Ex Parte Aylward

Board of Patent Appeals and Interferences

Jan 12, 2012

11421624 (B.P.A.I. Jan. 12, 2012)

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.
11/421,624 06/01/2006 John Thomas Aylward 034976/306733 2865
826 7590 01/13/2012
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
NIESZ, JASON KAROL
ART UNIT PAPER NUMBER
3751
MAIL DATE DELIVERY MODE
01/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN THOMAS AYLWARD
____________________

Appeal 2010-000369
Application 11/421,624
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
John Thomas Aylward (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s rejection of claims 1-19 under 35 U.S.C. § 103(a) as
unpatentable over Aylward (US 6,505,460 B2, iss. Jan. 14, 2003) and
Pearson (6,561,377 B1, iss. May 13, 2003). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
The claims are directed to “an apparatus and associated methods for
handling pills with a vacuum assembly.” Spec. para. [0001]. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A pill handling apparatus comprising:
a plurality of rotary slats, each rotary slat being
cylindrically-configured and the rotary slats being axially
aligned such that each slat is rotatable about a first axis, each of
said rotary slats having an outer circumferential surface
extending parallel to the first axis, the outer circumferential
surface defining a plurality of receptacles for receiving pills;
and
a vacuum assembly disposed in fluid communication
with each of said rotary slats and configured to draw air into at
least a portion of said receptacles to urge pills to be received by
said portion of said receptacles.
OPINION
The Examiner found that Aylward discloses all features of
independent claims 1 and 11, with the exception of a vacuum assembly or a
step of drawing air into at least a portion of the receptacles to urge pills to be
received by the portion of receptacles. Ans. 3, 5. Appellant does not appear
to contest this finding.
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The Examiner found that Pearson discloses a pill handling apparatus
comprising a vacuum assembly in communication with a plurality of
receptacles for receiving pills, and reasoned that it would have been obvious
to modify the Aylward apparatus and method “by adding the vacuum system
from Pearson, in order to more securely retain the pills against the
receptacles.” Ans. 3. Appellant argues that the modification proposed by
the Examiner would not have been obvious for the following reasons:
(1) Aylward and Pearson, whether separately or in combination, “do
not teach, suggest, provide motivation for, or otherwise render
predictable” what Appellant purports to be “a relatively complex
process of drawing air through pill receptacles, defined by the
outer circumferential surface of cylindrically-configured
rotary slats.” App. Br. 5, 10.
(2) The Examiner disregards the difficulty presented by attempting to
combine the relatively simple vacuum system of Pearson with the
complex apparatus of Aylward. App. Br. 5-6, 11.
(3) Aylward provides a relatively simple solution (cover 80) to
appropriately retain the pills in the respective receptacles, and thus
does not “teach, suggest, provide motivation for, or otherwise
render predictable the substitution of a relatively complex vacuum
system for the relatively simple guard plate solution already in
place.” App. Br. 6, 11.
(4) Aylward and Pearson teach away from the proposed combination,
because Aylward already describes a mechanism for retaining the
pills (the cover), and a redundant means for doing so would be
unnecessary. App. Br. 15, 16.
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(5) Aylward’s provision of a positive air pressure system to eject the
pills suggests that the pills are appropriately retained without the
presence of a vacuum system. App. Br. 6, 11.
Appellant additionally argues, with respect to claims 2 and 12, that
“the increased complexity of having a plurality of independently rotatable
slats incorporating a vacuum assembly is not rendered predictable or
obvious” from the combination of Aylward and Pearson. App. Br. 7, 13.
Appellant reiterates, with respect to claims 8 and 19, that it would not
have been obvious to add a complex vacuum system to Aylward’s apparatus,
given the presence of Aylward’s ejection system. App. Br. 8, 13-14.
For the reasons articulated by the Examiner (Ans. 7:14 to 9:7),
Appellant’s arguments are not persuasive of error in the Examiner’s
rejection.
Appellant’s arguments that Aylward and Pearson provide no teaching,
suggestion, or motivation for the proposed modification are not persuasive.
As Appellant acknowledges, while the demonstration of a teaching,
suggestion, or motivation (the test established by the Court of Customs and
Patent Appeals) to combine known elements in order to show that the
combination is obvious may be “a helpful insight,” it cannot be used as a
rigid and mandatory formula. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418-19 (2007). Rejections on obviousness grounds must be supported by
“some articulated reasoning with some rational underpinning” to combine
the known elements in the manner required in the claim at issue. Id. at 418
