Docket No.: 043888-0261
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` PATENT
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
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`Yuko TANIIKE, et a1.
`
`Application No.: 10/616,305
`Patent No.: 6,969,450 B2
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`Filed: July 10, 2003
`Issued: November 29, 2005
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`Customer Number: 20277
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`Confirmation Number: 1627
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`Group Art Unit: 1753
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`Examiner: Jeffrey T. Barton
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`For: BIOSENSOR AND MEASURING APPARATUS FOR BIOSENSOR
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`
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`REQUEST FOR CERTIFICATE OF CORRECTION UNDER 37 CFR 1.322
`Mail Stop CERTIFICATE OF CORRECTION
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`A
`Certmc 5 I
`Commissioner for Patents
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`9
`PO. Box 1450
`AUG 2 I 2005
`Alexandria, VA 22313-1450
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`I
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`Sir:
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`In reviewing the above-identified patent, a printing error was discovered therein requiring
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`correction in order to conform the Official Record in the application.
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`The error noted is set forth on the attached copy of form PTO-1050 Rev. 2-93 in the manner
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`required by the Commissioner’s Notice.
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`Specifically, in the claims, Column 29, line 52, correct the typographical error in the phrase
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`"a first tee ion corresponding"
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`to - - a first region corresponding - -. A copy of Applicants’
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`Amendment filed April 11, 2005, showing the correct wording, is attached for your information and
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`convenience. Please note that printed claim 8 corresponds to original claim 9.
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`AUG 21ft:
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` PATENT
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
`
`Yuko TANIIKE, et a1.
`
`Application No.: 10/616,305
`Patent No.: 6,969,450 B2
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`Filed: July 10, 2003
`Issued: November 29, 2005
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`Customer Number: 20277
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`Confirmation Number: 1627
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`Group Art Unit: 1753
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`Examiner: Jeffrey T. Barton
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`For: BIOSENSOR AND MEASURING APPARATUS FOR BIOSENSOR
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`
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`REQUEST FOR CERTIFICATE OF CORRECTION UNDER 37 CFR 1.322
`Mail Stop CERTIFICATE OF CORRECTION
`*
`A
`Certmc 5 I
`Commissioner for Patents
`'
`9
`PO. Box 1450
`AUG 2 I 2005
`Alexandria, VA 22313-1450
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`I
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`Sir:
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`In reviewing the above-identified patent, a printing error was discovered therein requiring
`
`correction in order to conform the Official Record in the application.
`
`The error noted is set forth on the attached copy of form PTO-1050 Rev. 2-93 in the manner
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`required by the Commissioner’s Notice.
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`Specifically, in the claims, Column 29, line 52, correct the typographical error in the phrase
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`"a first tee ion corresponding"
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`to - - a first region corresponding - -. A copy of Applicants’
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`Amendment filed April 11, 2005, showing the correct wording, is attached for your information and
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`convenience. Please note that printed claim 8 corresponds to original claim 9.
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`AUG 21ft:
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`if ‘
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`10/616,305
`6,969,405 B2
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`The change requested herein occurred as a result of printing the Letters Patent and the
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`Certificate should be issued without expense under Rule 322 of the Rules of Practice.
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`Accordingly, Applicants request issuance of the Certificate of Correction.
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`Please charge any shortage in fees due in connection with the filing of this paper to Deposit
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`Account 500417 and please credit any excess fees to'such deposit account.
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`Respectfully submitted,
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`McDERMOTT WILL & EMERY LLP
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`Rarnyar M. Farid
`Registration No. 46,692
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`Please recognize our Customer No. 20277
`as our correspondence address.
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`600 13th Street, NW.
`Washington, DC 20005-3096
`Phone: 202.756.8000 RMszd
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`Facsimile: 202.756.8087
`Date: August 17, 2006
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`WDC99 1272059-l 0438880261
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`AI“
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`StapleHere
`Only I
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`PRINTER'STRIMLINE
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`CERTIFICATE OF CORRECTION
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`
`APPLICATION NO.: 10/616,305
`PATENT NO.
