PROMEGA CORPORATION

Patent Trials and Appeals BoardApr 15, 2021

2021002654 (P.T.A.B. Apr. 15, 2021)

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. 16/265,608 02/01/2019 Mark Sehmer 26528US03 7455 23446 7590 04/15/2021 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 EXAMINER KING, CURTIS J ART UNIT PAPER NUMBER 2684 NOTIFICATION DATE DELIVERY MODE 04/15/2021 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): mhmpto@mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK SEHMER, TRAVIS PHILLIPS, and MIKE LOHMEIER Appeal 2021-002654 Application 16/265,608 Technology Center 2600 Before WILLIAM BAUMEISTER, DAVID J. CUTITTA II, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 23–26 and 29–42, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Promega Corp. as the real party in interest. Appeal Br. 4. Appeal 2021-002654 Application 16/265,608 2 TECHNOLOGY The application relates to radio frequency identification (RFID) systems for tracking items. Spec. ¶ 1. ILLUSTRATIVE CLAIM Claim 23 is illustrative and reproduced below with its limitations at issue emphasized: 23. A method for operating a radio frequency identification (RFID) system including an RFID tag configured to store electronic product code (EPC) data, an RFID device configured to write data to the RFID tag associated with an item, a controlling computer, a database, a plurality of cloud applications, and a serialization service configured to run on a cloud network, the method comprising: requesting, by the controlling computer from the serialization service, first data comprising a unique identifier for the RFID tag, wherein the unique identifier is unique across the plurality of cloud applications; receiving, by the controlling computer from the serialization service, the first data; controlling, by the controlling computer, the RFID device to write the first data to the RFID tag; writing, using the RFID device, the first data to the RFID tag; and storing, in the database, an association between the first data of the RFID tag and a second data of the item. Appeal 2021-002654 Application 16/265,608 3 REFERENCES The Examiner relies on the following references as prior art: Name Reference Date Abraham US 2009/0189743 A1 July 30, 2009 Aggarwal US 2009/0224889 A1 Sept. 10, 2009 Arneson US 7,844,505 B1 Nov. 30, 2010 Hansen US 2012/0223817 A1 Sept. 6, 2012 Risheq US 2013/0314208 A1 Nov. 28, 2013 Tagato US 2005/0231370 A1 Oct. 20, 2005 REJECTIONS Appellant canceled claims 27 and 28 during the appeal. See Amendment (Sept. 21, 2020); Advisory Act. (Oct. 22, 2020). The following rejections remain on appeal: Claims 35 U.S.C. § Basis 29–32, 40 112, second para. Indefiniteness 23, 30, 33–39 103(a) Tagato, Aggarwal, Arneson 24–26, 29, 31, 32 103(a) Tagato, Aggarwal, Arneson, Abraham 41 103(a) Tagato, Aggarwal, Arneson, Hansen 42 103(a) Tagato, Aggarwal, Arneson, Risheq ISSUES 1. Did the Examiner err in finding claims 29–32 and 40 indefinite? 2. Did the Examiner err in finding Tagato teaches or suggests the “requesting” step is performed “by the controlling computer,” as recited in independent claim 23? 3. Did the Examiner err in finding the combination of Tagato and Arneson teaches or suggests “storing, in the database, an association between the first data of the RFID tag and a second data of the item,” as recited in independent claim 23? Appeal 2021-002654 Application 16/265,608 4 4. Did the Examiner err in finding the combination of cited references teaches or suggests to “receive a request from the cloud network to program the unique EPC information with the RFID device,” as recited in independent claim 33? 5. Did the Examiner err in finding a person of ordinary skill in the art would have had reason to combine Tagato with Aggarwal and Arneson (claim 23) and Abraham (claim 24)? ANALYSIS Indefiniteness Claims 29–32 In the Final Office Action, the Examiner rejects claims 27–32 for indefiniteness as follows: Claim 27 recites the limitation “the runtime system” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claims 28-32 are rejected due to their claim dependency. Final Act. 2. Claims 27 and 28 were canceled during the appeal, so the rejection now applies only to claims 29–32. Appellant argues that claims 29–32 “do not depend from claim 27” and instead “depend from claims 25 or 23,” neither of which was rejected under § 112. Appeal Br. 8. The Examiner does not address the indefiniteness rejections in the Answer. We agree with Appellant that claims 29–32 do not depend from claim 27, nor do they recite the same limitation “the runtime system” at issue in the rejection