Ex parte Barbour

Board of Patent Appeals and Interferences

Mar 17, 1998

08292186 (B.P.A.I. Mar. 17, 1998)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte WILLIAM P. BARBOUR
_______________
Appeal No. 97-0048
Application 08/292,1861
_______________
ON BRIEF
_______________
Before KRASS, LEE, and CARMICHAEL, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 10, all the claims pending in the application.
The invention pertains to medicine containers and, more
particularly, to such containers wherein the medication therein
may be identified with audible speech through a loudspeaker in a
playback unit.
Representative independent claim 1 is reproduced as follows:
1. Apparatus for identifying medication within a container
with audible speech produced at the demand of a user comprising:

1 Application for patent filed August 18, 1994.
Appeal No. 97-0048
Application No. 08/292,186
2
a. a playback unit at the place where the user stores
medication, said playback unit including a loud speaker and
circuitry for producing speech sounds identifying contents within
a medication container in response to placing the medication
container in operative association with the playback unit;
b. said medication container having a memory unit with
external electrical contacts adapted for operative engagement
with the circuitry of said playback unit; and
c. a programming unit at a pharmacy station having
electrical terminals adapted for operative engagement with
the terminals on said medication container for transferring at
least medication identification and other related information
into the memory unit of said container.
The examiner relies on the following references:
Schollmeyer et al. 4,504,153 Mar. 12, 1985
(Schollmeyer)
Hafner 5,181,189 Jan. 19, 1993
Moore 5,291,191 Mar. 1, 1994
Sibalis 5,358,483 Oct. 25, 1994
(filed Sep. 23, 1992)
Damark Product Catalog (Damark)2, “Electronics Direct,” pages 16,
20-21, and 25, 1994.
Claims 1 through 10 stand rejected under 35 U.S.C. ' 103.
As evidence of obviousness, the examiner cites Schollmeyer,
Hafner, Moore and “what was well known in the art as evidenced by
the Damark Product Catalog,” with regard to claims 1 through 3, 5

