United States Court of Appeals 

for the Federal Circuit 

__________________________ 

IN RE ABBOTT DIABETES CARE INC. 

__________________________ 

2011-1516, -1517 

(Reexamination Nos. 90/007,903, 90/007,910) 

__________________________ 

Appeal from the United States Patent and Trademark 

Office, Board of Patent Appeals and Interferences. 

__________________________ 

Decided: September 28, 2012 

__________________________ 

GREGORY A. CASTANIAS, Jones Day, of Washington, 

DC, argued for appellant. With him on the brief were 

THOMAS E. FRIEBEL, of New York, New York; and ALYSON 

G. BARKER, of Irvine, California. Of counsel on the brief 

was LAURA A. THOMAS, Landau Gottfried & Berger LLP, 

of San Francisco, California. 

SYDNEY O. JOHNSON, JR. Associate Solicitor, United 

States Patent and Trademark Office, of Alexandria, 

Virginia argued for appellee. With him on the brief were 

RAYMOND T. CHEN, Solicitor, and AMY J. NELSON, Associate Solicitor. 

__________________________ 

Before LOURIE, PROST, and WALLACH, Circuit Judges. 
IN RE ABBOTT DIABETES 2

PROST, Circuit Judge. 

Abbott Diabetes Care, Inc. (“Abbott”) appeals from ex 

parte reexamination proceedings in which the Board of 

Patent Appeals and Interferences (“Board”) rejected 

numerous claims of U.S. Patents Nos. 6,175,752 (“’752 

patent”) and 6,565,509 (“’509 patent”). Ex parte Abbott 

Diabetes Care Inc., No. 2010-006873, 2011 WL 180171 

(B.P.A.I. Jan. 18, 2011) (“’752 BPAI Op.”), reh’g denied, 

2011 WL 1661489 (B.P.A.I. Apr. 29, 2011) (“’752 Reh’g 

Denial”); Ex parte Abbott Diabetes Care Inc., No. 2010-

009711, 2011 WL 180180 (B.P.A.I. Jan. 18, 2011) (“’509 

BPAI Op.”), reh’g denied, 2011 WL 1661491 (B.P.A.I. Apr. 

29, 2011) (“’509 Reh’g Denial”). Because the Board’s 

rejections were based on unreasonable claim constructions and because the U.S. Patent and Trademark Office 

(“PTO”) concedes that the examiner’s official notice rejections should be withdrawn, we vacate-in-part and remand. 

I. BACKGROUND

Abbott owns the ’752 patent and the ’509 patent. 

Both patents share a common specification that describes 

methods and devices “for the in vivo monitoring of an 

analyte using an electrochemical sensor to provide information to a patient about the level of the analyte” in the 

bloodstream. ’752 patent col.1 ll.8-10; ’509 patent col.1 

ll.11-14. Specifically, the specification describes methods 

and devices for monitoring glucose levels for diabetics. 

’752 patent col.1 ll.13-21; ’509 patent col.1 ll.17-25. The 

specification notes that a variety of devices exist for 

monitoring glucose levels in the blood stream, but some of 

these devices include sensor guides that are “typically 

bulky and do not allow for freedom of movement.” ’752 

patent col.1 ll.51-54; ’509 patent col.1 ll.55-59. According 
3 IN RE ABBOTT DIABETES

to the “Background of the Invention” portion of the specification, these prior art systems also feature external 

wires and cables connecting the various components that 

restrict the movements and daily life activities of the 

user: 

[T]he sensor guides or the sensors include cables 

or wires for connecting the sensor to other equipment to direct signals from the sensor to an analyzer. The size of the sensor guides and presence 

of cables and wires hinders the convenient use of 

these devices for everyday applications. There is 

a need for a small, compact device that can operate the sensor and provide signals to an analyzer 

without substantially restricting the movements 

and activities of a patient. 

’752 patent col.1 ll.55-63; ’509 patent col.1 ll.58-67. 

The first claims of each patent are representative. 