for claim 27. Accordingly, we do not sustain the Examiner’s § 112 rejection of claims 29–32. Appeal 2021-002654 Application 16/265,608 5 Claim 40 Claim 40 recites “the controlling computer is configured to control when an RFID scan occurs.” The Examiner finds that “[i]t is unclear what the computer is to control when an RFID scan occurs.” Final Act. 2. We understand the Examiner to be interpreting the claim language as meaning “when an RFID scan occurs, the computer controls ____,” where the blank is missing language that renders the claim indefinite. Appellant argues that “[t]he Examiner appears to misread the claim language” because “[n]o language is missing from the claim.” Appeal Br. 9. According to Appellant, “the controlling computer is configured to control the time when an RFID scan occurs.” Id. The Examiner does not address the indefiniteness rejections in the Answer. We agree with Appellant that the claim recites controlling the time (i.e., when) that the RFID scan occurs. Accordingly, we do not sustain the Examiner’s § 112 rejection of claim 40. Obviousness Claim 23 Appellant makes three groups of arguments against the obviousness rejection of claim 23: (1) the “reciting” step; (2) the “storing” step; and (3) the reasons to combine the references. First, claim 23 recites that the “requesting” step is performed “by the controlling computer.” Appellant argues that in the Final Office Action’s Appeal 2021-002654 Application 16/265,608 6 reliance on Tagato, “[t]here is no allegation that the ‘controlling computer’ performs the ‘requesting.’” Appeal Br. 11. The Examiner finds “Tagato discloses the controlling computer as element 204 in figure 1” and “the serialization service as element 203,” then “in ¶0066 [of Tagato] the server 203 [i.e., the serialization service] issues a new ID number upon request from the server 204 [i.e., the controlling computer].” Ans. 3. Appellant argues that the Examiner’s reliance on paragraph 66 of Tagato is “new evidence” resulting in a “new ground” that was “not designated as such” and hence “should not be considered.” Reply Br. 5. According to Appellant, although “there is a separate procedure for rebutting the failure to designate a new ground of rejection” in 37 C.F.R. § 41.40, “Rule 41.40 directly conflicts with Rule 41.39.” Id. at 5–6 n.2. We are not persuaded by Appellant’s arguments. Section 41.39(a)(2) and (b) sets forth the procedures for an examiner designating a new ground and an appellant responding to that new ground. Section 41.40 then states that if an appellant believes the examiner failed to properly designate something as a new ground, that must be challenged by petition, not appeal, or else it is waived: Any request to seek review of the primary examiner’s failure to designate a rejection as a new ground of rejection in an examiner’s answer must be by way of a petition to the Director under § 1.181 of this title filed within two months from the entry of the examiner’s answer and before the filing of any reply brief. Failure of appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection. 37 C.F.R. § 41.40(a) (emphasis added). Appeal 2021-002654 Application 16/265,608 7 Here, Appellant did not file any such petition and instead filed a reply brief. By regulation, that constitutes “a waiver of any arguments that a rejection must be designated as a new ground of rejection.” Id. Moreover, we note that even if the Examiner had designated a new ground, § 41.39(b)(2) expressly identifies filing a reply brief as one option for addressing that new ground, which is exactly what Appellant did. Thus, Appellant’s argument is not consistent with proper Board procedure. Substantively, Tagato discloses “receiving a new ID number issue request from the ID reading and writing control server 204,” which is the component that the Examiner identifies as the claimed controlling computer. Tagato ¶ 66; Ans. 3. Appellant does not sufficiently rebut this substantive determination, instead relying on the procedural argument we reject above. Thus, we are not persuaded of error in the “requesting” step. Second, claim 23 recites “storing, in the database, an association between the first data of the RFID tag and a second data of the item.” Appellant argues that (1) “claim 23 requires the active step of storing the association in the database,” not just mere capability; (2) “Arneson clearly defines a ‘static record’ to be something wholly different from the recitation of claim 23”; and (3) “Arneson does not disclose that the first data of the RFID tag stored in the database must be the very same first data