`:6969450
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`DATED
`: November 29, 2005
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`INVENTOR(S): Yuko TANIIKE, et ai.
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`It is certified that an error appears in the above-identified patent and that said Letters Patent is hereby
`corrected as shown below:
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`IN THE CLAIMS,
`Column 29, line 52, change the phrase “a first tee ion corresponding” to - -
`a first region corresponding - -.
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`WDC99 1272053-1.043888.0261
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` aDocket No.: 043888-0261
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`IN THE
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`STATES PATENT AND TRADEMARK OFFICE
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`PATENT
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`In re Application of
`
`:
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`Customer Number: 20277
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`Yuko TANIIKE, et al.
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`Confirmation Number: 1627
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`Application No.: 10/616,305
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`Group Art Unit: 1753
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`Filed: July 10, 2003
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`Examiner: Jefl'rey Barton
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`For: BIOSENSOR AND MEASURING APPARATUS FOR BIOSENSOR
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`Mail Stop Amendment
`Commissioner for Patents
`PO. Box 1450
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`Alexandria, VA 22313-1450
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`Dear Sir:
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`Transmitted herewith is an Amendment in the above-identified application.
`No additional fee is required.
`Applicant is entitled to small entity status under 37 CFR 1.27
`Also attached:
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`The fee has been calculated as shown below:
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`
`
` HIGHEST
`NO. OF
`PREVIOUSLY
`CLAIMS
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`PAID FOR
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`..
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`fl
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`— $50.00 =
`n $200.00 =
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`$0 00
`$0 00
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`E]
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`K
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`Please charge my Deposit Account No. 500417 in the amount of $0.00. An additional copy of this transmittal sheet
`is submitted herewith.
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`The Commissioner is hereby authorized to charge payment of any fees associated with this communication or credit
`any overpayment, to Deposit Account No. 500417, including any filing fees under 37 CFR 1.16 for presentation of
`extra claims and any patent application processing fees under 37 CFR 1.17.
`Certification of Facimile Transmisston
`
`I hereby certify that this paper is being facimile
`transmitted to the Patent and Trademark Office
`on the date shown below.
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`.
`Respectfully Submitted,
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`WA ACE A . mum
`McDERMO
`Ty
`r print name
`person signing certification;
`\
`Sigémm
`n
`Registration No. 52,713 '
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`A
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`.
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`LL & EMERY L
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`600 l3lh Street, NW.
`Washington, DC 20005-3096
`Phone: 202.756.8000 AHC:MWE
`Facsimile: 202.756.8087
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`Date: April 11, 2005
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`Please recognize our Customer No. 20277 as our
`correspondence address.
`
`‘
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`'AU021
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`kw”,
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`
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`(”a Docket No.: 043 888-0261
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`PATENT
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
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`:
`
`Customer Number: 20277
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`Yuko TANIIKE, et al.
`
`p
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`Confirmation Number: 1627
`
`Application No.: 10/616,305
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`Group Art Unit: 1753
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`Filed: July 10, 2003
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`_
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`1 Examiner: BARTON, JEFFERY THOMAS
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`For: BIOSENSOR AND MEASURING APPARATUS FOR BIOSENSOR
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`v AMENDMENT UNDER 37 C.F.R. 1.111
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`Mail Stop Amendment
`Commissioner for Patents
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`PO. Box 1450
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`Alexandria, VA 22313-1450
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`Sir:
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`In response to the Office Action dated January 11, 2005, having a three-month shortened
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`statutory period for response set to expire April 11, 2005, please amend the above-identified
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`application as follows:
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`WDC99 10672664043888.0261
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`Application No.: 10/616,3%
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`IN THE CLAIMS
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`Please amend the claims as follows:
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`1. (Original) A biosensor comprising:
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`a first insulating base plate comprising a first electrode provided thereon, and a second
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`insulating base plate comprising a second electrode provided thereon, said first and said second
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`electrodes being opposed to each other; and
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`a first lead provided on said first base plate and connected to said first electrode, and a
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`second lead provided on said second base plate and connected to said second electrode,
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`wherein said first base plate comprises a first extension portion which extends in a length
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`direction of said first base plate from a position corresponding to an end of said second base
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`plate in its length direction, and has at least a part of said first lead exposed to outside, and
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`wherein said second base plate comprises a second extension portion which extends in a
`width direction'of said second base plate from a position corresponding to an end of said first
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`base plate in its width direction, and has at least a part of said second lead exposed to outside.