Claim 1 of the ’752 patent recites: 

1. A sensor control unit comprising: a housing 

adapted for placement on skin and adapted to receive a portion of an electrochemical sensor extending out of the skin having a plurality of 

contact pads; a plurality of conductive contacts 

disposed on the housing and configured for coupling to the plurality of contact pads on the electrochemical sensor; and an rf transmitter 

disposed in the housing and coupled to the plurality of conductive contacts for transmitting data 

obtained using the electrochemical sensor. 

(Emphasis added). 
IN RE ABBOTT DIABETES 4

Claim 1 of the ’509 patent, which was amended during reexamination, recites the following: 

1. A sensor assembly to monitor an analyte, the 

sensor assembly comprising: a flexible transcutaneous electrochemical sensor comprising nonleachable, analyte-responsive enzyme, the sensor 

having a distal end and a proximal end defining 

the length of the sensor, such that a portion of the 

sensor lies above the skin when transcutaneously 

positioned; and a sensor control unit adapted for 

placement on skin and adapted for receiving a 

portion of the proximal end of the transcutaneous 

electrochemical sensor, the sensor control unit 

comprising a rf transmitter that is configured and 

arranged to intermittently and repeatedly transmit data related to analyte-dependent signals 

generated by the electrochemical sensor, wherein 

the portion of the sensor above the skin is maintained in a substantially fixed position relative to 

the position of the sensor control unit when the 

sensor control unit is placed on the skin and receives the proximal end of the sensor transcutaneously positioned. 

(Emphasis added). 

The specification describes the claimed “electrochemical sensor” as “a device configured to detect the presence 

and/or measure the level of an analyte in a sample via 

electrochemical oxidation and reduction reactions on the 

sensor.” ’752 patent col.5 ll.47-50; ’509 patent col.5 ll.64-

67. As depicted in Figures 1 and 2 of Abbott’s patents, the 

electrochemical sensor (42) uses conductive traces (52) 

and contact pads (49) to transfer signals to a sensor 

control unit (44). 
5 IN RE ABBOTT DIABETES
IN RE ABBOTT DIABETES 6

On March 27, 2006, the PTO granted third-party requests for ex parte reexamination of Abbott’s patents.1 

 1 There are currently two lawsuits pending in the 

United States District Court for the District of Delaware. 

See Abbott Diabetes Care, Inc. v. DexCom, Inc., No. 05-590 

(D. Del. filed Aug. 11, 2005); see also Abbott Diabetes 

Care, Inc. v. DexCom, Inc., No. 06-514 (D. Del. filed Aug. 

17, 2006). These actions have been consolidated and 

stayed pending the outcome of several reexamination 

proceedings, including the reexaminations for the ’752 

and ’509 patents at issue in this appeal. 
7 IN RE ABBOTT DIABETES

During reexamination, the examiner finally rejected all of 

the claims subject to the reexamination as being indefinite, anticipated, or obvious over several combinations of 

prior art references. Particularly, the examiner relied on 

European Patent Application 0 098 592 (“Shichiri I”), two 

articles written by Shichiri et al. (“Shichiri II” and 

“Shichiri III”), U.S. Patent No. 5,390,671 (“Lord II”), 

combinations of other prior art references, and the examiner’s official notice of certain features known in the prior 

art. 

In reviewing the examiner’s rejections, the Board first 

had to determine the correct construction of “electrochemical sensor,” namely, whether “the transcutaneous 

electrochemical sensor recited in the claims include[s] 

wires and cables.” ’752 BPAI Op., 2011 WL 180171, at *4. 

