DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21-24 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Danilewitz, WO 2007/064816.
Regarding claim 2, Danilewitz disclose a system and method for pharmaceutical management and tracking which includes a storage cabinet comprising: at least one shelf that holds items and divides an interior of the cabinet (paragraph 5: "One disclosed embodiment includes a product inventory management system including a cabinet configured to contain an inventory of product units having RFID tags"; figure 1, paragraph 15); a first communication channel through which the cabinet communicates with an inventory management system (paragraph 22: "Cabinet data processing system. 150 is also connected to communicate with other devices using network interface 160, which can be implemented using wired communications such as Ethernet or a telephone modem, or wireless communications such as GSM or IEEE 802. 11 [. .Z ] Network interface 160 allows the cabinet data processing system 150 to communicate with the inventory management system"); a second communication channel through which the cabinet communicates with a nearby cabinet (paragraph 22: "Network interface 160 allows the cabinet data processing system 150 to communicate with the inventory management system, described below, and optionally with other cabinets 100 using mesh networking, direct cabling, or other technologies known to those of skill in the art. [. .. ] In embodiments where multiple cabinets 100 communicate with each other, these can be configured to communicate with the inventory management system as a single unit with a combined inventory."); and a transceiver device that establishes and transmits a signal of the second communication channel (figure 1: element 160; paragraph 22).
Regarding claim 22, wherein the storage cabinet is configured to selectively receive an action signal from the inventory management system based on the inventory signal (the system periodically scans the storage cabinet for status update, par. 24).
Regarding claim 23, wherein the inventory management system assesses an inventory level of the item based on the inventory signal (see par. 0024).
Regarding claim 24, wherein the action signal is configured to be selectively received when the inventory level of the item is assessed to be below a threshold (the signal is periodically provided including the inventory level is low, par. 23-24).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 25-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Danilewitz, the teachings of Danilewitz have been discussed above.
Regarding claims 25 and 27-28, Danilewitz discloses that a display or customizable electronic display can be connected to the processing unit for displaying the status of the inventory, but fails to specifically disclose LEDs and/or audible signal generators for indicating the inventory status. However, using LEDs and/ audible signal generators to indicate the inventory status is functionally equivalent as the indication means disclosed in the prior art, including RFID signals and/or the fixed and the customizable electronic displays. Furthermore, these indicators (LEDs/audio) are well known in the art for providing visual and audible indications. Therefore, it would have been an obvious extension as taught by the prior art.
Regarding claim 26, Danilewitz discloses that communication between the cabinet data processing can be implemented using any suitable data communication technologies or a combination of them, but fails to disclose using a mobile device. Mobile device (i.e. cell phone) are well-known in the art for communicating and interfacing with electronic systems for performing transactions and/or for verifying the systems and its attributes. It would have been obvious for a person of ordinary skill in the art at the time the invention was made to modify the teachings of Danilewitz to means for accessing the current status of the cabinet via a mobile device in order to verify the current status of the items within the cabinet. Such modification would be more convenient by allowing an operator to manage the cabinet remotely. An operator could order items for replenishing the cabinet without being present at the cabinet. Therefore, it would have been an obvious extension as taught by the prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,314,896 (hereinafter ‘896 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention is a similar recitation of the ‘848 Patent. For instance in claim 21 of the current application and in the ‘498 Patent, the applicant claims:
Application No. 19/030,155
Patent No. 12,214,896
A method of managing inventory in a storage cabinet, the method comprising: reading a radio-frequency identification (RFID) tag associated with an item located within the storage cabinet; selectively communicating with an inventory management system via a communication channel; and selectively communicating with a mobile device via a second communication channel; wherein a communication device selectively communicates an inventory signal to the inventory management system, the inventory signal varying based upon information read from the RFID tag associated with an item.
A storage cabinet, comprising: a shelf configured to read a radio-frequency identification (RFID) tag associated with an item located within the storage cabinet; and a communication device configured to communicate with an inventory management system via a first communication channel, and further configured to communicate with a mobile device via a second communication channel; wherein the communication device communicates via the first communication channel to the inventory management system an inventory signal comprising information corresponding to the RFID tag associated with the item.
Thus, in respect to above discussions, it would have been obvious to an artisan at the time the invention was made to use the teaching of claims 1-17 of the ‘896 Patent as a general teaching for a storage cabinet, to perform method as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘896 Patent and differ only in the method steps. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘896 Patent [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a co-pending application. And since the structure is as recited, the method step is obtained and therefore, obvious.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first paten. IN re Vogel, 164 USPQ 619 (CCPA 1970). A timely filed terminal disclaimer in compliance with 37 C.F.R. & 1.321(b) would overcome an actual or provisional rejection on this ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 C>FR> &1.78(d).
Response to Arguments
Applicant's arguments filed 01/21/26 have been fully considered but they are not persuasive. See examiner remarks.
Remarks:
Regarding the double patent rejection, the applicant stated that a terminal was included in the communication 01/21/26, but we did not received a terminal disclaimer. The clams remain rejected on the ground of nonstatutory double patenting.
The applicant argued the prior art rejection, but did not specifically state which items or components are missing. For instance, the applicant recited claim 21, but argued that the prior art (Danilewitz WO 2007/064816) fails to disclose the combination of features of claim 22. Claim 22 was rejected based on the fact that the system periodically scans storage cabinet for status update. The applicant refers to claim 21 as not being disclosed by the prior art, it is not clear as to what element is missing from the prior art. The applicant’s general argument is not persuasive. Refer to the rejection.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL ST CYR whose telephone number is (571)272-2407. The examiner can normally be reached M to F 8:00-8:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G Lee can be reached on 571-272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DANIEL ST CYR
Primary Examiner
Art Unit 2876
/DANIEL ST CYR/ Primary Examiner, Art Unit 2876