Rok Druzinic-Fiebach

Patent Trials and Appeals Board

Sep 6, 2019

14329155 - (D) (P.T.A.B. Sep. 6, 2019)

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.
14/329,155 07/11/2014 Rok Druzinic-Fiebach 02581-P1851A 1399
154825 7590 09/06/2019
KS - Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
AFRIFA-KYEI, ANTHONY D
ART UNIT PAPER NUMBER
2685
NOTIFICATION DATE DELIVERY MODE
09/06/2019 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):
patent@karlstorz.com
uspto@whipgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROK DRUZINIC-FIEBACH
____________

Appeal 2018-0013991
Application 14/329,155
Technology Center 2600
____________

Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1–20, all the pending claims in the present application. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). Oral arguments were
heard on August 15, 2019. A transcript of that hearing will be added to the
record in due time.
We AFFIRM.

1 Appellant identifies is Karl Storz GmbH & Co. KG as the real party in
interest. See Appeal Br. 2.
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STATEMENT OF THE CASE
Invention
Appellant’s invention relates to “capturing and transmitting data . . .
from [a] hospital basket . . . efficiently and according to need.” Spec. ¶ 11.2
Rather than continuously transmitting data or requiring an operator to push a
button to transfer the data, Appellant’s invention uses a sensor to detect a
medical instrument within the hospital basket and to activate a reader upon
the detection. After activation, the reader exchanges data with an
identification unit attached to the medical instrument and then exchanges the
data with a control unit. See Spec. ¶¶ 9–11
Representative Claim
Claims 1 and 14 are independent claims. Claim 1 is representative
and is reproduced below with limitations at issue italicized.
1. A receptacle for medical instruments, comprising
a container for holding the medical instruments and
comprising an apparatus for capturing and transmitting data of
the medical instruments, which apparatus comprises a control
unit, a reader and at least one first identification element
attached to at least one medical instrument of the medical
instruments,
wherein the control unit is connected to the reader and,
actuated by signals, exchanges data with the reader, and
performs on said data at least one of a processing, storing, and
passing to a second identification element attached to the
container,

2 This Decision refers to: (1) Appellant’s Specification filed July 11, 2014
(“Spec.”); (2) the Final Office Action mailed December 29, 2016 (“Final
Act.”); (3) the Appeal Brief filed June 9, 2017 (“Appeal Br.”); (4) the
Examiner’s Answer mailed September 27, 2017 (“Ans.”); and (5) the Reply
Brief filed November 27, 2017(“Reply Br.”).
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wherein the reader exchanges data with the at least one
first identification element and passes said data to the control
unit,
wherein the apparatus comprises a sensor unit which
detects the at least one medical instrument by a measurement
performed thereon of at least one measurement quantity, and
exchanges signals with the control unit, the reader activated
upon detection of the at least one medical instrument,
wherein the exchanged signals initiate the exchange of
data between the reader and the at least one first identification
element,
wherein the reader transfers the exchanged data to the
control unit.
Appeal Br. 12 (Claims Appendix).

REFERENCES
The Examiner relies upon the following prior art in rejecting the
claims on appeal:3
Takizawa US 2002/0117429 A1 Aug. 29, 2002
Tethrake US 2006/0119481 A1 June 8, 2006
Ufford US 2007/0050271 A1 Mar. 1, 2007
Loi US 2012/0019394 A1 Jan. 26, 2012
Frankhouser US 2016/0175543 A1 June 23, 2016

REJECTIONS
Claims 1–7, 10–13, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Tethrake and Takizawa. See
Final Act. 2–5.

3 All citations to the references use the first-named inventor only.
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Claims 8 and 14–16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Tethrake, Takizawa, and Ufford. See
Final Act. 5–7.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Tethrake, Takizawa, Ufford, and Loi.
See Final Act. 7.
Claims 18–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Tethrake, Takizawa, and Frankhouser.
See Final Act. 7–9.
Our review in this appeal is limited to the above rejections and the
issues raised by Appellant. Arguments not made in the Appeal Brief are
waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2016).

