DeRoyal Industries, Inc.

Patent Trials and Appeals Board

Oct 13, 2020

15041484 - (D) (P.T.A.B. Oct. 13, 2020)

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.
15/041,484 02/11/2016 Brian C. DeBusk 71368.US 6703
408 7590 10/13/2020
LUEDEKA NEELY GROUP, P.C.
P O BOX 1871
KNOXVILLE, TN 37901
EXAMINER
HAIDER, FAWAAD
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
10/13/2020 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):
LNG.PATENT@gmail.com
docketing@luedeka.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN C. DEBUSK,
JOE L. SMITH, and MARY E. KAYLOR
__________________

Appeal 2020-002780
Application 15/041,484
Technology Center 3600
____________________

Before JAMES P. CALVE, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1–4, 6–9 and 17–19.2 Appeal Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies DeRoyal Industries, Inc. as the real party in interest. Appeal Br. 2.
2 Claims 10–16 are canceled. Final Act. 2; Appeal Br. 5 (Corrected Claims
Appendix), filed September 12, 2019. Claims 5 and 20 are objected to
because they depend from a rejected claim. Final Act. 1 (Office Action
Summary), 8 (Allowable Subject Matter).
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Application 15/041,484
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CLAIMED SUBJECT MATTER
Claims 1, 8, and 17 are independent. Claim 1 is reproduced below.
1. A method for maintaining a digital chain of
custody of a medical item to which an RFID tag and an optical
code are attached, both of which encode a unique identifier that
uniquely identifies the medical item, wherein the digital chain
of custody comprises a digital record of transfers of custody of
medical items from user to user that is stored in a medical item
inventory database, the method comprising:
(al) providing a shielded enclosure having an interior
space and a lockable door, wherein the shielded
enclosure is configured to attenuate radio frequency
signals emanated from RFID tags disposed outside
the shielded enclosure to levels that are substantially
undetectable within the interior space, wherein access
to the interior space is made via the lockable door
that is controlled by an inventory computer;
(a2) disposing an RFID antenna within the interior space
of the shielded enclosure;
(a3) disposing the medical item within the interior space
of the shielded enclosure;
(b) performing a first scan of the interior space of the
shielded enclosure using an RFID reader connected
to the RFID antenna and detecting the RFID tag
attached to the medical item;
(c) decoding the unique identifier encoded in the RFID
tag attached to the medical item using the RFID
reader;
(d) storing the unique identifier in the medical item
inventory database in association with information
identifying the shielded enclosure;
(e) receiving first user identification information at the
inventory computer and verifying that the first user
identification information is associated with a first
user who is authorized to access the interior space of
the shielded enclosure;
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(f) upon verification of the first user identification
information, the inventory computer unlocking the
door of the shielded enclosure to provide access
thereto;
(g) the first user removing the medical item from the
shielded enclosure;
(h) after step (g), performing a scan of the interior space
of the shielded enclosure using the RFID reader and
determining that the medical item is no longer within
the shielded enclosure based on the RFID tag
attached to the medical item that was detected during
the first scan being not detected during the
subsequent scan;
(i) based on a determination that the medical item is no
longer within the shielded enclosure, updating the
digital chain of custody of the medical item by
associating the unique identifier of the medical item
with the first user identification information in the
medical item inventory database;
(j) after step (i), scanning the optical code attached to the
medical item using a mobile computing device
associated with a second user;
(k) decoding the unique identifier encoded in the optical
code attached to the medical item; and
(1) an inventory management server computer updating
the digital chain of custody of the medical item by
associating the unique identifier of the medical item
in the medical item inventory database with second
user identification information that identifies the
second user, thereby indicating that custody of the
first medical item has passed from the first user to the
second user.
Appeal Br. 1–2 (Claims App.).3

