Ex Parte Salvat

Patent Trial and Appeal Board

Mar 16, 2018

12963309 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/963,309 12/08/2010 Roberto Sal vat JR.
21917 7590 03/20/2018
MCHALE & SLAVIN, P.A.
2855 PGA BL VD
PALM BEACH GARDENS, FL 33410
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.
3123U.003 2599
EXAMINER
WU,ZHENY
ART UNIT PAPER NUMBER
2685
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
uspatents@mchaleslavin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERTO SAL VAT JR.
Appeal2017-007513
Application 12/963,309
Technology Center 2600
Before BRUCE R. WINSOR, IRVINE. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 3, 7, 9, 17, 18, 21, 23, 29--31, 34, and
36. Claims 1, 2, 4---6, 8, 10-16, 19, 20, 22, 24--28, 32, 33, and 35 have been
canceled. See App. Br. 21-26 (Claims App'x). We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is S.I.P. Holdings, LLC.
App. Br. 1.
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Application 12/963,309
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to tracking and locating
medical supplies. Spec. i-f 2. Claim 17, which is illustrative, reads as
follows:
1 7. A tracking system comprising:
a trackable container containing at least one object to be
located therein;
said at least one object to be located positioned inside said
trackable container including at least a third communicator
attached thereto, said third communicator being a radio
frequency identification device;
a first communicator positioned within said trackable
container, said first communicator being constructed and
arranged to function as a radio frequency identification reader for
communicating with said third communicator, said first
communicator positioned in a proximity to said third
communicator to electronically communicate therewith,
whereby information regarding at least the presence of said at
least one object to be identified is transferred to said first
communicator upon sending a signal to said third communicator,
said third communicator sending a response to said first
communicator;
a second communicator positioned inside of said trackable
container and electronically coupled to said first communicator,
said second communicator constructed and arranged to use
wireless cellular electronic communications technology to
receive a signal from a cellular communication network located
outside of said container for transfer to said first communicator
causing said first communicator to send a signal to said third
communicator and wirelessly transmit information regarding at
least the presence of said at least one object to be located as being
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Application 12/963,309
within said trackable container to said cellular communication
network located outside of said container; and
a fourth communicator for determining the location of said
trackable container, said fourth communicator in communication
with said second communicator whereby said fourth
communicator transfers said location to said second
communicator upon request from said second communicator for
wireless transfer to said cellular communication network outside
of said container whereby, the presence and the location of said
object to be identified is aggregated within said second
communicator and thereafter transferred to said cellular
communication network outside of said container;
whereby outside communication to said second
communicator is completed through cellular communication.
References
The Examiner relies on the following prior art in rejecting the claims:
Breed et al.
(hereinafter "Breed")
Hull et al.
(hereinafter "Hull")
Menard
Logan et al.
(hereinafter "Logan")
US 2003/0005759 Al
US 2004/0041696 Al
US 2004/0246128 Al
US 2005/0054290 Al
Mgrdechian et al. US 2005/0174975 Al
(hereinafter "Mgrdechian")
Rejections
Jan.9,2003
Mar. 4, 2004
Dec. 9, 2004
Mar. 10, 2005
Aug. 11, 2005
Claims 3, 7, 9, 17, 18, 21, 29, 31, 34, and 36 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Hull and
Menard. Final Act. 4--13.
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Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hull, Menard, and Logan. Final
Act. 13-15.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hull, Menard, and Mgrdechian. Final
Act. 15.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hull, Menard, and Breed. Final
Act. 15-16.
ANALYSIS
Claim 17
Regarding claim 1 7, the Examiner finds Hull teaches or suggests each
of the recited limitations except for use of wireless cellular electronic
communications technology and a cellular communication network, as
required by claim 17. Final Act. 4--8. The Examiner finds that Hull teaches
that the communication link may be a satellite or other wireless
communication link and that various communication protocols, including
W AP, may be used to facilitate communication of information via the
communication link. Ans. 3 (citing Hull i-f 39). The Examiner finds "the
communication systems disclosed by Hull and the claimed invention's
cellular communication system were art-recognized equivalents to perform
the same function as the time the invention was made" and "[ o ]ne of
ordinary skill in the art would have found it obvious to substitute Hull['s]
communication system with a cellular communication system to perform
communication between remote user and the container," as required by
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Application 12/963,309
claim 17. Final Act. 7-8. Additionally, the Examiner finds Menard teaches
the use of cellular communications networks in wirelessly tracking (e.g., to
provide location information of mobile persons for caregivers (Menard i-f 8))
and because Hull teaches that communication link 116 may be any type of
known wireless communication network, "it would have been obvious to
someone having ordinary skill in the art at the time the invention was made
to modify Hull's wireless communication system with a wireless cellular
communication system to transmit information to a remote user located
afar." Final Act. 3 (citing Hull i-f 39); 7-8.