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`2. (Original) The biosensor according to claim 1, wherein said second base plate
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`comprises two of said second extension portions, one of which extends in said width direction of
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`said second base plate from said position corresponding to said end of said first base plate in its
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`width direction, and the other of which extends in said width direction of said second base plate
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`from a further position corresponding to a further end of said first base plate in its width
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`direction.
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`3. (Currently amended) The biosensor according to claim 1, which further comprises:
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`WDC99 1067266-1 ,O43888.026l
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`AUG 2 1
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`Application N0.: 10/616,3 ST
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`a sample solution supply path for supplying a sample solution containing a plurality of
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`substrates in a manner that said sample solution contacts said first electrode and said second
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`electrode; and
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`a reagent which can react with at least one specific substrate in said plurality of
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`substrates,
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`wherein said first base plate an_d or said second base plate each comprises has—ashape
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`having a part having a common shape part and a part having a non-common shape relative to the
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` other base plate
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`specific—substrate.
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`4. (Original) The biosensor according to claim 3, wherein said first extension portion of
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`said. first base plate or said second extension portion of said second base plate is positioned at a
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`specific position corresponding to said specific substrate.
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`5. (Original) The biosensor according to claim 4, wherein said specific position of said
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`second extension portion of said second base plate is left position or right position,
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`corresponding to said specific substrate, in said length direction of said second base plate.
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`6. (Original) The biosensor according to claim 3, wherein said plurality of substrates are
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`glucose and lactic acid.
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`7. (Canceled)
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`8. (Previously presented) A measuring apparatus for biosensor, comprising a sensor
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`mounting portion for mounting the biosensor according to claim 3,
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`wherein said sensor mounting portion comprises segmental portions respectively
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`provided therein at positions corresponding to said common part and said non-common part of
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`said first base plate or said second base plate, and
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`WDC99 1067266-1 043888.026]
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`AUG 21
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`50%
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`wherein when said biosensor is mounted in said sensor mounting portion, said specific
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`substrate in said biosensor is discriminated by the position of said segmental portion of said
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`sensor mounting portion corresponding to said non-common part of said first base plate or said
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`second base plate.
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`9. (Original) The measuring apparatus according to claim 8, wherein said sensor
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`mounting portion comprises an integral fitting space for having said sensor fitted thereto, which
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`space comprises:
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`a first region corresponding to said common part of said shape of said first base plate or
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`said second base plate; and
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`a second region corresponding to said non-common part of said shape of said first base
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`plate or said second base plate.
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`10. (Original) The measuring apparatus according to claim 9, which further comprises:
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`a first electric connection terminal positioned therein for contact with said first region of
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`said integral fitting space; and
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`a plurality oflsecond electric connection terminals positioned therein for contact with said
`second region of said integral fitting space,
`V
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`wherein when said biosensor is mounted in said sensor mounting portion, one of said first
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`and said second leads is connected to said first electric connection terminal, and the other of said
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`first and said second leads is connected to one of said plurality of second electric connection
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`terminals, and
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`wherein said specific substrate in said biosensor is discriminated by said one of said
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`plurality of second electric connection terminals to which said other of said first and said second
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`leads is connected.
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`WDC991067266-l.043888.026|
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`AUG 2 1 _ __ _ .2.
