SYNERGY MEDICAL BRG INC.

Patent Trials and Appeals Board

Jan 8, 2021

2020003548 (P.T.A.B. Jan. 8, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/115,383 07/29/2016 JEAN BOUTIN 05200857-3US 8779
20988 7590 01/08/2021
NORTON ROSE FULBRIGHT CANADA LLP
1, PLACE VILLE MARIE
SUITE 2500
MONTREAL, QUEBEC H3B 1R1
CANADA
EXAMINER
WAGGONER, TIMOTHY R
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
01/08/2021 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):
NRFCUSPTOMAIL@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JEAN BOUTIN
__________

Appeal 2020-003548
Application 15/115,383
Technology Center 3600
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–22. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM AND ENTER A NEW GROUND OF REJECTION.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as SYNERGY
MEDICAL BRG INC. Appeal Br. 2.
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STATEMENT OF THE CASE
The claims are directed to a system and a method for assisting in
preparation of client-specific medication packaging. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A system for reducing an amount of time for filling
of at least two medication dose packs laid on a support surface,
each said medication dose pack having at least 28 receptacles
adapted to receive medication items based on dose pack
prescription profiles, the receptacles of each said medication
dose pack arranged in an array of rows and columns, the system
comprising:
an assistance processor comprising:
a dose pack medication localizer for determining a
location of each receptacle of each said medication dose
pack on the support surface, and for identifying
medication items required in each said receptacle of each
said dose packs using the dose pack prescription profiles;
a medication grouper for grouping, for each of the
medication items of the dose pack prescription profiles of
all of the at least two medication dose packs, the locations
of each said receptacle of each said dose packs on the
support surface to be filled with a corresponding one of the
medication items; and
a distribution matrix generator for generating a
distribution sequence for filling the dose packs on the
support surface using each one of said grouping, the
distribution sequence including at least an identification
simultaneously of all of said receptacles of all of said
medication dose packs to be filled and not to be filled with
a first type of medication item, sequentially before an
identification simultaneously of all said receptacles of all
of said medication dose packs to be filled and not to be
filled with a second type of medication item; and
an output for producing the distribution sequence
for assisting the filling of the dose packs with the
medication items.

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REFERENCES
The prior art relied upon by the Examiner are:
Name Reference Date
Carson US 2013/0018503 A1 Jan. 17, 2013
Chudy US 2013/0218330 A1 Aug. 22, 2013

REJECTION
Claims 1–22 are rejected under 35 U.S.C. § 103 as being unpatentable
over Carson and Chudy. Final Act. 2.

OPINION
Claim 1 is representative of claims 1–22 pursuant to 37 C.F.R. §
41.37(c)(1)(iv)(2019). See Appeal Br. 6–15.
The Examiner finds that Carson discloses a system having most of the
limitations of claim 1. Final Act. 2–3. The Examiner finds that Carson’s
system comprises:
(a) at least two medication dose packs (packaging 90b) laid on a
support surface (shutter assembly 38, tray 40) in which each medication
dose pack has at least 28 receptacles adapted to receive medication items
based on dose pack prescription profiles (id. at 3 (citing Carson Figs. 2C,
4));
(b) a dose pack medication localizer for determining a location of
each receptacle of each medication dose pack on the support surface, and for
identifying medication items required in each receptacle of each dose packs
using the dose pack prescription profiles (id. (citing Carson ¶¶ 12–14));
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(c) a medication grouper for grouping, for each of the medication
items of the dose pack prescription profiles of all of the at least two
medication dose packs, the locations of each receptacle of each dose packs
on the support surface to be filled with a corresponding one of the
medication items (id. (citing Carson ¶¶ 12–14));
(d) a distribution matrix generator for generating a distribution
sequence for filling the dose packs on the support surface using each one of
the grouping (id. (citing Carson ¶¶ 12–14)); and
(e) an output (monitor 36) for producing the distribution sequence for
assisting the filling of the dose packs with the medication items (id. (citing
Carson Fig. 5)).
According to the Examiner, “Carson does not disclose a specific
system for a grid arranged filling system which simultaneously displays all
of the receptacles to be filled and not to be filled in each dose pack with a
first type of medication.” Id. The Examiner relies on Chudy for this missing
limitation. Id. (citing Chudy ¶¶ 318–322, Figs. 37, 40, 69, 76, 88). The
Examiner concludes that it would have been obvious to modify the system
of Carson to “simultaneously display[] all of the receptacles to be filled and
not to be filled in each dose pack with a first type of medication” as taught
by Chudy “because it provides an efficient means to fill multiple grid
arranged blister packs at a time.” Id.
Appellant contends that paragraph 320 of Chudy discloses indicators
for more than one cell that are simultaneously activated for a medicament of
the same type for more than one cell “of the same holder,” and that the
holder is shown in Chudy’s Figures 45 and 47, which is referred to in
Chudy’s paragraph 86. Appeal Br. 9–11. As such, Appellant argues that
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Chudy does not disclose “an identification simultaneously of all of said
receptacles of all of said medication dose packs to be filled and not to be
filled with a first type of medication item,” as required for claim 1. Id. at 11.
Stated differently, Appellant argues that Chudy discloses an identification
simultaneously of all of the receptacles of a single medication dose pack––
rather than of all medication dose packs––to be filled and not to be filled
with a first type of medication item.2 Appellant argues that Chudy’s Figures
37, 40, and 46 are not discussed in paragraphs 318–322, and Figures 69 and
88 are used for verification, in which the Chudy’s corresponding receptacles
are already filled with medication. Id. (citing Chudy ¶ 359). See also Reply
Br. 2–3.
The Examiner responds that Chudy’s paragraphs 318–320 refer to
Figure 76, which shows cards 1–4 that represent four dose packs. Ans. 3.
The Examiner points out that Chudy discloses simultaneously activating
indicators 1049, 1049,’ and 1049.’’’3 Id. Thus, the Examiner asserts, Chudy
discloses an identification simultaneously of all of the receptacles of all four
medication dose packs––rather than a single medication dose pack––to be
filled and not to be filled with a first type of medication item. Id. The
Examiner further states that “[a]dditionally[,] the visual representation of the
distribution sequence as rejected by the primary reference of Carson shows
that the display simultaneously addresses all of the dose packs.” Id.

