Ex Parte Lee

Patent Trial and Appeal Board

Jun 7, 2018

13305731 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/305,731
76870 7590
B.Y.I.P. LTD.
P.O. Box 1484
General Post Office
Hong Kong,
HONGKONG
FILING DATE FIRST NAMED INVENTOR
11/28/2011 Hui Ling LEE
06/11/2018
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HKPC-1196-USPT 7494
EXAMINER
BROWN, VERNAL U
ART UNIT PAPER NUMBER
2686
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
CHO@BARRON-YOUNG.COM
charles_ho@barron-young.com
charlesho@barron-young.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUI LING LEE 1
Appeal2018-001373
Application 13/305,731
Technology Center 2600
Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 7-12, 14, and 21-23, which constitute all the
claims pending in this application. App. Br. 2. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellant lists OSCL Corporation Limited as the real party in interest.
Appeal Brief 2, filed May 29, 2017 ("Br.").
2 Rather than repeat the Examiner's positions and Appellant's arguments in
their entirety, we refer to the above mentioned appeal-brief, as well as the
following documents for their respective details: the Final Action mailed
March 29, 2017 ("Final Act.") and the Examiner's Answer mailed
September 8, 2017 ("Ans.").
Appeal2018-001373
Application 13/305,731
STATEMENT OF THE CASE
The Invention
Appellant describes the present invention as follows:
A [Radio Frequency Identification (RFID)] system for checking
medical items includes a processing unit; two RFID readers
connected with the processing unit; at least an antenna connected
to each of the RFID readers; and a plurality of RFID tags being
respectively attached to a plurality of medical items. The RFID
tags are configured to store identification codes that respectively
and uniquely correspond to the medical items that the RFID tags
are attached to. The RFID readers are configured to respectively
read the identification codes of the medical items from the RFID
tags through the antennas before and after a surgical operation
and send the identification codes to the processing unit. The
processing unit is configured to receive the identification codes
and determine the completeness of the medical items based on
the received identification codes. A method for checking
medical items with the RFID system is also provided.
Abstract.
We understand Appellant's invention to be directed, then, to a system
and method for auditing medical-equipment inventory and reporting
inventory discrepancies uncovered by the audit. That is, we understand
Appellant's invention to relate to the concept of organizing or analyzing
information in a way that can be performed mentally or that is analogous to
human mental work. See March 2018: Eligibility Quick Reference Sheet 2
("IdentifYing Abstract Ideas (Part 2)") and more particularly the subsection
thereunder titled "An Idea Of Itself-MPEP 2106.04(a)(2) Part (III)."
(available at https://www.uspto.gov/sites/default/files/documents/ieg-
qrs.pdf). Furthermore, it provisionally appears that the claimed invention
entails gathering data by using generic computer components in their well
understood, routine, and conventional manner.
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Appeal2018-001373
Application 13/305,731
The Rejections
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Volpi (US 7,411,506 B2; issued Aug. 12, 2008) and Halberthal
(US 8,193,938 B2; issued June 5, 2012). Final Act. 3---6.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Volpi, Halberthal, and Chen (US 2008/0266104 Al; published Oct. 30,
2008). Final Act. 6.
Claims 7-12 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Halberthal and Volpi. Final Act. 6-10.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Halberthal, Volpi, and Verard (US 2008/0200926 Al;
published Aug. 21, 2008). Final Act. 10-11.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Volpi, Halberthal, and Verard). Final Act. 11-12.
Standard of Review
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential).