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`Application N0.: 10/616,361
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`11. (Currently amended) A measuring apparatus for biosensor, comprising a sensor
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`mounting opening section portion for mounting therein a biosensor comprising a first base plate
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`and a second base plate, wherein said sensor mounting opening portion comprises:
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`a first sensor mounting segmental portion corresponding to said first base plate of said
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`biosensor; and
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`a second sensor mounting segmental portion corresponding to said second base plate of
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`said biosensor, and
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`wherein said first sensor mounting segmental portion has a width different from that of
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`said second sensor mounting segmental portion.
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`12. (Original) The measuring apparatus according to claim 11, wherein:
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`said first base plate of said biosensor comprises a first electrode and a first lead provided
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`thereon, said first lead being connected to said first electrode;
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`said second base plate comprises a second electrode and a second lead provided thereon,
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`said second lead being connected to said second electrode; and
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`said first and said seCond electrodes are opposed to each other,
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`wherein said first base plate comprises a first extension portion which extends in a length
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`direction of said first base plate from a position corresponding to an end of said second base
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`plate in its length direction, and has at least a part of said first lead exposed to outside, and
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`wherein said second base plate comprises a second extension portion which extends in a
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`-width direction of said second base plate from a position corresponding to an end of said first
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`base plate in its width direction, and has at least a part of said second lead exposed to outside.
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`13. (Currently amended) The measuring apparatus according to claim 12, which further
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`comprises:
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`WDC99 1067266-1 0438880261
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`a first electric connection terminal to be connected with said exposed part of said first
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`lead, and a second electric connection terminal to be connected with said exposed part of said
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`second lead of said biosensor when said biosensor is mounted in said sensor mounting portion;
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`and
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`a driving power supply coupled to said first and said second electric connection terminals
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`for applying a voltage to said first and saidm electrodes of said biosensor through said first
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`and said second electric connection terminals.
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`14. (Original) The measuring apparatus according to claim 13, which further comprises:
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`a signal processor to be operatively coupled to said first electrode and said second
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`electrode of said biosensor for processing computation using a value of electric current flowing
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`in said first electrode and said second electrode, thereby generating a calculated value; and
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`an output unit operatively coupled to said signal processor for outputting said calculated
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`value by said computation of said signal processor, whereby when said biosensor is provided
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`with a sample solution containing a substrate, and is mounted in said sensor mounting portion,
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`the amount of said substrate is calculated by said computation processing of said signal
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`processor, and said calculated value is outputted to said outputting unit.
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`15. (Original) The measuring apparatus according to claim 12, which further comprises
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`'a sensor ejection member provided at said sensor mounting portion for ejecting said biosensor to
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`outside of said sensor mounting portion in a manner that said biosensor is provided with a push-
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`out force by said ejection member.
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`16. (Original) The measuring apparatus according to claim 15, wherein said push-out
`force by said ejection member is provided to abutment between said ejection member and said
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`second extension portion of said biosensor.
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`AUG 21
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`Application No.: 10/616,365—
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`17. (Canceled)
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`WDC99 10672664043888.0261
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`Application No.: 10/616,365-
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`I.
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`Introduction
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`REMARKS
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`In response to the Office Action dated January 11, 2005, Applicants have canceled claims
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`7 and 17, without prejudice or disclaimer. Also, Applicants have amended claims 3, 11 and 13
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`so as to further clarify the claimed invention and to address the pending objections. Support for
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`this amendment can be found, for example, in Figs. 1 and 2, and their corresponding sections of
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`the specification. No new matter has been added.
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`For the reasons set forth below, Applicants respectfully submit that all pending claims are
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`patentable over the cited prior art references.
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`II.
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`Claim Objection
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`With respect to claim 5, this claim is objected to because the Examiner asserts that it is
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`unclear what the intended scope of the claim phrase “. .. left position or right position ....”
