Ex Parte Bain

Board of Patent Appeals and Interferences

Nov 30, 2010

11648145 (B.P.A.I. Nov. 30, 2010)

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.
11/648,145 12/29/2006 Walter M. Bain 9335-1 9925
20792 7590 11/30/2010
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
SHAPIRO, JEFFERY A
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
11/30/2010 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 WALTER M. BAIN
____________

Appeal 2009-008919
Application 11/648,145
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008919
Application 11/648,145

2
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 18-22 and 33-42 which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a system and method
for dispensing medications without a pharmacist being present at the time
the medications are dispensed (Spec. 2:3-6). Claim 18, reproduced below,
is representative of the subject matter of appeal.
18. A method for prescription dispensing comprising: receiving a
prescription for a particular patient; filling the prescription by
obtaining a container with medication therein and applying a label
having patient specific information to the container to
form a filled prescription; loading the filled prescription into one
receiving slot in an automated prescription dispenser having a
plurality of receiving slots; associating the location of the filled
prescription with patient information after the filled prescription has
been loaded in the one unique location; and dispensing the
prescription to a patient in response to input of data correlated to the
patient.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Appeal 2009-008919
Application 11/648,145

3
Schlamp US 5,385,265 Jan. 31, 1995
Williams US 5,597,995 Jan. 28, 1997
Liff US 5,713,485 Feb. 3, 1998
Colon US 5,991,731 Nov. 23, 1999
Collella US 6,003,006 Dec. 14, 1999

The following rejections are before us for review:
1. Claims 18-19, 22, and 42 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Williams and Schlamp.
2. Claims 20-21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Williams, Schlamp, and Liff.
3. Claims 33-38 and 40-41 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Williams, Schlamp, and Colella.
4. Claim 39 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Williams, Schlamp, Colella, and Colon.

THE ISSUES
With regards to the rejection of claims 18-22 and 42 the issue turns on
whether it would have been obvious to combine Williams and Schlamp to
meet argued claim limitations.
With regards to the rejection of claims 33-41 the issue turns on
whether it would have been obvious to combine Williams, Schlamp, and
Collella to meet argued claim limitations.

Appeal 2009-008919
Application 11/648,145

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FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Williams discloses an automated medical prescription fulfillment
system for dispensed drug products (Title, Abstract).
FF2. Williams discloses work stations for imaging, filling, and checking
the dispensed drug product (Title, 3:10-63).
FF3. Williams discloses that when the order is complete the pharmacist
packages the orders and puts them into a second-prescription holding
component 384 (Col. 10:48-53).
FF4. Williams discloses that when the customer comes to the pharmacy
for pickup, the sales clerk goes to the proper holding slot or bin 386 of
prescription holding component 384 and picks up the order. The order can
be scanned to verify the customers name and the drugs prescribed and if
correct given to the customer (Col. 10:53-62).
FF5. Williams at Col. 10:48-62 does not disclose the customer picking up
the prescription from the holding compartment 384.
FF6. Schlamp discloses a vending machine in which the items can be
deposited in compartments 11 and removed from openings 4 (Fig. 1). The
vending machine includes an input device 8 for identification codes (Fig. 1).
FF7. Schlamp discloses that the customer can withdraw the goods after
entering an identification code (Abstract).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2009-008919
Application 11/648,145

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FF8. Collella has disclosed a system of drug distribution to health care
providers which uses software (Title and Abstract).
FF9. Collella discloses that the each drug dispensing machine (DDM) has
an identification code with information about its physical location in the
health care facility (Col. 3:55-67).
FF10. Collella has disclosed generating an electronic purchase order and
also tracking what drugs remain in inventory awaiting shipment upon
request by the central pharmacy computer (Col. 5:33-43).

ANALYSIS
Claims 18-22 and 42
The Appellant argues that the rejection of claims 18 and 42 is
improper (Br. 4-6). The Appellant argues that the there is no suggestion or
motivation to modify William’s system where the pharmacist picks up the
prescription to that of a system where the customers self-dispense their
prescriptions with the Schlamp reference. The Appellant also argues that the
Schlamp reference is not directed to prescriptions.
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 11-18).
We agree with the Examiner. Williams has disclosed a method where
when an order is complete a pharmacist packages the orders and puts it into
a second-prescription holding component 384 (FF3). Williams also
discloses that when a customer comes to the pharmacy for pickup, the sales
clerk goes to the proper holding slot or bin 386 of prescription holding
component 384 and picks up the order (FF4). Williams does not disclose the
customer picking up the prescription from the holding compartment (FF5).
Appeal 2009-008919
Application 11/648,145

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Schlamp discloses a vending machine in which the items can be deposited in
compartments 11 and removed from openings 4 (FF6). Schlamp also
discloses that the customer can withdraw the goods after entering an
identification code (FF7).
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Court
reaffirmed principles based on its precedent that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. Here, the
modification of the prescription drug dispensing method of Williams to
include a vending machine with compartments after entering a code as
disclosed by Schlamp is considered an obvious, predictable combination of
familiar elements for the advantage of not requiring pharmacy store
personnel to be present during the customer pickup to reduce costs and wait
time. For these reasons the rejection of claims 18 and 42, and dependent
claims 19-22 which have not been separately argued, is sustained.

Claims 33-41
The Appellant argues that the rejection of claim 33 is improper
because Collela is directed to tracking the expiration date of the
pharmaceuticals and not the claimed tracking of “the amount of time the
filled prescription has been in the one receiving slot” (Br. 7).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 18-22).
We agree with the Examiner. Claim 33 includes a limitation for
“tracking the amount of time the filled prescription has been in the one
receiving slot”. Williams has disclosed that when a customer comes to the
Appeal 2009-008919
Application 11/648,145

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pharmacy for pickup, the sales clerk goes to the proper holding slot or bin
386 of prescription holding component 384 and picks up the order (FF4).
Schlamp discloses a vending machine in which the items can be deposited in
compartments 11 and removed from openings 4 (FF6) after entering a code
(FF7). Collella has disclosed generating an electronic purchase order and
also tracking what drugs remain in inventory awaiting shipment upon
request by the central pharmacy computer (FF10).
Here, the modification of the prescription drug dispensing method of
Williams to include a vending machine with compartments which are
opened after entering a code as taught by Schlamp and to track the amount
of time the product remains in the compartment or inventory as suggested by
Collella is considered an obvious, predictable combination of familiar
elements for the advantage of not requiring pharmacy store personnel to be
present during the customer pickup to reduce costs and wait time and to also
track the contents of the vending machines in order to prevent the bin from
being occupied with an item not picked up in too long of a time. In
determining obviousness “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 and creative steps that a person of
ordinary skill in the art would employ” KSR at 418. Here, one of ordinary
skill in the art would have readily determined that tracking the time for
which each product has been in a receptacle would enable the pharmacy to
remove items which had not been picked up in too long of a time in order to
prevent the receptacles from not being used for other products or filled
prescriptions. For these reasons the rejection of claim 33, and claims 34-41
which have not been separately argued, is sustained.
Appeal 2009-008919
Application 11/648,145

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DECISION
The Examiner’s rejection of claims 18-22 and 33-42 is sustained.

AFFIRMED

MP

MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH NC 27627