Ex Parte Hyde et al

Board of Patent Appeals and Interferences

Jul 9, 2012

12004094 (B.P.A.I. Jul. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RODERICK A. HYDE, ERIC C. LEUTHARDT,
ROBERT W. LORD, CLARENCE T. TEGREENE,
and LOWELL L. WOOD, JR.
____________

Appeal 2011-000858
Application 12/004,094
Technology Center 3600
____________

Before: JOSEPH A. FISCHETTI, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000858
Application 12/004,094

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 24, 55, 57-63, and
66-67. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and
6 (2002).
The claimed invention relates to methods and systems for
programmed dispensation of consumable compositions (Spec., para. [0068]).
Claim 24, reproduced below, is further illustrative of the claimed subject
matter.
24. A method for administering a consumable
composition, the method comprising:
dispensing a dose of a consumable composition
according to a programmed dosing schedule;
controlling the functionality of a device according to an
aspect of the consumable composition.

Claims 24, 55, 57-63, and 66-67 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Bonney et al. (US Pat. No. 7,072,738 B2, iss.
Jul. 4, 2006; hereinafter “Bonney”) in view of Lemelson et al. (US Pat. No.
6,054,928, iss. Apr. 25, 2000; hereinafter “Lemelson”).
We REVERSE and enter a NEW GROUND of rejection pursuant to
37 C.F.R. § 41.50(b).

ISSUES
Did the Examiner err in asserting that a combination of Bonney and
Lemelson render obvious independent claims 24 and 55? The issues of non-
obviousness turn primarily on whether Lemelson discloses the limitation of
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Application 12/004,094

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controlling the functionality of a device according to an aspect of the
dispensed consumable composition and the means for performing this
function.

FINDINGS OF FACT
Lemelson
FF1. Lemelson discloses a sweat monitor for detecting the presence
of drugs and a breath analyzer for determining the presence of alcohol (col.
13, ll. 5-25). Lemelson also discloses a GPS receiver and GPS computer
that permits dispatching of police or other personnel to the location of a
prisoner or parolee that may be engaged in illegal or unauthorized activity
such as the use of drugs, alcohol, etc. (col. 13, ll. 15-20).
FF2. Lemelson discloses that prisoner/parolee constraints include
allowed locations, prohibited locations, paths of travel, and dwell times for
various locations (col. 17, ll. 62 to col. 18, ll. 4).

Bonney
FF3. Bonney discloses a medicament dispenser including a data
processor that is adapted for insertion into a docking station for the transfer
of data between the dispenser and a service provider network server (col. 3,
ll. 53-66 and Fig. 11).
FF4. Bonney discloses that the amount of medicament disposed by
the dispenser is controlled “in accordance with a current treatment regimen
stored in the memory of the dispenser… along with the current date/time
and/or stage of treatment” (col. 6, ll. 28-32).
FF5. Bonney discloses that
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Application 12/004,094

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[t]he dispenser holds treatment regimen data from which it is
determined when a medicament dose is due to be taken by the
patient, step 300. A period is defined when the dose is defined
to be correctly taken, by means of a start date/time and an end
date/time, which may be defined relative to a last taken
medication or in accordance with an absolute timing policy
(col. 11, ll. 62 to col. 12, ll. 2).
FF6. Bonney discloses that if a patient activates the dispenser prior
to the start date/time when the patient is supposed to take the medicament,
the dispenser may “initially inhibit dispensing and display a message to the
patient indicating that it is too early to take another dose…. [or the]
dispenser may initially dispense the dose at the requested time, and update
the subsequent reminder schedule to cancel the upcoming reminder” (col.
12, ll. 2-14 and Fig. 6).
FF7. If the patient actuates the dispenser within the normal dosing
period, the normal dosage is dispensed (col. 12, ll. 28-31). If the dispenser is
actuated later than the predefined end time, a late dispensing procedure is
carried out whereby the subsequent reminder schedule is adjusted in
accordance to the delay (col. 12, ll. 19-28 and Fig. 6).

ANALYSIS
Independent Claims 24 and 55
We are persuaded the Examiner erred in asserting that a combination
Bonney and Lemelson render obvious independent claims 24 and 55 (App.
Br. 23-24). Appellants assert that Lemelson does not disclose “‘controlling
the functionality of a device according to an aspect of the dispensed
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consumable composition’” (App. Br. 23)1. The Examiner cites the
medicament dispenser of Bonney for disclosing the dispensing step, and the
drug/alcohol monitor of Lemelson for disclosing the controlling step
(Exam’r’s Ans. 3-4). The Examiner then asserts that “[m]otivation to
modify exists because it would be advantageous to determine what activities
are allowable based on a person's lifestyle or behavior” (Exam’r’s Ans. 4).
However, the Examiner has not clearly set forth how determining what
activities are allowable based on a person’s lifestyle or behavior would lead
one of ordinary skill to combine a medicament dispenser with a drug/alcohol
monitor. For the above stated reasons, the Examiner has failed to set forth a
prima facie case of obviousness of the subject matter of independent claims
24 and 55. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (in
rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness). Therefore, we
will not sustain the rejection of claims 24 and 55 or their dependent claims
57-63 and 66-67. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (if
an independent claim is nonobvious under 35 U.S.C. § 103, then any claim
dependent therefrom is nonobvious).

1 The currently pending independent claims 24 and 55 recite “the
consumable composition,” and not “the dispensed consumable
composition.” While Appellants attempted to amend independent claims 24
and 55 to include this aspect, the Amendment After Final filed December
16, 2009 was not entered (Advisory Action mailed January 8, 2010; App.
Br. 5).
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NEW GROUND OF REJECTION
We enter the following new ground of rejection for claims 24 and 55
under the provisions of 37 C.F.R. § 41.50 (b).
Claim 242 is rejected under 35 U.S.C. § 102(b) for being anticipated
by Bonney and reads, with corresponding mapped findings, as follows:
24. A method for administering a consumable
composition, the method comprising:
dispensing a dose of a consumable composition [(e.g., a
dispenser dispenses a normal dosage when actuated by a
patient)] according to a programmed dosing schedule [(i.e. the
amount of medicament disposed is controlled based on a
treatment regimen including a start date/time and an end
date/time)] [(FF3-FF5 and FF7)];
controlling the functionality of a device according to an
aspect of the consumable composition [(e.g., if the dispenser is
actuated within the normal dosing period, the normal dose is
dispensed, and if it is actuated earlier than the normal dosing
period, then it may inhibit the dispensing or may dispense the
dose at the requested time and then update the subsequent
reminder schedule for disposing future doses)] [(FF6 and FF7)].

We have entered the new grounds only for independent claims 24 and
55, and leave it to the Examiner to determine rejecting the other claims in
view of this reference alone or in combination with other newly found or
previously cited references.

2 We choose independent claim 24 as representative of independent claims
24 and 55. See 37 C.F.R. § 41.37(c)(1)(vii).

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Application 12/004,094

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DECISION
The decision of the Examiner rejecting claims 24, 55, 57-63, and 66-
67 under 35 U.S.C. § 103(a) is REVERSED.
We enter a NEW GROUND of rejection under 37 C.F.R. § 41.50(b)
for claims 24 and 55.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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