Ex Parte Danilewitz

Patent Trial and Appeal Board

Dec 20, 2018

14738733 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/738,733
23990 7590
DOCKET CLERK
FILING DATE
06/12/2015
12/25/2018
P.O. DRAWER 800889
DALLAS, TX 75380
FIRST NAMED INVENTOR
Dale Danilewitz
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.
AMEROl-00044 7601
EXAMINER
HAIDER,FAWAAD
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
patents@munckwilson.com
munckwilson@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALE DANILEWITZ
Appeal2017-007385
Application 14/738,733 1
Technology Center 3600
Before ERIC S. FRAHM, JOHNNY A. KUMAR, and
SCOTT B. HOW ARD, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-3, 5-11, and 13-30. Claims 4 and 12 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellant, AmerisourceBergen Specialty Group, Inc. is the
real party in interest (App. Br. 2).
Appeal2017-007385
Application 14/738,733
STATEMENT OF THE CASE
Appellant's disclosed and claimed invention pertains to a product
inventory management system having a server system and network that
tracks inventory in a cabinet using radio frequency identifier (RFID) tags
placed on pharmaceutical product units (Title; Fig. 1; Spec. ,r,r 2---6; Abs.;
claims 1, 9, 16, 24). Claim 1 is exemplary, and is reproduced below, with
emphasis added to the key disputed limitation:
1. A product inventory management system
compnsmg:
a cabinet configured to contain a plurality of
pharmaceutical product units having radio frequency identifier
(RFID) tags, the cabinet further configured to monitor the
pharmaceutical product units by wirelessly detecting the RFID
tags; and
a server system configured to communicate over a
network with the cabinet, the server system configured to
manage contents of the cabinet, the server system configured to
initiate an order to have additional pharmaceutical product units
added to the cabinet according to a current inventory list for the
cabinet;
wherein the pharmaceutical product units in the
cabinet include consignment pharmaceutical product units,
wherein the server system is configured to (i)
maintain one or more of the pharmaceutical product units on the
current inventory list for at least a predetermined time period
after removal of the one or more pharmaceutical product units
from the cabinet, and (ii) remove the one or more
pharmaceutical product units from the current inventory list
following an expiration of at least the predetermined time period
after the removal of the one or more pharmaceutical
product units from the cabinet, and
wherein the server system is configured to create an
invoice in response to removal of at least one of the
pharmaceutical product units from the current inventory list.
2
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Application 14/738,733
The Examiner's Rejections
The Examiner has rejected (i) claims 1-3, 5, 7-11, 13, 15-20, 22-28,
and 30 under 35 U.S.C. § I03(a) as being unpatentable over Maloney (US
6,707,381 Bl; issued March 16, 2004), Shaffer (US 2006/0192001 Al;
published Aug. 31, 2006), Ortiz (US 2007/0272746 Al; published Nov. 29,
2007), and Haitin (US 2003/0120384 Al; published June 26, 2003) (Final
Act. 2---6; Ans. 3-5); and (ii) claims 6, 14, 21, and 29 under 35 U.S.C.
§ I03(a) as being unpatentable over Maloney, Shaffer, Ortiz, Haitin, and
Frederick (US 7,689,316 Bl; issued March 30, 2010) (Final Act. 6).
ANALYSIS
We have reviewed Appellant's arguments in the Briefs (App. Br. 10-
21 and Reply Br. 2-10), the Examiner's rejection (Final Act. 2---6), and the
Examiner's response (Ans. 3-5) to Appellant's arguments in the Appeal
Brief. Independent claims 1, 9, 16, and 24 on appeal recite a product
inventory management system having a server system and network that
tracks inventory in a cabinet using radio frequency identifier (RFID) tags
placed on pharmaceutical product units,
wherein the server system is configured to (i) maintain one or
more of the pharmaceutical product units on the current
inventory list for at least a predetermined time period after
removal of the one or more pharmaceutical product units from
the cabinet, and (ii) remove the one or more pharmaceutical
product units from the current inventory list following an
expiration of at least the predetermined time period after the
removal of the one or more pharmaceutical product units from
the cabinet.