CLAIMS 1 AND 2
Independent claim 1 illustrates the subject matter of claims 1 and 2: 3
1. A[ n] RFID system for checking medical items comprising:
a processor;
a first RFID reader connected with the processor;
a second RFID reader connected with the processor;
3 Appellant argues claims 1 and 2 together as a first group. See Br. 2.
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Application 13/305,731
a first antenna connected to the first RFID reader and
covering a first coverage area;
a second antenna connected to the second RFID reader and
covering a second coverage area;
a first tray disposed in the first coverage area;
a second tray disposed in the second coverage area; and
a plurality of RFID tags being respectively attached to a
plurality of medical items;
wherein the RFID tags are configured to store
identification codes that respectively and uniquely correspond to
the medical items that the RFID tags are attached to;
the first RFID reader only reads the identification codes of
the medical items from the RFID tags through the first antenna
and send the identification codes to the processor before a
surgical operation, the second RFID reader only reads the
identification codes of the medical items from the RFID tags
through the second antenna and send the identification codes to
the processor after the surgical operation;
the first tray is adapted to load the medical items before
the surgical operation, the second tray is adapted to load at least
one of the medical items moved from the first tray during the
surgical operation; and
the first coverage area and the second coverage area are
mutually exclusive;
wherein the processor stores a first predetermined standard
list of the medical items to be loaded in the first tray before the
surgical operation, and a second predetermined standard list of
the at least one of the medical items to be loaded in the second
tray during the operation, and wherein the processor generates a
list of missing medical items and a warning after determining that
a sum of total numbers of the medical items in the first tray and
the second tray after the operation are not identical with a total
number of the medical items in the first tray before the operation;
and
wherein the first and second trays are open trays.
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Appeal2018-001373
Application 13/305,731
Contentions and Analysis
The Examiner finds that Volpi discloses all of the limitations of
claim 1 except for the claimed predetermined standard lists for the first and
second trays. Final Act. 3-5. The Examiner finds that Halberthal teaches
identifying clean medical items stored in a tray 112 before surgery, storing
and identifying used medical items in a second tray 116, and generating a
warning and list of missing medical items. Id. at 5. The Examiner reasons
that it would have been obvious to include within Volpi' s system, a means
of tracking instruments as taught by Halberthal, "in order to ensure that tools
or disposables are not left inside the patient after a medical procedure." Id.
at 6.
The Examiner further explains
Halberthal teaches registering all tools and disposable[s]
prior to the beginning of surgery and teaches tracking all the tools
and disposable[ s] that are placed in utilities and teaches
comparing registered tools and disposable[ s] to the tracked tools
and disposables at the end of the surgery. It is the examiner's
position that the list of registered medical tools and disposable[ s]
represent[ s] the standard list.
Ans. 4--5 (citing Halberthal, col. 4, 1. 57---col. 5, 1. 2)
Appellant notes that the Examiner does not rely upon Volpi for
teaching the following:
a processor that stores (i) a first predetermined standard list of
the medical items to be loaded in the first tray before the surgical
operation, and (ii) a second predetermined standard list of at least
one of the medical items to be loaded in the second tray during
the operation,
as recited in claim 1. Br. 8. Appellant argues, inter alia, that Halberthal
does not teach a processor that stores these two claimed lists. Id.
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Application 13/305,731
Appellant's argument is persuasive. The Examiner sets forth a basis
for finding that Halberthal teaches one list (see, e.g., Ans. 4--5), but the
rejection does not set forth a basis for finding that Halberthal teaches the two
lists, as claimed. Accordingly, we do not sustain the rejection of claim 1.
We likewise do not sustain the obviousness rejection of dependent claim 2,
because the rejection of that claim does not rely on the additionally cited
reference, Chen, to cure the deficiency noted in relation to claim 1. See
Final Act. 6.
CLAIMS 7-12, 14, AND 21-23
Independent claim 7 illustrates the subject matter of claims 7-12 and 14: 4
7. A method for checking medical items comprising:
before a surgical operation, reading identification codes of
a plurality of medical items disposed in a first tray from a first
plurality of RFID tags respectively attached to the medical items
through at least a first antenna and sending the identification
codes to a processor with a first RFID reader; and receiving the
identification codes and determining whether the medical items
disposed in the first tray are complete according to the received
identification codes with the processor; and
after the operation, reading identification codes of at least
one of the medical items disposed in a second tray from a second
plurality ofRFID tags respectively attached to the at least one of
the medical items through at least a second antenna and sending
the identification codes to the processor with a second RFID
reader; and receiving the identification codes and determining
whether the medical items disposed in the second tray are
complete according to the received identification codes with the
4 Appellant argues claims 7-12 and 14 together as a second group and
separately argue claims 21-23 together as a third group. See Br. 2. For the
reasons discussed in this Opinion, Appellant's arguments regarding
independent claim 7 are relevant to claims 21-23, as well.