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). However, “the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
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and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418. The Examiner articulated a reason for adding the
vacuum system from Pearson to the apparatus of Aylward, (i.e., to more
securely retain the pills against the receptacles). As more fully discussed
below, this articulated reasoning has rational underpinnings.
We appreciate that Pearson applies suction to adhere pills to apertures
in a front wall of a rotary vacuum drum, rather than to receptacles formed in
the circumferential perimeter surface of rotary slats. However, it is not
apparent, and Appellant has not adequately explained, why the application
of suction to a different wall of a rotating drum (or slat) would be uniquely
challenging or unpredictable to a person having ordinary skill in the art. As
noted by the Examiner (Ans. 8), the issue of the alleged complexity of
selectively providing fluid communication between a fluid pressure source
and respective receptacles on the outer circumferential surface of a rotary
slat, depending on the position of the receptacle relative to the capture
position and the release position, has been addressed by Aylward. Merely to
apply those same principles to selectively providing fluid communication to
a vacuum source, as distinguished from a positive pressure source, involves
only routine skill. “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 421.
We do not agree with Appellant that Aylward’s disclosure of a cover
80 that assists in maintaining the pills in place during travel to the release
position (col. 7, ll. 50-52) would have discouraged a person of ordinary skill
in the art from employing suction to more securely retain the pills against the
receptacles, as proposed by the Examiner. Prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
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similar problem unless the prior art also criticizes, discredits or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). As the Examiner pointed out (Ans. 8-9), Aylward does not
criticize, discredit, or otherwise discourage the use of suction to more
securely retain the pills against the receptacles. Further, the Examiner
explains why a person of ordinary skill in the art would be prompted to
employ suction to help retain the pills against the receptacles, either in
addition to or in place of Aylward’s cover. Ans. 8. These explanations,
which we adopt, convince us that the Examiner’s articulated reason for the
proposed modification has rational underpinnings.
We also do not agree with Appellant that Aylward’s disclosure of a
positive pressure eject mechanism suggests that Aylward’s apparatus would
not benefit from a vacuum system to more securely retain the pills in the
receptacles. As pointed out by the Examiner (Ans. 8), Aylward’s disclosure
of such an eject mechanism indicates only a desire on the part of Aylward to
ensure that pills are released from the receptacles. We find no inconsistency
in the provision of both a vacuum system to help securely retain the pills in
their receptacles during their travel from the capture position to the release
position and a positive pressure eject mechanism to ensure that the pills are
released from the receptacles at the release position.
Thus, Appellant has not persuaded us that the Examiner erred in
concluding that Aylward and Pearson render obvious the subject matter of
independent claims 1 and 11. We sustain the rejection of claims 1 and 11.
Appellant does not present any separate arguments for the patentability of
dependent claims 3-7, 9, 10, and 13-18 apart from independent claims 1 and
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11. Thus, claims 3-7, 9, and 10 fall with claim 1, and claims 13-18 fall with
claim 11. See 37 C.F.R. § 41.37(c)(1)(vii).
We also sustain the rejection of claims 2 and 12. As discussed above,
Aylward addresses the issue of the alleged complexity of selectively
providing fluid communication between a fluid pressure source and
respective receptacles on the outer circumferential surface of a rotary slat,
depending on the position of the receptacle relative to the capture position
and the release position. Moreover, Aylward addresses this issue with
independently driven rotary slats. Abst.; col. 2, ll. 42-43; col. 5, ll. 20-22.
Accordingly, Appellant’s argument directed to the allegedly increased
complexity of having a plurality of independently rotatable slats
incorporating a vacuum assembly is not convincing.
We also sustain the rejection of claims 8 and 19. As discussed above,
we find no inconsistency in the provision of both a vacuum system to help
securely retain the pills in their receptacles during their travel from the
capture position to the release position and a positive pressure eject
mechanism to ensure that the pills are released from the receptacles at the
release position.
DECISION
For the above reasons, the Examiner’s decision to reject claims 1-19 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED
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