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Application 14/738,733
Claims 1 and 9 ( emphasis added); see also claims 16 and 24 ( reciting
commensurate limitations regarding managing an inventory list by
removing product units from the inventory list upon expiration of "at
least the predetermined time period" after removal of the product units
from the cabinet).
Appellant contends that "[ n Jone of the cited references discloses or
suggests removing one or more pharmaceutical product units from a 'current
inventory list' following expiration of at least a 'predetermined time period
after removal of the one or more pharmaceutical product units from the
cabinet"' (App. Br. 13). More specifically, Appellant contends (App. Br.
13-14; Reply Br. 4--7) Ortiz and/or Haitin fail to disclose or suggest a
system that sets a predetermined time period for use in determining when to
remove a product unit from a current inventory list, as recited in each of
independent claims 1, 9, 16, and 24 on appeal. This contention is premised
on Appellant's assertion (see App. Br. 13-14; Reply Br. 4, 6) that the
Examiner errs in relying on a product expiration date (see e.g., Ortiz ,r,r 12,
13, 19,20,22,63,65, 73; Shafferi-fi-f 4, 8, 10, 17,28,29,43,46,49,50)as
teaching or suggesting expiration of a time period (i.e., based on an product
expiration date) after removal of a product from a cabinet. We agree with
Appellant's contentions above.
We also agree with Appellant's contentions (App. Br. 13-14, 18-20)
that any combination of the applied references, even when the predetermined
time period is set to zero, fails to teach or suggest the disputed limitation.
We find no such disclosure in any of Shaffer, Ortiz, and Haitin,
whether taken singly or in combination, to support the Examiner's position
that the claimed subject matter (i.e., removing pharmaceutical product units
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Application 14/738,733
from the cabinet "for at least a predetermined time period") is taught or
suggested by Shaffer, Ortiz, and Haitin (and as a result, the applied
combination of Maloney, Shaffer, Ortiz, and Hai tin).
We will not resort to speculation or assumptions to cure the
deficiencies in the Examiner's fact finding. See In re Warner, 379 F.2d
1011, 1017 (CCP A 1967). As such, based on the record before us, we find
that the Examiner improperly relies upon the combination of Shaffer, Ortiz,
and Haitin to teach or suggest the disputed claim limitation. See Warner at
1017.
As a result, we agree with Appellant that
despite the fact that the Examiner has cited approximately thirty
paragraphs in four references, the Examiner fails to show that
any of these references ( or a combination thereof) discloses or
suggests removing one or more pharmaceutical product units
from a "current inventory list" following expiration of at least a
"predetermined time period after removal of the one or more
pharmaceutical product units from" a cabinet. Thus, the rejection
is factually and legally deficient and clear error.
Reply Br. 7.
In view of the foregoing, we do not sustain the Examiner's
obviousness rejection of independent claims 1, 9, 16, and 24, as well as
dependent claims 2, 3, 5, 7, 8, 10, 11, 13, 15, 17-20, 22, 23, 25-28, and 30
depending respectively therefrom over the base combination of Maloney,
Shaffer, Ortiz, and Haitin. And for similar reasons, and because the
Examiner's obviousness rejection of dependent claims 6, 14, 21, and 29 is
based on the Examiner's erroneous obviousness rejection of independent
claims 1, 9, 16, and 24 discussed supra, we likewise do not sustain the
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Application 14/738,733
Examiner's obviousness rejection of claims 6, 14, 21, and 29 over the same
base combination taken with Frederick.
CONCLUSION
Appellant has persuaded us of error in the Examiner's decision to
reject claims 1-3, 5-11, and 13-30. 2
DECISION
We reverse the decision of the Examiner to reject claims 1-3, 5-11,
and 13-30.
REVERSED
2 We recognize that Appellant's arguments present additional issues (see
e.g., App. Br. 11-12, 14--15 Reply Br. 2--4, 7-9). Because we were
persuaded of error by the issue regarding the predetermined time period, as
recited in claims 1, 9, 16, and 24, we do not reach the additional issues, as
the predetermined time period issue is dispositive of the appeal.
6