Ex Parte DiMaggioDownload PDFPatent Trial and Appeal BoardOct 15, 201311384555 (P.T.A.B. Oct. 15, 2013) 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. 11/384,555 03/20/2006 John DiMaggio P/4683-16 7752 2352 7590 10/15/2013 OSTROLENK FABER LLP 1180 AVENUE OF THE AMERICAS NEW YORK, NY 10036-8403 EXAMINER BUTLER, MICHAEL E ART UNIT PAPER NUMBER 3653 MAIL DATE DELIVERY MODE 10/15/2013 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 JOHN DIMAGGIO ____________________ Appeal 2011-011323 Application 11/384,555 Technology Center 3600 ____________________ Before: STEFAN STAICOVICI, CHARLES N. GREENHUT, and BART A. GERSTENBLITH, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011323 Application 11/384,555 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1 and 5. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a method and system for electronic assistance in dispensing pharmaceuticals. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for electronically assisting in dispensing pharmaceuticals relating to a plurality of prescription orders fulfilled in a plurality of respective pharmacies for a plurality of respective healthcare facilities, the method comprising the steps of: 1) configuring a computer system to process the prescription orders by an authorized user; 2) entering data, relating to a plurality of prescription orders, into fields of the computer system; 3) determining whether a check is to be performed on the data entered into the fields; 4) generating by the computer system, as a function of the configuring, a warning to the user if the computer system determines a check is to be performed and the data entered into the field requires the warning; 5) verifying one of the plurality of prescription orders by a pharmacist; 6) determining if a payor is available for the one prescription order; 7) adjudicating the one prescription order by sending the one prescription order to a billing queue; 8) generating a prescription label with a first barcode corresponding to the prescription order; 9) retrieving a prescription medication corresponding to the prescription order from a stock location; 10) labeling the prescription medication with said prescription label; Appeal 2011-011323 Application 11/384,555 3 11) obtaining a delivery tote for delivery of the prescription medication to a healthcare facility; 12) scanning a second barcode on the delivery tote; 13) scanning the first barcode on the prescription label and comparing it to the second barcode to determine that the delivery tote is the correct one for the prescription order; 14) further scanning a third barcode on the prescription medication identifying the prescription medication to verify that the prescription medication matches the prescription order; 15) placing the prescription medication with attached prescription label into the delivery tote if there are no scan errors; and 16) if there are any scan errors setting the prescription medication aside for further review; 17) repeating steps 5-16 for each remaining order in the plurality of orders; 18) generating a packing list of all items associated with the plurality of prescription orders in the delivery tote; and 19) delivering the items in the delivery tote to a healthcare facility associated with the delivery tote. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Boyer Chudy US 6,202,923 B1 US 6,370,841 B1 Mar. 20, 2001 Apr. 16, 2002 REJECTION Claims 1 and 5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Boyer and Chudy. Ans. 3. OPINION Independent claim 1 requires, inter alia: 12) scanning a second barcode on the delivery tote; Appeal 2011-011323 Application 11/384,555 4 13) scanning the first barcode on the prescription label and comparing it to the second barcode to determine that the delivery tote is the correct one for the prescription order; We agree with the Examiner that Boyer discloses identification of a bin 74, interpreted as the recited “tote,” using a barcode. Ans. 7 (citing Boyer, col. 8, ll. 16-25). However, we disagree with the Examiner’s finding that Chudy also discloses a barcode on tray 9. Id. (citing Chudy, col. 11, ll. 18-25). Rather, we adopt Appellant’s analysis of Chudy on that point (Reply Br. 2) as our own. Despite the fact that Boyer discloses a barcode associated with a bin, as Appellant points out, it is not apparent exactly what Boyer does with that barcode. Reply Br. 1-2. Steps 12 and 13 are not met simply by the presence of a barcode on a tote. Presumably Boyer’s bin barcode is scanned at some point, but it is not apparent why the Examiner believes there to be any comparison between that barcode and the first barcode on the prescription label. Boyer does not expressly address this and the Examiner does not articulate any reasoning as to why doing so would have been obvious in light of the evidence of record. Since this leaves claim limitations unaddressed we must conclude that the Examiner has failed to establish that the claimed subject matter would have been obvious to one having ordinary skill in the art. “[T]here 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), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appeal 2011-011323 Application 11/384,555 5 DECISION The Examiner’s rejection is reversed. REVERSED mls Copy with citationCopy as parenthetical citation