The Board reasoned that even though the specification 

criticizes the external cables and wires of the prior art, 

and none of the embodiments in Abbott’s patents include 

external cables or wires connecting to the sensor control 

unit, the absence of a more express limiting statement 

meant that the “cables or wires” description of the prior 

art sensors carried through to the claimed electrochemical 

sensor as well. Ultimately, the Board concluded that 

“when giving the term ‘electrochemical sensor’ the broadest reasonable interpretation in light of the [s]pecification, 

the electrochemical senor includes wires and cables.” Id.

at *8; ’509 BPAI Op., 2011 WL 180180, at *7. The Board 

also addressed the proper construction of the term “substantially fixed” recited in amended claim 1 of the ’509 

patent and concluded that the term would “be understood 

by the skilled worker to allow some movement of the 

sensor relative to the position of the sensor control unit.” 

’509 BPAI Op., 2011 WL 180180, at *8. 
IN RE ABBOTT DIABETES 8

Having construed the claims, the Board went on to 

consider whether the claims were properly rejected in 

view of the prior art of record. The Board limited its 

discussion of the prior art primarily to Shichiri I, “with 

the understanding that our comments apply equally to 

rejections based on Shichiri II and Fischell.” ’752 BPAI 

Op., 2011 WL 180171, at *4; ’509 BPAI Op., 2011 WL 

180180, at *4. Figures 1 and 3 of Shichiri I disclose a 

watch-shaped transmitting assembly (2), with a blood 

sugar detection unit (1) that includes an electrode means 

(13) for measuring blood sugar. The signal from the 

electrode means is fed through insulated lead wires (43) 

and (44) through the catheter (45) to the watch-shaped 

assembly. Additionally, the Board agreed with the examiner’s conclusion that lead wires 43 and 44 are part of the 

sensor. 

Applying its construction of “electrochemical sensor” 

as covering sensors with external cables or wires, the 
9 IN RE ABBOTT DIABETES

Board held that Shichiri I anticipates claim 1 of the ’509 

patent and also anticipates or renders obvious a large 

portion of the other claims. ’509 BPAI Op., 2011 WL 

180180, at *8-9. In addressing the construction of “substantially fixed” in amended claim 1 of the ’509 patent, 

the Board reasoned that although Shichiri I discloses 

wires (43) and (44) that are flexible and allow for some 

movement, “they are still somewhat restrained in movement, and are therefore ‘substantially fixed,’ by virtue of 

being tethered to the watch assembly unit.” Id. at *8. 

That is to say, the Board equated “somewhat restrained 

in movement” to “allow[ing] some movement.” 

With respect to the ’752 patent, the Board again applied its claim construction of “electrochemical sensor,” 

and held that claim 1 and a large portion of the other 

claims are unpatentable in light of Shichiri I in combination with Lord II. Although Shichiri I does not teach “at 

least one contact pad” as required by claim 1 of the ’752 

patent, the Board found that this feature was taught by 

Lord II, which discloses a transcutaneous sensor having 

sensor electrodes at one end and contact pads adapted for 

connection to a monitor on the other end. Moreover, the 

Board found that claim 1 “does not impose any particular 

type of connection” between the electrochemical sensor’s 

“contact pads” and the housing’s “conductive contacts,” 

such as a direct connection, and therefore allows for a 

cable or wire connection between the contact pads and the 

conductive contacts. See ’752 BPAI Op., 2011 WL 180171, 

at *8. Accordingly, the Board held that “Lord II provides 

evidence that the conductive contacts in the sensor control unit of Shichiri I would have been configured for 

coupling the equivalent contact pads of Shichiri I’s modified sensor.” Id. at *9. The Board also affirmed the 

examiner’s use of official notice in combination with other 
IN RE ABBOTT DIABETES 10

primary references to reject 157 newly added independent 

and dependent claims. 

Abbott filed requests for rehearing, arguing that, 

when construing the term “electrochemical sensor,” the 

Board improperly relied on the specification’s statement 

that “sensors include cables or wires.” According to 

Abbott, that statement simply criticizes the restrictive 

prior art sensors—it does not describe the claimed electrochemical sensor. The Board disagreed, instead holding 

that the statement “provides insight as to how one of 

ordinary skill in the art would interpret the term ‘sensor.’” ’752 Reh’g Denial, 2011 WL 1661489, at *1; ’509 

Reh’g Denial, 2011 WL 1661491, at *1. The Board also 

found that nothing in Abbott’s patents explicitly disclaims 

sensors that include external cables or wires. Additionally, Abbott argued that the Board misapplied its own 

construction of “substantially fixed” and also applied an 

incorrect standard for official notice. But so too here, the 

Board rejected Abbott’s arguments. 