Appellant contends the Examiner erred in finding the combination of
Hull and Menard teaches or suggests the limitations recited in claim 1 7
because the cited references "do[] not teach the claimed cellular connection
which allows a user in a far remote location to access the location and
contents of the trackable container, as claimed in the present invention."
App. Br. 9-10. According to Appellant, "Hull utilizes a 'communication
link 116' as a method of outputting information to an associated output
device, a device such as a flat panel screen, or a non-visual audio device"
and "teaches accessing the container through an internet connection to
access information that has been stored on the associated RFID tags that are
on the physical devices contained in the container." App. Br. 10 (citing Hull
i-fi-137-39). Appellant argues, however, Hull does not teach or suggest the
claimed cellular network connection because Hull "does not teach remotely
accessing the container to determine the container location and contents"
and "does not teach or contemplate the desire to determine the location and
contents of the container from a remote location." Id. Appellant further
argues as follows:
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Application 12/963,309
[T]he Hull system is different than the claimed system in more
than the use of a cellular network. While the claimed system
allows a user in a remote location to send a signal through a
cellular communication network so as to track a container and
determine if a specific item is still in the container, Hull discloses
or contemplates a system that allows a [local] user to identify the
contents of a container. Hull's system alerts a user in the
presence of the container as to what is contained, to prevent
accidentally forgetting an article. Because Hull is directed to a
local user, there is no teaching or suggestion of a cellular
communication system.
Reply Br. 3.
Regarding the teachings of Menard, Appellant acknowledges that
Menard teaches that "long-range wireless networks, including CDMA and
GSM, utilize WAP (wireless application protocol) as a messaging protocol,"
but argues W AP is not limited to cellular devices (App. Br. 10-11) and
because WAP is not limited to cellular devices, Hull's teaching of "possibly
using W AP as a protocol in the Hull System [does not] suggest the cellular
communication system taught in the present claims" (Reply Br. 2).
We do not find Appellant's arguments persuasive. Hull describes "a
container that is capable of output information related to objects stored in the
container" and teaches that "[t]he container is able to output information for
objects that are stored by the container and that have identification tags
physically associated with them." Hull i-f 12. Hull teaches that the container
includes a communication subsystem that facilitates transfer of information
to and from the container and provides an interface to computer systems,
other containers, and devices that may be coupled to the container via a
communication link. Hull i-f 3 7; Fig. 1. We agree with the Examiner, that
Hull teaches that the communication link may be a satellite or other wireless
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communication link. Ans. 3 (citing Hull i-f 39). Contrary to Appellant's
argument that Hull "does not teach or contemplate the desire to determine
the location and contents of the container from a remote location" (see, e.g.,
App. Br. 10), Hull expressly teaches the use of the system by a remote user.
See Hull i-fi-1 46 ("A remote user may access the environmental data via
communication subsystem 112."), 62 ("A user located at a remote location
may also receive information related to the contents of container 100. The
remote user may send a signal to container 100 via communication link 116
and in response information related to objects stored by the container is
communicated to the remote user by the container via communication link
116. In this manner, a remotely located user can search and determine
information related to objects stored by a container 100 in a convenient
manner."). Because Hull teaches that the communication link may be a
satellite or other wireless communication link that can be utilized by a
remote user to receive information related to the contents of the container,
we agree with the Examiner that it would be obvious to modify the system
of Hull to a utilize a cellular communication network, as taught by
Menard-a predictable use of prior art elements according to their
established functions. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 401
(2007) (when considering obviousness of a combination of known elements,
the operative question is "whether the improvement is more than the
predictable use of prior art elements according to their established
functions"). Appellant provides no persuasive argument or evidence that
modifying Hull's system to utilize Menard's cellular communication
network was "uniquely challenging or difficult for one of ordinary skill in
the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
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1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419); see also KSR, 550 at
420-21 (skilled artisans can "fit the teachings of multiple patents together
like pieces of a puzzle" because the skilled artisan is "a person of ordinary
creativity, not an automaton"). As such, we are not persuaded the Examiner
erred in finding the combination of Hull and Menard teaches or suggests the
limitations recited in claim 17.
