shown in its retracted
position.”
(Schraga ’051, col. 6, ll. 37–42; see also id at col. 14, ll. 18–24 (“[t]he
housing 20 comprises an upper housing 20A, a lower housing 20B, and a
middle housing 20C. The upper housing 20A includes internal threads 170
which cooperate with external threads 172 on the middle housing 20C for
adjusting the length of the housing 20”); id. at col. 14, ll. 51–58 (after
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cocking the needle holding member 30, “[u]pon release of the lower housing
20B, the coil spring 178 biases the lower housing 20B back into the middle
housing 20C”); see generally Ans. 5.)
FF 15. Examiner finds that the combination of Schraga ’327 and Schraga
’051 fails to suggest “that the stop surface is spaced from the skin engaging
end by a greater amount than a front end of the adjustment mechanism . . . or
a first stop surface on the holding member” (Ans. 10).
FF 16. King “relates to a blood sampling device that incorporates a lancet
for piercing the skin” (King, col. 1, ll. 4–5).
FF 17. King’s Figure 1 is reproduced below:

“FIG. 1 is a cross-sectional view of [King’s] . . . blood sampling device 10,”
which comprises
[A] main body 12, an upper housing portion 14 connected to
the main body 12 via a screw 16, a lower housing portion in the
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form of a sleeve 18 threadably connected to the main body 12,
and an end cap 20 threadably connected to the sleeve 18 . . .[, a]
lancet holder 44 and lancet shaft 42.
(King, col. 2, ll. 28–35; id. at col. 5, l. 21.)
FF 18. King suggests that
When the sampling device 10 is in the ready state . . . the
spring 51 is compressed to a relatively large degree. . . . When
the latch 52 is released, the compressed spring 51 will force . . .
the lancet holder 44[] and lancet shaft 42 downwardly . . . until
the bottom surface of the lancet holder 44 makes contact with
an annular stopping flange 101 integrally formed on the interior
of the sleeve 18. The depth of the skin puncture made by the
lancet 40 may be adjusted . . . by rotating the end cap 20, which
rotation varies the distance between the bottom of the end cap
20 and the stopping flange 101. . . . After the skin is punctured,
the lance 40 is retracted back into the sampling device 10 by the
spring 70, which forces the lancet holder 44 and lancet shaft 42
upwards.
(King, col. 4, l. 21 – col. 5, l. 40.)
ANALYSIS
The combination of Schraga ’327 and Schraga ’051:
Based on the combination of Schraga ’327 and Schraga ’051,
Examiner concludes that, at the time Appellant’s invention was made, it
would have been prima facie obvious to provide Schraga ’327’s cocking
member with the “internal spring of Schraga ‘051 . . . because it
accomplishes the goal of Schraga ‘051 of not having an exteriorly exposed
plunger . . . and offers a potentially simpler and safer cocking mechanism”
(Ans. 5). In reaching this conclusion, Examiner asserts that the front surface
of Schraga ’327’s lancet 70 “can be considered . . . a stop surface when it is
configured to contact cover 56” (Ans. 5; FF 11).

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Claim 1:
The lancet device of Appellant’s claimed invention comprises: A
body comprising front and rear ends with a side disposed between the front
and rear ends (Appellant’s claim 1; Cf. FF 1 and 2); a trigger arranged on the
side of the body (Appellant’s claim 1; Cf. FF 2 and 9); a front cover
comprising a skin engaging end that includes a lancet opening through
which a lancet needle may extend (Appellant’s claim 1; Cf. FF 2 and 3); a
holding member movably mounted within the body and comprising a front
end and a rear end (Appellant’s claim 1; Cf. FF 2, 3, 7, and 10); a spring
disposed between the front and rear ends of the holding member, wherein
the front end of the holding member is configured to receive a lancet having
the lancet needle (Appellant’s claim 1; Cf. FF 2 and 8); a first stop surface
that moves with the holding member, wherein the first stop surface is closer
to the front end of the device’s body than the rear end (Appellant’s claim 1;
Cf. FF 2 and 11); a cocking member for moving the holding member to a
retracted or trigger-set position (Appellant’s claim 1; Cf. FF 8 and 14); a
second spring, disposed inside the cocking member, configured to move the
cocking member to an original position (Appellant’s claim 1; Cf. FF 14); and
an intermediate member arranged between the front cover and the body and
being at least threadably connected to the body, wherein the intermediate
member is visible and accessible to a user so as to allow the user to grip and
rotate the intermediate member relative to the body (Appellant’s claim 1; Cf.
FF 2 and 4).
Appellant does not dispute that Schraga ’327 “utilizes contact . . .
between the lancet and the inside of the cap [as] . . . a stop surface” (Reply
Br. 2; see FF 11). We note that while Schraga ’327 may suggest additional
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stop surfaces, Appellant’s claim 1 does not exclude additional stop surfaces,
but only requires a “first stop surface” to perform as set forth by Examiner
(see Appellant’s claim 1; Cf. FF 11). Therefore, we are not persuaded by
Appellant’s contention relating to a stop surface (Reply Br. 2–3).
Appellant contends that “[m]ember 60 in SCHRAGA ‘327 is not at
least one of axially adjustably connected to the body and threadably
connected to the body” (App. Br. 10). Instead, Appellant asserts that
Schraga ’327 suggests “an axial and threaded connection between the
member 60 and the front cap 56” (id.). We are not persuaded (see FF 4).
For the foregoing reasons we are not persuaded by Appellant’s
contention that Schraga ’051 “teaches away from its combination with
SCHRAGA ‘327” (App. Br. 11; Reply Br. 4).