ANALYSIS
Issue: Does the Examiner err in finding the cited combination of
Tethrake and Takizawa teaches or suggests “wherein the apparatus
comprises a sensor unit which detects the at least one medical instrument”
and “the reader activated upon detection of the at least one medical
instrument,” as recited in independent claim 1?
The Examiner finds Tethrake teaches most of the limitations in claim
1 including a reader that detects “at least one medical instrument by a
measurement performed thereon of at least one measurement quantity.”
Final Act. 2–3 (citing Tethrake Abstract, ¶¶ 16, 38, 42, 43, 45, 47, and
Figs. 1–3). The Examiner finds Tethrake “fails to directly disclose a sensor
unit within the reader that detects the medical instrument” but determines it
would have been obvious to one of ordinary skill in the art to include a
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sensor unit inside the reader. See Final Act. 3; Ans. 4. The Examiner
further finds Tethrake “fails to disclose the reader device being activate[d]
upon detection of at least one medical instrument” but “Takizawa on the
other hand discloses a scanner/reader integrated with a sensor, when the
sensor detects the presence of a tagged product/asset, the reader/scanner is
activated for scanning/reading the product/asset.” Final Act. 3 (citing
Takizawa ¶¶ 233, 234) (original bolding removed, emphases added). The
Examiner determines it would have been “obvious to one of ordinary skill in
the art to combine Tethrake with Takizawa.” Final Act. 3.
Appellant first disputes the Examiner’s factual findings regarding
Tethrake. Appellant argues “the claims require both ‘a reader’ and ‘a sensor
unit’” and “Tethrake does not disclose both a reader and sensor (as
acknowledged by the Office Action) and a prima facie case has not been
made.” Appeal Br. 6–7.
We are unpersuaded because this argument is not responsive to the
Examiner’s rejection. Although the Examiner acknowledges that Tethrake
“fails to directly disclose a sensor unit within the reader,” the Examiner
relies on Takizawa to teach a sensor unit and further determines it would
have been obvious to include a sensor unit within Tethrake’s reader. Final
Act. 3. Appellant’s argument that “Tethrake does not disclose both a reader
and sensor” is therefore not responsive to the Examiner’s reliance on the
combination of Tethrake and Takizawa or on the Examiner’s finding that it
would have been obvious to include “a sensor unit within the reader.” Final
Act. 3.