Accordingly, we sustain the Examiner's rejection of claim 17; and
claims 7, 9, 31, and 34, which depend from claim 17 and are not separately
argued with particularity. See App. Br. 14, 17.
Claim 3
Claim 3 depends from claim 1 7 and recites "wherein said information
regarding said presence of said at least one object to be located, or location
of said trackable container is transmitted to a network using General Packet
Radio Service (GPRS)." Appellant contends the Examiner erred in rejecting
claim 3 because the combination of Hull and Menard fails to teach or
suggest "using general packet radio service (GPRS) to transmit
information," as required by claim 3. App. Br. 13-14; see also Reply Br. 3-
4. Appellant argues "Hull does not teach or contemplate the present
invention, even apart from the use of a cellular network" and "Hull's passing
reference to a system using W AP would not suggest to a person of ordinary
skill in the art that the system could utilize the GPRS system taught by
Menard." App. Br. 14. Appellant further argues the Examiner "fails to
establish that a person of ordinary skill in the art would incorporate GPRS
into the Hull communication system" because "the system of Hull is vastly
different than the claimed invention, offering different results for different
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situations" and "Hull does not contemplate transmitting data to remote
locations, and therefore does not contemplate using a cellular network, or
using GPRS." Reply Br. 4.
We do not find Appellant's arguments persuasive. As discussed
supra, Hull teaches utilizing a satellite or other wireless communication link
to transmit information to a remote user. Hull i-fi-139, 62. We agree with the
Examiner that Menard teaches using GPRS to communicate small bursts of
data as well as large volumes of data. Final Act. 9 (citing Menard i152). We
agree with the Examiner that it would be obvious to modify the system of
Hull to transmit the information to the remote user via a cellular
communications network utilizing GPRS, as taught by Menard-a
predictable use of prior art elements according to their established functions.
See KSR, 50 U.S. at 401. Appellant provides no persuasive argument or
evidence that modifying Hull's system to transmit information via a cellular
communication network utilizing GPRS was "uniquely challenging or
difficult for one of ordinary skill in the art." See Leapfrog, 485 F.3d at
1162; see also KSR, 550 at 420-21. As such, we are not persuaded the
Examiner erred in finding the combination of Hull and Menard teaches or
suggests the limitations recited in claim 3.
Accordingly, we sustain the Examiner's rejection of claim 3.
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Application 12/963,309
Claims 21, 29, 30, and 362
Appellant's arguments regarding claims 21, 29, 30, and 36 are similar
to the arguments discussed supra regarding the patentability of claim 3. See
App. Br. 15-16, 18, 20-21; Reply Br. 6, 8. Accordingly, we are not
persuaded the Examiner erred in rejecting claims 21, 29, 30, and 36 for
reasons similar to the reasons discussed supra with respect to claim 3.
Claim 18
Claim 18 depends from claim 1 7 and recites that the tracking system
further includes "a network server, said network server configured to receive
information from said second communicator through said cellular
communication network." The Examiner finds Hull teaches storing
additional information related to the objects in a database and that the
container may access the stored information via the communication link.
Ans. 6 (citing Hull i-f 57). The Examiner further finds Hull teaches that the
container includes a communication subsystem that provides an interface to
computer systems, other containers, and devices that may be coupled to the
container via the communication link. Ans. 7 (citing Hull i-f 38). Based on
these findings, the Examiner concludes Hull teaches or suggests the
limitations recited in claim 18 because Hull "clearly teaches the container is
2 Claims 21, 2 9, 3 0, and 3 6 recite "said at least one item to be located."
However, claim 17 recites "at least one object to be located." (Emphasis
added). We treat "item" as a typographical error requiring correction, and
read "item" as "object." Otherwise, claims 21, 29, 30, and 36 would be
indefinite as they lack antecedent basis for "said at least one item to be
located."
