Ex Parte Bowman et al

Patent Trial and Appeal Board

Sep 24, 2012

09737185 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
09/737,185 12/14/2000 Danny Charles Bowman 2552-011 9139
4678 7590 09/25/2012
MACCORD MASON PLLC
300 N. GREENE STREET, SUITE 1600
P. O. BOX 2974
GREENSBORO, NC 27402
EXAMINER
GAKH, YELENA G
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
09/25/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANNY CHARLES BOWMAN, JASON THOMAS
BOWMAN, DAVID MIKE LEWIS,
and RICHARD KIM PAISLEY
____________________

Appeal 2012-010623
Application 09/737,185
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-21, 38, and 40-49. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
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Appellants’ invention relates to information management using radio
frequency identification (RFID) tags on biomedical specimen collection
vessels (Spec. 5:16 to 6:3).
It is common practice to collect a blood or urine specimen from a
patient at a site such as a doctor’s office remote from the laboratory at which
the diagnostic or toxicology testing will be performed (Spec. 1:5-8).
Conventionally, the information needed by the laboratory to complete the
testing and relay the results back to the collection site was conveyed using
paper forms including barcodes that correspond to barcodes on the specimen
containers (Spec. 2:1-15). A copy of the paper form and the container has to
be maintained together, e.g., in boxes or sleeves, for transport to the
laboratory (id.).
Instead of using a paper form, Appellants encode the necessary
information in an electronic memory tag affixed onto the specimen
collection container (Spec. 4:18-23). Specifically, Appellants describe the
use of known Radio Frequency Identification (RFID) systems featuring so-
called “smart tags” or “smart labels” that are affixed to the specimen
collection containers and provided to the specimen collection facility, e.g.,
doctor’s office, clinic, or hospital (Spec. 4:23 to 5:13). While such tags were
known in the art for other applications, Appellants state that such tags have
not been used in connection with diagnostic or toxicology collection
containers (Spec. 5:1-14).
Appellants claim their invention in a variety of ways. For instance,
claim 38 is directed to a toxicology specimen system including a collection
vessel, a wireless electronic memory tag attached to the vessel, and a
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tamper-indicating seal. Other claims are directed to systems with a plurality
of tagged specimen collection vessels distributed amongst a vessel
distribution facility, a specimen collection facility, and specimen testing
laboratory facility, and also located in transport between the facilities (see
Claims 1, 8, 9, 17, 42, and 43). Claim 49 is directed to the distributed
tagged vessels as a plurality of biomedical specimen collection vessels at
various facilities. Appellants further claim a method for electronically
storing data on a tagged specimen vessel and remotely reading data from the
vessel (Claim 18), and a method for recording information about a
diagnostic or toxicology specimen on a diagnostic or toxicology specimen
vessel (Claims 19 and 44),
The Examiner maintains the following reviewable1 rejections2:
A. The rejection of claims 1-17, 40-42, and 44-49 under 35 U.S.C. §
112 ¶ 1 as failing to comply with the written description
requirement.
B. The rejection of claims 1-21, 38, and 40-49 under 35 U.S.C. § 112,
¶ 2 as indefinite.
C. The rejection of claims 1-4, 6, 7, 9-12, 14, 15, 19, 21, 38, 40, and
41 under 35 U.S.C. § 102(e) as anticipated by Petrick3.

1 The issue regarding claim duplicates listed as Rejection A in Appellants’
list of Grounds to be Reviewed on Appeal on page 21 of the Brief was not a
rejection at all, but an advisory objection that we do not have jurisdiction to
review (see Oct. 11, 2011 Office Action; Ans. 18). Therefore, we do not
review it.
2 The Examiner has withdrawn the rejection of claims 1-21, 38, and 40-49
under 35 U.S.C. § 112, ¶ 1 as failing to comply with the written description
requirement, regarding the electronic memory tag (Ans. 2).
3 Petrick, US 6,535,129 B1 patented Mar. 18, 2003.
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D. The rejection of claims 1, 6, 7, 9, 14, 15, 19, 21, 40, and 41 under
35 U.S.C. § 102(b) as anticipated by Berney4.
E. The rejection of claims 5, 8, 13, and 18 under 35 U.S.C. § 103(a)
over Petrick or Berney in view of Leuenberger5.
F. The rejection of 16, 17, 20, and 42-44 under 35 U.S.C. §103(a)
over Petrick or Berney in view of Hoffman6 or Fukuzaki7.
