Ex Parte Lyons et al

Board of Patent Appeals and Interferences

Jan 10, 2012

11047016 (B.P.A.I. Jan. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte NICHOLAS P. LYONS and NINA TRAPPE BHATTI 8
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Appeal 2010-008015 11
Application 11/047,016 12
Technology Center 3600 13
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17
JOSEPH A. FISCHETTI, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
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21
DECISION ON APPEAL 22
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Appeal 2010-008015
Application 11/047,016

STATEMENT OF THE CASE 1
Nicholas P. Lyons and Nina Trappe Bhatti (Appellants) seek our 2
review under 35 U.S.C. § 134 of a final rejection of claims 1-3, 6-12, 14, 15, 3
and 17-28, the only claims pending in the application on appeal. We have 4
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We affirm in part. 5
Appellants claim a way of providing interactive information regarding 6
a product in a package (Spec. 3:2-5). Claims 1 and 26 are exemplary and 7
reproduced below [some paragraphing added]. 8
1. A method of providing information regarding a product, the 9
method comprising: 10
a reader that is a device receiving a unique identifier identifying 11
a package containing a product; 12
transmitting the unique identifier to the data store over a 13
network; 14
searching a data store storing at least part of use information for 15
a user using the unique identifier; and 16
generating at least the use information based at least partially on 17
stored user information regarding past use of the product. 18
19
26. A system for providing information regarding a product, 20
the system comprising: 21
a computing device configured to 22
receive an [sic] unique identifier identifying a package 23
containing a product and 24
generate at least use information based at least partially 25
on stored user information regarding past use of the 26
product associated with the unique identifier, 27
the computing device further configured to communicate with a 28
network. 29
The Examiner relies upon the following prior art: 30
Yarin US 6,294,999 B1 Sep. 25, 2001
Martucci US 6,985,870 B2 Jan. 10, 2006
Wilkes US 2004/0010425 A1 Jan. 15, 2004
Appeal 2010-008015
Application 11/047,016

Claim 27 stands rejected under 35 U.S.C. § 112, second paragraph as 1
failing to particularly point out and distinctly claim the invention. 2
Claims 1-3, 6-12, 14, 15, 19 and 22-28 stand rejected under 35 U.S.C. 3
§ 102(b) as anticipated by Yarin. 4
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Yarin and Wilkes. 6
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable 7
over Yarin and Martucci. 8
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable 9
over Yarin, Martucci, and Wilkes. 10
ISSUES 11
The issue of indefiniteness turns on whether the Specification 12
describes actual structure to perform the functions recited in claim 27. 13
The issues of novelty and obviousness turn on the degree of 14
patentable weight to be afforded the unique identifier in the independent 15
claims, and to the extent patentable weight is afforded, whether the art 16
describes using such an identifier as claimed. 17
FINDINGS OF FACT 18
The following enumerated Findings of Fact (FF) are supported by a 19
preponderance of the evidence. 20
Facts Related to the Prior Art - Yarin 21
01. Yarin is directed to a way "for facilitating effective self-22
management of medication treatment by patients" using a "Smart 23
Tray" "capable of monitoring and reporting to third parties a 24
patient's compliance with various treatment regimens, including 25
medication regimens." Yarin col. 3, ll. 20-25. 26
Appeal 2010-008015
Application 11/047,016

02. Yarin discloses that 1
a Smart Tray can be configured to determine whether two 2
or more medicaments are contraindicated. The 3
electromagnetic tags associated with two or more 4
medication containers can be interrogated to identify 5
medicaments contained within the respective containers. 6
The Smart Tray can then determine, based on 7
information retrieved from each respective 8
electromagnetic tag, whether or not medicaments 9
contained within the respective containers are 10
contraindicated. If two or more medicaments are 11
determined to be contraindicated, a patient can be alerted 12
by the Smart Tray. Similarly, a third party healthcare 13
provider may be alerted by the Smart Tray. 14
Yarin col. 3, l. 66 – col. 4, l. 11. This passage does not describe a 15
unique identifier. 16
Facts Related to Appellants’ Disclosure 17
03. Appellants rely on Specification page 9, lines 6-8 and Fig. 3, user 18
device 330 and unique identifier 325 to describe the means for 19
receiving a unique identifier identifying a package containing a 20
product. App. Br. 5. This portion of the Specification reads 21
“[i]nformation may be read from the information tag 220 by a user 22
device 330. The information tag 220 may include a unique 23
identifier 325. As described above, the unique identifier may 24
include a package identifier or a user identifier.” No structure for 25
the user device is further described. 26
04. Appellants rely on Specification page 11, lines 10-12 and Fig. 3, 27
user device 330 and use information 333 to describe the means for 28
generating at least use information based at least partially on stored 29
user information regarding past use of the product. App. Br. 5. 30
Appeal 2010-008015
Application 11/047,016

