Ex Parte Newcomb et al

Patent Trial and Appeal Board

Dec 28, 2015

12688206 (P.T.A.B. Dec. 28, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/688,206 01115/2010
20792 7590 12/29/2015
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
FIRST NAMED INVENTOR
David Newcomb
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. CONFIRMATION NO.
9335-74 3113
EXAMINER
LUBIN, VALERIE
ART UNIT PAPER NUMBER
3626
MAILDATE DELIVERY MODE
12/29/2015 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID NEWCOMB,
DAVID ALAN CALDERWOOD, and THOMAS P. RHOADS JR.
Appeal2013-006425
Application 12/688,206 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's
final decision to reject claims 7-9 and 11-20. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Parata Systems, LLC.
Appeal Brief filed November 19, 2012, hereafter "App. Br.," 1.
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Application 12/688,206
The invention relates to tracking the exit of a filled prescription from a
storage area configured to house multiple filled prescriptions. Specification,
hereafter "Spec.," i-f 7. The tracking includes the use of radio frequency
identification ("RFID") tags attached to vials to identify each prescription. Id. i-fi-1
7, 22, 24.
Representative claim 12 is reproduced from pages 10-11 of the Appeal Brief
in the Claims Appendix (Claims App'x) as follows, with emphasis added to
relevant claim limitations:
12. A method of dispensing a pharmaceutical prescription into a
pharmaceutical vial, comprising the steps of:
providing an automated pharmacy dispensing machine having a
plurality of stock bins, each of the stock bins including a bulk supply of a
pharmaceutical, each of the stock bins including a dispensing outlet, wherein
at least some of the bins contain a different pharmaceutical than at least
some of the other bins,
providing a pharmaceutical vial to be filled with a prescription of a
pharmaceutical for a particular patient, wherein the vial includes an RFID
tag that is specific for the prescription;
providing a controller associated with the plurality of stock bins, the
controller including data regarding a sequence in which a plurality of
prescriptions are to be filled;
detecting the RFID tag with an RFID detector, the RFID detector
being associated with a controller;
incorporating the detected prescription into the sequence of
prescriptions in the controller;
via the controller, signaling a first one of the stock bins to dispense
pharmaceuticals, wherein the first stock bin contains the pharmaceutical
associated with the prescription; and
automatically dispensing the pharmaceutical from the first stock bin
into its associated dispensing outlet.
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Application 12/688,206
In a Final Rejection, the Examiner rejected claims 12-20 under 35 U.S.C.
§ 103(a) as obvious over Andreasson2 and Charhut. 3 Claims 7-9 and 11 were
rejected under 35 U.S.C. § 103(a) as obvious over Andreasson and Mallett. 4 Final
Action, hereafter "Final Act.," 3-8, mailed June 12, 2012; see, also, Answer,
hereafter "Ans." 3, mailed January 2, 2013.
DISCUSSION
The Appellants present arguments for claim 12, with its dependent claims,
claims 13-17, standing or falling with it. App. Br. 4---6. These same arguments are
also addressed to independent claim 18, and its dependent claims, so we will
therefore address claims 12 and 18 as a group, using claim 12 as representative. 37
C.F.R. § 41.37(c)(l)(iv). The Appellants present arguments for independent claim
7 with its dependent claims, claims 8, 9, and 11, standing or falling with it. Id. at
7-8. We will address this claim in a similar manner.
Claim 12
The Examiner finds that Andreasson discloses an automated pharmacy
dispensing machine with stock bins including a bulk supply of pharmaceuticals,
with some of the bins containing different pharmaceuticals, and with a
pharmaceutical vial to be filled that has an RFID tag specific to a prescription.
Final Act. 5 (citing Andreasson 6:21-23, 8:3-7, 9:25-33, 9:39-41, 11:34--36). The
Examiner further finds that Charhut discloses a controller associated with stock
bins, where the controller has data regarding the sequence in which the
prescriptions are to be filled, incorporating the detected prescription into the
sequence of prescriptions in the controller, where the controller signals the stock
2 US Patent 7,140,542 B2, issued November 28, 2006.
3 US Patent 5,208,762, issued May 4, 1993.
4 US Publication 2008/0197055 Al, published August 21, 2008.
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Application 12/688,206
bins for automatic dispensing of the pharmaceuticals. Id. at 5---6 (citing Charhut
3:56---60, 5:39--40, 6:7-16, 6:33--40, 6:48-50).
The Appellants argue that Andreasson does not teach an automated
pharmaceutical dispensing machine as claimed because its device ( 410) does not
have any capabilities other than storing the medical product and noting when the
medical product is removed. App. Br. 4. The Appellants contend that although
Charhut may disclose a controller, including the use of data, the disclosures simply
state that when a prescription is given a priority status, it can be taken out of first-
in and first-out ("FIFO") order, but there is no discussion in Charhut of the steps
needed. Id. at 5. More specifically, the Appellants allege that "Charhut does not
discuss the use of a vial to be filled as the trigger for inserting a prescription into
the prescription sequence, much less the use of an RFID label on the vial to inform
the controller that a particular prescription is to be dispensed from a first stock bin
into its associated dispensing outlet." Id.
The Appellants also argue that there is "nothing in Andreasson regarding a
prescription sequence of any sort, and there is nothing in Charhut that suggests re-
prioritizing the dispensing sequence by using a vial specific for a particular
prescription." Id. at 6.
Finally, the Appellants allege that there is a "teaching away" from the
combination of Andreasson and Charhut. Id. This argument is based upon
Charhut's teaching that a vial is filled prior to labelling, so a modification based
upon Andreasson's use of an RFID label is not a simple substitution and would
