Ex Parte Man

Patent Trial and Appeal Board

Jun 28, 2018

13479286 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/479,286
101848 7590
BYIP,LTD.
P.O. Box 1484
General Post Office
Hong Kong,
HONGKONG
FILING DATE FIRST NAMED INVENTOR
05/24/2012 Chun Sing Matthew MAN
07/02/2018
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.
MEG-1210-USPT 2758
EXAMINER
MCCORMACK, THOMAS S
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
charles_ho@barron-young.com
charlesho@barron-young.com
cho@barron-young.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUN SING MATTHEW MAN
Appeal2017-005864
Application 13/479,286
Technology Center 2600
Before MAHSHID D. SAADAT, THU A. DANG, and
JAMES W. DEJMEK, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge THU A. DANG.
Opinion dissenting filed by Administrative Patent Judge
JAMES W. DEJMEK.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-7, 9-18, and 20-22. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Megabyte Limited.
Br. 2.
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Application 13/479,286
A. INVENTION
According to Appellant, the invention is directed to "an anti-theft
RFID system." Spec. 1, Abst.
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. An anti-theft RFID system for monitoring the presence of
a plurality of merchant items during an in-store try-out process
in a store selling the items, each of the items being attached to an
RFID tag, the anti-theft RFID system comprising:
a display counter having a top surface;
a predefined area designated on the top surface of the
display counter within which the items are placed during the in-
store try-out process;
an RFID reader embedded under the top surface of the
display counter within the predefined area, the RFID reader
comprising an antenna configured to transmit an interrogating
signal to the RFID tags located on the top surface of the display
counter within the predefined area and retrieve data from the
RFID tags through the antenna;
a processor embedded under the top surface of the display
counter within the predefined area, connected to the RFID reader
and configured to process the data that the RFID reader retrieves
from the RFID tags; and
a display embedded under the top surface of the display
counter within the predefined area, connected to the processor
and configured to display a result processed by the processor;
wherein:
the processor is configured to set a first counter configured
to indicate the number of tagged items located within the
predefined area before the in-store try-out process during which
the tagged items are tried out by a potential customer, to set a
second counter configured to indicate the number of tagged items
being taken away from the predefined area during the in-store
try-out process, and to continuously update a counter value of the
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Application 13/479,286
first counter and a counter value of the second counter during the
in-store try-out process; and
the display is configured to simultaneously display the
values of the first and the second counters and to continuously
display updates of the values of the first and the second counters
during the in-store try-out process and thereby to assist a staff
supervising the in-store try-out process to instantly determine the
occurrence of a security event by analyzing the values of the first
and the second counters during the in-store try-out process; and
the RFID reader and the antenna are configured to detect
and monitor in real time the presence of the items being
displayed within the predefined area on the display counter and
the items being taken away from the predefined area on the
display counter during the in-store try-out process.
C. REJECTIONS
1) Claims 1--4, 7, 10, 12, 14, 15, 18, 21, and 22 stand rejected under
35 U.S.C. § I03(a) over Reznik et al. (US 7,757,947 B2; issued July 20,
2010), Ramos-Elizondo et al. (US 8,020,768 B2; issued Sept. 20, 2011),
Nycz et al. (US 2006/0244593 Al; published Nov. 02, 2006), and Yarin et
al. (US 6,294,999 B 1; issued Sept. 25, 2001 ).
2) Claims 5 and 16 stand rejected under 35 U.S.C. § I03(a) over
Reznik, Ramos-Elizondo, Nycz, and Yarin, in further view of Bruning (US
2003/0231001 Al; published Dec. 18, 2003).
3) Claims 6, 11, and 17 stand rejected under 35 U.S.C. § I03(a) over
Reznik, Ramos-Elizondo, Nycz, and Yarin, in further view ofMainguet et
al. (US 2009/0058595 Al; published Mar. 05, 2009).
2) Claims 9, 13, and 20 stand rejected under 35 U.S.C. § I03(a) over
Reznik, Ramos-Elizondo, Nycz, and Yarin, in further view of Sammel et al.
(US 2007 /0258535 Al; published Nov. 08, 2007).