This portion of the Specification reads “[t]he use information 333 1
may be stored in a data store 340 in any format[.] The user device 2
330 may generate the use information 333 as interactive 3
information 337 using a software program.” No structure for the 4
data store is further described. 5
ANALYSIS 6
Rejection of claim 27 under 35 U.S.C. § 112, second paragraph, as failing to 7
particularly point out and distinctly claim the invention. 8
We are unpersuaded by Appellants’ arguments that the Specification 9
describes means for receiving a unique identifier and for generating use 10
information. App. Br. 7-8. Appellants cite several portions of the 11
Specification and drawings for these functions. The Examiner found that 12
these portions failed to describe any structure. Ans. 12-16. We agree with 13
the Examiner. See FF 03 and 04. 14
Appellants contend that the appropriate test is whether the functions 15
are enabled to one of ordinary skill. Reply Br. 4. This is not the test. The 16
test is whether the Specification actually describes the structure that 17
performs the claimed function. “If there is no structure in the specification 18
corresponding to the means-plus-function limitation in the claims, the claim 19
will be found invalid as indefinite.” Biomedino, LLC v. Waters Techs. 20
Corp., 490 F.3d 946, 950 (Fed. Cir. 2007) (citations omitted); see also In re 21
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). 22
Rejections of claims 1-3, 6-12, 14, 15, 19, and 22-28 under 35 U.S.C. 23
§ 102(b) as anticipated by Yarin; claims 17 and 18 under 35 U.S.C. § 103(a) 24
as unpatentable over Yarin and Wilkes; claim 20 under 35 U.S.C. § 103(a) 25
as unpatentable over Yarin and Martucci; and claim 21 under 35 U.S.C. 26
§ 103(a) as unpatentable over Yarin, Martucci, and Wilkes. 27
With respect to claims 1-3, 6-12, 14, 15, and 17-24, we are persuaded 28
Appeal 2010-008015
Application 11/047,016

by Appellants that Yarin fails to describe transmitting and using a unique 1
identifier. See App. Br. 9. The Examiner found that Yarin described this 2
unique identifier. Ans. 4 (citing Yarin, col. 3, l. 66 – col. 4, l. 11). Although 3
Yarin describes polling a container, it does not describe a unique identifier 4
for such a container, and as Yarin polls the contents described in the data, it 5
is not necessary that the query include a request for a unique identifier. The 6
Examiner further equates the unique identifier with the container’s tag, but 7
nothing in Yarin describes the tag as containing unique data. Ans. 18. 8
With respect to claims 25-28 we are unpersuaded by Appellants’ 9
arguments regarding the unique identifier. These claims are directed to an 10
apparatus or article of manufacture and are thus defined by their structural 11
limitations. "[E]xpressions relating the apparatus to contents thereof during 12
an intended operation are of no significance in determining patentability of 13
the apparatus claim." Ex parte Thibault, 164 USPQ 666, 667 (BPAI 1969). 14
Furthermore, "inclusion of the material or article worked upon by a structure 15
being claimed does not impart patentability to the claims." In re Otto, 312 16
F.2d 937, 939 (CCPA 1963). 17
Appellants’ arguments for method claim 1 refer to a unique identifier, 18
which is a piece of data entered into the structures of claims 25-28. The use 19
of this data is simply a method step, or functional limitation, which is given 20
patentable weight only to the extent that the structure must be capable of 21
performing the function, given whatever data would be needed. See In re 22
Schreiber, 128 F.3d 1473, 1478-79 (Fed. Cir. 1997) (functional language 23
does not confer patentability if prior art structure has capability of 24
functioning in the same manner). Therefore, the issue as to claims 25-28 is 25
whether Yarin teaches a system that has structures capable of performing 26
Appeal 2010-008015
Application 11/047,016

these functions. Since Yarin clearly has a structure to query the tags on its 1
containers, it is able to read any unique identifier among that data. Since 2
Yarin queries a database regarding the potential use of the container 3
contents, it is capable of querying any use that is encoded in the data. 4
CONCLUSIONS OF LAW 5
The rejection of claim 27 under 35 U.S.C. § 112, second paragraph, as 6
failing to particularly point out and distinctly claim the invention is proper. 7
The rejection of claims 1-3, 6-12, 14-15, 19, and 22-24 under 35 8
U.S.C. § 102(b) as anticipated by Yarin is improper. 9
The rejection of claims 25-28 under 35 U.S.C. § 102(b) as anticipated 10
by Yarin is proper. 11
The rejection of claims 17 and 18 under 35 U.S.C. § 103(a) as 12
unpatentable over Yarin and Wilkes is improper. 13
The rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable 14
over Yarin and Martucci is improper. 15
The rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable 16
over Yarin, Martucci, and Wilkes is improper. 17
DECISION 18
The rejection of claims 1-3, 6-12, 14, 15, and 17-24 is reversed. 19
The rejection of claims 25-28 is affirmed. 20
No time period for taking any subsequent action in connection with 21
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 22
§ 1.136(a)(1)(iv). 23
AFFIRMED-IN-PART 24
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nlk 26