that is written to the RFID tag.” Appeal Br. 13–15. The Examiner finds that “Arneson explicitly disclose[s] a tag is associated with an item in a database” and that it would have been “clear to one of ordinary skill in the art [that] the process of storing the association has to take place in order for the tag and item to be associated with one another.” Ans. 4; see also Final Act. 4 (citing Arneson 33:63–34:1). The Appeal 2021-002654 Application 16/265,608 8 Examiner also determines that Appellant “argues against the references individually” because “Tagato explicitly disclose[s] an ID may be dynamically stored in a database,” whereas “Arneson was combined with Tagato to explicitly disclose it has been known for a tag ID to be associated with an item.” Ans. 4–5. In particular, “Tagato discloses the data requested is the data written to the RFID tag, so Tagato discloses the data requested is the data stored.” Id. at 5 (citing Tagato ¶ 66). Appellant argues the Examiner’s Answer “has crafted a new theory” that adds Tagato for further support. Reply Br. 6. This argument is not persuasive for the same reasons discussed above. Appellant further argues that “the Examiner’s Answer fails to identify what part of Tagato discloses the alleged ‘dynamic’ database, or what is even meant by ‘dynamic.’” Id. Yet this argument and Appellant’s argument about Arneson’s database being “static” are not commensurate with the scope of the claim because claim 23 does not recite whether the database must be “dynamic” or “static.” Tagato discloses generating and tracking IDs. Tagato ¶ 66. Arneson discloses a “database contains a static record for each inventory tag ID that indicates whether the inventory item associated with the tag ID is a valid transaction item.” Arneson 33:63–34:1. Thus, as the Examiner found, Arneson’s database would have provided additional details associated with Tagato’s ID. For example, Arneson discloses that the tag ID of a library book is associated with information about whether that book can be checked out or is instead a reference book that must stay in the library. Id. We therefore agree with the Examiner that the combination of Tagato and Appeal 2021-002654 Application 16/265,608 9 Arneson teaches or suggests “storing, in the database, an association between the first data of the RFID tag and a second data of the item.” Third, Appellant argues that the Examiner’s rationale for combining Tagato with either Aggarwal or Arneson is “impermissibly conclusory” because “[i]t states a result not a motivation” or otherwise relies on hindsight. Appeal Br. 15–17. For the combination with Aggarwal, the Examiner finds that “it would have been obvious to one of ordinary skill in the art at the time the claimed invention was filed to allow the unique identifier of Tagato to be unique across a plurality of applications, as taught by Aggarwal” and “[o]ne skilled in the art would [have been] motivated to modify Tagato as described above in order to allow the RFID device to be utilized for a multitude of different applications.” Final Act. 4 (citing Aggarwal ¶ 31). For the combination with Arneson, the Examiner finds that “[o]ne skilled in the art would [have been] motivated to modify Tagato as described above in order to keep track of which one of the plurality of tags are attached to each item.” Id. We agree with Appellant’s more general point that an obviousness analysis must consider both KSR International Co. v. Teleflex Inc., 550 U.S. 398, 406–07 (2007) and Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). For example, KSR provides guidance on how Graham should be applied, in particular rejecting the Federal Circuit’s “rigid approach” requiring a teaching, suggestion, or motivation in the reference itself. KSR, 550 U.S. at 415; see also id. at 406–07 (“In Graham . . . , the Court set out a framework for applying the statutory language of § 103” and those Graham factors “continue to define the inquiry that controls.”). Appeal 2021-002654 Application 16/265,608 10 Nevertheless, KSR also instructs that “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. The Court explained that following these principles in some cases may be less difficult because the claimed subject matter may involve no more than “the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement.” Id. at 417. Here, Tagato discloses an ID, and the Examiner relies on Aggarwal merely to show that an ID can be unique. Final Act. 4. And Aggarwal discloses one benefit of a unique ID is that the same ID can be used in a wide variety of contexts or applications. Aggarwal ¶ 31. We