Ex Parte DeBusk et alDownload PDFPatent Trial and Appeal BoardAug 11, 201713459366 (P.T.A.B. Aug. 11, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/459,366 04/30/2012 Brian Clark DeBusk 66788.P1 8176 408 7590 08/15/2017 LUEDEKA NEELY GROUP, P.C. POBOX 1871 KNOXVTT.T.E, TN 37901 EXAMINER DANNEMAN, PAUL ART UNIT PAPER NUMBER 3627 NOTIFICATION DATE DELIVERY MODE 08/15/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing @ luedeka.com LNG.PATENT@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN CLARK DEBUSK, ANGELA MICHELLE SEWELL, JOHN GARNER JACOBS, REX ALAN HURD, ELIZABETH ANN WHITE, JEFFREY DENNIS GRIFFITH, and SAMUEL JOSEPH ELIJAH FOX Appeal 2016-005212 Application 13/459,3 661 Technology Center 3600 Before KRISTEN L. DROESCH, CATHERINE SHIANG, and JAMES W. DEJMEK, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek review under 35 U.S.C. § 134(a) from the Examiner’ Final Rejection of claims 1, 3, 9, and 12—15, all of the pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants indicate the real party-in-interest is DeRoyal Industries, Inc. Br. 2. 2 Claims 2, 4—8, 10, and 11 were withdrawn from consideration. Appeal 2016-005212 Application 13/459,366 BACKGROUND The disclosed invention relates to a system for managing inventories of items packaged in kits for use in surgical procedures. Spec. 12, Abstract. CLAIMED SUBJECT MATTER Representative claim 1, reproduced from the Claims Appendix of the Appeal Brief, reads as follows: 1. An inventory data management system for managing information related to a set of medical items for use during a medical procedure in a medical facility, the inventory data management system comprising: a container for holding the set of medical items as the set of medical items is transported to a procedure room in the medical facility and for holding the set of medical items in the procedure room as one or more of the medical items are removed from the container for use during the medical procedure, the container having a unique container identification code disposed thereon, the container having a plurality of designated positions for holding a plurality of items in the set, each designated position having an item identifier code disposed on the container adjacent to the designated position; a plurality of sensing devices for reading the item identifier codes and the container identification code from the container, the sensing devices provided in a plurality of locations in the medical facility, each location associated with a particular status of the container, the sensing devices including at least one sensing device disposed in the medical facility for reading item identifier codes disposed on the container adjacent designated positions in the container that are empty after completion of the medical procedure, the sensing devices in communication with a communication network; an inventory management computer for executing an inventory management application to receive the container identification code from the communication network and associate the container identification code with container status 2 Appeal 2016-005212 Application 13/459,366 information based on the location of the sensing device that read the container identification code; and an item inventory database in communication with the inventory management computer, the item inventory database for storing the container identification code in association with the container status information. REJECTION ON APPEAL AND APPLIED PRIOR ART Claims 1,3,9, and 12—15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Stevens (US 2009/0267769 Al, pub. Oct. 29, 2009) and Austin et al. (US 2008/0030345 Al, pub. Feb. 7, 2008).3 ANALYSIS We have reviewed the Examiner’s rejections in light of the arguments in the Appeal Brief, the Examiner’s Answer, and arguments in the Reply Brief. Appellants’ arguments are not persuasive of Examiner error. We agree with, and adopt as our own, the Examiner’s findings of fact and conclusions of law. We highlight and address specific findings and arguments below for emphasis. The Examiner finds that Stevens teaches all of the limitations of independent claim 1 with the exception of the “inventory database.” See Final Act. 4—6. Specifically, the Examiner finds that Stevens teaches a container having a pad (container) with cutouts designated for the placement of tools. See id. at 4 (citing Stevens 124). A sensor in the pad detects the placement and removal of the tool in the cutout. See id. at 4—5 (citing 3 In the rejection header, the Final Office Action states that claims 1, 3, 9, 12, and 13 are rejected under 35 U.S.C. § 103(a) over Stevens and Austin. Final Act. 4. However, the Final Office Action later includes a detailed description rejecting remaining claims 14 and 15 under 35 U.S.C. § 103(a) over Stevens and Austin. Id. at 8—10. 