2 The Damark reference was introduced for the first time in the
answer in response to appellant’s challenge to the examiner to
produce a reference showing that playback systems were “well
known in the art,” as alleged by the examiner.
Appeal No. 97-0048
Application No. 08/292,186
3
and 7 through 10, adding Sibalis to this combination with regard
to claims 4 and 6.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
We reverse.
The instant claimed invention requires identification of a
medication within a container with audible speech or speech
sounds.
In applying Schollmeyer to the instant claims, the examiner
notes that Schollmeyer teaches the use of “an audible prompting
sound to notify a user of the medication in the container”
[answer-page 4]. It is true that Schollmeyer teaches a prompting
system, wherein a user is prompted by a signal, audible or
visual, as to the time for taking medication. However,
Schollmeyer nowhere suggests that the medication in the container
is identified or that the signal identifying the medication is
one of speech.
It is true that, at column 5, lines 15-19, Schollmeyer
describes a “different arrangement” whereby an LCD display
indicates not only that a medication should not be
administered, but also indicates which medication, making
possible the prompting of the patient to take several
different medications at different times.
Appeal No. 97-0048
Application No. 08/292,186
4
The language “indicates which medication” might, at first glance,
indicate that Schollmeyer is suggesting the identification of the
medication in the container. However, it is our view that upon a
closer reading of this passage, taken together with the total
disclosure of Schollmeyer, it is clear that Schollmeyer is
concerned here with multiple medications and that, by the proper
prompting signal, the user is prompted as to which medication to
take and which medication not to take. Clearly, Schollmeyer is
concerned not with identifying the medication within a container,
by speech or otherwise, but, rather, is concerned only with
prompting a user to take the proper medication at the proper time
which time is programmed at a pharmacist-programmable medication
prompting station which inputs the information to the prompting
device which, in turn, stores the information in an internal
memory.
Thus, Schollmeyer fails to suggest the identification, by
speech sounds, of the contents of a medication container, as
required, in one form or another, by independent claims 1, 2 and
7.
The examiner recognizes that Schollmeyer at least fails to
teach a separate sound playback unit as is also required by the
independent claims. The examiner’s response is to rely on Hafner
for the suggestion of separate reading devices 14, 52 and 72 “for
the purpose of reading coded information stored on a medicine
Appeal No. 97-0048
Application No. 08/292,186
5
package for presentation to a user with a display” [answer-page
5]. The examiner states that Hafner’s advantage is in “being
usable with more than one container of drugs” [answer-page 5] and
then contends that “[h]aving a separate sound playback unit from
a sound storage device is well-known in the art of audio
electronics” [answer-page 5], citing Damark for this proposition
in response to a challenge from appellant.
First, we do not find Hafner to provide for the deficiencies
noted supra, i.e., Hafner does not disclose an identification, by
speech sound, of the contents of a medicine container. Second,
Hafner does not teach or suggest a separate sound playback unit,
as required by the claims. The examiner’s reliance on Damark for
such a teaching is, in our view, misplaced. Merely because
separate playback units, such as CD players, stereo systems,
boomboxes, etc. were, per se, known, does not, in any way,
suggest the use of a separate playback unit in combination with
other elements interconnected, in a system for identifying
medication with audible speech, as required by the instant
claims.
Based on the teachings of Schollmeyer, Hafner and Damark, we
find no cogent rationale for combining these references in any
meaningful manner to arrive at a system for identifying
medication within a container with audible speech wherein a
Appeal No. 97-0048
Application No. 08/292,186
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playback unit is employed for producing the speech sounds for
identifying the contents of the medication container.
The examiner also relied on Moore. Moore discloses a
medicine dispenser which permits dispensing a plurality of
different medicines by having separate compartments for holding
individual medicines. As the user gains access to a particular
compartment, a sound means for selectively broadcasting an
audible description of the medicine dose within that compartment
is activated. There is a sound playback means associated with
each compartment. Moore discloses, at column 5, lines 5-10, that
the sound means
may include typical tape recorder means or the like for
allowing an audible description, etc., of each particular
medicine dose to be selectively recorded or digitized by
speaking into a microphone M and played back through a
speaker S.
Thus, Moore clearly suggests employing speech sound for
describing a particular medicine dose in a particular compartment
within a medicine dispenser.
However, while Moore does suggest the use of audible speech
in conjunction with a medicine dispenser, we find no cogent
rationale by the examiner, nor do we know of any, as to why or
how Moore is to be combined with the other cited references,
notably Schollmeyer. It is unclear as to how the loudspeaker of
Moore is to be applied in the Schollmeyer system which employs
Appeal No. 97-0048
Application No. 08/292,186
7
prompting signals for prompting a user as to the appropriate time
for taking a dose of medicine. Even if we assume, arguendo, that
it would have been obvious to substitute an audible speech signal
for the audio or visual prompting signal of Schollmeyer, in view
of Moore, we are still left with the unanswered question as to
why it would have been obvious to cause that speech signal to
identify the contents of the medicine container rather than
merely prompt a user as disclosed by Schollmeyer. And, even if
we were to answer this inquiry by contending that Moore’s
disclosure of an “audible description” of each particular
medicine dose would have been suggestive of identifying
medication within a container with audible speech, the instant
claims require that there be some “interface,” or “operative
association” between the playback unit and the medication
container or that they somehow be placed together in order for
the loudspeaker to produce speech sounds which identify the
contents of the medicine container. We find no such claimed
interconnection of elements disclosed or suggested by any
combination of the applied references.
At best, the examiner has apparently found various
references disclosing or suggesting various features of the
claimed subject matter (e.g., Schollmeyer discloses a programming
unit at a pharmacy station, Moore suggests an audible speech
description of a particular medicine dose, Damark suggests remote
Appeal No. 97-0048
Application No. 08/292,186
8
playback units and Hafner discloses coding information on a
medicine package for presentation to a user on a display), but we
are unconvinced by any cogent rationale by the examiner as to the
obviousness of combining these teachings in such a manner as to
arrive at the instant claimed subject matter which requires a
specific interconnection of these elements or specifically
sequenced steps causing the production of audible speech signals
which identify the contents of medication in a container in
response to placing the container, with its attached housing
which contains a memory, together with the playback unit which
houses the loudspeaker. The examiner’s conclusion of obviousness
could only have resulted from the use of impermissible hindsight.
The reference to Sibalis, applied for the teaching of
circular contacts, regarding the limitations of claims 4 and 6,
fails to supply the deficiencies noted supra with regard to the
other references.
Appeal No. 97-0048
Application No. 08/292,186
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The examiner’s decision rejecting claims 1 through 10 under
35 U.S.C. ' 103 is reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Jameson Lee ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
James T. Carmichael )
Administrative Patent Judge )
Appeal No. 97-0048
Application No. 08/292,186
10
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