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`However, as expressly disclosed at page 31, lines 5-14 of the specification, the second base plate
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`24 is provided with one or two second extension portions 240 symmetrically extending, from
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`both width ends of the second base plate, to the left side and/or right side (i.e., left position
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`and/or right position) of the second base plate in the length direction thereof; namely, with
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`respect to the centerline on the second base plate in its length direction. In other words, the
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`second base plate 24 has a second extension portion extending outwardly in the length direction
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`thereof from a position corresponding to a length edge of the first base plate (see, also, page 31,
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`lines 15-26 of the specification).
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`With respect to claim 8, this claim is objected to because it is not clear how the position
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`of the segmental portion can discriminate the specific substrate. However, as readily disclosed at
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`WDC99 1067266-1 043888.0261
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`page 8, lines 3-10 of the specification, the specific substrate in the biosensor is discriminated by
`the one of the plurality of second electric connection terminals to which the other cf the first and
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`the second leads is connected. As a result, a single measuring apparatus can be adapted for
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`measuring different biosensors comprising specific or different substrates without causing an
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`operational error.
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`With respect to claim 13, this claim has been amended in the manner suggested by the
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`Examiner. For all of the foregoing reasons, it is respectfully requested that the claim objections
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`to claims 5, 8 and 13 be withdrawn.
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`III.
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`The Rejection Of Claims 1-62 8-10 and 12-16 Under 35 U.S.C. § 112, Second
`‘ Paragraph
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`- Claims 1-6, 8-10 and 12-16 are rejected under 35 U.S.C. § 112, second paragraph, as
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`being indefinite for failing to particularly point out and distinctly claim the subject matter which
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`Applicants regard as the invention. Specifically, the Examiner asserts that it is unclear whether
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`the claim limitation “. .. has at least a part of said first or second lead exposed to outside”
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`requires “the lead to be disposed and exposed to the outside on the extension portion or simply
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`somewhere on the base plate.”
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`However, as readily disclosed in Fig. 2A of the Applicants’ drawings, on the surface of
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`the first base plate 22, the electrically conductive working electrode 23 and the lead 230
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`connected to the working electrode are formed such that a part of the lead 230 formed on the first
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`extension portion 220 not covered by any part of the biosensor 2 is exposed to outside (e.g., the
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`first extension portion 220 of the lead 230 is neither covered by the second base plate 24 nor the
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`space member 26) (see, e. g., page 18, line 22 to page 19, line 3 and page 29, line 22 to page 30,
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`line 4 of the specification). Similarly, on the surface of the back side of the second base plate 24,
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`the electrically conductive counter electrode 25 and the lead 250 connected to the counter
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`. electrode 25 are formed such that a part of the lead 250 formed on the second extension portions
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`240 not covered by any part of the biosensor 2 is exposed to the outside (e.g., the second
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`extension portion 240 of the lead 250 is neither covered by the first base plate 22 nor the space
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`member 26 ) (see, e.g., page 20, lines 3-16 and page 27, line 11 to page 28, line 14 of the
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`specification). As such, the exposed portion of the first or second lead is not just simply located
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`“somewhere” on the base plate asset forth in the pending rejection, but is readily understandable
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`by those of skill in the art when read in light of the specification. For all of the foregoing
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`reasons, it is respectfully submitted that the rejected claims are in compliance with the
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`requirements of 35 U.S.C. § 112, second paragraph.
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`IV.
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`' The Rejection Of Claims 3-10 and 17 Under 35 U.S.C. § 112, Second Paragraph
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`Claims 3-10 and 17 are rejected under 35 U.S.C. § 112, second paragraph, as being
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`indefinite for failing to particularly point out and distinctly claim the subject matter which
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`Applicants regard as the invention. Specifically, the Examiner asserts that the claim terms
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`“common part” and “non-common part” are indefinite. The Examiner also asserts that a plastic
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`plate could be referred to as a “common part,” while a gold or platinum electrode could be
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`referred to as a “non-common part.” As a preliminary point, claims 7 and 17 have been
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`canceled, rendering the rejection thereto moot. For the remaining claims, Applicants respectfully
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`traverse this rejection.