G. The rejection of claims 2 and 10 under 35 U.S.C. § 103(a) over
Berney in view of RD 4210488.
H. The rejection of claims 3, 4, 11, and 12 under 35 U.S.C. § 103(a)
over Berney in view of Stevens9.
I. The rejection of claim 38 under 35 U.S.C. § 103(a) over Berney in
view of Bowman10.
J. The rejection of claim 8 under 35 U.S.C. § 103(a) over Berney in
view of RD 421048, Stevens, and Leuenberger.
K. The rejection of claim 17 under 35 U.S.C. § 103(a) over Berney in
view of Stevens, and Leuenberger, and further in view of Hoffman
or Fukuzaki.
L. The rejection of claims 1-4, 6, 7, 9-12, 14, 15, 19, 21, 38, 40, 41,
and 45-49 under 35 U.S.C. § 103(a) as obvious over Stevens in
view of Moore11.

4 Berney, US 5,777,303 patented Jul. 7, 1998.
5 Leuenberger, US 5,314,421 patented May 24, 1994.
6 Hoffman et al., US 5,613,012 patented Mar. 18, 1997.
7 Fukuzaki, US 5,948,103 patented Sep. 7, 1999.
8 Anonymous, Research Disclosure 421048 A, pub. May 1999.
9 Stevens et al., EP 1 004 359 A2, pub. May 31, 2000.
10 Bowman, US 5,135,313 patented Aug. 4, 1992.
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M. The rejection of claims 5, 8, 13, and 18 under 35 U.S.C. § 103(a)
as obvious over Stevens and Moore further in view of
Leuenberger.
N. The rejection of claims 16, 17, 20, and 42-44 under 35 U.S.C. §
103(a) as obvious over Stevens and Moore further in view of
Hoffman or Fukuzaki.
We address each of these rejections below.
OPINION
REJECTION A
The Examiner rejects claims 1-17, 40-42, and 44-49 as lacking written
descriptive support. All of the rejected claims require a plurality of
specimen collection vessels, with at least some members of the plurality
located at a vessel distribution facility, a collection facility, and a specimen
testing laboratory facility. The Examiner finds that there is no support in the
original Specification for distributing a plurality of vessels among the
several facilities (Ans.12 2-3 and 18).
Appellants contend that those of ordinary skill in the art would
understand that the Specification discloses a plurality of vessels which are
transported and used in the manner claimed, citing page 6, lines 24 to page
10, line 7 of the Specification (Br.13 24-25).
As Appellants do not argue any claim apart from the others, we select
claim 1 as representative for resolving the issue on appeal.

11 Moore, Barcodes, 2D or RFID? Dec. 1999 accessed at
www.parcelindustry.com.
12 All references to the Answer (Ans.) are to the Answer filed June 6, 2012.
13 All references to the Brief (Br.) are to the Brief filed April 11, 2012.
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Claim 1 reads as follows:
1. A diagnostic specimen system comprising a plurality
of biomedical specimen collection vessels, at least some
members of the plurality being located at a vessel distribution
facility, other members of the plurality being located at a
specimen collection facility, further members of the plurality
being located at a specimen testing laboratory facility, and
additional members of the plurality being transported between
the facilities,
wherein each of the collection vessels includes a wireless
electronic memory tag, a unique electronic identification code
stored on the electronic memory tag for non-contact storage and
retrieval of information directly attached thereto such that the
tag remains directly attached to the vessel at the facilities and as
the vessel is transported between facilities.
(Claims App. at Br. 62.)
We find that a preponderance of the evidence supports the Examiner’s
finding of lack of written descriptive support. The relevant facts are as
follows.
The Specification states that specimen containers are supplied to
multiple specimen collection sites (Spec. 12:24 to 13:1). The specimen
collection sites are locations such as hospitals, clinics, and doctors’ offices
(Spec. 13:1). At the collection sites, the containers are used to collect
specimens from donors (Spec. 8:21-22). The collected specimens are said to
be delivered by a courier to a laboratory from the multiple collection sites
(Spec. 14:15-16).
The Specification discloses that containers having encoded memory
tags are “provided,” but the Specification does not state from where the
containers are provided (Spec. 8:16-18; 12:17 to 13:1).
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The Specification does not disclose that the containers are provided
from a vessel distribution facility (Spec., generally). In fact, the
Specification nowhere uses the word “facility.”