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Application 13/479,286
II. ISSUE
The dispositive issue before us is whether the Examiner errs in finding
the combination of Reznik, Ramos-Elizondo, Nycz, and Y arin teaches or
suggests "an anti-theft RFID system" comprising "a display counter having
a top surface," and a "display embedded under the top surface of the display
counter" that is "configured to simultaneously display the values of the first
and the second counters" to assist a staff supervising the in-store try-out
process "to instantly determine the occurrence of a security event by
analyzing the values of the first and the second counters during the in-store
try-out process." Claim 1 ( emphasis added).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellant's Invention
1. Appellant's invention is directed to "an anti-theft RFID system
for monitoring the presence of a plurality of tagged items, each of the tagged
items being attached to an RFID tag." Spec. 2, 11. 2--4. Figure 6 is
reproduced below:
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Application 13/479,286
501
607, ... .., ··················;:r==·=·~·=..=·=~>=7···
\ / ~ .• '.'."i"'"' ,Vf[t1!Jt ' / \ / IJ:'t];f. 7~'14,W /
I / % - / ---.--./' 7.-----
Computer+ Display
•. DISPLAY SHHJi'CG\JN'l.·.E:1·· · •............................. ··•···. . . ~ ...................................... I
HG.6
Figure 6 shows the physical installation of the anti-theft RFID system
"applied in the fixed container or display shelf." Spec. 9, 11. 9--10. As
shown in the figure, antennas 603 and RFID reader 605 are hidden under the
surface of "the display shelf' or "the display counter 607." Id. 9, 11. 17-19.
Thereupon, any tagged item put in defined area 501 can be detected by the
system. Id. 9, 11. 15-16. In other embodiments, the anti-theft RFID system
"can be lodged and embedded inside movable containers such as display
trays, bins, boxes, etc." Id. 6, 11. 26-27. A counter is used to count the
number of tagged items detected on the read area and another counter is used
to count the number of tagged items taken out of the read area, so that store
staff can read both counters to determine if all items "are safely and
properly" collected back again. See id. 7, 1. 20-8, 1. 17.
Reznik
2. Reznik discloses an RFID enabled storage bin and methods for
tracking inventory. Reznik, 1: 16-17. In particular, the storage bins can
"track the location of assets and ensure that assets removed from bins are
properly returned." Id. 3: 13-15. Each tracked item is provided with an
RFID tag. Id. 4: 64--5: 10. The information can be conveyed to a user via an
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Application 13/479,286
LCD "that displays the name of the items placed in the bin and/or the
number of items placed in the bin," and the user interface circuit "may also
be used to display the number of items removed from the bin for a given
project." Id. 6: 1-9.
Ramos-Elizondo
3. Ramos-Elizondo discloses a portable container that uses RFID
to monitor taking and returning of items from the container, including
jewelry. Ramos-Elizondo, Abst. The portable container can be used to
provide "tight control over each item and an immediate control over taking
and returning operations." Id. 3:31-33.
Nycz
4. Nycz discloses an RFID system to track several surgical
instruments on a tray, for each instrument "to be quickly and efficiently
inventoried and tracked." Nycz, Abst. The tray comprises an area on its
roughly planar top surface surrounded on its perimeter by a raised lip, within
which the surgical instruments are placed. Id. ,r 33, Figs. 1, 5.
IV. ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments presented in this appeal. Arguments which Appellant could have
made, but did not make in the Brief are deemed to be waived. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv). On the record before us, we are unpersuaded the
Examiner has erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner's
Answer, and provide the following for highlighting and emphasis.
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Application 13/479,286
Appellant contends none of the cited references show or suggest a
"display counter" with "a predefined area" thereon, or an anti-theft system
for use in an "in-store try-out process" to prevent shoplifting. Id. 12.
Although Appellant concedes Reznik is used to "readout the contents
of the bin and/or provide the user with other data" (id. 12) and Ramos-
Elizondo displays inventory status (id. 13), Appellant contends the
combination of references fails to disclose a "display configured to
simultaneously display values of the first and the second counters." Id. 12
( emphasis omitted). Further, Appellant contends that, in Reznik and Ramos-
Elizondo, "occurrence of security event is not instantly determined by
comparing the values of two counters" in the references. Id. 13-14.
Appellant then contends Reznik and Ramos-Elizondo are directed to
different fields and problems, and are "not analogous to the invention of the
instant application, and therefore does not qualify as prior art under 3 5 USC
103." Br. 7-8. Thus, Appellant alleges, the combination of Reznik, Ramos-
Elizondo, Nycz and, Y arin is made "with the aid of hindsight in order to
arrive at the claimed invention." Id. IO, emphasis added. According to
Appellant, the references are in different fields of endeavor and "focus on
solving different problems" (id. 11, emphasis added) from each other and the
Appellant's problem. See id. 8-10. Appellant contends there is no reason to
combine the references to arrive at the claimed invention. Id. I 0-11.
