Ex Parte Presley et al

Patent Trial and Appeal Board

Jun 7, 2016

12956596 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/956,596 11/30/2010
99434 7590 06/09/2016
McKesson Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza
101 South Tryon St., Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Ann Presley
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.
050704/398768 9653
EXAMINER
FIBBI, CHRISTOPHER J
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
06/09/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANN PRESLEY and JENNIFER C. GINSBERG
Appeal2014-006224
Application 12/956,596
Technology Center 2100
Before KRISTEN L. DROESCH, CATHERINE SHIANG, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Claim 1, reproduced below with key contested limitations emphasized
and reference numbering added, is illustrative of the claimed subject matter:
1. A system for managing drug therapeutic class information
compnsmg:
a processor configured to access drug information stored
on a memory, wherein the drug information describes a plurality
of drugs and the drug information for each drug comprises:
Appeal2014-006224
Application 12/956,596
[LI] a plurality of drug classes describing a single
drug, each drug class describing the respective drug at a
different level of specificity;
a display name associated with each drug class, and
[L2] an indication of a display level, the display
level representing an appropriate level of specificity for
describing the respective drug,
wherein the processor is configured to:
access the stored drug information,
determine the display level of a particular drug
based on the stored drug information, and
provide for display to a user of the display name
associated with the drug class corresponding to the display level
that is determined, and
wherein the indication of the display level for each drug is
independent of the indication of the display level for other drugs
such that the resulting display of the display name describes the
respective drug at the appropriate level of specificity.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gibson
Warren
Villasenor
Banigan
Oscar
US 2004/0172285 Al
US 2007 /0043589 Al
US 2007/0143142 Al
US 2010/0121752 Al
US 2011/0131059 Al
REJECTIONS
Sept. 2, 2004
Feb.22,2007
June 21, 2007
May 13, 2010
June 2, 2011
Claims 1-3, 10, 11, 16, and 19 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Gibson and Warren.
Claims 4, 5, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gibson, Warren, and Banigan.
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Application 12/956,596
Claims 6, 20, and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gibson, Warren, and Oscar.
Claims 7-9, 12, 13, 15, 21, and 23 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Gibson, Warren, and
Villasenor.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gibson, Warren, Villasenor, and Oscar.
ANALYSIS
Claims 1-3, 7-16, 19, 21, and 23
Appellants argue Gibson does not teach limitation L 1 of claim 1.
App. Br. 4--7; Reply Br. 1-3. More particularly, Appellants argue "[e]ven
though more than one classification may be used to describe a particular
drug, there is no teaching or suggestion, express or implied, that the
classifications describe the drug at multiple levels of specificity." App. Br. 5
(emphasis omitted). Appellants contend that "[c]alling something by
different names is not equivalent to describing the thing at different levels of
specificity." Id.
The Examiner finds Figure 8 of Gibson depicts two classifications,
anti-anginals and channel-blockers, for the drug amlodipine, in which anti-
anginals encompass channel blockers, in addition to other beta blockers and
nitrates. Ans. 2-3. The Examiner further finds that Warren's teaching of a
tiered, four-digit therapy classification teaches limitation L 1. Id. at 3 (citing
Warren i-f 109).
Appellants respond that "the Examiner ... provides no authority or
basis for this sweeping statement" and provide the results of an Internet
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Application 12/956,596
search for the drug amlodipine. Reply Br. 2. Appellants' Internet search
results for amlodipine constitute Evidence included improperly in the Reply
Brief. See 37 C.F.R. §§ 41.30, 41.41 (b)(l). In any event, Appellants'
search results do not indicate the relationship between channel blockers and
anti-anginals, nor the drug coverage of the term anti-anginal, and therefore,
are not persuasive to show error in the Examiner's findings regarding
amlodipine, channel blockers, and anti-anginals. Furthermore, we are also
not persuaded by Appellants' contention that the four-digit classification in
Warren is irrelevant because Appellants are "not claiming a hierarchical