3 Appeal 2016-005212 Application 13/459,366 Stevens Tflf 7—9, Abstract, Fig. 1). When the pad passes a designated transceiver (sensor) placed in various locations in a facility, the pad provides its inventory identification information to the transceiver for transmission to a central data processor. See id. at 5 (citing Stevens ]Hf 8, 30, 39, 44, claims 1-3, 19). Appellants argue that the combination of Stevens and Austin fails to teach the item identifier codes or the sensing devices as recited in claim 1. App. Br. 6. Specifically, Appellants argue that Stevens’ pad differs from the claimed container because Stevens’ pad provides active communication and contains all of the “smarts” of the inventory tracking system. See id. at 5—6. Appellants contend that sensors included in Stevens’ pad provide the “smarts” by detecting whether or not an object is disposed on the tray and provide the information regarding object presence to a transceiver (sensor). See id. Appellants argue that, in contrast to Stevens, the claimed invention utilizes a passive container that includes container identification and item identification codes. See id. at 5. According to Appellants, the claimed invention includes sensing devices disposed throughout a facility that contain the “smarts” to read the container identification and item identification codes and perform the determination as to whether or not an object is present on the tray. See id. at 5—6; Reply Br. 5. Appellants’ arguments are not persuasive of Examiner error because they address features that are beyond the scope of claim 1. Claim 1 does not recite, or otherwise require, that the container or its identification codes are passive, and that the plurality of sensing devices include the “smarts” for determining whether an object is present on the tray. See Ans. 3 (Examiner finding that the claim scope is not limited to specific types of RFID devices, 4 Appeal 2016-005212 Application 13/459,366 and therefore, includes identification codes encoded on active RFID devices), Ans. 4 (Examiner finding that claim scope includes the sensing devices as RFID tag readers, i.e., without “smarts”); see also Reply Br. 2—8 (Appellants discussing various features of RFID devices and RFID readers). Although the claims are interpreted in light of the specification, limitations from the specification are not to be read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Because we decline Appellants’ invitation to read limitations directed to active, passive, or “smarts” into the claim, we are not persuaded of Examiner error. In the Reply Brief, Appellants briefly argue that Stevens describes sensors that are on the trays, whereas, the “claims recite[] sensors (which the examiner interprets as RFID tag readers) that are provided in locations in the medical facility, not on the containers.” See Reply Br. 4. Appellants’ arguments are misplaced and not persuasive. Appellants misconstrue the Examiner’s findings and contradict Appellants’ own arguments in the Appeal Brief. The Examiner finds that Stevens teaches transceivers (i.e., sensing devices) that can be placed around a room, door, shelf, or tool cabinet for reading the radio tag. See Final Act. 5 (citing Stevens H 8, 30, 39, 44); see also Ans. 4 (finding RFID tag readers are supported by Stevens). Specifically, Stevens describes low frequency active radiating transceivers or large area loop antennas placed around a room, door, shelf, or tool cabinet, and describes a reader placed at the worksite. See Stevens 1130, 44. And Appellants acknowledge, “Stevens has transceivers disposed around his facility. . . . The transceivers rely completely upon the information that they receive from radio tags on Stevens’ trays, which get their information from the sensors on Stevens’ trays.” App. Br. 6. 5 Appeal 2016-005212 Application 13/459,366 Therefore, we are not persuaded of error in the Examiner’s rejection based on Appellants’ misplaced and contradictory argument presented in the Reply Brief. Appellants further argue that the Examiner has not provided a clear articulation of the reasons why the claimed invention would have been obvious and that there is no reasonable expectation of success in the Examiner’s combination. See App. Br. 7—8; Reply Br. 6—8. In both cases, the basis of Appellants’ argument rests on the assertion that the combination of Stevens and Austin fails to teach each element of the claimed invention. See App. Br. 7—8; Reply Br. 6—8. First, Appellants allege that the Examiner has not provided a clear articulation of the reasons why the claimed invention would have been obvious because the “examiner has completely overlooked that not only are the elements of Stevens completely different from the elements of [Appellants’ claim], but they are not combined ‘in the manner claimed’ by [Appellants].” App. Br. 7; see Reply Br. 6—7. Second, Appellants argue that there is no reasonable expectation of success because the “elements of Stevens don't match the elements of [Appellants’ claim], and so merely adding an element from Austin does not provide any reasonable expectation of success in the combination.” App. Br. 8; see Reply Br. 7. We are not persuaded by Appellants’ arguments because, as discussed above, we are not persuaded the Examiner erred in finding that the combination of Stevens and Austin teaches or suggests the limitations of claim 1. For all of the foregoing reasons, we are not persuaded of error in the rejection of independent claim 1. Appellants do not present separate substantive arguments addressing dependent claims 3, 9, and 12—15. See 6 Appeal 2016-005212 Application 13/459,366 App. Br. 3—8. Accordingly, for the same reasons as claim 1, we are not persuaded of error in the rejections of dependent claims 3, 9, and 12—15. DECISION We AFFIRM the rejections of claims 1,3,9, and 12—15. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation