Ex Parte Tenarvitz et al

Patent Trial and Appeal Board

Jul 10, 2017

12622882 (P.T.A.B. Jul. 10, 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.
12/622,882 11/20/2009 Henry J. Tenarvitz 0134257.0638896 5205
123455 7590 07/12/2017
Midmark Corporation c/o Frost Brown Todd LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/12/2017 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):
patents @ fbtlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRY J. TENARVITZ,
H.T. SNOWDAY, and GARY GAISSER
Appeal 2016-002998
Application 12/622,8821
Technology Center 3600
Before JASON V. MORGAN, AMBER L. HAGY, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 4, 8, 9, 17, 21, and 22. All other claims are canceled.
App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Invention
Appellants disclose a system that “includes a plurality of self-service
units where one or more of the units is configured to store a plurality of
1 Appellants identify Versus Technology, Inc., as the real party in interest.
App. Br. 3.
Appeal 2016-002998
Application 12/622,882
auto-ID patient tags and where the one or more of the units includes a
dispensing mechanism to dispense stored tags.” Abstract.
Exemplary Claim
Independent claim 21, reproduced below with key limitations
emphasized, is representative:
21. A context-aware system for facilitating the delivery of
healthcare to patients within a clinical environment monitored
by real-time locating apparatus including auto-ID patient tags
wherein patients having tags are located within the environment
in real time by the apparatus, the system comprising:
a plurality of kiosks wherein at least one of the kiosks is
a dispensing kiosk is a dispensing kiosk configured to store a
plurality of reusable, auto-ID patient tags, including previously
dispensed reusable tags, each of the stored, reusable tags being
capable of transmitting signals used by the apparatus to
establish real-time location of patients having the tags, each of
the tags being capable of transmitting a wireless signal
including ID information upon actuation and wherein the
dispensing kiosk includes a dispensing mechanism to dispense
stored tags and to actuate tags during dispensing of the tags so
that each of the dispensed tags transmits a wireless signal; and
a control computer subsystem including a workstation
coupled to the dispensing mechanism and including at least one
user interface, the workstation being configured to send a first
signal to the dispensing mechanism to dispense a stored tag and
to actuate the stored tag during dispensing of the stored tag so
that the dispensed tag transmits the wireless signal wherein the
dispensing kiosk includes a first receiver coupled to the
workstation to receive the wireless signal including its
associated ID information and provide the ID information to the
workstation.
Rejections
The Examiner rejects claims 4, 8, 17, 21, and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Chudd (US 2009/0111562 Al; pub.
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Application 12/622,882
Apr. 30, 2009) and Dohm (US 2008/0277466 Al; pub. Nov. 13, 2008).
Final Act. 4—8.
The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Chudd, Dohm, and McAllister (US 2006/0080819 Al;
pub. Apr. 20, 2006). Final Act. 8—9.
ANALYSIS
We agree with and adopt as our own the Examiner’s findings of facts
and reasons as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellants’ arguments, but do not
find them persuasive. Thus, we concur with the Examiners conclusions. We
provide the following explanation for emphasis.
In rejecting claim 21 under 35 U.S.C. § 103(a), the Examiner finds
that Chudd’s card management system teaches or suggests a plurality of
kiosks generally as recited. Final Act. 4—5 (citing, e.g., Chudd Figs. 15A,
15C, and Tflf 217—26). Although the Examiner finds Chudd’s cards can
include RFID chips (and thus have the capability of transmitting a wireless
signal including ID information) (Final Act. 5 (citing Chudd 242, 265)),
the Examiner does not rely on Chudd’s card management system to teach or
suggest several recitations directed to the actuation of stored tags, during
dispensing, to enable such transmissions. Rather, the Examiner relies on
Dohm’s assignment and activation of an RFID unique to a customer to teach
or suggest the claimed actuation. Final Act. 6—7 (citing, e.g., Dohm Figs 1,
2, and 19).
Appellants contend that neither Chudd, which discloses its card
management system in the context of slot machines, nor Dohm, which
provides RFIDs for use in car washes, is analogous to the claimed invention.
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Application 12/622,882
See App. Br. 5. Appellants argue the Examiner erroneously “justifies
combining these non-analogous items of prior art on the ground that the
preamble of claim 21 is not limiting.” Id. In particular, Appellants contend
that the “claim limitations ‘real-time locating apparatus' and ‘auto-ID
patient tags' are structural limitations of claim 21 that were improperly
disregarded in the Examiner’s obviousness determination” (id. at 7) and that
“[tjhese references are non-analogous to the clinical environment of claim
21” (id. at 12).
Appellants’ arguments are unpersuasive because, as the Examiner