We have considered all of Appellant's arguments and evidence
presented. However, we are unpersuaded by Appellant's contentions
regarding the Examiner's rejections of the claims. On this record, we find
no error with the Examiner's combination of references and ultimate
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conclusion that claims would have been obvious over the combined
references.
We note that with respect to a "display counter designated with
predefined area for in-store try-out," Appellant merely states what Reznik,
Ramos-Elizondo, Nycz, and Y arin individually teach, and then contend none
of the cited references show or suggest "a display counter" (Br. 11) or "use
of an anti-theft system in an in-store try-out process to prevent shoplifting."
Id. at 12 (repeating language from claim 1). Merely reciting the language of
the claim is insufficient. See 37 C.F.R. § 4I.37(c)(l)(iv) ("A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim"). Further, we find mere
attorney argument without supporting evidence is conclusory, and, therefore,
unpersuasive. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
( attorney argument is not the kind of factual evidence required to rebut a
prima facie case of obviousness); In re Pearson, 494 F.2d 1399, 1405
( CCP A 197 4) ("Attorney's argument in a brief cannot take the place of
evidence"); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984);
Ex parte Belinne, No. 2009-004693, 2009 WL 2477843, slip op. at *7-8
(BP AI Aug. 10, 2009) (informative).
Nevertheless, we give the claim, as specifically recited, its broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). Although we interpret claims broadly
but reasonably in light of the Specification, we, nonetheless, must not import
limitations from the Specification into the claims. See In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993).
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Contrary to Appellant's contention that "Ramos involves a portable
container," "Nycz involves a surgical instrument tray," and "Yarin involves
a tray," wherein "none of the cited references show or suggest a display
counter" (Br. 11-12), the Specification and claims do not provide a specific
definition for the term that precludes a "display counter" from being
comprised on a portable container or tray. In particular, the Specification
merely discusses "display counter" as a "DISPLAY SHELF /COUNTER" in
Figures 5 and 6, and in the context of "display shelf or display counter" in
describing the embodiments. FF 1. Figures 5 and 6 illustrate an
embodiment in which the physical installation of the setup is "applied in the
fixed container or display shelf." Id. However, in another embodiment, the
Specification discusses how the anti-theft RFID system "can be lodged and
embedded inside movable containers such as display trays, bins, boxes, etc."
Id., emphasis added.
Given the broadest reasonable interpretation consistent with the
Specification, as recited in claim 1, we interpret "display counter" as a
structure comprising a surface over which items are displayed. Accordingly,
we do not find the Examiner's interpretation that a "display counter"
encompasses a "display tray" (Ans. 20) to be overly broad or unreasonable.
Given the broadest reasonable interpretation discussed above, we are
unpersuaded of error in Examiner's finding that Nycz's instrument tray
comprises a "display counter" with a display area on the top surface for
displaying items thereon. Ans. 20; FF 4. That is, we agree with the
Examiner's reliance on Nycz to teach or at least suggest "a display counter"
having "a predefined area designated on the top surface of the display
counter," as recited in claim 1. Id.; see also KSR Int'! Co. v. Teleflex, Inc.,
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550 U.S. 398, 416 (2007). Accordingly, we are also unpersuaded of error
with the Examiner's finding that Nycz, in combination with Ramos-
Elizondo at least suggests "display counter" with "a predefined area"
thereon, for "in-store try-out process," as recited in claim 1. Id. 20-21.
As to Appellant's argument that Reznik "cannot be interpreted to
mean that the display 22 is used to simultaneously display two counter
values" (Br. 12), Appellant concedes that Reznik discloses that the LCD can
display "the number of items placed in the bin," and the user interface circuit
can "also be used to display the number of items removed from the bin." Id.
12 (citing Reznik, 6:4--10). That is, although Reznik describes embodiments
displaying different information, Reznik also indicates that LCD display of
item information is also provided. FF 2.
