Ex Parte Dye et al

Patent Trial and Appeal Board

Jun 16, 2017

13155200 (P.T.A.B. Jun. 16, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/155,200 06/07/2011 Alan W. Dye BPMDL0023AD (10200U) 2529
27939 7590 06/19/2017
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
YU, ARIEL J
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
06/19/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN W. DYE and MICHAEL S. McMAHON
Appeal 2016-004679
Application 13/155,200
Technology Center 3600
Before ST. JOHN COURTENAY III, JUSTIN BUSCH, and JOYCE
CRAIG Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3—5, 7, and 8. Claims 2, 6, and 9-11 are cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The disclosed and claimed invention on appeal relates “generally to
the manufacture, monitoring, and tracking of surgical packs, and more
particularly to a methods and systems of making and using custom surgical
packs having radio frequency identification (RFID) tags capable of detecting
use of the surgical packs to coordinate manufacturing and inventory
control.” (Spec. 13).
Appeal 2016-004679
Application 13/155,200
Representative Claim
1. A method of assembling a surgical pack, the method
comprising:
assembling contents of the surgical pack;
wrapping the surgical pack in an outer Central
Sterile Reprocessing (CSR) wrap folded about the
surgical pack to keep the contents within the surgical
pack sterile;
affixing one or more adhesive bindings to the outer
CSR wrap, wherein an identification device is disposed
between the one or more adhesive bindings and the outer
wrap such that:
as long as the outer CSR wrap is unopened, the
identification device is capable of delivering [LI] a first
identification signal to a remote reader, and
when the outer CSR wrap is opened, the
identification device is [L2] physically deformed so as to
deliver a second identification signal to the remote
reader.
(Contested limitations LI and L2 are emphasized).
Rejections
A. Claims 1 and 3—5 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of
Yturralde et al. (US 2011/0139871 Al; published June 16, 2011),
hereinafter referred to as “Yturralde,” in view of Gold (US
2010/0156606 Al; published June 24, 2010), and Austin et al. (US
2008/0030345 Al; published Feb. 7, 2008), hereinafter “Austin.”
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B. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Yturralde,
Gold, Austin, and Swan et al. (US 2008/0108261 Al; published May
8, 2008), hereinafter “Swan.”
C. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Yturralde,
Gold, Austin, and Otto et al. (US 2008/0313122 Al; published Dec.
18, 2008), hereinafter “Otto.”
Grouping of Claims
Based upon Appellants’ arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative independent claim
1. See 37 C.F.R. § 41.37(c)(l)(iv). We address rejection B of dependent
claim 7, and rejection C of dependent claim 8, infra. To the extent
Appellants have not advanced separate, substantive arguments for particular
claims, or other issues, such arguments are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments, and we adopt as our
own: (1) the findings and legal conclusions set forth by the Examiner in the
action from which this appeal is taken (Final Act. 2—12), and (2) the
findings, legal conclusions, and explanations set forth in the Answer in
response to Appellants’ arguments (Ans. 3 4). We highlight and address
specific findings and arguments for emphasis in our analysis below.
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Rejection of Independent Claim 1 under 35 U.S.C. § 103(a)
We decide the following dispositive issues presented in this appeal:
Issues: Under § 103, did the Examiner err by finding the cited
combination of Yturralde, Gold, and Austin would have taught or suggested
contested limitations LI and L2:
affixing one or more adhesive bindings to the outer
CSR wrap, wherein an identification device is disposed
between the one or more adhesive bindings and the outer
wrap such that:
as long as the outer CSR wrap is unopened, the
identification device is capable of delivering [LI] a first
identification signal to a remote reader, and
when the outer CSR wrap is opened, the
identification device is [L2] physically deformed so as to
deliver a second identification signal to the remote
reader [,]
within the meaning of claim l?1 (Emphases added).
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). See, e.g., Spec. 193:
Thus, while preferred embodiments of the invention have been
illustrated and described, it is clear that the invention is not so
limited. Numerous modifications, changes, variations,
substitutions, and equivalents will occur to those skilled in the
art without departing from the spirit and scope of the
present invention as defined by the following claims.