Because Appellants do not use the word “facility” in their
Specification, we give the word its broadest ordinary meaning consistent
with the Specification. The most applicable ordinary meaning from
dictionary.com is: “(a) something designed, built, installed, etc., to serve a
specific function affording a convenience or service: transportation
facilities; educational facilities; a new research facility.”
The Specification uses the word “site” instead of facility. The most
appropriate definitions for “site” provided by dictionary.com are “(1) the
position or location of a town, building, etc., especially as to its
environment: the site of our summer cabin;” or “the area or exact plot of
ground on which anything is, has been, or is to be located: the site of ancient
Troy.”
The test for sufficiency of a written description is “whether the
disclosure clearly ‘allow[s] persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed.’ ” Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed.Cir.2010) (en banc) (quoting Vas–
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed.Cir.1991)). The
disclosure must “reasonably convey[ ] to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. at 1351. Possession means “possession as shown in the disclosure” and
“requires an objective inquiry into the four corners of the specification from
the perspective of a person of ordinary skill in the art.” Id.
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One of ordinary skill in the art would have, based upon the ordinary
meaning of the term “facility,” understood a “distribution facility” to be
something designed, built, installed, etc. to serve the function of distributing
the specimen collection vessels. Given that the Specification merely states
that the containers “are provided” without stating from where, we agree with
the Examiner that Appellants’ written description does not adequately
convey that they were in possession of a system or method including a
distribution facility that is built, designed, installed, etc. to accomplish the
act of distributing the tagged specimen collection vessels. There are several
options for providing tagged specimen vessels, and Appellants do not
reasonably convey from which type of site the vessels are provided. For
instance, the tagged vessels could be assembled or otherwise “provided” at
the site of specimen collection or at some other site not specifically
designed, built, installed for distributing such tagged vessels.
We sustain the rejection of claims 1-17, 40-42, and 44-49 under
35 U.S.C. § 112, ¶ 1.
REJECTION B
The Examiner rejects claims 1-21, 38, and 40-49 under 35 U.S.C. §
112, ¶ 2 as indefinite for failing to particularly point out and distinctly claim
the subject matter which applicants regard as the invention on the following
grounds:
1. The recitation requiring a plurality of specimen collection vessels,
at least some members of the plurality being located at a vessel
distribution facility, others being located at a specimen collection
facility, others being located at a specimen testing laboratory
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facility is unclear and indefinite (Ans. 4). This language is, for
instance, found in claim 1.
2. It is not clear what “directly attached” means in the recitation
requiring a wireless electronic memory tag that “remains directly
attached to the vessel.” (Ans. 4.) This “directly attached”
language is found in, for instance, claim 1.
3. In claims 4 and 12, it is not clear whether the label is the same
label that includes the electronic memory device, as disclosed in
the Specification (Ans. 6).
4. From claims 6, 7, 14, and 15, it is not apparent whether the vessel
contains a specimen (Ans. 6).
5. From claim 38, it is not clear where “a tamper-indicating seal” is
located on the vessel (Ans. 6). According to the Examiner, this is
an essential structural relation omitted from the claim (id.).
6. In claim 40, the meaning of “an electronic database accessible
from the specimen collection facility for storing data entered at the
collection facility” is unclear (Ans. 6).
With regard to the first basis for the indefiniteness rejection, the
Examiner’s reasoning is as follows:
First, the claim language is not supported by the specification,
and it is not apparent, how this system is formed. Is this a
permanent system, or is this a changing system? Are these
vessels constantly located at the indicated facilities? Are the
vessels located at recited facilities different from each other?
Moreover, since the vessels are supposed to contain samples,
would it be vessels with the same partitioned sample distributed
among all facilities? The language renders the claims unclear
and indefinite.
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(Ans. 4.)
“A claim is considered indefinite if it does not reasonably apprise
those skilled in the art of its scope.” IPXL Holdings, L.L.C. v. Amazon.com,
Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005). In considering the question
of indefiniteness, an examiner must consider the meaning of the claim terms
in light of the specification as those terms would be interpreted by one of
ordinary skill in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
While we agree with the Examiner that the claimed concept of a
system including specimen collection vessels located at a vessel distribution
facility lacks written descriptive support in the Specification, we determine
that the Examiner has failed to establish that reading the claims in light of
the Specification would not reasonably apprise the ordinary artisan of their
scope.
