Ex Parte Hodson

Patent Trial and Appeal Board

Aug 24, 2016

11780809 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111780,809 0712012007
92556 7590
HONEYWELL/HUSCH
Patent Services
115 Tabor Road
P.O.Box 377
MORRIS PLAINS, NJ 07950
08/26/2016
FIRST NAMED INVENTOR
Robert P. Hodson
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.
H0015614
8364/101471/2210
CONFIRMATION NO.
4725
EXAMINER
COLLINS, MICHAEL
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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):
patentservices-us@honeywell.com
amy.hammer@huschblackwell.com
pto-chi@huschblackwell.com
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT P. HODSON
Appeal2014-009008
Application 11/780,809
Technology Center 3600
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Non-Final Office Action2 ("Non-Final Act.") rejecting claims
11-19 and 35, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Honeywell International, Inc.
(App. Br. 2.)
2 Mailed January 16, 2014.
Appeal2014-009008
Application 11/780,809
Claimed Subject Matter
The claimed invention generally relates to securely providing
medications, for example prescription medications, in accordance with an
individual's specific schedule. (Spec. i-f 1.) Claim 18, reproduced below, is
illustrative:
18. A dispensing system for dispensing medication to a
plurality of patients comprising:
a dispensing tray carried by a user to the location of each
of the plurality of patients, the dispensing tray further
compnsmg:
a portable housing;
a scanner carried by the housing;
a plurality of separate compartments defined in the
housing and fixed relative thereto with the compartments
each separately closable by a movable cover and with the
compartments each separately lockable with an
electrically actuatable locking mechanism, each of the
plurality of separate compartments assigned to a
respective patient of the plurality of patients; and
control circuits coupled to the scanner and the
covers, the control circuits log the compartments which
have been opened wherein the control circuits assure that
a patient of the plurality of patients receives medication
only from their assigned compartment because only the
assigned compartment of the patient unlocks in the
vicinity of the patient; and
an automated unit that fills the dispensing tray, the
automated unit including a slot that receives the dispensing tray,
wherein the dispensing tray is inserted into the slot and is
automatically loaded with medications and scheduling
information via the automated unit.
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Appeal2014-009008
Application 11/780,809
Rejections
1. Claims 11-19 and 35 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(Non-Final Act. 5-8.)
2. Claims 18 and 19 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ahlin et al. (US 6,219,587 Bl, issued Apr. 17, 2001)
("Ahlin"). (Non-Final Act. 8-9.)
3. Claims 11-19 and 35 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Varis (US 2004/0172163 A 1, published Sept. 2, 2004 ).
(Non-Final Act. 10-13.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner errs (App. Br. 6-11; Reply Br. 1-5).
We concur with Appellant's arguments that the Examiner errs in
rejecting claims 11-19 and 35 under 35 U.S.C. § 112, first paragraph, and
claims 18 and 19 under 35 U.S.C. § 102(b) as anticipated by Ahlin.
We are not persuaded by Appellant's arguments that the Examiner
errs in rejecting claims 11-19 and 35 under 35 U.S.C. § 102(b) as
anticipated by Varis. For this rejection, we adopt as our own the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and set forth in the Answer (see Ans. 8-10).
We highlight and address specific arguments and findings for
emphasis as follows.
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Appeal2014-009008
Application 11/780,809
1. Rejection under§ 112, first paragraph
The Examiner finds the Specification does not provide adequate
written description support for claim 18's "'automated unit that fills the
dispensing tray ... wherein the dispensing tray ... is automatically loaded
with medications ... via the automated unit."' (Non-Final Act. 6 (quoting
claim 18).) In particular, the Examiner finds there is no disclosure
"regarding the structure of the dispensing mechanisms (24b) or storage area
24(a)," "how the dispensing mechanisms (24b) access the medication
storage area (24a)," or "how the dispensing mechanisms 24(b) of dispenser
(12) automatically load the compartments (42a-n) of the housing (14)." (Id.)
Although the rejection is styled as a written description rejection, the
Examiner finds "[t]he missing information is needed to provide a guide for
making the claimed invention," and that elements like controls, slides, gears,
chutes, gates, levers, and switches are not described "so that one could make
the claimed apparatus." (Id.)
Appellant argues the claims are enabled by the Specification, and
appears to dispute whether there is a written description requirement
separate from the enablement requirement. (App. Br. 6-9; Reply Br. 2-3
("For example, the Examiner appears to admit that the claims are enabled
but then goes on to assert that there is some form of written description
requirement that has not been met.").) Appellant also contends "the claims
are consistent with the scope of the disclosure." (App. Br. 9.)
The written description requirement is separate from the enablement
requirement. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en bane) ("Since its inception, this court has consistently
held that§ 112, first paragraph, contains a written description requirement
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Appeal2014-009008
Application 11/780,809
separate from enablement, and we have articulated a 'fairly uniform
standard,' which we now affirm."). "[T]he test for sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date." Id.
