International Business Machines Corporation

Patent Trials and Appeals Board

Mar 2, 2022

2021001397 (P.T.A.B. Mar. 2, 2022)

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. 15/285,857 10/05/2016 BING DANG YOR920161172US1 1105 48915 7590 03/02/2022 CANTOR COLBURN LLP-IBM YORKTOWN 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER PATEL, DHAVAL V ART UNIT PAPER NUMBER 2631 NOTIFICATION DATE DELIVERY MODE 03/02/2022 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BING DANG, LI-WEN HUNG, JOHN U. KNICKERBOCKER, SHRIYA KUMAR, DUIXIAN LIU, and ENRIQUE VARGAS ________________ Appeal 2021-001397 Application 15/285,857 Technology Center 2600 ____________ Before JAMES R. HUGHES, JOYCE CRAIG, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-3, 6, 8-10, 12-15, and 17-21. Claims 4, 5, 7, 11, and 16 have been canceled. See Appeal Br. 12-14 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies International Business Machines Corporation as the real party in interest. Appeal Br. 3. Appeal 2021-001397 Application 15/285,857 2 STATEMENT OF THE CASE Introduction Appellant’s application relates to “sensing and tracking medical assets, such as surgical instruments and implant components, within medical facilities.” Spec. ¶ 1. Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. A system for tracking medical assets, the system comprising: a plurality of long range transmitters in communication with a wireless sensor network and a medical asset box, the medical asset box comprising: a metal housing; a medical asset comprising a medical device enclosed within the metal housing; a medical asset tag comprising a radio frequency ID microchip fastened to an interior of the metal housing; and an extended antenna positioned on an exterior surface of the metal housing of the medical asset box, wherein the extended antenna is capable of receiving a signal from the radio frequency ID microchip and transmitting a wireless signal outward from the medical asset box to an external device via the plurality of long range transmitters. Appeal Br. 12 (Claims App.). The Examiner’s Rejections Claims 1-3 and 21 stand rejected under 35 U.S.C. § 103 as unpatentable over Yturralde (US 2011/0139871 A1; Jun. 16, 2011), Mickle (US 2007/0205873 A1; Sep. 6, 2007), and Borowski (US 2014/0365381 A1; Dec. 11, 2014). Final Act. 7-10. Appeal 2021-001397 Application 15/285,857 3 Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable over Yturralde, Mickle, Borowski, and Nikitin (US 2009/0219158 A1; Sep. 3, 2009). Final Act. 11. Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable over Yturralde, Mickle, Borowski, and Nishizawa (US 2012/0213885 A1; Aug. 23, 2012). Final Act. 11. Claims 9, 10, and 12 stand rejected under 35 U.S.C. § 103 as unpatentable over Yturralde, Mickle, Borowski, and Cao (US 2014/0135998 A1; May 15, 2014). Final Act. 12. Claim 13 stands rejected under 35 U.S.C. § 103 as unpatentable over Yturralde, Mickle, Borowski, Cao, and Ritamaki (US 2012/0056002 A1; Mar. 8, 2012). Final Act. 13. Claim 14 stands rejected under 35 U.S.C. § 103 as unpatentable over Yturralde, Mickle, Borowski, Cao, and Jones (US 2016/0299213 A1; Oct. 13, 2016). Final Act. 13. Claim 15 stands rejected under 35 U.S.C. § 103 as unpatentable over Yturralde, Mickle, Borowski, and Hertlein (US 8,600,374 B1; Dec. 3, 2013). Final Act. 14-17. Claim 17 stands rejected under 35 U.S.C. § 103 as unpatentable over Yturralde, Mickle, Borowski, and Jones. Final Act. 17-21. Claim 18 stands rejected under 35 U.S.C. § 103 as unpatentable over Yturralde, Mickle, Borowski, Jones, and Butler (US 9,594,998 B2; Mar. 14, 2017). Final Act. 21. Claim 19 stands rejected under 35 U.S.C. § 103 as unpatentable over Yturralde, Mickle, Borowski, Jones, and Holm (US 2010/0039280 A1; Feb. 18, 2010). Final Act. 21-22. Appeal 2021-001397 Application 15/285,857 4 Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over Yturralde, Mickle, Borowski, Jones, and Nedelcu (US 2016/0350564 A1; Dec. 1, 2016). Final Act. 22. ANALYSIS Appellant contends that none of [the] applied references, whether taken individually or in any combination, discloses or renders obvious at least ‘a metal housing,’ ‘a medical asset tag comprising a radio frequency ID microchip fastened to an interior of the metal housing,’ and ‘an extended antenna positioned on an exterior surface of the metal housing,’ as recited, inter alia, in independent claim 1, and as similarly recited, inter alia, in independent claims 15 and 17. Appeal Br. 8. In particular, Appellant argues that “using metal for the medical cabinet of Yturra[l]de is not an obvious design choice because this is not a rearrangement of parts, and does not satisfy the legal standard.” Id. Rather, Appellant argues that “modifying the medical supply cabinet 352 taught by Yturra[l]de to include metal as suggested would interfere with the reception of the RFID tag tape 202 wrapped around the inventory item 102.” Id. at 9. Appellant has not persuaded us of Examiner error. Yturralde relates to “an inventory tracking system using RFID tags” and describes an embodiment where RFID inventory tracking system 350 includes inventory items 102 inside medical supply cabinet 352. Yturralde ¶¶ 1, 49. The Examiner identifies Yturralde’s medical supply cabinet as the claimed medical asset box and concludes it would have been obvious to one of ordinary skill in the art for the medical supply cabinet to comprise a metal Appeal 2021-001397 Application 15/285,857 5 housing so that it would be “sturdier to protect the medical instruments from outside environment.” See Final Act. 7-8; see also