The test for obviousness is what the combined teachings would have
suggested to one of ordinary skill in the art. See In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). The Supreme Court has clearly stated
the "combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results." KSR,
550 U.S. at 416.
Here, Appellant has presented no evidence that displaying the values
of the number of items in the bin as well as the number of items removed
from the bin at the same time would have been "uniquely challenging or
difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Accordingly, we agree with the Examiner that, one of ordinary
skill in the art, upon reading Reznik, would have found it obvious to
implement the simultaneous display of the number of items in the bin and
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the number of items removed from the bin (Ans. 21 ), and find no error in
Examiner's reliance on Reznik to teach or at least suggest a "display is
configured to simultaneously display the values of the first and the second
counters." Claim 1.
Appellant argues that "occurrence of security event is not instantly
determined by comparing the values of two counters" in the references (Br.
13-14), because Reznik and Ramos-Elizondo show RFID data "first
transmitted" to a storage device or computer, and processed before being
utilized. Id. 13-15. However, such argument is not commensurate with the
recited language of the claims. In particular, claim 1 does not require any
"comparing" of the values of the counters to determine occurrence of a
security event. In fact, we note that claim 1 does not even require any
determination of an occurrence of a security event. That is, claim 1 merely
recites a "display" that is configured to simultaneously "display" the values
of the counters "thereby to assist a staff' to perform the determination.
Claim 1 ( emphasis added).
Furthermore, we note Appellant does not explain how the additional
processing steps preclude an instantaneous determination. As Examiner
points out, no objective time criteria is provided in the Specification to
define as to what time is sufficient to comprise an "instantly" determined
occurrence, wherein Appellant's argument merely comprises a statement
that the prior art does not instantly determine an occurrence of security
event. Ans. 21. Mere attorney arguments that are unsupported by factual
evidence are entitled to little probative value. In re Geisler, 116 F.3d at
1470; In re Pearson, 494 F.2d at 1405; In re De Blauwe, 736 F.2d at 705; Ex
parte Belinne, No. 2009-004693, 2009 WL 2477843, slip op. at *7-8.
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Absent evidence of how the prior art's determining step fails to
sufficiently "instantly" determine, we are unpersuaded that the Examiner
erred in concluding that Reznik teaches or suggests "instantly determining"
an occurrence. Ans. 22.
Furthermore, we note that Examiner further finds that it would have
been obvious to provide data to the user "in real time or 'instantly"' in
pursuit of accurate assessment and wireless data sending and receiving, in
Reznik or Ramos-Elizondo. Id. That is, the Examiner also relies on what
Reznik and Ramos-Elizondo would have suggested to one of ordinary skill
in the art. See Merck, 800 F .2d at 1097. Here, even if arguendo, the claim
were to require such determining step that is performed "in real time" (Ans.
22), the Examiner provides an "articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness" of providing
the determination in real time. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).
Although Appellant also contends that Reznik and Ramos-Elizondo
are nonanalogous to the claimed invention, the nonanalogous art test
considers the threshold question whether a prior art reference is "too remote
to be treated as prior art." In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)
(quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)). A reference is
analogous art to the claimed invention if: (1) the reference is from the same
field of endeavor as the claimed invention ( even if it addresses a different
problem); or (2) the reference is reasonably pertinent to the problem faced
by the inventor ( even if it is not in the same field of endeavor as the claimed
invention) (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
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Here, as explained by the Examiner, Reznik discloses providing
tracking of RFID tagged items (FF 2), similar to Appellant's claimed
invention (FF 1; Ans. 18-19). The invention is also similar to the disclosure
in Ramos-Elizondo of monitoring RFID tagged jewelry (FF 3; Ans. 18-19).
Thus, we are unpersuaded that Reznik or Ramos-Elizondo is not from the
same field of endeavor as the claimed invention (tracking merchandise using
RFID) or is not reasonably pertinent to the problem faced by the inventor
(loss prevention for merchandise). See Bigio, 381 F.3d at 1325. That is, we
are unpersuaded that Reznik or Ramos-Elizondo is "too remote to be treated
as prior art." See Clay, 966 F.2d at 658 (quoting Sovish, 769 F.2d at 741).
As explained by the Examiner, the proposed combination would
provide an RFID item tracking configuration that would provide "tracking
RFID tagged items" in Reznik, and "monitoring of RFID tagged jewelry" in
Ramos-Elizondo. Ans. 18-19. See Kahn, 441 F.3d at 988.
As to Appellant's hindsight contentions (Br. 9-10), the Supreme
Court has clearly stated the "combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." See KSR, 550 U.S. at 416. Here, Appellant has
presented no evidence that providing jewelry inventory control, item
tracking, and/or embedded display, in Reznik's storage system would have
been "uniquely challenging or difficult for one of ordinary skill in the art."