The Specification discloses (1) providing the tagged vessels to
multiple specimen collection sites such as doctor’s offices, clinics, and
hospitals; (2) collecting the specimens and placing them in the vessels; (3)
alerting a courier that the specimens are ready for pick up; and (4) delivering
the specimen vessels to the laboratory for testing the specimens (Spec. 8-9).
The Specification provides the necessary context for understanding how the
tagged vessels move from one location to another such that they end up in
the locations claimed.
Appellants have chosen to claim their invention in terms of a group of
articles, i.e., specimen collection vessels with smart labels, whose members
are located in some snapshot in time at various facilities and between
facilities. The Specification reasonably conveys that the specimen collection
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facility is a facility such as a hospital, clinic, or doctor’s office at which the
specimen is collected. The Specification also reasonably conveys that the
specimen testing laboratory facility is a facility at which the collected
specimen within the container is tested. The Specification does not convey a
meaning for vessel distribution facility. However, from the plain meaning of
its words, it is reasonable to interpret those words as identifying a facility
(something designed, built, installed, etc. to serve a specific function) for
distributing specimen collection vessels having wireless electronic memory
tags, e.g., smart labels). Therefore, we cannot say that the Examiner has
established that the claims are indefinite.
Appellants do not respond to the other bases for the Examiner’s
rejection (Bases 2-6 listed above). Because Appellants have not identified
an error on the part of the Examiner as to these bases for rejection, we
sustain these rejections.
REJECTION C
The Examiner rejects claims 1-4, 6, 7, 9-12, 14, 15, 19, 21, 38, 40, and
41 under 35 U.S.C. § 102(e) as anticipated by Petrick (Ans. 6).
There is no dispute on this record that Petrick describes what is
claimed. Rather, the dispute involves the question of whether the claims of
Petrick and, particularly, Petrick’s claim 7, are directed to the same subject
matter as Appellants’ claims such that Appellants’ Bowman and Lewis
Declarations, proffered to establish that Appellants invented the claimed
subject matter before it was disclosed in Petrick, can use used to overcome
the rejection over Petrick (Br. 30; see also Bowman and Lewis Decls. in the
Evid. App. of Br.).
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The Examiner determines that Appellants’ claims and Petrick’s claims
are not patentably distinct from each other and, therefore, the Declarations
cannot be used to swear behind the filing date of Petrick (Ans. 19-20).
Appellants respond that Petrick is not directed to the same patentable
invention as their claims (Br. 31-33). Appellants argue system claims 1-17
and 40-43 separately from method claims 18-21 and 44.
SYSTEM CLAIMS
Appellants’ argument that Petrick’s claim 7 is not directed to the same
invention as their system claims is based upon a comparison of Petrick’s
claim 7 with Appellants’ claim 1 (Br. 33-34). Petrick, according to
Appellants, does not claim any vessels with identification devices directly
attached thereto that are located at a vessel distribution facility (Br. 34).
We select claim 1 as representative for resolving the issue on appeal.
We note that claim 38 does not contain the limitation Appellants’ argue.
Therefore, we consider claim 38 separately.
Claim 1
The issue is: Have Appellants identified an error in the Examiner’s
determination that Appellants’ claim 1 is directed to the same invention or
an obvious variant of the invention of Petrick’s claim 7?
We answer in the affirmative.
Petrick’s claim 7 is directed to the business form of claim 1. The
business form of Petrick’s claim 1 includes a first portion providing chain of
custody information, a second portion linking the form with at least one
specimen, and a wireless identification device associated therewith. Claim 7
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recites that the wireless identification device detailed in claim 1 is adhered
directly to the specimen or to a container containing the specimen.
While Petrick’s business form containing the RFID chip is adhered to
the container, the container already contains the specimen. A review of
Petrick’s written description verifies that the specimen is already within the
container when the RFID chip is affixed to the container in accordance with
claim 7. Petrick explains that a seal is affixed to a sample 100 into which
RFID chip 106 has been embedded (Petrick, col. 5, ll. 5-6). This seal is a
label that prevents tampering of the sample inside the container (Petrick, col.
5, ll. 24-31).
The Examiner reasons that “as soon as the business form with the
RFID chip becomes attached to the vessel, the place where it is attached
becomes [the] vessel distribution facility.” (Ans. 21.) However, the “vessel
distribution facility” cannot be said to be the same as the place where the
chip is attached unless there is evidence that the place where the chip is
attached is “designed, built, installed, etc.” for the specific function of
distributing the vessels (see our discussion under the heading “Rejection A”
above). The Examiner has provided no convincing evidence that Petrick
discloses, much less claims, such a facility.