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`Specifically, as expressly disclosed at page 30, line 21 to page 31, line 4 of the
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`specification, the first extension portion 220 is removed from the first base plate 22, and the
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`second extension portions 240 are removed from the second base plate 24, such that the
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`remaining part of the biosensor comprising the first base plate 22 and the second base plate 24 is
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`referred to as common part, while the first extension portion 220 and the second extension
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`portions 240 are each referred to as the non-common part. As such, it is respectfully submitted
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`that claims 3-10 and 17 are in compliance with the requirements of 35 U.S.C. § 112, 2nd
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`paragraph. Nonetheless, in an effort to advance prosecution, claim 3 has been amended to recite
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`“wherein said first base plate fll er said second base plate each comprises has—a—shape—havin—g a
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`part having a common shape part and a part having a non-common shape relative to the other
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` base plate = .
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`substrate.” Accordingly, for all of the foregoing reasons, it is respectfully requested that this
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`rejection of claims 3-10 and 17 be withdrawn in view of the foregoing amendment.
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`The Re'ection Of Claims 1 2 and 11-14 Under 35 U.S.C.
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`102
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`Claims 1, 2 and 11-14 are rejected under 35 U.S.C § 102(6) as being anticipated by USP
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`No. 6,616,819 to Liamos. Applicants respectfully traverse this rejection for at least the following
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`reasons.
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`Claim 1 recites in-part that
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`a first extension portion
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`extends in a length direction of
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`said first base plate from
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`an end of said second base plate ..., and has
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`part of said first lead
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`exposed ..., and wherein
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`a second extension portion
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`extends in a width direction of said
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`second base plate from
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`an end of said first base plate ..., and has
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`part of said second lead
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`exposed
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`In the pending Office Action, the Examiner relies on Figs. 8A-8C of Liamos as allegedly
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`disclosing the claimed invention. Specifically, the Examiner reads the substrate 540 and the
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`working electrode 542 of Liamos as the respective claimed first base plate and first electrode,
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`and the substrate 548 and the counter electrodes 550/552/554 of Liamos as the respective
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`claimed second base plate and second electrode.
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`However, in such an interpretation, it is clear that the first substrate 540 of Liamos does
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`not contain any extension that extends in the length direction from the end of the second
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`substrate 548. Similarly, the second substrate 548 does not contain any extension that extends in
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`the width direction from the end of the first substrate 540. This is evidenced by the fact that the
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`first substrate 540 and the second substrate 548 of Liamos both have the same shape.
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`In direct contrast, the present invention utilizes the first base plate 22 comprising the first
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`extension portion 220 that extends in a length direction of the first base plate 22 from the end of
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`the second base plate 24 such that a part of the first lead 230 is exposed. Similarly, the present
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`invention utilizes the second base plate 24 comprising the second extension portion 240 that
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`extends in a width direction of the second base plate from the end of the first base plate 22 such
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`that a part of the second lead 250 is exposed.
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`Furthermore, it is asserted in the pending Office Action that the substrate 432 illustrated
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`in Fig. 5A contains lengthwise extensions via the tabs 425’ (see, page 4, last 4 lines of Office
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`Action). However, as is apparent from Liamos, the substrate 432 and the substrate 434 both
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`have the same length. As such, the substrate 432 illustrated in Fig. 5A of Liamos does not
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`contain any lengthwise extension that eXtends from the end of the substrate 434 illustrated in Fig.
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`5B.
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`Moreover, the Examiner asserts that substrates 540 and 548 contain widthwise extensions
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`at the electrode location. However, it is respectfully submitted that this interpretation still fails to
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`arrive at the claimed invention, because when the first substrate 540, the spacer 544 and the
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`second substrate 548 are assembled together, it is clear that the alleged widthwise extensions of
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`the second substrate 548 are not exposed (i.e., exposed to outside), as required by claim 1.