correctly notes, Appellants’ arguments are directed to the intended use of the
claimed structure—what the claimed structure is capable of—not to features
of the claimed structure itself. See Ans. 6. The preamble recitation of the
claimed kiosks and computer subsystem being part of a system “for
facilitating the delivery of healthcare to patients within a clinical
environment monitored by real-time locating apparatus including auto-ID
patient tags” does not limit field of endeavor because the “real-time locating
apparatus” is not itself part of the claimed system. The invention instead
includes a dispensing kiosk that stores “reusable tags being capable of
transmitting signals used by the apparatus to establish real-time location of
patients having the tags” (emphasis added). That is, the RFID tags of Chudd
and Dohm are capable of transmitting a signal that has the intended use of
being used by an apparatus to establish real-time location of patients having
the tags, but the structure to effect this intended use is not itself claimed.
Thus, the preamble features of the apparatus are non-limiting and do not
restrict the field of endeavor.
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Application 12/622,882
Furthermore, we agree with the Examiner that recitation of a “patient”
is merely a label representing a non-functional description of a user. Final
Act. 7; Ans. 5. That is, a “patient” merely indicates the type of customer for
whom the tags are intended. However, this intended use does not affect the
structure or operation of the claimed invention. Thus, we agree with the
Examiner that terms such as “auto-ID patient tags,” whether in the preamble
or the body of the claim, do not restrict the field of endeavor in the manner
Appellants argue. Ans. 5.
For these reasons, we agree with the Examiner that both Chudd and
Dohm are within the claimed invention’s field of endeavor. Appellants’
arguments with respect to McAllister are similar and are similarly
unpersuasive. See App. Br. 11. Therefore, we agree with the Examiner that
all relied upon references quality as analogous art.
Appellants further argue that neither Chudd nor Dohm “is reasonably
pertinent to the particular problem with which the inventors of the system of
claim 21 were involved, namely, a context-aware system for facilitating the
delivery of healthcare to patients within a clinical environment monitored by
real-time locating apparatus including auto-ID patient tags.” Id. at 13; see
also Reply Br. 2—A. However, as the references are within the claimed
invention’s field of endeavor, we do not reach this issue.
Appellants similarly rely on preamble recitations to argue the
combination of Chudd and Dohm does not enable one skilled in the art to
make and use the claimed invention. App. Br. 13; see also Reply Br. 4—5.
However, for the reasons discussed above, Appellants have not shown that
the preamble recitations limit the structure in a manner that would render the
combination of Chudd and Dohm non-enabling. Appellants argue that
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Application 12/622,882
Chudd fails to teach or suggest actuation of a stored tag during dispensing.
Reply Br. 4—5. However, the Examiner relies on Dohm, not Chudd, to teach
or suggest the timing of such actuation. Final Act. 6—7. Therefore,
Appellants’ arguments are unpersuasive.
Appellants contend the Examiner improperly relied on hindsight
reasoning. App. Br. 14. However, Appellants’ contention is conclusory and
unsupported by persuasive arguments or evidence.
Appellants also contend the Examiner improperly
treated the prior art references like disparate pieces of a jigsaw
puzzle, “but failed to provide the glue to combine these
references,” i.e., the Examiner “did not explain what reason or
motivation one of ordinary skill in the art at the time of the
invention would have had to place these pieces together.”
InTouch Technologies, Inc. v. VGO Communications, Inc., 751
F.3d 1327, 1349-50 (Fed. Cir. 2014).
App. Br. 15.
Appellants’ reliance on InTouch is unpersuasive because that case
related to expert witness testimony having “numerous problems” including
the expert witness’s “failure to: (1) identify sufficient reasons or
motivations to combine the asserted prior references; (2) focus on the
relevant time frame . . . ; or (3) consider any objective evidence of
nonobviousness.” InTouch Tech., Inc., 751 F.3d at 1348. Appellants have
not identified any such problems in this case, or even persuasively addressed
the Examiner’s preferred reason for why it would have been obvious to an
artisan of ordinary skill to combine the prior art in the claimed manner.
Final Act. 7. Therefore, we find no error in the Examiner’s conclusion that
it would have been obvious to combine the teachings and suggestions of
Chudd and Dohm in the manner claimed.
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Application 12/622,882
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of independent claim 21, and dependent claims 4, 8, 9, 17, and 22, which
Appellants do not argue separately. App. Br. 16.
DECISION
We affirm the Examiner’s decision rejecting claims 4, 8, 9, 17, 21,
and 22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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