Claim 2:
Appellant’s claim 2 depends from and further limits claim 1 to require
the intermediate member to be non-removably connected to the body and
wherein the front cover is movably and removably connected to the
intermediate member (see Appellant’s claim 2).
Appellant contends that “neither [Schraga] document . . . suggests an
intermediate member . . . that is non-removably connected to the body”
(App. Br. 15; see Spec. ¶ 22). In response, Examiner asserts that “the
intermediate member can be considered as non-removably connected to the
body since Appellant has only disclosed threads as a rotatable engagement
between the intermediate member and body” (Ans. 6). We are not
persuaded by Examiner’s assertion. Examiner failed to explain how a
threaded connection, which allows rotation to adjust the length of the lancet
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prevents the intermediate member from being removed from the body of the
device. Examiner further failed to establish an evidentiary basis on this
record to support a conclusion that the combination of Schraga ’327 and
Schraga ’051 suggests a device, wherein the intermediate member is non-
removably connected to the body of the device.

Claim 3:
Appellant’s claim 3 depends from and further limits claim 1 to require
that the movement of the intermediate member adjusts a depth of penetration
of the lancet needle (see Appellant’s claim 3).
Appellant contends that “neither [Schraga] document . . . suggests an
intermediate member arranged between the body 20 and the front cap 50,
much less, one that whose movement adjusts a depth of penetration of the
lancet needle” (App. Br. 15; Reply Br. 4–5). We are not persuaded.
Schraga ’327 suggests that rotation of a first cap member 56 relative
to a second, intermediate, cap member 60 changes or adjusts the length of
the cap 50 and thereby adjusts the depth of penetration of the lancet needle
71 (FF 2, 4, and 11). The question, therefore, becomes whether, at the time
of Appellant’s claimed invention, it would have been prima facie obvious to
move the adjustment, or threaded, connection, between the intermediate cap
60 and cap 50 to a position between the intermediate cap 60 and the body 20
of the lancet device? As discussed with respect to Appellant’s claim 1,
Schraga ’327 suggests a threaded connection between the intermediate cap
60 and the body 20 of the lancet device. Therefore, we find that it would
have been prima facie obvious to adjust the depth of penetration of the lancet
needle by adjusting the length of the lancet device by means of the threaded
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connection between the intermediate cap 60 and the body 20 of the lancet
device. Because our rationale differs from Examiner’s, we designate this
rationale a new ground of rejection (Cf. Ans. 6).

Claim 4:
Appellant’s claim 4 depends from and further limits claim 1 to require
that the front cover is non-rotatably mounted to the intermediate member
(see Appellant’s claim 4).
Appellant contends that “neither [Schraga] document . . . suggests a[]
. . . front cover [that] is non-rotatably mounted” (App. Br. 16). We are not
persuaded. Schraga ’327 suggests that the cap can be secured to the
intermediate member by means of threads, locking clips, and locking buttons
(FF 4). Absent evidence to the contrary, locking clips and locking buttons
will secure the front cover to the intermediate member in a non-rotatable
manner. Because our rationale differs from Examiner’s, we designate this
rationale a new ground of rejection (Cf. Ans. 6).