See Leapfrog, 485 F .3d at 1162. Instead, we find such a combination of
references in the same field of item tracking would have been well within
the ordinary level of skill of the art. See KSR, 550 U.S. at 417. In particular,
we find that Appellant's invention is simply a modification (adding jewelry
inventory, rapid item tracking, and embedded display) of the familiar prior
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art teaching of a system for tracking items ( as taught or suggested by
Reznik) that would have realized a predictable result to the skilled artisan.
The skilled artisan is "a person of ordinary creativity, not an automaton."
KSR, 550 U.S. at 421.
On this record, we are not persuaded of error in the Examiner's
rejection of claim 1 over Reznik, Ramos-Elizondo, Nycz, and Yarin.
Appellant does not provide substantive arguments for claims 10 and
14 separate from those of claim 1. Br. 15. On this record, we are also
unpersuaded that the Examiner erred in rejecting 1) claims 2--4, 7, 12, 15,
18, 21, and 22 over Reznik, Ramos-Elizondo, Nycz, and Yarin; 2) claims 5
and 16 over Reznik, Ramos-Elizondo, Nycz, and Y arin, in further view of
Bruning; 3) claims 6, 11, and 17 over Reznik, Ramos-Elizondo, Nycz, and
Yarin, in further view ofMainguet; and 4) claims 9, 13, and 20 over Reznik,
Ramos-Elizondo, Nycz, and Yarin, in further view of Sammel.
V. CONCLUSION AND DECISION
The Examiner's rejections of claims 1-7, 9-18, and 20-22 under
35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUN SING MATTHEW MAN
Appeal2017-005864
Application 13/479,286
Technology Center 2600
Before MAHSHID D. SAADAT, THU A. DANG, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DISSENTING OPINION
I respectfully dissent from the Majority's decision affirming the
Examiner's rejection of claims 1-7, 9-18, and 20-22 under 35 U.S.C.
§ 103(a).
Appellant challenges the Examiner's finding that the cited prior art
teaches or suggests "a predefined area designated on the top surface of the
display counter" as recited in independent claim 1 and commensurately
recited in independent claims 10 and 14. Br. 11-12. In particular, Appellant
asserts none of the references teaches "a display counter," but instead relate
to portable bins, containers, or trays having RFID (radio frequency
identification) capabilities. Br. 11-12. For the reasons discussed infra, I
find Appellant's argument persuasive of Examiner error.
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Application 13/479,286
Reznik is generally directed to a contents-aware storage bin that
"includes a transportable bin unit adapted for placement within a storage bin
rack." Reznik, Abstract. Reznik discloses that RFID tags may be attached
or otherwise incorporated into objects to be detected. Reznik, col. 1, 11. 19-
22. An RFID reader is capable of communicating with the RFID tags and
may be used to locate the presence of an object comprising an RFID tag.
Reznik, col. 1, 11. 22-24. Reznik further discloses a transportable storage bin
may be equipped with either an RFID reader or an RFID antenna ( which
communicates with an RFID reader) such that the contents of the bin may be
tracked. Reznik, col. 2, 11. 3-20.
Ramos-Elizondo is generally directed to "[a] portable container
inventory control system [that] uses RFID technology for automatically
monitoring the taking and returning operations of items ... from one or
more receptacles inside a portable container." Ramos-Elizondo, Abstract.
Ramos-Elizondo describes that the items to be tracked may include
"valuable, important or dangerous items such as tools, jewels, [and]
medicines." Ramos-Elizondo, col. 1, 11. 16-17. In the disclosed inventory
control system, a portable container (such as a tool box) comprises one or
more pads, each pad having a plurality of receptacles, each receptacle
comprising an individually shaped receptacle for receiving a corresponding
specific tool ... wherein the shape of the receptacle matches to the shape of
the tool." Ramos-Elizondo, col. 4, 11. 53---62; see also col. 1, 11. 8-12.
Nycz is generally directed to a smart tray (i.e., a tray incorporating
RFID technology) "to provide an inventory management system for surgical
instruments." Nycz ,r,r 14--1 7.
The apparatus of this embodiment comprises a surgical
instrument tray for accommodating one or more surgical
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instruments. Located within the body of the surgical instrument
tray is an RF transceiver unit, including a controller and one or
more RF antenna transceivers, for projecting an RF field onto at
least one surface of the surgical instrument tray to activate an
RFID transponder tag associated with a surgical instrument and
to receive a signal emitted by the RFID transponder tag.