Abbott timely appealed, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). 

II. DISCUSSION

We review the Board’s legal conclusions de novo and 

its factual determinations for substantial evidence. In re 

Am. Acad. Sci. Tech Ctr., 367 F.3d 1359, 1363 (Fed. Cir. 

2004). Substantial evidence means “such relevant evidence as a reasonable mind might accept as adequate to 

support a conclusion.” Consol. Edison Co. v. NLRB, 305 

U.S. 197, 229 (1938). 

Claim construction is a legal question, reviewed de 

novo. Am. Acad. Sci., 367 F.3d at 1363. In contrast to 
11 IN RE ABBOTT DIABETES

district court proceedings involving an issued patent, 

claims under examination before the PTO are given their 

broadest reasonable interpretation consistent with the 

specification. In re ICON Health & Fitness, Inc., 496 F.3d 

1374, 1379 (Fed. Cir. 2007). 

A. “Electrochemical Sensor” 

The parties’ primary dispute centers on whether the 

broadest reasonable construction of “electrochemical 

sensor” includes external cables and wires connecting the 

sensor to its control unit. Abbott argues that the Board 

improperly relied on language in its patents that was 

directed to the failings of the prior-art devices—failings 

that the claimed invention attempts to overcome. Abbott 

notes that all descriptions of the claimed electrochemical 

sensor in the specification are devoid of any mention of 

external cables or wires for connecting to the sensor 

control unit. Abbott further contends that the plain 

language of the claims—“contact pads” on the electrochemical sensor “coupl[ed]” to the “conductive contacts” of 

the sensor control unit’s housing in the ’752 patent, or 

having the transcutaneous electrochemical sensor “receiv[ed]” by the sensor control unit in the ’509 patent—

does not support an embodiment with external cables or 

wires attached to the sensors. 

The PTO argues that the specification acknowledges, 

albeit when disparaging the prior art, that sensors can 

include external cables or wires. See Retractable Techs., 

Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. 

Cir. 2011) (“In general, statements about the difficulties 

and failures in the prior art, without more, do not act to 

disclaim claim scope.”). The PTO further contends that 

neither the claims nor the specification explicitly require 

the term “electrochemical sensor” to exclude sensors that 
IN RE ABBOTT DIABETES 12

have external cables or wires. According to the PTO, 

Abbott was required to make a “clear disavowal” or an 

“express disclaimer” of claim scope. See Am. Acad. Sci., 

367 F.3d at 1363 (“[A] patentee ‘may demonstrate an 

intent to deviate from the ordinary and accustomed 

meaning of a claim term by including in the specification 

expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’”) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 

(Fed. Cir. 2002)); In re Bigio, 381 F.3d 1320, 1325-26 (Fed. 

Cir. 2004) (“Absent claim language carrying a narrow 

meaning, the PTO should only limit the claim based on 

the specification or prosecution history when those 

sources expressly disclaim the broader definition.”). 

The PTO also notes that the specification describes an 

embodiment of the “sensor control unit 44” that “usually 

includes no additional cables or wires to other electronic 

components or other devices.” ’752 patent col.29 ll.65-67; 

’509 patent col.29 ll.60-63. Relying on this statement, the 

PTO argues that if the patentees had intended to disclaim 

an electrochemical sensor with cables or wires, they 

should have made a similar disclaimer with respect to the 

electrochemical sensor—although the PTO acknowledges 

that the term “usually” is less than precise. But in any 

event, the PTO asserts that Abbott had “the opportunity 

and responsibility to remove any ambiguity in claim term 

meaning by amending” the claims during reexamination, 

yet failed to do so. Bigio, 381 F.3d at 1324. 