nomenclature for drugs." See Reply Br. 2.
Appellants argue Warren does not teach limitation L2 of claim 1.
App. Br. 7-9; Reply Br. 3-5. Specifically, Appellants (i.) attempt to
distinguish Warren's "'FDA drug therapy class common name' [as] not
equivalent to the claimed 'display name,"' and (ii.) "the corresponding
'Group' [as] not equivalent to the claimed 'display level"' because the
groups are categories into which each drug is placed for the purpose of
determining health insurance benefits. App. Br. 7. Moreover, Appellants
contend (iii.) Warren's group "does not indicate one of several levels of
specificity describing the drug that should be used for purposes of displaying
an appropriate name of the drug (or any information on the particular drug,
for that matter)." Id. at 8. Appellants also contend (iv.) "Warren does not,
for example, determine whether to display the 'major therapy class' or the
'minor therapy class' of a particular drug." Reply Br. 3.
The Examiner finds Warren describes using a drug's therapeutic
classification code to match the drug to return the corresponding level A, B,
C, D, or 0 for the drug. Ans. 4. The distinctions argued by Appellants are
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Application 12/956,596
not commensurate in scope with claim 1, and therefore, not persuasive to
show non-obviousness. With regard to argument (i. ), claim 1 does not
require the display name to be an appropriate name for a drug, only that it is
"associated with each drug class," and thus, does not exclude the cited
teachings of Warren. Similarly, with regard to argument (ii.) "the display
level representing an appropriate level of specificity for describing the
respective drug" recited in claim 1 does not exclude Warren's teaching of
categories for determining health insurance benefits. Lastly, with regard to
arguments (iii.) and (iv.), contested limitation L2 does not require selecting
only one of several levels, or choosing to display a particular level and
omitting another level of specificity.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Gibson and Warren teaches or suggests the
contested limitations recited in claim 1, the commensurate limitations of
claims 10 and 16, and the limitations of claims 2, 3, 11, and 19, which are
not separately argued. Claims 7-9, 12-15, 21, and 23 stand rejected over
various combinations of Gibson, Warren, Villasenor, and Oscar. As these
claims are not separately argued, we reach the same decision with respect to
these claims as with respect to claims 1, 10, and 16 from which they depend.
Accordingly, we sustain the rejections of 1-3, 10-16, 19, 21, and 23 under
35 U.S.C. § 103(a).
Claims 4, 5, 17, and 18
Appellants contend "the Examiner very nonchalantly (in a
parenthetical) asserts the equivalency of the 'Generic Name' of Banigan
with Appellant's claim term 'display name'," and argue this finding is in
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Application 12/956,596
error. App. Br. 9; see also Reply Br. 4. However, the Examiner finds
Gibson teaches the display name. Ans. 4. The Examiner cites Banigan for
teaching "the ability to display both the AHFS [American Hospital
F ormulary Service] classification and a generic name," and further finds
"[ o ]ne of ordinary skill in the art would recognize that a generic name is a
name that is different from the standard trade name used." Ans. 4 (citations
omitted). Appellants' argument fails to address the Examiner's specific
findings regarding Banigan, and further, impermissibly attacks the reference
individually, which is not persuasive to show non-obviousness. Thus, we
are not persuaded the Examiner erred in rejecting claims 4, 5, 17, and 18
under 35 U.S.C. § 103(a).
Claims 6, 20, and 22
Appellants argue "the Examiner asserts that the 'tier' of Oscar is
equivalent to Appellant's claim term 'display level"' but "fails to take into
account that 'display level' is used and described in Appellant's
specification as 'representing an appropriate level of specificity for
describing the respective drug."' App. Br. 10. This argument is not
persuasive because the Examiner finds Gibson teaches the claimed "display
level." See Final Act. 4. Moreover, although the claims are interpreted in
light of the specification, limitations from the specification are not read into
the claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). For the
foregoing reasons, we are not persuaded the Examiner erred in rejecting
claims 6, 20, and 22 under 35 U.S.C. § 103(a).
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DECISION
The Examiner's decision to reject claims 1-23 under 35 U.S.C.
§ 103(a) is 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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