Nycz ,r 17. Figures 4--6 ofNycz provide expanded cross-sectional views of
the disclosed smart surgical instrument tray. Nycz ,r,r 26-28, 39-41.
Y arin is generally directed to a smart tray to assist in the self-
management of medication treatment by patients. Yarin, Abstract. Yarin' s
"Smart Tray" is "capable of monitoring and reporting to third parties a
patient's compliance with various treatment regimens." Yarin, col. 5, 11. 26-
29. Y arin describes an embodiment of the Smart Tray comprising a
generally flat surface wherein a plurality of receptacles are disposed within
the surface. Y arin, col. 6, 11. 9-14, Fig. 3. The receptacles are configured to
removably receive medication containers. Yarin, col. 6, 11. 14--26. Yarin
describes the surface of the Smart Tray, as well as the receptacles may
comprise RFID reader functionality to sense the presence of RFID tags
affixed to medication containers stored in the receptacles or medical
equipment placed on the Smart Tray. Yarin, col. 7, 11. 22-35.
In rejecting the independent claims (i.e., claims 1, 10, and 14), the
Examiner relies on Nycz's smart surgical instrument tray as teaching a
display counter having a predefined area designated on the top surface of the
display counter within which items are placed for detection and tracking by
an RFID reader. Non-Final Act. 7-8 (citing Nycz ,r,r 39-40, Figs. 1, 4--6).
In response to Appellant's argument that the prior art-particularly, Nycz-
fails to teach or suggest a display counter as claimed, the Examiner states
"Ncyz [sic] teaches a predefined area on a top surface of a display tray."
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Application 13/479,286
Ans. 20 ( citing Nycz, Figs. 1, 4---6). Thus, the Examiner finds Nycz' s
display tray corresponds to the claimed display counter.
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The broadest reasonable interpretation differs from the broadest possible
interpretation. In re Smith Int'!, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017).
The correct inquiry in giving a claim term its broadest reasonable
interpretation in light of the specification is "an interpretation that
corresponds with what and how the inventor describes his invention in the
specification, i.e., an interpretation that is 'consistent with the
specification."' Smith, 871 F.3d at 1382-83 (quoting In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997)). However, limitations are not to be read into
the claims from the Specification. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993).
In the Specification, Appellant describes at least two embodiments of
the disclosed invention. See, e.g., Spec. 9:7-10:2, Figs. 5, 7. In the
embodiment depicted in Figure 5, Appellant describes the installation of the
system as applied in a ''fixed container or display shelf." Spec. 9: 10
( emphasis added). Appellant further discloses in this embodiment the "items
are put on the display shelf or display counter" in a predefined area wherein
the predefined area is a controlled area of the display shelf or display counter
where the RFID reader and antennas are installed to allow for the detection
of any tagged item placed in the controlled area. Spec. 9: 12-14. In a
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Appeal2017-005864
Application 13/479,286
different embodiment, Figure 7 illustrates "the physical installation of the
system setup when [it is] applied in any movable containers, such as a tray."
Spec. 9:21-24 (emphasis added). Thus, in one embodiment, the system is
installed as part of a fixed (i.e., non-movable) container and in the other
embodiment, the system is installed as part of a movable (i.e., portable)
container, such as a tray.
Consistent with the Specification, by reciting the system is installed as
part of a display counter, I understand the claims to encompass the fixed
container embodiment. Although Nycz's smart surgical instrument tray may
teach or suggest a movable container embodiment of Appellant's system, I
disagree with the Examiner that it also teaches a fixed container
embodiment, such as one comprising a display counter as claimed.
Additionally, to support a conclusion that a claim is directed to obvious
subject matter, i.e., that a feature is an obvious matter of design choice, an
Examiner must present a "convincing line of reasoning" as to why one of
ordinary skill in the art would have found the claimed feature to have been
obvious. Ex parte Clapp, 227 USPQ 972, 973 (BP AI 1985). Here, the
Examiner has not provided persuasive evidence or a convincing line of
reasoning that it would have been an obvious design choice to adapt the
predefined area of the top surface ofNycz's surgical instrument tray to a
fixed structure, such as a display counter.
For the foregoing reasons, I would have reversed the Examiner's
rejection of claims 1-7, 9-18, and 20-22 under 35 U.S.C. § 103(a).
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