Ex Parte Blair

Patent Trials and Appeals BoardMar 29, 2019

14954129 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/954,129 11/30/2015 50855 7590 Covidien LP 60 Middletown A venue Mailstop 54, Legal Dept. North Haven, CT 06473 04/02/2019 FIRST NAMED INVENTOR William Blair 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. 790094.419USCON(2717-5CON 2884 EXAMINER NGUYEN,NAMV ART UNIT PAPER NUMBER 2684 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): rs. patents. two@medtronic.com docket@carterdeluca.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM BLAIR Appeal2018-007179 Application 14/954,129 1 Technology Center 2600 Before JOHNNY A. KUMAR, JOHN A. EV ANS, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from a Final Rejection of claims 34--45 and 47-53. Appellant has canceled claims 1-33, 46, and 54-- 62. See App. Br. 5. We have jurisdiction over the remaining pending claims under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellant identifies Covidien LP ( a subsidiary of Medtronic PLC) as the real party in interest. App. Br. 2 Appeal2018-007179 Application 14/954,129 STATEMENT OF THE CASE Introduction Appellant's disclosed and claimed invention generally relates to "accounting for transponder tagged medical procedure objects such as instruments and supplies in an environment in which medical procedures are performed." Spec. 1 :6-8. In a disclosed embodiment, a mat comprising an antenna and RF shield may be positioned on a table ( or stand) containing various medical instruments and supplies that have been tagged with a transponder (e.g., RFID tag) and may be used during a medical procedure. See Spec. 8:22-28, 12:16-23, 16:8-15, 16:22-24, 22:1-11, 37:20-25, Figs. 1, 4, 5. According to the Specification, tagged objects (e.g., medical instruments and supplies) may be detected when present on a mat, and it may further be determined when an object has been removed and returned to the mat or placed in another area (having another mat). See Spec. 2: 18- 4: 10. Claim 34 is representative of the subject matter on appeal and is reproduced below with the disputed limitations emphasized in italics: 34. A mat for use in clinical facilities, the mat comprising: one or more electrically insulative substrates; one or more antenna carried by the at least one electrically insulative substrate, each of the one or more antenna comprised of one or more antenna traces; and one or more radio frequency (RF) shields, wherein the mat is a single integral structure that includes all of the one or more electrically insulative substrates, all of the one or more antenna and all of the one or more the RF shields and which is placeable and removable as the single integral structure, and all of the one or more antenna and all of the one or more RF shields are parallel with one another at least when the mat is flat. 2 Appeal2018-007179 Application 14/954,129 The Examiner's Rejections 1. Claims 34, 39, 40, 42--45, 47--49, and 51-53 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Oh et al. (US 2008/0001760 Al; Jan. 3, 2008) ("Oh") and Narlow et al. (US 4,281,321; July 28, 1981) ("Narlow"). Final Act. 3-9. 2. Claims 35-38 and 50 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Oh, Narlow, and Ward et al. (US 2011/0025577 Al; Feb. 3, 2011) ("Ward"). Final Act. 9-10. 3. Claim 41 stands rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Oh, Narlow, and Volkers et al. (US 3,717,876; Feb. 20, 1973) ("Volkers"). Final Act. 11. ANALYSIS 2 In rejecting claim 34, the Examiner relies on the combined teachings and suggestions of Oh and Narlow. Final Act. 3-6. We begin our analysis with an overview of these references. Oh is generally directed to "a RFID [(radio frequency identification)] antenna system for use in a medical supplies storage shelf forming part of the medicine trolley equipped with a RFID reader for monitoring the dispensing of medicine and medical supplies." Oh ,r 1. 2 Throughout this Decision, we have considered the Appeal Brief, filed January 30, 2018 ("App. Br."); the Reply Brief, filed July 2, 2018 ("Reply Br."); the Examiner's Answer, mailed May 2, 2018 ("Ans."); and the Final Office Action, mailed June 30, 2017 ("Final Act."), from which this Appeal is taken. 3 Appeal2018-007179 Application 14/954,129 Figure IA of Oh is illustrative and is reproduced below: 312 I 314 320 FIG. IA 300 T Figure IA of Oh illustrates a medicine trolley (300) comprising an open-top tray (312), two medicine drawers (314), and an open-shelf (316). Oh ,r,r 13, 18. Particularly with respect to the medicine drawers (314 ), Oh describes each medicine drawer (314) further comprises a pair of orthogonal antennas. 