Therefore, we cannot say that the Examiner has established that
Petrick is claiming the same invention or an obvious variant of the
diagnostic specimen system of Appellants’ claim 1. The Examiner has
failed to establish error in Appellants’ evidence swearing behind Petrick.
Therefore, we do not sustain the rejection of claims 1-4, 6, 7, 9-12, 14, 15,
40, and 41.
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Claim 38
Claim 38 does not require a plurality of collection vessels at different
facilities much less any vessels at a distribution facility. There is no dispute
that Petrick’s claim 7 recites directly adhering the wireless identification
device to the specimen container and including a tamper-indicating seal
(Petrick, claim 7; Br. 31). Therefore, we cannot say that Appellants have
identified an error in the Examiner’s rejection of claim 38 as anticipated by
Petrick or the Examiner’s determination that the Bowman and Lewis
Declarations cannot be used to swear behind Petrick’s filing date.
While we do not sustain the rejection of claims 1-4, 6, 7, 9-12, 14, 15,
40, and 41, we sustain the rejection of claim 38.
PROCESS CLAIMS
Claims 19 and 21 are directed to a method of recording information
and rejected as anticipated by Petrick. These claims require a step of
providing a plurality of specimen vessels, each having a wireless electronic
memory tag directly attached thereto, at a vessel distribution facility and
distributing them to specimen collection facilities. The Examiner does not
point to any claim in Petrick reciting providing a plurality of vessels with the
required tags at a vessel distribution facility and distributing them as
required by claims 19 and 21.
We do not sustain the rejection of claims 19 and 21 over Petrick.
REJECTION D
The Examiner also rejects claims 1, 6, 7, 9, 14, 15, 19, 21, 40, and 41
under 35 U.S.C. § 102(b) as anticipated by Berney.
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Claims 1 and 9 require a plurality of specimen collection vessels with
electronic tags with some members of this plurality located at a vessel
distribution facility, other members being located at a specimen collection
facility, and further members being located at a specimen testing laboratory
facility, and additional members being transported between the facilities (see
Claims 1 and 9). Claim 19 requires that the electronically tagged collection
vessels be distributed between a vessel distribution facility and a specimen
collection facility and transported or distributed between these facilities (see
Claim 19).
Berney describes a device including a support 3, on which is mounted
an electronic label 4 (Berney, col. 1, ll. 61-65; Fig. 1). A test tube
containing a sample to be analyzed is placed into the support 3 as shown in
Figure 3 (Berney, col. 2, ll. 23-25). The Examiner has not established that
Berney describes a plurality of supported test tubes (specimen collection
vessels) with some members located at a vessel distribution facility, other
members located at a specimen collection facility, and further members
located at a specimen testing laboratory as required by claims 1 and 9 or the
method of distributing recited in claim 19. Rather, a preponderance of the
evidence supports Appellants’ argument that Berney’s devices are only
located at the laboratory where the testing takes place (Br. 44).
We do not sustain the rejection of claims 1, 6, 7, 9, 14, 15, 19, 21, 40,
and 41 under 35 U.S.C. § 102(b) as anticipated by Berney.
REJECTIONS E-H, J, AND K
Rejections E-H, J, and K rely upon Petrick and/or Berney in the same
capacity as discussed above (see Rejections C and D). All of these
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rejections contain the errors discussed above. Therefore, for the reasons we
have already expressed, we do not sustain these rejections.
REJECTION I
The Examiner rejects claim 38 under 35 U.S.C. § 103(a) over Berney
in view of Bowman. This rejection does not contain the error discussed
above in reference to Rejection D. Claim 38 does not require a plurality of
specimen collection vessels located at various facilities. Claim 38 is
directed to a toxicology specimen system comprising a collection vessel, a
tamper-indicating seal, and a wireless electronic memory tag directly
attached to the vessel.
The Examiner acknowledges that Berney does not disclose the
required tamper-indicating seal, but relies upon Bowman as evidence that it
would have been obvious to place such a seal on Berney’s vessel “so that
any attempted tampering with the specimen will be indicated by at least a
partial destruction of the seal” (Ans. 12, quoting Bowman, col. 1, lines 7-8).
Appellants contend that the references would not have suggested the
addition of a seal to the test tubes of Berney (Br. 53-54).