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`With respect to claim 11, this claim, as amended, recites in-part a measuring apparatus
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`comprising a sensor mounting opening section having a first sensor mounting segmental portion
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`and a second sensor mounting segmental portion. In accordance with one exemplary
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`embodiment of the present invention, the inlet of the space A (first sensor mounting segmental
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`portion) is defined by the rectangular points b1, b2, b9, b10, cl, c2, c9 and CIO (see, Fig. 11),
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`while the inlet of the space C (second sensor mounting segmental portion) is defined by the
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`rectangular points a4, a5, a6, a7, b4, b5, b6 and b7. More specifically, the space A corresponds
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`to the first base plate 22 comprising the first extension portion 220 in the mounting end portion
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`20, and has a size suitable for having such mounting end portion 20 of the first base plate 22
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`fitted thereto, whereas the space C corresponds to the second base plate 24 comprising the
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`second extension portions 240 in the mounting end portion 20, and has a size suitable for having
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`such end portion of the second base plate 24 fitted thereto (see, e.g., page 32, line 18 to page 33,
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`line 19 of the specification).
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`However, as the connector 1500 of Liamos merely comprises a top cover 1510 and a
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`bottom cover 1520, it is clear that the connector 1500 cannot be construed as the claimed
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`opening section. In an event it is asserted that the slide area 1530 of Liamos corresponds to the I
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`claimed sensor mounting segmental opening section, it is important to note that the top portion of
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`the slide area 1530 (see, Fig. 16A) for fitting the alleged first substrate thereto has the same
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`width as the bottom portion of the slide area 1530 for fitting the alleged second substrate thereto.
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`Also, as the alleged first sensor mounting segmental portion and second sensor mounting
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`segmental portion are not part of (i.e., formed as) the slide area, it is respectfully submitted that
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`the slide area does not comprise the contact leads 1444/ 1425/ 1443/ 1423.
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`Accordingly, as anticipation under 35 U.S.C. § 102 requires that each element of the
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`claim in issue be found, either expressly described or under principles of inherency, in a single
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`prior art reference, Kalman v. Kimberly-Clark Corp, 713 F.2d 760, 218 USPQ 781 (Fed. Cir.
`1983), and at a minimum, Liamos fails to disclose or suggest the foregoing claim elements, it is
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`clear that Liamos does not anticipate claim 1 or 11, or any of the claims dependent thereon.
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`VI.
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`The Rejection Of Claim 11 Under 35 U.S.C. § 102
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`Claim 11 is rejected under 35 U.S.C § 102(b) as being anticipated by USP No. 5,096,669
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`to Lauks. Applicants respectfully traverse this rejection for at least the following reasons.
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`In the pending rejection, the Examiner alleges that because each of the top and bottom
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`sensor plates of Lauks has a different width, the protrusions within the alleged sensor mounting
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`portions must necessarily have a different width.
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`However, as a preliminary point, it is respectfully submitted that the logic set forth in the
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`pending rejection in making the above conclusion is flawed, because the foregoing position
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`appears to overlook and ignore the fact that the opening 360 of the reader 150 of Lauks as
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`illustrated in Figs. 1 and 11 clearly has a single uniform width, even if the upper housing
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`member 90 of the disposable device of Lauks does not contain additional notches 36/38 as
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`shown in the lower housing member 12. At best, the inherency argument set forth in the
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`rejection indirectly reflects the possibility of having an opening including segments of different
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`width without demonstrating that the segments cf the opening 360, if disclosed, MUST have
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`different width.
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`Accordingly, as anticipation under 35 U.S.C. § 102 requires that each element of the
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`claim in issue be found, either expressly described or under principles of inherency, in a single
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`prior art reference, Kalman v. Kimberly-Clark Corp, 713 F.2d 760, 218 USPQ 781 (Fed. Cir.
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`1983), and at aminimum, Lauks fails to disclose or suggest the foregoing claim elements, it is
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`clear that Lauks does not anticipate claim 11, or any of the claims dependent thereon.