4 Appeal2018-007179 Application 14/954,129 Figure lB is also illustrative and is reproduced below: 345b I i ' I ' I I 350 FIG. J,B 314 T 315a Figure lB of Oh illustrates a cut-away view of medicine drawer (314). Oh ,r 14. As shown, the medicine drawer (314) comprises a base (315a) and a sidewall (315b). Oh ,r 14. Additionally, Oh describes an antenna (340a) "is disposed on or in the base" (315a) and the other antenna (340b) "is disposed on or in" vertical sidewall (315b ). Oh ,r 14. As is also shown in Figure lB, an electromagnetic (EM) shield (346) "is attached to the bottom or outboard side" of medicine drawer (314 ). Oh ,r 18. Alternatively, Oh describes the EM shield (346) is located below the antenna (340a) inside the medicine drawer (314). Oh ,r 18. The antennas (340a, 340b) shown in Figure 1 B of Oh has a conductor formed in an open loop with each end of the loop connected to the center conductor of co-axial cable ( e.g., 345a) or the shield of the co-axial cable 5 Appeal2018-007179 Application 14/954,129 (345a), respectively. Oh ,r 15; see also Oh, Fig. 2. Oh further describes the antenna (340a) may be made up of a plurality of copper loops etched on a laminated board, or "moulded in with conductor loop 710 sized and dimensioned to overlay on the inside board, i.e. base or sidewall, of the medicine drawer 314." Oh ,r 17 (emphasis added). Narlow generally relates to a system for detecting items (e.g., merchandise) in a controlled space (such as the entrance or exit to a retail space). Narlow, col. 1, 11. 6-9, col. 2, 11. 42--48. Figure 1 ofNarlow is illustrative and is reproduced below: Figure 1 ofNarlow shows an embodiment of the disclosed surveillance system comprising pedestals ( 10, 11) positioned on each side of a controlled passageway. Narlow, col. 2, 11. 22-23, 42--45. Disposed between the pedestals (10, 11) is a mat (12). Narlow, col. 2, 11. 48-51. As illustrated, the 6 Appeal2018-007179 Application 14/954,129 individual is carrying an article of merchandise (13) to which a receptor- reradiator device (14) is affixed. Narlow, col. 2, 11. 51-54. Narlow describes the surveillance system would detect the receptor-reradiator device ( 14 }-and, therefore, the merchandise ( 13 }-as it passes between the pedestals (10, 11). Narlow, col. 2, 11. 54--56. When a receptor-reradiator device is detected in the controlled space between the pedestals, an alarm is generated. Narlow, col. 2, 11. 54--56. Narlow describes radiating antenna structures used to propagate a signal throughout the controlled space. Narlow, col. 3, 11. 42--46. Narlow further describes when a receptor-reradiator device passes through the controlled space, the receptor-reradiator will reradiate a component of the propagated signal back to the antennas. Narlow, col. 3, 11. 47-51. In addition to reradiating a component of the propagated signal back to the antennas, Narlow describes an additional signal (e.g., a 160 kHz signal) is modulated on the carrier signal. Narlow, col. 4, 11. 43--49. Narlow describes this 160 kHz signal is the second harmonic of an 80 kHz signal, which is provided to the mat (12). Narlow, col. 4, 11. 43--49; see also Narlow, col. 3, 11. 51---68, Figs. 5, 6. Narlow describes that if 160 kHz signal is detected, this is indicative of a receptor-reradiator in the controlled space and an alarm may be generated. Narlow, col. 3, 11. 51---60. Regarding the construction of mat (12), Narlow describes: the mat 12 consists of a conductive ground plane sheet 27, an open grid electrode layer 28, and a layer of dielectric material 29 sandwiched between the grid 28 and the conductive sheet 27. A top coating layer 30 of insulating material completely covers the grid structure 28 .... A coaxial or shielded cable 31 has its central conductor connected to the grid electrode 28 while its shield is connected to the ground plane conductor 27. 7 Appeal2018-007179 Application 14/954,129 Narlow, col. 3, 11. 28-37; see also Narlow, Fig. 4. As discussed above, an 80 kHz signal is provided to the mat via the central conductor of a co-axial cable, connected to the grid electrode. See Narlow, col. 3, 1. 60-col. 4, 1. 12, Figs. 5, 6. Appellant asserts the cited references (Oh and Narlow) fail to teach or reasonably suggest a mat comprising one or more antennas carried by an electrically insulative substrate as recited in independent claim 34. App. Br. 11-14; Reply Br. 2---6. In particular, Appellant argues the Examiner applies an unreasonably broad construction of a "mat" in finding that the open-shelf, open-top tray, or drawer of Oh teaches the claimed "mat." App. Br. 11-12; Reply Br. 2---6. Appellant argues, consistent with the Specification and claim limitations, a mat should be given its plain and ordinary meaning, which is "a piece of material placeable to at least partially cover a surface, such as a table, stand, or floor, for supporting items." App. Br. 11. Appellant asserts a mat does not comprise the table or stand itself. App. Br. 12; Reply Br. 3. Additionally, Appellant argues that Narlow does not teach a mat comprising, inter alia, an antenna. App. Br. 12-14; Reply Br. 6. Rather, Appellant argue Narlow teaches separate antenna structures located separate from the mat and describes the mat as comprising an open grid electrode layer, which Appellant contends is not an antenna. App. Br. 12-14. 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). We 8 Appeal2018-007179 Application 14/954,129 are mindful, however, that limitations are not to be read into the claims from the Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). "[I]t is the claims, not the written description, which define the scope of the patent right." Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998). Because "applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) ( citation omitted). Claim 34 sets forth the requirements of a mat as claimed. The mat is a single integral structure that comprises (i) one or more electrically insulative substrates; (ii) one or more antennas ( each antenna comprising one or more antenna traces) carried by the insulative substrate; and (iii) one or more RF shields. Further, the mat is placeable and removable as an integral structure and when the mat is flat, the antennas and RF shields within the mat are parallel to each other. Moreover, the Specification informs us that the mat may take a variety of forms, may be positioned ( or detachably secured) on a table or stand, or may be located in or on a receptacle ( e.g., a waste receptacle). Spec. 37:20-38:6. The Examiner finds Oh teaches an antenna comprising a conductor made up of a plurality of copper loops etched on a laminated board and that in some embodiments the antenna structure is dimensioned to overlay the base of the medicine drawer. Final Act. 4. Additionally, the Examiner finds Oh teaches an EM shield (i.e., the claimed RF shield) and that in some embodiments the EM shield may be located below the antenna (i.e., as opposed to being located on the outboard side of the medicine drawer base). Final Act. 4. The Examiner relies on Narlow for an explicit teaching of a 9 Appeal2018-007179 Application 14/954,129 mat as a single integral structure comprising the insulative substrates, antenna and RF shield and, further, which is placeable and removable. Final Act. 5. The Examiner determines it would have been obvious to one of ordinary skill in the art to use the integral structure ofNarlow's mat in constructing the antenna, insulative layer, and shield components of Oh to contain the electric field to a desired region. Final Act. 6. Contrary to Appellant's assertions, the Examiner's findings are consistent with the plain and ordinary meaning of a mat, as advanced by Appellant. Additionally, the Examiner's findings are supported by the cited references, as discussed in our review of the references above. In particular, Oh describes an antenna constructed of a plurality of loops etched on a laminated board (i.e., an antenna carried by an electrically insulative substrate). Oh ,r 17. Additionally, Oh teaches the antenna may be dimensioned to overlay the base of the disclosed medicine drawer. Oh ,r 17. In other words, the antenna structure ( comprising a plurality of copper loops and an electrically insulative substrate) is placeable and removable within the medicine drawer. Oh further describes an EM (i.e., RF) shield that may be "located below the antenna 340 inside or inboard the medicine drawer 314." Oh ,r 18. Narlow teaches an integral structure (i.e., a mat) comprising, inter alia, a conductive ground sheet, an open grid electrode layer, and a layer of dielectric material sandwiched between the ground plane sheet and open grid layer. Narlow, col. 3, 11. 28-34, Fig. 4. Accordingly, each of Oh and Narlow describes a mat and, in combination, teach a mat as recited in claim 34. Appellant argues that the Examiner's proposed combination of Oh and Narlow would render Oh unsatisfactory for its intended purpose. App. 10 Appeal2018-007179 Application 14/954,129 Br. 15-18; Reply Br. 7-8. In particular, Appellant argues Oh describes a medicine drawer outfitted with a pair of antennas arranged orthogonal to each other. App. Br. 15 ( citing Oh ,r 14, Fig. 4C). Appellant asserts: Incorporating the mat of Narlow into the storage area of Oh, though, would result in the mat shielding the RFID tag on the medical supplies from the horizontally disposed antenna if the mat were placed along the base of the storage area, or would result in the mat shielding the RFID tag on the medical supplies from the vertically disposed antenna if the mat were placed over the medical supplies. App. Br. 16. Further, Appellant asserts that because each of the orthogonal antennas in Oh's medicine drawer embodiment receive signals from an RFID tag on the medical supplies contained therein, Narlow's mat cannot be used in Oh's medicine drawer because the mat in Marlow does not receive any signals at all. App. Br. 16. Additionally, Appellant asserts Narlow fails to teach the may wirelessly transmits signals at all. App. Br. 17. We disagree that the Examiner's proposed combination of Oh and Narlow would render Oh unsuitable for its intended purpose. Appellant's arguments that Narlow's mat would shield the antennas from the RFID tags disposed on the medical supplies assumes a placement of having an RF shield disposed between the antenna and the RFID tags. The obviousness inquiry "not only permits, but requires, consideration of common knowledge and common sense." DyStar Textilfarben GmbH & Co. v. CH Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006); see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). An ordinarily skilled artisan would not place a shield between an antenna and the item with which the antenna is intended to communicate. Further, it is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are 11 Appeal2018-007179 Application 14/954,129 entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (Attorney argument is not evidence.). Additionally, we note that Oh is not limited to an embodiment of two antennas arranged orthogonal to each other. Oh contemplates that "[t]he plane of the antenna may just take