Ans. 4-5. Appellant has not challenged the Examiner’s obviousness conclusion on the ground that a metal housing would not be an obvious improvement in sturdiness and protection for the items inside Yturralde’s cabinet-in fact, Appellant’s Specification provides that “[m]edical assets are frequently stored in metal containers.” Spec. ¶ 2. Instead, as noted above, Appellant argues that a metal housing “would interfere with the reception of the RFID tag tape 202 wrapped around the inventory item 102.” Appeal Br. 9; see also Reply Br. (“Appellant respectfully notes that metal surfaces inherently reflect energy emitted from RFID readers and create interference for RFID tag antennas, which means a tag located in a metal container isn’t able to properly receive power and transmit information.”). Appellant, however, does not provide any evidence to support this argument. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness”); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Specifically, Appellant presents no underlying factual basis for finding that Yturralde’s particular cabinet would not function as intended if it comprised a metal housing. As the Examiner asserts, “[n]owhere in [the] specification of Yturra[l]de discloses that modifying with metal . . . would in fact interfere with the RFID tag tape 202” (Ans. 4), and Appellant has not pointed to another piece of evidence that discusses the effects of a metal housing in an RFID system. See Appeal Br. 8-10; Reply Br. 1-2. Appeal 2021-001397 Application 15/285,857 6 In any case, the Examiner concludes, in view of Borowski, that it would have been obvious to one of ordinary skill in the art “to place the tag to the interior of the housing using mechanical fastening, the motivation is to track the assets within the metal housing.” Final Act. 10. This comports with Appellant’s explanation of the claimed subject matter, which “mitigates the interference effects of a metal housing” because “opposite sides of the same metal housing will be fitted with an RFID or antenna.” Appeal Br. 9. Appellant argues that “Borowski does not fairly suggest an interference mitigating arrangement” because “Borowski is concerned with plastic bags that do not cause this type of interference.” Reply Br. 2; see also Appeal Br. 10 (“[S]ecuring RF tags to the inside of a plastic bag is not the same as ‘a medical asset tag comprising a radio frequency ID microchip fastened to an interior of the metal housing,’ as currently recited.”). But Borowski’s disclosure is suggestive of more than Appellant’s narrow reading, as Borowski describes using “plastic bags or other containers.” Borowski ¶ 23 (emphasis added). Appellant also argues that “[i]t appears as though a hindsight analysis is being conducted where the Appellant’s own specification is being used as a basis to allegedly render the claims obvious.” Appeal Br. 9. We are not persuaded that the Examiner’s obviousness conclusion is simply based on hindsight. The record shows that it was known to provide an interface for RFID tags inside a metal container. Namely, Butler, which the Examiner relies on for dependent claim 18, describes a shipping container embodiment with “industrial RFID tags 2104 on the products or their packaging” and “industrial RFID tags 2104 on the shipping container itself.” Butler, 104:27- 29. In this embodiment: Appeal 2021-001397 Application 15/285,857 7 Since the container’s industrial RFID tags 2104 may be external, and the container may be metallic, there may be an interface between the industrial RFID tags 2104 on products internal to the container, and the industrial RFID tag 2104 for the container, mounted on the container. In this way, external readers 140 may more easily read the contents of the container. Id. at 104: 33-39. This disclosure, in conjunction with Borowski’s teachings of securing an RF tag “secured or attached to the plastic bag or other container” (Borowski ¶ 23) (emphasis added), sufficiently suggests the claimed “radio frequency ID microchip fastened to an interior of the metal housing,” with adequate protection against hindsight bias. As noted above, Appellant also alleges the cited references do not render obvious the claim 1 limitation of “an extended antenna positioned on an exterior surface of the metal housing.” Appeal Br. 8. But Appellant has not presented specific arguments as to why the Examiner erred in identifying Yturralde’s antenna 104 as the claimed “extended antenna.” See Final Act. 8; Appeal Br. 8-10; Reply Br. 1-2. For these reasons, we sustain the obviousness rejection of claim 1. We also sustain the obviousness rejection of independent claims 15 and 17, as well as dependent claims 2, 3, 6, 8-10, 12-14, and 18-21, for which Appellant does not provide separate specific arguments. See Appeal Br. 8- 10. Appeal 2021-001397 Application 15/285,857 8 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1-3, 21 103 Yturralde, Mickle, Borowski 1-3, 21 6 103 Yturralde, Mickle, Borowski, Nikitin 6 8 103 Yturralde, Mickle, Borowski, Nishizawa 8 9, 10, 12 103 Yturralde, Mickle, Borowski, Cao 9, 10, 12 13 103 Yturralde, Mickle, Borowski, Cao, Ritamaki 13 14 103 Yturralde, Mickle, Borowski, Cao, Jones 14 15 103 Yturralde, Mickle, Borowski, Hertlein 15 17 103 Yturralde, Mickle, Borowski, Jones 17 18 103 Yturralde, Mickle, Borowski, Jones, Butler 18 19 103 Yturralde, Mickle, Borowski, Jones, Holm 19 20 103 Yturralde, Mickle, Borowski, Jones, Nedelcu 20 Overall Outcome 1-3, 6, 8- 10, 12-15, 17-21 Appeal 2021-001397 Application 15/285,857 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f) (2019). AFFIRMED