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Application 13/305,731
processor, and wherein the processor generates a list of missing
medical items and a warning after determining that a sum of total
numbers of the medical items in the first tray and the second tray
after the operation are not identical with a total number of the
medical items in the first tray before the operation;
wherein the first antenna covers a first coverage area and
the first tray is disposed in the first coverage area; the second
antenna covers a second coverage area and the second tray is
disposed in the second coverage area; and
the first coverage area and the second coverage area are
mutually exclusive; wherein the first and second trays are open
trays.
Contentions and Analysis
The Examiner finds that Halberthal discloses every limitation of
independent claim 7, except for the coverage areas of the two trays being
mutually exclusive. Final Act. 6-8. The Examiner finds that Volpi teaches
this limitation and that motivation existed to incorporate this teaching into
Halberthal's system. Id. at 8.
In the Examiner's Answer, the Examiner clarifies how Halberthal's
teachings correspond to claim 7' s limitation,
wherein the processor generates a list of missing medical items
and a warning after determining that a sum of total numbers of
the medical items in the first tray and the second tray after the
operation are not identical with a total number of the medical
items in the first tray before the operation.
Ans. 4. Specifically, the Examiner finds that Halberthal teaches registering
tools and disposables at the end of surgery and comparing these items to the
list of tracked items to identify if any items are missing. Id. (citing
Halberthal col. 4, 11. 57----67). The Examiner reasons that "the determination
of the missing tools/disposable[s] and the generation of the report [are]
distinct function[s] performed by the computer. Ans. 4. We understand the
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Application 13/305,731
Examiner's position to be that ( 1) the claim requirement of generating a list
reads on Halberthal' s processor determining that a discrepancy exists, and
(2) the claim requirement of generating a warning reads on Halberthal's
generation of the report.
Appellant argues that the claim requires two distinct acts-generating
a list and generating a warning. Br. 11-12. Appellant argues that
Halberthal' s identification of the missing medical tools and disposables
reasonably cannot be interpreted as constituting both of these two distinct
acts. Id.
Appellant's argument is persuasive. Affording the claim terms their
ordinary and customary meanings, Appellant's Specification reasonably
indicates that the claimed warning is separate from the claimed report. See,
e.g., Spec. 11 (a list of missing medical items and a warning will be
generated") (emphasis added). Furthermore, in order for a system to
generate either a warning or a report of a discrepancy, the system necessarily
has to determine initially that a discrepancy exists. As such, Halberthal' s
determination of the discrepancy, in this context, reasonably constitutes a
precursor step for generating a report, but it does not reasonably constitute
generating a report, itself.
Because the Examiner relies on an unreasonably broad interpretation
of claim 7, we do not sustain the obviousness rejection of that claim or of
claims 10-12 and 14, which depend from claim 7. 5
5 Being an appellate body, we limit ourselves to determining whether the
Examiner established a prima facie case ofunpatentability. We do not
address the separate question of whether it would have been obvious, in fact,
to modify the cited art to additionally include a warning notification. We
leave this inquiry to the Examiner to consider upon any further prosecution.
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Application 13/305,731
With respect to the remaining rejections of dependent claims 21-23,
the relied upon portions of Verard do not cure the deficiency of the
obviousness rejection explained above. See Final Act. 10-12 (citing Verard,
i-fi-174, 75). We likewise, then, do not sustain the obviousness rejection of
claims 21-23.
DECISION
The Examiner's decision rejecting claims 1, 2, 7-12, 14, and 21-23 is
reversed.
REVERSED
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