require restructuring of the entire Charhut production line. Id.
In reply, the Examiner confirms that Charhut is relied upon for the teaching
of "automatically dispensing the pharmaceutical from the first stock bin into its
associated dispensing outlet" and Charhut also discloses detecting a prescription
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Application 12/688,206
and incorporating it "into the sequence of prescriptions in the controller, as well as
the use of prescription data to fill a vial." Ans. 3-5 (citing Charhut 3:56-60, 6:7-
16, 6:33--40, 6:53---65). Andreasson is relied upon for its teachings of an RFID
detector which is associated with a controller. Id. at 4 (citing Andreasson 6:21-23,
9:39--41). The Examiner determines that one of ordinary skill in the art would
have known to "read [] prescription information from any relevant prescription
location (e.g. on the medical container or from a prescription listing/queue [)]
simply because prescription data is necessary in order to fill any prescription." Id.
Upon consideration of the evidence on this record in light of the arguments
advanced by the Appellants, we find that the Appellants have not identified
reversible error in the Examiner's determination that claim 12 is unpatentable.
Accordingly, we sustain the Examiner's rejection of this claim on this basis for the
reasons set forth in the Final Action and the Answer and add the following for
emphasis.
We are not persuaded by the Appellants' arguments. The Appellants argue
the references separately when they should be considered in combination. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642 F.2d 413,
426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Appellants also attempt to argue that Charhut fails to disclose the use of
a vial to be filled as the trigger for inserting a prescription into the prescription
sequence or re-prioritizing the dispensing sequence by using a vial specific for a
particular prescription-but these requirements are not recited in the claim, and the
Appellants attempt to impermissibly narrow the claim by suggesting otherwise.
The claim merely requires "incorporating the detected prescription into the
sequence of prescriptions in the controller," but this incorporation does not need to
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be triggered by an act of detection, and no particular "trigger" for the
"incorporation" is recited in the claims. There is also no requirement recited in the
claim for "re-prioritization." Issues that do not arise from the claim itself fail. See
In re Self, 671F.2d1344, 1348 (CCPA 1982) ("appellant's arguments fail from the
outset because ... they are not based on limitations appearing in the claims.").
Finally, turning to the teaching away issue, if a proposed modification would
render the prior art invention being modified unsatisfactory for its intended
purpose, then there is no suggestion to make the proposed modification. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Here we find that there is no
evidence presented that a proposed modification of Charhut in light of Andreasson
would render any unsatisfactory or unworkable results.
We therefore sustain the rejection of claims 12 and 18, as well as the claims
depending from them, claims 13-17 and 19-20, respectively.
Claim 7
Claim 7 is directed to a method of returning a pharmaceutical prescription to
stock that includes "determining via the controller an identity of a first one of the
stock bins, wherein the first stock bin contains the same pharmaceutical that is
contained in the pharmaceutical vial" and "emptying the pharmaceutical vial into
the first stock bin." Claims App'x 9-10. The Examiner finds that Andreasson
discloses a method of providing an automated pharmacy dispensing machine
having a plurality of stock bins, and Mallett discloses detection of an RFID tag,
determining via the controller an identity of a stock bin, wherein the first stock bin
contains the same pharmaceutical that is contained in the pharmaceutical vial,
automatically indicating the identity of the first stock bin, and emptying the
pharmaceutical vial into the first stock bin. Final Act. 7-8.
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The Appellants argue that Mallett is "directed to the recovery of waste
products, not the returning of phannaceuticals to stock," and "[t]here is nothing in
Mallett that suggests that its process, which is rather simple, could or would be
used with an automated pharmaceutical dispensing machine." App. Br. 7-8. The
Appellants also assert that "Mallett certainly suggests nothing about the use of an
RFID label on a pharmaceutical vial to ensure that the pharmaceutical is correctly
returned to the proper stock bin." Id. at 8.
We are not persuaded by the Appellants' arguments. As to the rationale to
combine Mallett and Andreasson, "any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed." KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 420 (2007). Here, Mallet discloses methods of handling materials,
including pharmaceutical materials, although, albeit, they are waste materials such
as spent pharmaceuticals from a hospital. See Mallett i-f 7. The evidence supports
the Examiner's findings that Mallett discloses the use of RFID labels to ensure that
materials, such as pharmaceutical waste, is put into the proper container, which is
the equivalent to a stock bin. See Mallett i-fi-1153, 273. Finally, the Appellants
argue the references separately when they should be considered in combination.
Upon consideration of the evidence on this record in light of the arguments
advanced by the Appellants, we find that the Appellants have not identified
reversible error in the Examiner's determination that claim 7 is unpatentable.
Accordingly, we sustain the Examiner's rejection of this claim on this basis for the
reasons set forth in the Final Action and the Answer.
We therefore sustain the rejection of claim 7, and its dependent claims,
claims 8, 9, and 11.
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Application 12/688,206
SUMMARY
The rejections of claims 7-9 and 11-20 under 35 U.S.C. § 103(a) are
affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
ELD
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