Claim 7:
Appellant’s claim 7 depends from and further limits claim 1 to require
that movement of the intermediate member changes an overall length of the
lancet device and wherein the intermediate member is spaced from the front
cover (see Appellant’s claim 7).
Appellant contends that “neither [Schraga] document . . . suggests an
intermediate member arranged between the body 20 and the front cap 50,
much less, one whose movement changes an overall length of the lancet
device and which is spaced from the front cover” (App. Br. 17). We are not
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persuaded for the reasons set forth with respect to claims 1–3. Because our
rationale differs from Examiner’s, we designate this rationale a new ground
of rejection (Cf. Ans. 6).

Claim 8:
Appellant’s claim 8 depends from and further limits claim 1 to require
that movement of the intermediate member changes an overall length of the
lancet device and wherein the front cover is a one-piece plastic or synthetic
resin member (see Appellant’s claim 8).
Appellant contends that “neither [Schraga] document . . . suggests an
intermediate member arranged between the body 20 and the front cap 50,
much less, one whose movement changes an overall length of the lancet
device” (App. Br. 17). We are not persuaded for the reasons set forth with
respect to claims 1–3. In addition, Schraga ’327 suggests that the
components of the lancet device are made of plastic (FF 12). Because our
rationale differs from Examiner’s, we designate this rationale a new ground
of rejection (Cf. Ans. 6).

Claim 21:
Appellant’s claim 21 depends from and further limits claim 1 to
require a mechanism for at least temporarily maintaining a depth setting
position of the intermediate member (see Appellant’s claim 21).
Appellant contends that “neither [Schraga] document . . . suggests an
intermediate member arranged between the body 20 and the front cap 50,
much less, one which additionally includes a mechanism for at least
temporarily maintaining a depth setting position of the intermediate
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member” (App. Br. 18). We are not persuaded for the reasons set forth with
respect to claims 1–3. In addition, Schraga ’327 suggests the use of
protruding elements associated with a button to at least temporarily maintain
a depth setting position of a member, which as discussed with respect to
claims 1–3 may be an intermediate member (see FF 6). Because our
rationale differs from Examiner’s, we designate this rationale a new ground
of rejection (Cf. Ans. 7).

Claim 31:
Claim 31 depends from and further limits claim 1 to require that the
front cover rotates about an axis that runs through the lancet opening and the
holding member without changing an overall length of the lancet device (see
Appellant’s claim 31).
Appellant contends that “neither [Schraga] document . . . suggests an
intermediate member arranged between the body 20 and the front cap 50,
much less, in combination with the front cover rotating about an axis that
runs through the lancet opening and the holding member without changing
an overall length of the lancet device” (App. Br. 19). We are not persuaded.
Schraga ’327 suggests that the cap can be secured to the intermediate
member by engagement ridges (FF 4). Absent evidence to the contrary,
ridges will secure the front cover to the intermediate member in a rotatable
manner that does not change the overall length of the lancet device. Because
our rationale differs from Examiner’s, we designate this rationale a new
ground of rejection (Cf. Ans. 8).

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Claim 38:
Appellant’s claim 38 depends from and further limits Appellant’s
claim 1 to require that the intermediate member comprises an external high-
friction gripping surface (see Appellant’s claim 38).
Appellant contends that “neither [Schraga] document . . . suggests an
intermediate member arranged between the body 20 and the front cap 50,
much less, wherein the intermediate member comprises at least one of an
external high-friction gripping surface and gripping protrusions” (App. Br.
19–20). We are not persuaded for the reasons set forth with respect to claim
1. In addition, Schraga ’327 suggests the use of same materials set forth in
Appellant’s Specification, which are expected to have the same high-friction
gripping surface as is required by Appellant’s claimed invention (see FF 12).
Because our rationale differs from Examiner’s, we designate this rationale a
new ground of rejection (Cf. Ans. 9).

Claim 39:
Appellant’s claim 39 depends from and further limits claim 1 to
require that threads connect the intermediate member to the body (see
Appellant’s claim 39). Appellant contends that “neither [Schraga] document
. . . suggests an intermediate member arranged between the body 20 and the
front cap 50, much less, using threads to connect the intermediate member to
the body” (App. Br. 20). We are not persuaded for the reasons set forth with
respect to claim 1.

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Claim 45:
Appellant’s independent claim 45 requires, inter alia, an adjustment
mechanism arranged between the body and the front cover, wherein the
adjustment mechanism is threadably connected to the body (see Appellant’s
claim 45). Appellant contends that “[m]ember 60 in SCHRAGA ‘327 is not
at least one of adjustably or axially adjustably connected to the body and
threadably connected to the body. . . . Instead, SCHRAGA ‘327 uses an
axial and threaded connection between member 60 and the front cap 56”
(App. Br. 12–13). We are not persuaded for the reasons set forth with
respect to claim 1.
For the reasons set forth with respect to claim 1, we are not persuaded
by Appellant’s contention that the device suggested by the combination of
Schraga ’327 and “SCHRAGA ‘051 lacks the recited adjustment
mechanism” (App. Br. 14).