the plane of the base or sidewall of the medicine drawer." Oh ,r 21. Appellant's assertions that Narlow's mat does not receive signals or wirelessly transmit signals also fails to persuaded us that the combined teachings of Oh and Narlow would render Oh unsuitable for its intended purpose. "[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review." In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413,425 (CCPA 1981). "Combining the teachings of references does not involve an ability to combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCP A 1973). Here, as discussed above, Oh teaches an antenna structure (i.e., plurality of copper loops) carried by an electrically insulative substrate (i.e., Oh's laminated board). Additionally, Oh teaches, for example, when the antenna structure is positioned on the base of a medicine drawer, an EM shield underneath the antenna. In other words, the shield is disposed between the base of the medicine drawer and the antenna structure. We disagree with Appellant that by using the integral structure for a mat, as taught by Narlow, in constructing the antenna, insulative substrate, and EM shield of Oh, that Oh becomes inoperable for its intended purpose. 12 Appeal2018-007179 Application 14/954,129 Appellant also argues that the motivation to combine Narlow with Oh lacks a rational underpinning and is, therefore, deficient. App. Br. 18-20; Reply Br. 8-11. In particular, Appellant asserts that using the floor mat of Narlow in the RFID antenna system of Oh to confine the electrostatic field to the boundary of the mat with inconsequential spilling or over-ranging beyond the perimeter of the floor mat (as suggested by the Examiner) provides no additional benefit or improvement over the RFID antenna system of Oh by itself. App. Br. 18-19. That is, Appellant asserts Oh adequately addresses the problem of inconsequential spillage or over- ranging beyond the perimeter of the RFID antenna system. App. Br. 18-19. More specifically, Appellant argues Oh teaches the use of an EM shield to confine the electromagnetic waves. App. Br. 19; Reply Br. 9. Replying to the Examiner's response that one of ordinary skill in the art would recognize the benefit of being able to place ( or remove) the mat as a single integral structure at any applicable place (see, e.g., Ans. 10), Appellant argues because Narlow's disclosed system requires the floor mat to be positioned to work in conjunction with Narlow's antennas and receptor-reradiator device, the mat cannot be placed anywhere. Reply Br. 9. As such, Appellant asserts the Examiner's motivation to combine Oh and Narlow is the result of impermissible hindsight. App. Br. 19-20; Reply Br. 9-11. Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper. 13 Appeal2018-007179 Application 14/954,129 In re McLaughlin, 443 F.2d 1392, 1313-14 (CCPA 1971). "[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining" references. KSR, 550 U.S. at 420. An obviousness analysis can "consider a range of real-world facts to determine 'whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue."' Intercont'l Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1344 (Fed. Cir. 2017) (quoting KSR, 550 U.S. at 418). Moreover, "the desire to enhance commercial opportunities by improving a product or process is universal .... " DyStar, 464 F.3d at 1368. "[ A ]n implicit motivation to combine" may result from a desire to make a product or process "stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient." DyStar, 464 F.3d at 1368. Here, we disagree with Appellant that the Examiner relied on impermissible hindsight. Rather, the Examiner determines that a single integral structure (as taught by Narlow) could be used to construct the antenna, insulating substrate, and EM shield of Oh to provide a convenient way to place the mat where such functionality is desired. Ans. 10. The Examiner's reasoning is consistent with a desire to improve a product or enhance commercial opportunities. See DyStar, 464 F.3d at 1368. Further, as shown by Narlow, the ability to construct such an integral structure (i.e., a mat comprising, for example, an open grid electrode layer, a dielectric layer, and a conductive ground plane) was within the ken of one of ordinary skill in the art. Additionally, Appellant does not point to any evidence of record that the combinations would be "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious 14 Appeal2018-007179 Application 14/954,129 step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). Moreover, to the extent Appellant argues (see Reply Br. 9) the mat cannot be placed anywhere as suggested by the Examiner, we disagree. Appellant's argument is premised on the operation ofNarlow, rather than that of Oh using the integral structure taught by Narlow. For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner's rejection of independent claim 34 under pre-AIA 35 U.S.C. Â§ 103(a). Additionally, we sustain the Examiner's rejection of claims 35--45 and 47-53, which depend therefrom and were not argued separately. See App. Br. 20-21; see also 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2017). DECISION We affirm the Examiner's decision rejecting claims 34--45 and 47-53 under pre-AIA 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 15