Ex Parte Jordan

Patent Trial and Appeal Board

Mar 28, 2016

10772196 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/772,196 0210412004
99434 7590 03/30/2016
McKesson Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza
101 South Tryon St., Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Michael L. Jordan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
050704/305124 4228
EXAMINER
PORTER, RACHELL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/30/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL L. JORDAN
Appeal2014-001310
Application 10/772, 196
Technology Center 3600
Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3---6, and 9. We have jurisdiction under 35 U.S.C.
§ 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2014-001310
Application 10/772, 196
THE INVENTION
The Appellant's claimed invention is directed to automated
prescription filling apparatus and systems (Spec., para. 1 ). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A method of discriminating between orders, comprising:
evaluating a queue of orders to determine whether one or
more prescriptions within each order are fillable in a fully
automated manner or not; and
determining, via a control computer, and prior to
commencing a filling process, a set of workstations for each
prescription based on said evaluating, wherein determining
comprises:
selecting a first set of workstations to fill the prescription,
if the prescription is fillable in a fully automated manner, said
first set of workstations including an imaging workstation but
excluding a pharmacist review workstation for reviewing a
filled order by a pharmacist and;
selecting a second set of workstations, different than the
first set of workstations, to semi-automatically or manually fill
the prescription, if the prescription is not fillable in a fully
automated manner, said second set of workstations including
the pharmacist review workstation.
THE REJECTION
The following rejection is before us for review:
Claims 1, 3---6, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lasher (US 5,771,657, iss. June 30, 1998) and Schurko
(US 6,760,414 Bl, iss. July 6, 2004).
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Appeal2014-001310
Application 10/772, 196
FINDil-.JGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence 1.
ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art of Schurko and Lasher fail to disclose or suggest:
( 1) determining, prior to commencing a prescription filling
process, a first set of workstations to fill the prescription if the
prescription is fillable in a fully automated manner without a
pharmacist review and
(2) a different set of workstations ifthe prescription is fillable in
a non-automated manner in which the different set of
workstations includes a pharmacist review workstation
(App. Br. 6).
The Appellant provides arguments to show that the prior art fails to
disclose or suggest these features in the Appeal Brief at pages 6-10, and in
the Reply Brief at pages 2-12.
In contrast, the Examiner has determined that cited rejection is proper
(Final Act. 2--4, 9, 10, Ans. 2-7).
We agree with the Examiner. Lasher discloses a system for
automatically filling prescriptions (Lasher, col. 1 :4--8). In Lasher, the
production order can be classified as either a Manual-Dispense Order, or
automatically handled type order (Lasher, col. 3:32-50). Thus, in Lasher the
first set of workstations are shown by the automatically handled orders, and
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-001310
Application 10/772, 196
the second set of workstations are shown by the manual-dispense orders.
Note that in Lasher because the customer order is classified as either type
before being sent to be to the exact location where it is actually filled, this
serves as the claimed step for being done "prior to commencing a filling
process." The Appellant, at page 7 of the Appeal Brief, has cited to Lasher
at column 8, lines 8-12, column 10, lines 52---60, column 11, lines 8-12 and
16-21, and column 14, lines 36-44, as using a quality assurance area or
manual inspection, but this is only if an error is detected and Lasher has
disclosed the claimed first and second set of workstations as claimed.
Regardless, Schurko discloses identifying the type of request before sending
it for fulfillment (Schurko, col. 2:44--58). Although Schurko is directed to a
banking system, it is also directed to the identification of an item before
sending it to the proper channel for processing. Here, the modification of
the system of Lasher to include determining the appropriate workstation path
for the prescription prior to it being filled would have been an obvious,
predictable modification of familiar elements for the advantage of reducing
production time by getting the order processed faster.
For these reasons the rejection of claim 1 is sustained. The Appellant
has provided the same arguments for the remaining claims and the rejection
of these claims is sustained for the same reasons given above.
CONCLUSION OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting the claims as listed in the Rejection section above.
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Appeal2014-001310
Application 10/772, 196
DECISION
The Examiner's rejection of claims 1, 3---6, and 9 is sustained.
AFFIRMED
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