3 Citations to the Claims Appendix refer to the Corrected Claims Appendix
that was filed September 12, 2019. Citations to the Appeal Brief refer to the
Appeal Brief that was filed August 13, 2019.
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Application 15/041,484
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REJECTION
Claims 1–4, 6–9, and 17–19 are rejected under 35 U.S.C. § 103 as
unpatentable over Andreasson (US 2004/0046020 A1, pub. Mar. 11, 2004),
Hoganson (US 2014/0048593 A1, pub. Feb. 20, 2014), and Austin (US
2008/0030345 A1, pub. Feb. 7, 2008).
ANALYSIS
Claims 1–4, 6–9, and 17–19
Rejected Over Andreasson, Hoganson, and Austin
Regarding independent claims 1, 8, and 17, the Examiner finds that
Andreasson discloses a method of disposing a medical item in an interior
space of a shielded enclosure (storage compartment) of a dispensing unit for
medications, and the closed drawer can be considered a shielded enclosure.
Final Act. 2–3, 7. The Examiner finds that Andreasson scans products in an
interior space of the shielded enclosure using an RFID reader to obtain and
decode a unique identifier from an RFID tag, unlocks the door so a first user
can remove the medical item from the shielded enclosure, scans the optical
code attached to the medical item, decodes the unique identifier, and updates
a digital chain of custody as claimed. Final Act. 3–4; Ans. 3–4.
The Examiner finds that Hoganson updates a digital chain of custody
by associating a unique identifier of the medical item with a first user, and
Austin provides a shielded enclosure configured to attenuate radio frequency
signals emanating from RFID tags disposed in an enclosure made of steel,
aluminum, titanium or other metal. Final Act. 4–5; Ans. 3–4. The Examiner
determines it would have been obvious to modify Andreasson with a chain
of custody of Hoganson to use differing identification modes and attenuation
of Austin to identify, locate, and manage inventory of sterilized devices. See
Final Act. 4–5.
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Appellant argues that Andreasson’s teaching of a closed drawer or
other compartment does not describe a shielded enclosure constructed of
metal or other material that would cause the drawer/compartment to be RF
shielded, and the Examiner’s finding that a closed drawer “would be seen as
a shielded enclosure” is not supported by any evidence or reasoning. Appeal
Br. 9. Appellant argues that Austin’s case allows radio frequency signals to
enter and leave the case so RFID tags on items inside the case can be read by
an RFID reader disposed outside the case. Id. at 11–12. Appellant argues
there is no motivation to modify Andreasson’s non-shielding drawer with a
metal shielding of Austin when the antenna is outside the drawer and could
not read RFID tags on items inside the drawer. Reply Br. 4; Appeal Br. 11–
12. Appellant further asserts that Andreasson does not scan an optical code
attached to a medical item that is removed from the shielded enclosure but
instead scans only an RFID tag on each item without describing the use or
scanning of optical codes such as bar codes. Appeal Br. 10; Reply Br. 2.
The Specification describes the term “shielded” as follows:
As the term is used herein, “shielded” means that the cabinet 12
is designed to prevent the antenna 16 from receiving RFID
signals from RFID tags located outside the cabinet 12 at a
signal-to-noise ratio high enough to trigger detection of those
outside RFID tags. For purposes of this disclosure, “shielded”
does not mean that absolutely all RF energy is blocked from
entering the cabinet, as this would require unnecessary levels of
shielding.
Spec. ¶ 18. Claim 1 also recites “the shielded enclosure is configured
to attenuate radio frequency signals emanating from RFID tags
disposed outside the shielded enclosure to levels that are substantially
undetectable within the interior space.” Appeal Br. 1 (Claims App.).
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Application 15/041,484
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Andreasson’s drawer 440 does not attenuate radio frequency signals
or block RFID antennas 464 outside of drawer 440 from receiving signals
from RFID tags inside drawer 440. Drawer 440 contains sections 442 for
medical products with RFID tags that communicate with RFID antennas 464
located outside drawer 440. Andreasson ¶¶ 58–62. Radio frequency signals
pass through drawer 440 so RFID antennas 464 can receive RFID signals
from RFID tags in the drawer. Id. ¶ 62. The Examiner has not explained
why drawer 440 is a shielded enclosure that attenuates RFID signals. Ans.
3; Reply Br. 3. If drawer 440 is a shielded enclosure, it is not clear how
RFID antennas 464 outside drawer 440 read RFID tags inside drawer 440.
Andreasson’s Figure 4A is reproduced below to illustrate drawer 440.

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Figure 4A of Andreasson above illustrates dispensing unit 410 and
casing 435 with drawer compartment 440 comprising individual sections
442 that store medical items. Andreasson ¶¶ 58–61. RFID antennas 464 are
positioned outside of, and directly beneath, drawer 440 when it is closed so
the antennas can read RFID tagged products held in sections 442 of drawer
440 above them. Id. ¶ 62. RFID antennas 464 are not placed in an interior
space of drawer 440, as claimed, even if the drawer is a shielded enclosure
as the Examiner asserts. See Ans. 3. There is no indication in Andreasson
that drawer 440 shields RFID tagged items in the drawer from transmitting
to RFID antennas 464 outside of the drawer. Instead, RFID antennas 464
located outside of drawer 440 communicate with RFID tags on items located
within drawer 440. Andreasson ¶ 62. In the Answer, the Examiner appears
to concede that Andreasson does not disclose an RF-shielded enclosure and
asserts that “Austin is relied on to teach this disclosure.” Ans. 3–4.
Austin teaches that metal casings are used to shield or attenuate RFID
communications, as the Examiner finds. Ans. 3–4; Austin ¶ 207. However,
Austin adds openings to the metal case so RFID signals can enter and leave
the case to provide communication between an RFID reader outside the case
and an RFID tagged product inside the case. Austin ¶ 207. Part of the case
may be a material that allows RFID communication with RFID tagged items
inside the case. Id. Austin teaches such non-shielded cases are preferable to
known metallic sterilization cases that prevent RFID signals from passing
through a case because a non-shielded case permits an RFID reader outside
the non-shielded case to communicate with RFID tags on items inside the
case without removing the items from the case during an inventory. Id. ¶ 20.
Austin thus teaches non-shielded enclosures as a way to improve inventories
of RFID tagged items.
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As a result, the Examiner’s reason for modifying Andreasson’s non-
shielded drawer 440 to be shielded for “identifying, locating, and managing
inventory of sterilized medical devices” lacks a rational underpinning. Final
Act. 5. First, Austin teaches that metal cases shield RFID tags inside a case
from signaling RFID readers outside the case, requiring surgical personnel to
break a sterilization seal on a case and remove instruments to inventory them
with an RFID reader. Austin ¶ 20. Austin teaches that non-shielded cases
improve inventory management of sterilized medical devices by allowing
medical instruments located inside a case to be interrogated and identified by
an RFID reader located outside of the case without removing the medical
instruments from the case. Austin ¶¶ 201–207. We find no basis to modify
Andreasson’s non-shielded drawer 440 to be a shielded enclosure based on
the teachings of Austin. Second, if Andreasson’s drawer 440 was modified
to be a shielded enclosure, RF reader 145 and/or RFID antennas 464 could
not read RFID tags 20 on items in storage compartments 440 as Andreasson
intends. See Andreasson ¶¶ 60, 62. Andreasson would not function for its
intended purpose if drawer 440 was a shielded enclosure. See Reply Br. 3.
Thus, we do not sustain the rejection of claims 1–4, 6–9, and 17–19.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–4, 6–9,
17–19
103 Andreasson,
Hoganson, Austin
1–4, 6–9,
17–19
REVERSED