Accordingly, the specification and figures are to be regarded
in an illustrative rather than a restrictive sense, and all such
modifications are intended to be included within the scope
of present invention. The benefits, advantages, solutions to
problems, and any element(s) that may cause any benefit,
advantage, or solution to occur or become more pronounced are
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Application 13/155,200
In the Final Office Action (5—6), the Examiner reads contested
limitations LI and L2 on Gold, which describes the use of two sensors with
RFID tags:
In FIG. 8 [of Gold], a sensor 900a has a first RFID tag 901 a
and second RFID tag 902a. Sensor 900b is the same sensor as
sensor 900a, but exists in a different "state." Sensor 900b has a
first RFID tag 901b and a second RFID tag 902b. When
Condition X is met, as represented by step 925, sensor 900a
first RFID tag is enabled 901a (capable of transmitting a signal)
and second RFID tag is disabled 902a (incapable of
transmitting a signal). When Condition X is not met,
as represented by step 975, sensor 900b first RFID tag is
disabled 901b and second RFID tag is enabled 902b. This
permits such an embodiment to be capable of continuously
transmitting information about the presence of such a sensor
within a space being read by a RFID reader system, and also
provides information relating to Condition X (whether or
not it has been met), paragraphs 25, 28, and 48-49. Fig. 7b -
8).
(Emphases added).
Appellants contend, inter alia:
[W]hen Gold is combined with Yurr [sic, Yturralde],
identification devices transmit a first signal. However, when
those identification devices are subjected to physical
deformation, they are disabled. Said differently, the
combination teaches transmitting a first signal while the CSR
wrap is closed and then ceasing transmission when the wrap is
opened. This is not what Appellant claims. To the contrary,
Appellant claims transmitting a first signal when the CSR
wrap is closed and transmitting a second signal when the
wrap is opened. The combination of Gold and Yurr [sic,
not to be construed as a critical, required, or essential features
or elements of any or all the claims. (Emphases added).
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Yturralde] is incapable of doing this for at least the reason that
the identification devices of the combination are disabled in
response to physical deformation.
(App. Br. 10) (Emphases omitted and added in bold and italics).)
Appellants further contend, inter alia:
At paragraph [049], Gold teaches several “prompts” that
can serve as “Condition X” to cause the signal swapping upon
which the Examiner relies. None of these is deformation.
“Condition X may be any of a variety of prompts, including but
not limited to a physical or mechanical input (e.g., door open or
closed, container secure or not, force on a mobile asset
exceeding 10 g's or not, etc.), as well as prompts relating to
temperature, time, and the presence of various chemical or
biological agents, or radiation.” Id.
To be sure, in each and every embodiment of Gold
where a tag is deformed, it is disabled. Consider, for example
Gold at paragraph 29: “In the case of a physical or mechanical
force, such force could involve directly damaging, disabling or
even partial or complete destruction (e.g., tearing) of an
element of a sensor tag of a Sensor Assembly of the present
invention to cause the sensor tag to become incapacitated and
unable to transmit a signal, for example.” Emphasis added.
Consider also paragraph [0034]: “In the case of a disabled
passive tag of the present invention, such disabled state may be
due to an element of such a passive tag causing the tag's
transmission capability to be turned off, or possibly because the
passive tag has been disabled, such as by physical deformation
or destruction, for example.” Emphasis added.
(App. Br. 11—12) (emphases omitted and added in bold).)
The Examiner disagrees, and essentially restates the findings from the
Final Office Action, as reproduced above. (Ans. 3—4).
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Claim Construction
As an initial matter of claim construction, and regarding the
conditional “when the outer CSR wrap is opened” step of method claim 1,
we note that conditional steps employed in a method claim need not be
found in the prior art if, under the broadest reasonable interpretation, the
method need not invoke those steps. See Ex parte Schulhauser, No. 2013-
007847, 2016 WL 6277792 at *4 (PTAB April 28, 2016) (precedential)
(holding “[t]he Examiner did not need to present evidence of the
obviousness of the remaining method steps of claim 1 that are not required
to be performed under a broadest reasonable interpretation of the claim . . .
see also Ex parte Katz, No. 2010-006083, 2011 WL 514314, at *4—5
(BPAIJan. 27, 2011).2
Applying this reasoning here, we conclude the condition precedent
(“when the outer CSR wrap is opened”) of method claim 1 is not positively
recited as actually occurring, under a broad but reasonable interpretation.
Assuming arguendo that our reviewing court may decide to give the
contested conditional step of claim 1 patentable weight, we reach the merits
of the obviousness rejection, infra.
2 See also Applera Corp. v. Illumina, Inc., 375 F. App’x 12, 21 (Fed. Cir.
2010) (unpublished) (affirming a district court’s interpretation of a method
claim as including a step that need not be practiced if the condition for
practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration Forum,
Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007) (unpublished) (“It is of course
true that method steps may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed.”).