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`VII.
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`The Rejection Of Claim 11 Under 35 U.S.C. § 102
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`Claim 11 is rejected under 35 U.S.C § 102(b) as being anticipated by USP No. 6,071,391
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`Gotoh; Applicants respectfully traverse this rejection for at least the following reasons.
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`In the pending rejection, it is again asserted that because “the extension portions have
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`different widths ..., the corresponding portion would [inherently] require segments of different
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`width.”
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`However, it is respectfully submitted that the Examiner’s interpretation departs from
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`what is disclosed in Gotoh. Specifically, as expressly disclosed in Fig. 15 and at col. 15, lines 8-
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`30 of Gotoh, the connector part 11 contains four input terminals 12/ 13/ 14a/14b. That is, the
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`connector part 11 only contains a single uniform width, and Gotoh is completely silent with
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`regard to two portions of the connector part 11, let alone disclose having different widths thereof.
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`At best, Gotoh only discloses an opening having a single four-terminal connector part, and the
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`Examiner’s reconstruction indirectly reflects the possibility of having a connector part including
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`segments of different width. However, as is well known, “inherency may not be established by
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`probabilities or possibilities,” Scaltech Inc. v. Retec/Tetra, 178 F.3d 1378 (Fed. Cir. 1999). In
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`the instant case, even assuming arguendo that the connector part 11 of Gotoh can embody
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`different segment widths, it is not necessary that the connector part 11 of Gotoh MUST have
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`different widths.
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`Accordingly, as anticipation under 35 U.S.C. § 102 requires that each element of the
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`claim in issue be found, either expressly described or under principles of inherency, in a single
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`prior art reference, Kalman v. Kimberly-Clark Corp, 713 F.2d 760, 218 USPQ 781 (Fed. Cir.
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`1983), and at a minimum, Gotoh fails to disclose or suggest the foregoing claim elements, it is
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`clear that Gotoh does not anticipate claim 11, or any of the claims dependent thereon.
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`VIII.
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`The Rejection Of Claims 1,3-5 and 7 Under 35 U.S.C. § 103
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`Claims 1, 3-5 and 7 are rejected under 35 U.S.C § 103(a) as being unpatentable over JP
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`09-159642 to Nagata in view of USP No. 5,320,732 to Nankai. In response, Applicants have
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`canceled claim 7, without prejudice or disClaimer, rendering the rejection thereto moot. For the
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`remaining claims, Applicants respectfully traverse this rejection for at least the following
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`reasons .
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`In the pending rejection, the Examiner admits that Nagata does not disclose or suggest a
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`second extension portion extending in a width direction from the second base plate from a
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`position corresponding to an end of the first base plate, but alleges that Nankai disclOses, in Fig.
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`1 and at col. 2, lines 6-24, the foregoing claim element.
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`However, contrary to the conclusion set forth in the pending rejection, the substrates lb
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`(alleged first base plate) and la (alleged second base plate) of Nagata have the same length (see,
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`Fig. 1). That is, the substrate lb of Nagata does not extend from the end of the substrate la in
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`the lengthwise direction. Nankai, on the other hand, merely discloses a projection 11 for
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`preventing the biosensor from being inserted backward into the device, wherein the projection 11
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`is a part of the base 1 comprising the working electrode 5, rather than a part of a second base
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`comprising a counter or second electrode. Indeed, noting that the top layer of the biosensor of
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`Nankai is merely a cover 9, Nankai is silent with regard to providing a second base, let alone
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`disclose a second extension portion extending from such a second base comprising a second
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`electrode.
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`It should be recognized that the fact that the prior art could be modified so as to result in
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`the combination defined by the claims at bar would not have made the modification obvious
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`unless the prior art suggests the desirability of the modification. In re Deminski, 796 F.2d 436,
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`230 USPQ 313 (Fed. Cir. 1986).
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`Moreover, recognizing after the fact that such a modification would provid
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