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Next, Appellant argues “Takizawa’s sensor does not perform the
claimed detection” because in “Takizawa, the mere presence of any object
will trigger Takizawa’s sensor, regardless of whether it is a particular
medical instrument.” Appeal Br. 7 (citing Takizawa ¶ 233).
We find this argument unpersuasive. The Examiner finds Tethrake
teaches a reader detecting at least one medical instrument by detecting a tag
attached to the medical instrument. Final Act. 2; see also Tethrake ¶ 42
(Sensing of “RFID-enabled surgical instrument.”). The Examiner finds
Takizawa teaches a reader integrated with a sensor that is activated upon
sensing any product/asset having a tag. Final Act. 3; see also Takizawa
¶ 234. The Examiner determines it would have been obvious to combine the
teachings of Tethrake and Takizawa to arrive at “a sensor unit which detects
the at least one medical instrument” and a “reader activated upon detection
of the at least one medical instrument,” as recited in claim 1. See Final
Act. 3. The Examiner adds, “[t]he claims do not require anything other than
detecting medical instruments and Tethrake is directed to detecting medical
instruments. So applying Takizawa’s arguable generic teaching regarding a
sensor responsive barcode scanner to Tethrake’s specific medical instrument
detection as explained in the rejection meets the argued claimed limitation.”
Ans. 5 (emphasis omitted).
We agree with the Examiner’s findings and conclusion of obviousness
and we adopt the Examiner’s findings here. See Final Act. 2–3; Ans. 3–6.
Appellant’s argument that “the mere presence of any object will trigger
Takizawa’s sensor, regardless of whether it is a particular medical
instrument,” is not persuasive because the claim does not exclude triggering
the sensor by an object other than the medical instrument. Appeal Br. 7.
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Nor does Appellant argue Takizawa fails to generally teach detecting
objects, including medical instruments. Appellant’s argument regarding
Takizawa is, therefore, not responsive to the rejection because the Examiner
finds Tethrake specifically teaches detecting a medical instrument and relies
on Takizawa in combination with Tethrake, not Takizawa alone, to teach
“the claimed detection.” Appeal Br. 7.
Next, Appellant argues “there is no motivation to make the
hypothetical combination” because “the Office Action simply states on page
3 that the hypothetical combination would have been ‘predictable.’ This is
not sufficient motivation and the combination cannot be maintained as a
matter of law.” Appeal Br. 8.
We disagree. We are mindful that “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006); see also KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (quoting Kahn). “The pertinence of each reference, if not apparent,
must be clearly explained.” 37 C.F.R. § 1.104(c)(2).
Here, the Examiner specifically explains that an ordinarily skilled
artisan would have been motivated to combine Tethrake with Takizawa
because known work in one field of endeavor may prompt variations of it for
use in either the same field or a different one based on design incentives or
other market forces if the variations are predictable to one of ordinary skill
in the art:
One of ordinary skill in the art to combine Tethrake with
Takizawa in order to apply known work in one field of
endeavor (presence sensor to detect a specific device and
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activating a reader thereafter) may prompt variations of it for
use in either the same field or a different one based on design
incentives or other market forces (in this case the medical field)
if the variations are predictable (detecting a specific sensor
using RFID protocol) to one of ordinary skill in the art[.]
Ans. 5; see also MPEP § 2143 I(F).
The Examiner finds both Tethrake and Takizawa teach
sensing/detecting of items using tags. The Examiner determines it would
have been predictable to one of ordinary skill to to apply known work in one
field of endeavor to another field of endeavor, that is, applying Takizawa’s
presence sensor to activate a reader based on detection of a tag on a specific
object, to Tethrake’s sensing of a tag to detect a medical instrument in a
medical basket.
Appellant has not explained why the variations in Tethrake and
Takizawa would not have been predictable. Nor does Appellant demonstrate
there is any difference in the fields of the references, or that such a
difference would be significant. Appellant notes Tethrake is directed to
identification of medical instruments while asserting Takizawa is “directed
to sorting commercial articles at a distribution center.” Appeal Brief 6–7
(citing Takizawa 2). Appellant, however, fails to establish this alleged
difference in fields is significant, particularly when both references relate to
sensing of items using tags. Appellant has, therefore, not established that the
proposed modification would have been beyond the capabilities of a person
of ordinary skill in the art. KSR, 550 U.S. at 417–418 (“[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond that
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person’s skill.”). Absent such a showing, we “take account of the inferences
and creative steps that a person of ordinary skill in the art would employ,”
and find a person of ordinary skill in the art would overcome those
difficulties within their level of skill. KSR, 550 U.S. at 418; see also id. at
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).
Next, in the oral hearing, Appellant argued the claimed invention
comprises a sensor unit that identifies a specific medical instrument using a
measurement and this feature is not taught by the combination of Tethrake
and Takizawa. This argument was not made in the appeal brief. To the
extent that Appellant presented new arguments at the hearing held on August
15, 2019, we do not consider those new arguments. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2017)(“Except as provided for in §§ 41.41, 41.47 and
41.52, any arguments or authorities not included in the appeal brief will be
refused consideration by the Board for purposes of the present appeal.”).
For these reasons, we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 1, and similarly, independent claim 14, which is not
argued separately from claim 1. See Appeal Br. 11. Dependent claims 2–6,
8–13, and 15–20 are not argued separately and so we also sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of these claims. See Appeal
Br. 11–12.

DECISION
We affirm the Examiner’s decision to reject claims 1–20 under 35
U.S.C. § 103(a).

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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).

AFFIRMED