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configured to access remote database[s] and computer systems (analogous to
a network server) using the communication subsystem" and "[a]lthough Hull
did not explicitly use the exact term 'network server' but it is understandable
to a person having ordinary skill in the art that a networked computer system
that comprises [a] database used to share information is considered [] a
network server." Id.
Appellant contends the combination of Hull and Menard fails to teach
or suggest the limitations recited in claim 18. App. Br. 15; Reply Br. 4--5.
Appellant argues the Examiner "improperly comb in[ es] two different
embodiments described in paragraphs [0038] with [0057], as if it was a
single teaching." Reply Br. 4. According to Appellant, "the embodiment of
Hull described in paragraph [0038] is different than the 'alternative
embodiment' described in paragraph [0057]." Reply Br. 5. Appellant
argues:
Claim 18 of the present application teaches inclusion of a
network server communicating with the container via a cellular
communication network, neither of which is described by Hull.
Hull very clearly discloses, as quoted by the Examiner, that the
communication link 112 includes "an Ethernet card, a modem
(telephone, satellite, cable, ISDN, etc.), (asynchronous) digital
subscriber line (DSL) units, a jack, and the like," (Answer at 7,
quoting Hull at paragraph [0038]), all methods of hard wiring to
a database in the same physical location as the Hull device. The
Examiner's argument further supports the Appellant's position
that Hull does not disclose, and teaches away from the use of a
cellular communication network because there is no remote
location that Hull contemplates communicating with.
Reply Br. 5.
We find Appellant's arguments unpersuasive. Contrary to
Appellant's arguments, the examples provided by Hull with respect to the
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communication subsystem are not limited to methods of hardwiring to a
database in the same physical location as the container. For example, Hull
provides that the communication subsystem may include a satellite modem.
Hull i-f 38. One of ordinary skill in the art would understand that a satellite
modem can be used for transmission of data via a satellite or other wireless
communication links (e.g., communication link 116). Further, as discussed
supra, Hull expressly contemplates the transmission of information
regarding objects located inside the container to a remote user. Hull i-f 62.
We are unpersuaded by Appellant's argument that the embodiment
described in paragraph 57 is different than the embodiment described in
paragraph 38. Reply Br. 5. Hull teaches "[t]he databases (e.g., paper
document tracking database) storing additional information related to the
objects may be stored by container 100" and "[a]ltematively, container 100
may access information stored in these databases via communication link
116." Hull i-f 57. Paragraph 38 of Hull teaches that the communication
subsystem may include, among other things, an Ethernet card (e.g., for
accessing a database stored by the container) and a satellite modem (e.g., for
accessing a remote database via the communication link). Thus, the
description of the communication subsystem in paragraph 3 8 is relevant to
accessing both the database stored by the container and the remote database
and computer systems described in paragraph 57.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 18.
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Claim 23
Claim 23 depends from claim 1 7 and recites "wherein said first
communicator includes Bluetooth configured to indicate the location of the
trackable container inside of a building to a cellular communication device
positioned outside of the container but within the building containing said
trackable container." Appellant contends the combination of Hull, Menard,
and Logan fails to teach or suggest the limitations recited in claim 23
because:
As addressed above with respect to Claim 17, the
combination of Hull and Menard fails to teach the use of a
cellular communication system of the present invention. Here
though, Logan suggests that Bluetooth can be used for short
range location of items to prevent shoplifting. Logan does not
address the problems solved by the present application, that of
being able to locate an item from a remote location. Therefore,
a person of ordinary skill in the art utilizing the Bluetooth system
suggested by Logan in combination with Hull would not arrive
at the invention claimed in the present application.
App. Br. 19-20; see also Reply Br. 7-8.
Because, as discussed supra with respect to claim 1 7, we disagree
with the premise of Appellant's contention (that the combination of Hull and
Menard fails to teach the use of a cellular communication system), we do not
find the conclusions drawn from that premise (i.e., that a person of ordinary
skill in the art utilizing the Bluetooth system suggested by Logan in
combination with Hull would not arrive at the invention claimed in the
present application) to be persuasive.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 23.
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DECISION
We affirm the Examiner's rejections of claims 3, 7, 9, 17, 18, 21, 23,
29--31, 34, and 36 under 35 U.S.C. § 103(a).
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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