Berney discloses a test tube having a cap 2 of the kind used for blood
analysis in a laboratory (Berney, col. 1, ll. 61-62). While Appellants argue
that Berney is not concerned with transporting the vessels from a collection
facility to a laboratory (Br. 53), Appellants’ own Specification indicates that,
in fact, this was a conventional method of delivering a blood sample to a
laboratory (Spec. 1:21-22). Normally, the sample is collected in a doctor’s
office, clinic, or hospital and transported to a separate laboratory for the
analysis (id.). We cannot, therefore, agree with Appellants’ statement that
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there is no risk of tampering that needs evidencing on that basis (Br. 53).
Moreover, there no evidence that there is no risk of tampering within the
analysis laboratory itself.
Appellants also state that Berney’s test tubes are provided with caps 2
“that can be removed to permit access to a blood specimen.” But the
portions of Berney cited, column 1, line 62 and Figure 1, do not provide any
evidence that cap removal is necessary or even desirable for analysis of the
blood. Moreover, even if it were necessary to remove the cap for analysis,
the seal would have served an important purpose of preventing tampering
during transportation. Thus, at the time of analysis it is irrelevant whether
the cap is removed and the seal is broken to access the sample. Therefore,
we cannot agree that there is any convincing evidence indicating that adding
a seal would impede specimen analysis as argued by Appellants (Br. 53-54).
On the other hand, Bowman indicates that it can be important to make
sure that blood samples are not tampered with, and that tamper-indicating
seals were one way to tamper-proof a specimen vessel (Bowman, col. 1, ll.
29-36).
A preponderance of the evidence supports the Examiner’s
obviousness conclusion. Therefore, we sustain the rejection of claim 38 as
obvious over Berney in view of Bowman.
REJECTION K
The Examiner further rejects claims 1-4, 6, 7, 9-12, 14, 15, 19, 21, 38,
40, 41, and 45-49 under 35 U.S.C. § 103(a) as obvious over Stevens in view
of Moore (Ans. 15-16). The Examiner finds that Stevens describes a
plurality of collection containers with barcoded labels and Moore teaches
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labels including both a barcode and a RFID chip for carrying complete
manifests and packing lists as well as a full range of other information, some
of which can be used for tracking (Ans. 16).
Appellants contend that the Examiner has engaged in hindsight
reasoning (Br. 56-58).
A preponderance of the evidence supports the Examiner’s
obviousness conclusion.
Stevens discloses a labeled vessel for collecting fluid samples from
patients (Stevens, ¶ [0001]). The label includes a machine readable barcode
with a removable portion that can be affixed to test request forms and the
like (Stevens, ¶ [0013]). The label is applied to a container by an automated
manufacturing process so that the label is pre-attached to the container prior
to being used by a medical facility (specimen collection facility) and/or prior
to being transported to a testing facility (specimen testing laboratory facility)
(Stevens, ¶ [0030]).
Moore discusses various types of labels containing electronic
information carriers such as barcodes, two-dimensional (2D) symbols, and
RFID smart labels used to track shipments (Moore, p. 1). Moore indicates
that barcodes, two-dimensional (2D) symbols, and RFID smart labels may
be used on the same label, and RFID has long been viewed as the most
significant alternative to barcode technology (Moore, pp. 1-2). Moore
discusses smart labels as having an inexpensive RFID chip embedded in a
self-adhesive label that, typically, has at least one barcode on it (Moore, p. 3,
¶ 1). According to Moore, RFID smart labels have the potential to carry
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complete electronic manifests and packing lists as well as a full range of
other information, some of which can be used for tracking (Moore, p. 3, ¶ 2).
A preponderance of the evidence supports the Examiner’s conclusion
of obviousness. Moore provides evidence that smart labels including both
RFID tags and barcodes were known for use to provide tracking
information, electronic manifests, and packing lists on articles being
transported from place to place. Stevens transports the specimen vessels
between an automated manufacturing process site, medical facilities, and a
testing facility. Using the smart label of Moore for its known information
carrying and tracking abilities on Stevens’ vessels would have been merely
the use a known label for its known function to yield predictable results.
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
We sustain the rejection of claims 1-4, 6, 7, 9-12, 14, 15, 19, 21, 38,
40, 41, and 45-49 under 35 U.S.C. § 103(a) as obvious over Stevens in view
of Moore.