Although the Examiner properly articulates the written description
standard (Non-Final Act. 6; Ans. 3), the Examiner's findings focus on
whether the disclosure is sufficient to allow one to make the claimed
apparatus, which is more akin to the enablement requirement. As the
Examiner's findings discussed above acknowledge, the written description
refers to an automatic dispensing unit 12, which has a medication storage
area 24a and dispensing mechanism 24b for loading the dispensing container
14 with medications. (See generally Spec. i-fi-121-25.) We agree with
Appellant that the scope of the claims in relation to the automated unit is
consistent with the disclosure in the Specification. In not describing the
dispensing mechanism in more detail, Appellant's Specification implies
these elements are conventional and well-known to one of ordinary skill in
the art. We interpret the Examiner's rejection to find that, although such
mechanisms may be known to one of ordinary skill in the art, the manner of
making them must be described in more detail to show possession of a
particular type of such mechanisms. We find the lack of detail as to the
specific structures of these conventional features, which are referred to
generally in the Specification in the same manner as in the claims, does not
defeat a showing that Appellant possessed these conventional features of the
claimed invention.
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Appeal2014-009008
Application 11/780,809
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 18 under 35 U.S.C. § 112, first paragraph. For the same reasons,
we do not sustain the rejection under§ 112 of independent claim 35, which
was rejected for similar reasons, and we do not sustain the rejection of
dependent claims 11-1 7 and 19.
2. Rejection under§ 102(b) as anticipated by Ahlin
Appellant argues Ahlin "does not use 'a dispensing tray carried by a
user to the location of each of the plurality of patients,'" as recited in claim
18, and instead "relies upon the use of a cart-mounted cassette 28
contain[ing] one or more bins 32." (App. Br. 9 (citing Ahlin col. 8, 11. 24--
27).) The Examiner finds "[a] broadest reasonable reading of 'a dispensing
tray carried by a user' can be reasonably interpreted as a shallow container
which has its weight moved from one place to another by a person." (Ans.
6.)
We disagree with the Examiner that reciting an object "carried by a
user" would ordinarily be understood to include pushing a cart that holds the
object. Absent additional evidence in support of the Examiner's
interpretation, we conclude that an object "carried by a user" would
generally be understood to have its weight supported or held by the user, not
merely pushed in a cart supporting the object's weight. Because the
Examiner's rejection of claims 18 and 19 under§ 102(b) as anticipated by
Ahlin relies on an overly broad construction of the term "carried by a user,"
we do not sustain the rejection. 3
3 The issue of whether claims 18 and 19 may be obvious over Ahlin is not
before us.
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Application 11/780,809
3. Rejection under§ 102(b) as anticipated by Varis
Appellant argues Varis does not disclose a plurality of separate
compartments defined in the housing and fixed relative thereto with the
compartments each separately closable by a movable cover and with the
compartments each separately lockable with an electrically actuatable
locking mechanism, as recited in claim 18, or a plurality of separately
closeable compartments, as recited in claim 35. (App. Br. 11) Appellant
contends V aris has a single opening for dispensing medication from a
rotatable cartridge (App. Br. 11 ), and that "if the plurality of compartments
are each separately 'closable by a movable cover', then each of the plurality
of compartments would also be separately openable independent of any
other compartment" (Reply Br. 4).
Appellant's arguments do not persuade us of error in the rejection of
claims 18 and 3 5. As the Examiner finds, V aris' s cover moves to provide a
separate movable covering for each individual compartment as each
individual compartment rotates into alignment with the cover. (Ans. 9
(citing Varis i-fi-142, 54).) We agree. We also agree with the Examiner's
observation that claim 18 recites a movable cover, and does not require that
each compartment have its own movable cover. (Ans. 9.) Varis's cover and
locking mechanism cover and lock only one compartment at a time, thus
separately closing and locking each compartment under a broadest
reasonable interpretation of the claim terms. Appellant has not persuaded us
that the phrase separately closable by a movable cover requires more than
one cover or that multiple compartments may be opened at the same time.
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Application 11/780,809
Appellant's arguments are not commensurate with the broadest reasonable
interpretation of the claims.
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner erred in rejecting claims 18 and 35 under
35 U.S.C. § 102(b) as anticipated by Varis. Thus, we sustain the rejection of
claims 18 and 35, and, for the same reasons, the rejection of claims 11-17
and 19, which are not argued separately (App. Br. 11).
DECISION
We reverse the Examiner's decision to reject claims 11-19 and 35
under 35 U.S.C. § 112, first paragraph, and the Examiner's decision to reject
claims 18 and 19 under 35 U.S.C. § 102(b) as anticipated by Ahlin.
We affirm the Examiner's decision to reject claims 11-19 and 35
under 35 U.S.C. § 102(b) as anticipated by Varis.
Because we have affirmed at least one rejection with respect to all
rejected claims 11-19 and 35, we affirm the Examiner's decision to reject
these claims.
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)(l )(iv).
AFFIRMED
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