We agree with Abbott that the Board’s construction of 

“electrochemical sensor” is unreasonable and inconsistent 

with the language of the claims and the specification. As 

a preliminary matter, the claims themselves suggest 

connectivity without the inclusion of cables or wires: an 

“electrochemical sensor” having “contact pads” that are 
13 IN RE ABBOTT DIABETES

“coupl[ed]” to “conductive contacts” (in the ’752 patent), or 

a “transcutaneous electrochemical sensor” that is “receiv[ed]” by the sensor control unit (in the ’509 patent). 

That suggestion is only reinforced by the specification. 

“Although the PTO emphasizes that it was required to 

give all claims their broadest reasonable construction, . . . 

this court has instructed that any such construction be 

consistent with the specification, and that claim language 

should be read in light of the specification as it would be 

interpreted by one of ordinary skill in the art.” In re 

Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2011) 

(internal citation and quotation marks omitted). Indeed, 

“the specification ‘is always highly relevant to the claim 

construction analysis. Usually it is dispositive; it is the 

single best guide to the meaning of a disputed term.’” 

Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 

2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, 

Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Here, the 

specification contains only disparaging remarks with 

respect to the external cables and wires of the prior-art 

sensors: “[t]he size of the sensor guides and presence of 

cables and wires hinders the convenient use of these 

devices for everyday applications.” ’752 patent col.1 ll.57-

59; ’509 patent col.1 ll.61-63. In fact, the primary purpose 

of the invention was to provide “a small, compact device 

that can operate the sensor and provide signals to an 

analyzer without substantially restricting the movements 

and activities of the patient.” ’752 patent col.1 ll.60-63; 

’509 patent col.1 ll.64-67. 

Even more to the point, every embodiment disclosed 

in the specification shows an electrochemical sensor 

without external cables or wires. Indeed, the only mention of a sensor with external cables or wires in Abbott’s 

patents is a single statement addressing the primary 

deficiency of the prior art. It is true that the specification 
IN RE ABBOTT DIABETES 14

does not contain an explicit statement disclaiming electrochemical sensors with external cables or wires. But 

this is not an instance where the specification would 

necessarily have to disavow an embodiment that would 

otherwise be covered by the plain language of the 

claims—rather, claim terms like “coupl[ed]” and “receiv[ed]” are entirely consistent with and even support 

the specification’s exclusive depiction of an electrochemical sensor without external cables or wires. We have held 

that “[e]ven when guidance is not provided in explicit 

definitional format, the specification may define claim 

terms by implication such that the meaning may be found 

in or ascertained by a reading of the patent documents.” 

Iredeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 

1295, 1300 (Fed. Cir. 2004) (internal quotation marks 

omitted). Here, Abbott’s patents “repeatedly, consistently, and exclusively” depict an electrochemical sensor 

without external cables or wires while simultaneously 

disparaging sensors with external cables or wires. Id. at 

1303. 

While Abbott’s patents define the electrochemical sensor’s connectivity by implication, the PTO argues that our 

case law still requires an explicit disclaimer of external 

cables or wires. But the PTO’s reliance on cases like 

Amercan Academy of Science and Retractable Technologies is misplaced. Although the patentee in Amercan 

Academy of Science argued that it had disparaged and 

therefore disclaimed the use of “multi-user computers 

such as mainframes” in the background of the invention 

section of its patent, that same background section and 

the “specification as whole” actually supported configurations that included multi-user computers. 367 F.3d at 

1367. And in Retractable Technologies, the patentee’s 

supposed disclaimer of “cutting” in the background of the 

invention was undermined by an embodiment in the 
15 IN RE ABBOTT DIABETES

specification that indicated that some forms of cutting fell 

within the scope of the claimed invention. 653 F.3d at 

1306. In the case before us, however, nothing suggests or 

even hints that the claimed electrochemical sensor can 

include external cables or wires. Instead, Abbott’s patents consistently show the opposite. 