REJECTION F
To reject claims 5, 8, 13, and 18, the Examiner adds Leuenberger to
the combination of Stevens and Moore. Appellants do not present any
arguments directed to this rejection. Therefore, Appellants have not
identified an error and we sustain the rejection for the reasons explained in
reference to Rejection E.

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REJECTION G
To reject claims 16, 17, 20, and 42-44, the Examiner adds Hoffman or
Fukuzaki to the combination of Stevens and Moore.
While Appellants discuss several groups of claims under separate
headings, for the majority of the groups, Appellants merely point out the
differences between what each of the references teaches and what is claimed
without adequately identifying an error in the proposed obviousness
rationale advanced by the Examiner (Br. 58-59). Appellants’ statements do
not amount to separate arguments supporting the separate patentability of
claims under 37 CFR § 41.37(c)(1)(vii). Rule 41.37 requires more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and an assertion that the corresponding elements were not found in
the prior art. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Moreover,
even if the statements could be said to be separate arguments, the statements
do not sufficiently identify an error in the Examiner’s rejection, which is
based upon what one of ordinary skill in the art would have considered
obvious given the combination of the teachings of the references as a whole.
We further do not find Appellants’ argument with regard to claim 44
persuasive. Appellants argue that “Stevens in view of Moore is so different
that regardless of what Hoffman or Fukuzaki may say about recording
signatures, it would not have been obvious to do so in the context of Stevens
in view of Moore to perform the method of claim 44.” (Br. 60.) This
argument does not sufficiently take into account that the label of Stevens in
view of Moore is designed to encode information and Hoffman and
Fukuzaki disclose a type of electronic information. Nor does Appellants’
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argument address the Examiner’s finding that the signature of “the person
under concern” is conventional in all diagnostic procedures (Ans. 18).
We cannot say that Appellants have identified an error in the
Examiner’s rejection of claims 16, 17, 20, and 42-44 over Stevens and
Moore further in view of Hoffman or Fukuzaki. Therefore, we sustain this
rejection.
CONCLUSION
We sustain the Examiner’s rejection of claims 1-17, 40-42, and 44-49
under 35 U.S.C. § 112 ¶ 1 as failing to comply with the written description
requirement.
We sustain the rejection of claims 1-21, 38, and 40-49 under 35
U.S.C. § 112, ¶ 2 as indefinite.
We sustain the rejection of claim 38 under 35 U.S.C. § 102(e) as
anticipated by Petrick, but do not sustain the rejection of claims 1-4, 6, 7, 9-
12, 14, 15, 19, 21, 40, and 41 on that ground.
We do not sustain the rejection of claims 1, 6, 7, 9, 14, 15, 19, 21, 40,
and 41 under 35 U.S.C. § 102(b) as anticipated by Berney.
We do not sustain the rejection of claims 5, 8, 13, and 18 under 35
U.S.C. § 103(a) over Petrick or Berney in view of Leuenberger.
We do not sustain the rejection of 16, 17, 20, and 42-44 under 35
U.S.C. §103(a) over Petrick or Berney in view of Hoffman or Fukuzaki.
We do not sustain the rejection of claims 2 and 10 under 35 U.S.C. §
103(a) over Berney in view of RD 421048.
We do not sustain the rejection of claims 3, 4, 11, and 12 under 35
U.S.C. § 103(a) over Berney in view of Stevens.
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We sustain the rejection of claim 38 under 35 U.S.C. § 103(a) over
Berney in view of Bowman.
We do not sustain the rejection of claim 8 under 35 U.S.C. § 103(a)
over Berney in view of RD 421048, Stevens, and Leuenberger.
We do not sustain the rejection of claim 17 under 35 U.S.C. § 103(a)
over Berney in view of Stevens, and Leuenberger, and further in view of
Hoffman or Fukuzaki.
We sustain the rejection of claims 1-4, 6, 7, 9-12, 14, 15, 19, 21, 38,
40, 41, and 45-49 under 35 U.S.C. § 103(a) as obvious over Stevens in view
of Moore.
We sustain the rejection of claims 5, 8, 13, and 18 under 35 U.S.C. §
103(a) as obvious over Stevens and Moore further in view of Leuenberger.
We sustain the rejection of claims 16, 17, 20, and 42-44 under 35
U.S.C. § 103(a) as obvious over Stevens and Moore further in view of
Hoffman or Fukuzaki.
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
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).
AFFIRMED

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