Rok Druzinic-FiebachDownload PDFPatent Trials and Appeals BoardSep 6, 201914329155 - (D) (P.T.A.B. Sep. 6, 2019) Copy Citation 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. Appeal 2018-001399 Application 14/329,155 2 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.”). Appeal 2018-001399 Application 14/329,155 3 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. Appeal 2018-001399 Application 14/329,155 4 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 Appeal 2018-001399 Application 14/329,155 5 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. Appeal 2018-001399 Application 14/329,155 6 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. Appeal 2018-001399 Application 14/329,155 7 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 Appeal 2018-001399 Application 14/329,155 8 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 Appeal 2018-001399 Application 14/329,155 9 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). Appeal 2018-001399 Application 14/329,155 10 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 Copy with citationCopy as parenthetical citation