To be sure, the Board noted that Abbott’s patents acknowledge that the “sensor control unit 44 usually includes no additional cables or wires.” The PTO argues 

that a similar statement would be required to disclaim an 

electrochemical sensor with external cables or wires. This 

particular statement, however, refers to a specific embodiment where the transmission of data from the sensor 

control unit (44) to the receiver/display unit (46) “may 

also be performed using methods other than rf transmission, including optical or wire transmission.” ’752 patent 

col.52 ll.56-65; ’509 patent col.52 ll.56-65. Instead of 

being an explicit disclaimer, the statement is actually an 

explicit acknowledgment that at least some embodiments 

of the sensor control unit can include external cables or 

wires. Tellingly, the specification does not contain a 

similar acknowledgment with respect to the electrochemical sensor. 

We conclude, therefore, that under the broadest reasonable construction, “electrochemical sensor” is properly 

interpreted to mean a discrete electrochemical sensor 

devoid of external connection cables or wires to connect to 

a sensor control unit. Accordingly, we vacate the Board’s 

decisions as to the patentability of Abbott’s independent 
IN RE ABBOTT DIABETES 16

claims at issue2 and remand for the Board to apply the 

correct claim construction. 

B. “Substantially Fixed” 

The parties do not dispute that the correct construction of “substantially fixed” in the ’509 patent allows for 

“some movement of the sensor relative to the position of 

the sensor control unit.” Instead, the dispute between the 

parties lies in whether “some movement” includes the 

degree of movement in the Shichiri I system such that the 

sensor need only be “somewhat restrained.” We conclude 

that it does not. 

The external wires of the Shichiri I sensor are only 

“somewhat restrained” because they are tethered to a 

watch-shaped assembly and therefore only restrained by 

human arm or wrist movement. This degree of arm and 

wrist movement is not only significantly greater than the 

movement allowable under the Board’s original construction of “substantially fixed,” it is also greater than the 

movement described in the specification. Indeed, the 

embodiments disclosed in the ’509 patent all show the 

above-skin portion of the electrochemical sensor maintained in a fixed position. Specifically, the specification 

teaches a “support structure 82” that “hold[s], support[s], 

and/or guide[s] the sensor 42 into the correct position.” 

’509 patent col.34 ll.54-55. While the Board’s original 

construction is reasonable in view of the specification, the 

Board’s modified construction requiring only a “somewhat 

restrained” sensor is not. On remand, the Board should 

apply its original construction of “substantially fixed.” 

 2 These include claims 1, 32, 33, 39, 88, 89, 90, 244, 

247, and 248 of the ’752 patent and claims 1, 11, 26, 229, 

230, 231, and 233 of the ’509 patent. 
17 IN RE ABBOTT DIABETES

C. Official Notice 

During reexamination of the ’752 patent, the examiner invoked the doctrine of official notice in combination 

with other primary references to reject 157 newly added 

independent and dependent claims. The Board affirmed, 

and now nineteen of these official notice-rejection claims 

are before this court on appeal.3 The PTO, however, now 

agrees with Abbott that the examiner’s official notice 

rejection of these nineteen claims should be remanded 

and withdrawn. Therefore, we vacate the Board’s rejection of these nineteen claims and remand to the Board for 

appropriate further proceedings. 

III. CONCLUSION

The Board’s construction of “electrochemical sensor” 

and its modified construction of “substantially fixed” are 

unreasonable and inconsistent with the specification. We 

therefore vacate the Board’s decisions as to the patentability of Abbott’s independent claims at issue and 

remand for the Board to apply the correct claim constructions. We also vacate the Board’s official notice rejection 

of the nineteen claims before us and remand to the Board 

for appropriate further proceedings. 

VACATED-IN-PART AND REMANDED 

 3 These include claims 96, 98, 107, 125, 127, 139, 

157, 159, 168, 186, 188, 196, 214, 216, 225, 244, 247-248, 

and 251 of the ’752 patent.