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Turning to the evidence, Gold (143) teaches disabling a sensor tag by
tearing or destruction:
Embodiments of a container seal implemented according to the
present invention may include a sensor tag having an element
(e.g., antenna, power supply, critical component) that is
integrated with a part of the container seal that is breakable
or separable, such that the breakage or separation (e.g.,
opening, release, tearing, destruction) of the container seal
results in the disabling of the sensor tag, whereby it cannot
transmit a signal. Sensor tag disabling means (e.g., the means
by which a sensor tag’s signal transmission capability is turned
off) may include any of a variety of designs and structures that
either physically disable or destroy the sensor tag, or disable or
destroy a particular component or associated element, for
example. In one possible embodiment, for example, a sensor
tag antenna is physically separated to thereby disable signal
transmission capability.
Gold further describes (149) or depicts (Fig. 8) an assembly of two
tags, in which at least one tag is always enabled and transmitting a
signal:
Another example of a possible embodiment implemented
according to the present invention includes two tags that
“swap” functionality, meaning one is enabled (capable of
transmitting a signal) while the other is disabled (incapable of
transmitting a signal), and subsequently, following a prompt,
they swap states. For example, such an embodiment may have a
first RFID tag that is enabled while Condition X is met, and a
second RFID tag that is disabled while Condition X is met, with
the tags swapping roles when Condition X is not met such that
the first RFID tag is disabled while Condition X is not met, and
the second RFID tag is enabled while Condition X is not met.
Such an embodiment provides an assembly that uses two
tags, in combination, to provide information about the presence
of the assembly (since one tag is always functioning as an
identifier tag and transmitting a signal), while
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Application 13/155,200
communicating information about whether (or not) Condition X
is met by virtue of the configuration, i.e., whether the first tag is
enabled and second tag is disabled, or the first tag is disabled
and the second tag is enabled. Swaps may be unidirectional or
bidirectional. Condition X may be any of a variety of prompts,
including but not limited to a physical or mechanical input (e.g.,
door open or closed, container secure or not,. . . .”
Gold (149, Fig. 8) (emphases added).
Given this evidence, in which Gold (149) (emphasis added) describes
“one tag is always functioning as an identifier tag and transmitting a
signal,” we find Appellants’ principal contention is unavailing:
Gold and Yurr [(Yturralde)] is incapable of doing this for at
least the reason that the identification devices of the
combination are disabled in response to physical deformation.
(App. Br. 10).
Appellants further urge (App. Br. 10) that “Appellant claims
transmitting a first signal when the CSR wrap is closed and transmitting a
second signal when the wrap is opened.”
Given the evidence relied on by the Examiner (Final Act. 2—7), we
find the proffered combination of Yturralde, Gold, and Austin3 teaches, or at
least suggests, transmitting a first tag signal so long as the sealed wrap is
closed (and elements of the tag and integral seal are not tom or destroyed —
i.e., the tag is enabled), and disabling the first tag signal when the sealed
wrap (Austin | 5) is opened, torn, or destroyed (Gold 143), and enabling
3 Austin teaches, in pertinent part, a system and method for managing an
inventory of sterilized surgical “sealed wrap” (| 5), and other sterilized
medical devices which are contained within a sealed sterilization case (in
preparation for surgery), using RFID and/or GPS devices (Abstract).
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and transmitting a second signal after the wrap is opened. (See e.g., Gold
1143, 49, Fig. 8; Austin 1 5).
Thus, consistent with Gold’s description in paragraphs 43, 49 and
Figure 8, the sensor tags (plural “identification devices”) each have “an
element (e.g., antenna, power supply, critical component) that is integrated
with a part of the container seal” (143) (emphasis added). When a
condition X occurs (Gold Fig. 8), i.e., breakage or separation by “opening,
release, tearing, [or] destruction of the container seal” (143), the first sensor
tag is disabled, whereby it cannot transmit a signal, and the second sensor
tag is enabled. See Gold H 43, 49 and Figure 8.
Nor do we conclude Appellants’ claim 1 is limited to a single
identification device:
1. A method of assembling a surgical pack, the method
comprising: . . .
affixing one or more adhesive bindings to the outer CSR wrap,
wherein an identification device is disposed between the one
or more adhesive bindings and the outer wrap such that:
as long as the outer CSR wrap is unopened, the identification
device is capable of delivering a first identification signal to a
remote reader; and
when the outer CSR wrap is opened, the identification device
is physically deformed so as to deliver a second identification
signal to the remote reader. (Emphases added).