The combination of Schraga ’327, Schraga ’051, and King:
Based on the combination of Schraga ’327, Schraga ’051, and King,
Examiner concludes that, at the time Appellant’s invention was made, it
would have been prima facie obvious “to have provided the stop surface of
King . . . to the intermediate member 60 or adjustment mechanism of
Schraga ‘327 because Schraga [’327] suggest[s] alternate locations for a stop
surface and King . . . provide[s] one on a very similar structure to Schraga
‘327” (Ans. 10; see also id. at 14).

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Claim 42:
Appellant contends that “[m]ember 60 in SCHRAGA ‘327 is not at
least one of adjustably or axially adjustably connected to the body and
threadably connected to the body” (App. Br. 22). Instead, Appellant asserts
that Schraga ’327 suggests “an axial and threaded connection between the
member 60 and the front cap 56” (id.). We are not persuaded for the reasons
set forth with respect to claim 1.
Examiner relies on Schraga ’327 to suggest a trigger on the side of the
body (see FF 2 and 9). Therefore, we are not persuaded by Appellant’s
contention that King fails to “suggest a trigger arranged on the side of the
body” (App. Br. 23–24). For the foregoing reasons, we are not persuaded by
Appellant’s contention that King fails to suggest “the recited adjustment
mechanism” (id. at 24). Further, as Appellant recognizes, King’s spring 70
is configured to “move the holding member from the extended position to an
intermediate position,” as required by Appellant’s claim 42 (id.; FF 18).
Appellant further recognizes that King suggests a stop surface as required by
Appellant’s claimed invention (id.; Reply Br. 6). For this reason, as well as
the reasons set forth with respect to claim 1, we are not persuaded by
Appellant’s contention that the combination of Schraga ’327, Schraga ’051,
and King fails to suggest a stop surface that is closer to a front end of the
body than to a rear end of the body (Reply Br. 7).
Appellant concedes that Schraga ’051 suggests a “cocking
mechanism” (Reply Br. 5). Therefore, we are not persuaded by Appellant’s
contention that the combination of Schraga ’327, Schraga ’051, and King
fails to suggest a cocking mechanism (id.).

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Claim 51:
We recognize, but are not persuaded by, Appellant’s contention, with
respect to the stop surface, that King “appear[s] to solve a problem already
addressed in the SCHRAGA documents” (App. Br. 25–26; Cf. Ans. 10 and
14). The combination of references suggests that the stop surface can be
incorporated into a lancet device in any number of configurations.
Appellant recognizes that King suggests a stop surface as required by
Appellant’s claimed invention (App. Br. 25; Reply Br. 6). Therefore, we are
not persuaded by Appellant’s contention that the combination of Schraga
’327, Schraga ’051, and King fails to suggest a stop surface “arranged
between the trigger and a skin engaging surface of the lancet device” (Reply
Br. 6).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with respect to the rejection of claim 2
over the combination of Schraga ’327 and Schraga ’051. The rejection of
claim 2 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Schraga ’327 and Schraga ’051 is reversed.
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with respect to the rejection of claims 1, 3, 4, 7, 8,
21, 31, 38, 39, and 45 over the combination of Schraga ’327 and Schraga
’051. The rejection of claims 1, 3, 4, 7, 8, 21, 31, 38, 39, and 45 under
35 U.S.C. § 103(a) as unpatentable over the combination of Schraga ’327
and Schraga ’051 is affirmed. Claims 5, 6, 9–10, 12–19, 22–30, 32, 34–37,
46, and 47 fall with claims. However, because our rationale differs from
Examiner’s, we designate our affirmance of the rejection of claims 3, 4, 7, 8,
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21, and 31 over the combination of Schraga ’327 and Schraga ’051 a new
ground of rejection.
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with respect to the rejection over the combination
of Schraga ’327, Schraga ’051, and King.
The rejection of claims 42 and 51 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Schraga ’327, Schraga ’051, and King.
Claims 43, 44, 48, 51, and 52 are not separately argued and fall with claims
42 and 51.
TIME PERIOD FOR RESPONSE
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner….

Appeal 2012-006807
Application 11/153,381

21
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record….

Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
Cdc