are not persuaded by Appellant’s argument against combining with Aggarwal given that the Examiner’s proposed modification is relatively simple (i.e., merely making Tagato’s ID unique) and the benefit of doing so is set forth in Aggarwal itself. The Examiner’s straightforward reliance on Arneson (i.e., putting Tagato’s tags in a database where each tag is associated with some data) is similarly supported under KSR and Graham. For example, the cited portion of Arneson provides an example of tags in a library being associated with data about whether that item can be checked out from the library. Arneson 33:63–34:1. “A person of ordinary skill is also a person of ordinary creativity, not an automaton,” KSR, 550 U.S. at 421, and a person of ordinary skill in the art would have had the creativity to realize that once you have the RFID tags of Tagato you would also want additional information about each tag, as in Arneson. Appeal 2021-002654 Application 16/265,608 11 Accordingly, we sustain the Examiner’s rejection of claim 23. Claims 24–26, 29, 31, and 32 For these dependent claims, Appellant argues, similar to above, that the Examiner’s rationale for combining with Abraham is “impermissibly conclusory and only states an intended result.” Appeal Br. 17. We are not persuaded for reasons similar to those discussed above. The Examiner discusses how Abraham teaches a server with an API “configured to receive the first data from the RFID tag and to manage the database,” and the Examiner finds that it would have been obvious to combine Abraham with the other references “to include a server running an API to manage tag data, as taught by Abraham.” Final Act. 7 (citing Abraham ¶ 29, Fig. 2). In particular, a person of ordinary skill in the art would have been motivated to combine Abraham “in order to provide a comprehensive inventory management system to manage assets, as taught by Abraham.” Id. (citing Abraham ¶ 5). The cited paragraph of Abraham expressly teaches that “what is needed in the art is a better way to gather and present information regarding and manage the constant movement of inventories of equipment in a network.” Abraham ¶ 5. The paragraphs immediately before this describe various problems in the prior art that made the prior art “daunting,” “ill- suited,” “frequently flawed,” and “rely to a large extent on human beings to gather their data manually.” Id. ¶¶ 3–4. The Examiner also correctly finds that Abraham expressly applies its inventory management techniques to RFID. Id. ¶ 29; see also id. at Title (“Radio-Frequency Identification Enabled Inventory Management . . . ”). Similar to above, we are not persuaded the Examiner erred in finding a Appeal 2021-002654 Application 16/265,608 12 person of ordinary creativity would have had reason to apply Abraham’s RFID inventory management system to Tagato’s RFID system to address the shortcomings expressly identified in Abraham. Accordingly, we sustain the Examiner’s § 103 rejection of claims 24– 26, 29, 31, and 32. Claims 33–39, 41, and 42 The Examiner determines that “claim 33 is rejected and analyzed with respect to claim 23.” Final Act. 5. Appellant argues that “claim 33 is substantively different from claim 23,” including reciting “the controlling computer is configured to . . . receive a request from the cloud network to program the unique EPC information with the RFID device.” Appeal Br. 18 (emphasis omitted). We agree with Appellant. Although the Examiner may have shown that the controlling computer is configured to “program the unique EPC information with the RFID device” similar to claim 23, the Examiner has not yet shown the additional limitation of the controlling computer “receiv[ing] a request from the cloud network” to do such programming. See Ans. 10. The Examiner does not rely on the additional references of Hansen (claim 41) or Risheq (claim 42) to cure this deficiency. Accordingly, we do not sustain the Examiner’s § 103 rejections of independent claim 33 and its dependent claims 34–39, 41, and 42. Appeal 2021-002654 Application 16/265,608 13 OUTCOME The following table summarizes the outcome of each rejection: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 29–32, 40 112, 2nd para. Indefiniteness 29–32, 40 23, 30, 33–39 103(a) Tagato, Aggarwal, Arneson 23, 30 33–39 24–26, 29, 31, 32 103(a) Tagato, Aggarwal, Arneson, Abraham 24–26, 29, 31, 32 41 103(a) Tagato, Aggarwal, Arneson, Hansen 41 42 103(a) Tagato, Aggarwal, Arneson, Risheq 42 Overall Outcome 23–26, 29–32 33–42 TIME TO RESPOND No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.36(a)(1)(iv). AFFIRMED IN PART