Turning to Appellants’ Specification for context, we find paragraph 26
expressly defines: “As used in the description herein and throughout the
claims, the following terms take the meanings explicitly associated herein,
unless the context clearly dictates otherwise: the meaning of ‘a,’ ‘an,’ and
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‘the’ includes plural reference___ ” (Spec. 126) (emphasis added). Our
reviewing court also provides applicable guidance regarding the use of the
indefinite article “an” under the transitional phrase “comprising:”
[T]his court has repeatedly emphasized that an indefinite
article “a” or “an” in patent parlance carries the meaning of
“one or more” in open-ended claims containing the transitional
phrase “comprising.” That “a” or “an” can mean “one or more”
is best described as a rule, rather than merely as a presumption
or even a convention. The exceptions to this rule are extremely
limited: a patentee must “evince[] a clear intent ” to limit “a ”
or “an ” to “one. ” The subsequent use of definite articles “the ”
or “said” in a claim to refer back to the same claim term does
not change the general plural rule, but simply reinvokes that
non-singular meaning.
SanDisk Corp. v. Kingston Technology Co., Inc., 695 F.3d 1348, 1360 (Fed.
Cir. 2012) (citing Baldwin Graphic Systems, Inc. v. Siebert, 512 F.3d 1338,
1342 (Fed. Cir. 2008)).
Applying this reasoning here, particularly in light of the disclosure in
Appellants’ Specification (| 26) that “‘the’ includes plural reference,” we
conclude the scope of claim 1 broadly but reasonably encompasses the
operation of plural identification devices or RFFID “tags” as described in
the cited references.4 Therefore, we find the Examiner’s proffered
combination of Yturralde, Gold, and Austin teaches, or at least suggests,
contested limitations LI and L2 of claim 1:
such that as long as the outer CSR wrap is
unopened, the identification device is capable of
4 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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delivering [LI] a first identification signal to a remote
reader, and
when the outer CSR wrap is opened, the
identification device is [L2] physically deformed so as to
deliver a second identification signal to the remote
reader.
We emphasize “the question under 35 U.S.C. § 103 is not merely
what the references expressly teach but what they would have suggested to
one of ordinary skill in the art at the time the invention was made.” Merck
& Co., Inc. v. Biocraft Laboratories, Inc., 874 F. 2d 804, 807—808 (Fed. Cir.
1989).
For at least the aforementioned reasons, and based upon a
preponderance of the evidence, Appellants have not persuaded us the
Examiner erred. Accordingly, we sustain § 103 rejection A of representative
independent claim 1, and rejection A of associated dependent claims 3—5
(not separately argued), which fall with claim 1 (see supra, Grouping of
Claims).
Rejection B of Dependent Claim 7
Appellants urge that the additional Swan reference does not overcome
the purportedly “missing limitations” as previously contested regarding the
Examiner’s proffered combination of Yturralde, Gold, and Austin, as
applicable to claim 1, from which claim 7 directly depends. (App. Br. 14).
However, we find this argument unpersuasive, because we find the contested
limitations of claim 1 are taught or suggested under § 103, for the reasons
discussed above.
We also find unpersuasive Appellants’ additional contention that
“[t]he combination instead teaches away from this arrangement by teaching
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disablement of identification devices in response to physical deformation.”
(Id.). As discussed above, we conclude the scope of claim 1 broadly but
reasonably encompasses plural identification devices, which are taught by
Gold, and operate in tandem, as discussed above.5
Rejection C of Dependent Claim 8
Regarding claim 8, Appellants similarly urge the additionally cited
Otto reference does not overcome the limitations previously contested
regarding the Examiner’s proffered combination of Yturralde, Gold, and
Austin, as applicable to claim 1, from which claim 8 directly depends. (App.
Br. 14). We find this argument unpersuasive, because we find the contested
limitations of claim 1 are taught or suggested under § 103, for the reasons
discussed above.
Conclusion
For at least the aforementioned reasons, on this record, and based
upon a preponderance of the evidence, Appellants have not persuaded us the
Examiner erred in concluding that all contested claims rejected under § 103
are obvious over the combined teachings and suggestions of the cited prior
art.
5 Teaching an alternative or equivalent method, however, does not teach
away from the use of a claimed method. In re Dunn, 349 F.2d 433, 438
(CCPA 1965).
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DECISION
We affirm the Examiner’s decision rejecting claims 1, 3—5, 7, and 8
under pre-AIA 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f).
AFFIRMED
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