2 We note that the preamble of claim 1 recites “at least two medication dose
packs” and thus, two medication dose packs will suffice for this limitation.
Appeal Br. 16 (Claims App.).
3 In the Answer, the Examiner does include indicator 1049’’ in the
discussion. Ans. 3. However, indicator 1049’’ is discussed in paragraph 320
of Chudy. See Chudy ¶ 320.
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Figure 76 of Chudy is reproduced below:

Chudy’s Figure 76 “is an exemplary screen display for holder filling.”
Chudy ¶ 106. “[T]o fulfill the prescription order, [f]illing screen 1403’ may
be displayed to assist the user with loading of the required type of
medicament.” Id. at ¶ 316. Filling screen 1403’ “provide[s] instructions to
the user” and “[t]he instructions may include highlighting of each cell 1405
corresponding to the opening 1317 and cell 1033 into which . . . medicament
. . . is to be hand-loaded by the user.” Id. at ¶ 318. The filing screen 1403’
includes symbol 1409 which “indicates that the prescription order is being
processed” and holder view field 1401. Id. at ¶ 316, 319. Figure 76’s holder
view field shows Cards 1–4, each card having a highlighted cell 1405 and
quantity 1406 for the number of pills to be placed in that cell, and unlighted
cell 1407 in which no pills are to be placed in that cell. Id. at ¶ 316, 318.
Chudy’s Figure 50 is reproduced below:
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Chudy’s Figure 50 “is a partially exploded view of the sensor guide of FIG.
37.” Id. at ¶ 89. Identification marks 1–4 in Figure 50 (and also shown in
Figures 37–40, 42, 44A, 44B, and 48, 49) appear to show that each of Cards
1–4 in Figure 76 represents a holder 1013’ as shown in Figures 45–47.4 See
id. at Figs. 37–40, 42, 44A, 44B, 45–50, 76. Figure 45 of Chudy is
reproduced below:

4 It appears that Appellant agrees that this is the case, that a “card”
represents a “holder.” See Appeal Br. 10 (discussing together Chudy’s
“holder” and “card”).
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Chudy’s Figure 45 “is a perspective view of the exemplary holder of FIG.
37.” Id. at ¶ 84. Thus, as each holder 1013’ contains cells 1033 for holding
medication, the holder 1013’ corresponds to the recited medication dose
pack.
The full sentence in Chudy’s paragraph 320, which relates to Figure
76 and includes the disputed language is: “[i]ndicators 1049, 1049’, 1049’’,
and 1049’’’ for more than one opening 1317 and cell 1033 may be
simultaneously activated if a medicament . . . of the same type is to be
placed into more than one cell 1033 of the same holder 1013.” Chudy at ¶ 20
(emphasis added). Figure 76 does not show any of the indicators 1049,
1049,’ 1049,’’ and 1049,’’’ but Figures 28, 28A, 42, and 42A reveal that
these four indicators are linked to one cell 1033 for a single holder 1013,’
rather than for multiple cells in multiple holders. See id., Figs. 28, 28A, 42,
42A. Thus, it is not clear that the above passage discloses a screen display
1403’ for holder filling, in which multiple cells 1033 from multiple holders
1013’ are simultaneously identified for filling a first type of medication. In
other words, the passage, at best, discloses an identification simultaneously
of all of the receptacles of a single medication dose pack to be filled.
Nonetheless, Figure 88 shows highlighted cells 1467 in Card 1 and
Card 2. See Chudy, Fig. 88. In other words, Figure 88 shows an
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identification simultaneously of receptacles of at least two medication dose
packs. However, as Appellant recognizes, Chudy discloses that Figure 88
“[is] an exemplary screen display[] for a verification process,” rather than
for a filling process.5 Id. at ¶ 112. But in describing Figure 76, Chudy states
[t]he contrast between the highlighted oval 1405 indicative of the
“yes” state and un-highlighted cells 1407 indicative of the “no”
state (for convenience only certain of the un-highlighted cells are
indicated by 1407) enables the user to easily identify the opening
1317 and cell 1033 into which the . . . medicament . . . of the
examples is to be placed.
Id. at ¶ 118 (emphasis added). Chudy also discloses that its objective is
“item management [that] provid[es] for improved efficiency in item
distribution.” Id. at ¶ 2. Thus, it seems to us that: (1) Chudy at the very least
implies highlighting cells also in Cards 1–4 in the filling screen 1403’ of
Figure 76 for filling, because Figure 88 shows that that is possible; (2)
Figure 76 shows only one highlighted cell 1405 in one card, for
convenience, similar to the fact that not all un-highlighted cells are identified
in the figure as described in paragraph 118; and (3) highlighting cells in
more than one card at a time would be consistent with Chudy’s objective of
“improved efficiency in item distribution” (id. at ¶ 2).
Moreover, even if crediting Appellant’s contention that Chudy does
not disclose identifying more than one cell in more than one holder or card,
the Examiner points out that “the visual representation of the distribution
sequence as rejected by the primary reference of Carson shows that the

5 We note that although independent claims 1 and 10 recite “an identification
simultaneously of all of said receptacles of all of said medication dose packs
to be filled,” there is nothing being claimed that differentiates the
identification from being used for verification.
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display simultaneously addresses all of the dose packs.” Ans. 3. Carson’s
Figure 5 is reproduced below:

Carson discloses that “[f]urther details of the loading table 30 and the shutter
assembly 38 and tray 40 used at the loading table 30 [shown in Figure 4] to
fill a set of blister packs 90[6] are shown in FIGS. 5 through 14B.” Carson
¶ 81.7 Figure 5 shows a “visual display 36” and “illustrates the correlation
seen by an operator 22 during a filling or verification process of blister
packs 90 located in a tray 40 within the shutter assembly 38.” Id. (emphasis

6 Although Figure 5 shows blister packs with a circular shape, other blister
packs such as those having a rectangular shape, as depicted in packaging 90b
of Figure 2C, are possible. See Carson ¶ 79, Fig. 2C, Final Act. 3.
7 We note that paragraphs 13 and 79 of Carson also disclose a shutter
assembly having an array of LEDs for filling “blister pack 90 or other
medication packaging to be filled with the medications.” Thus, the array of
LEDs may also be regarded as the “output” recited in claim 1 because claim
1 does not preclude a shutter assembly having an array of LEDs as an
“output.”
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added). Carson discloses that its “method enables efficient distribution of
multiple prescriptions into individualized packages for convenient
administration by a patient.” Id. at ¶ 8. To accomplish this,
[d]elivering the filling instructions then includes actuating the
shutters so that only a first compartment is open for filling and
activating a LED below each first compartment that is to be
filled. The operator then fills these compartments and confirms
that all of the intended compartments have received the
medication. The first compartments are then imaged for use in
downstream verification of the filling, and the process repeats
for each compartment.
Id. at ¶ 13 (emphases added). Consequently, Carson can also be regarded as
disclosing “[a] distribution sequence including at least an identification
simultaneously of all of [the] receptacles of all of [the] medication dose
packs to be filled and not to be filled with a first type of medication item,” as
claimed. Thus, Chudy is not really necessary for satisfying this aspect of the
claim language because Carson is anticipatory. “It is well settled that
‘anticipation is the epitome of obviousness.’” In re McDaniel, 293 F.3d
1379, 1385 (Fed. Cir. 2002). Alternatively, it would have been obvious to
identify receptacles of more than one medication dose pack, as taught by
Carson, for efficient distribution of medication into the medication dose
packs.8

8 Also, it seems to us that there are only three ways in identifying the
receptacles of medication dose packs to be filled: (1) one receptacle at a
time, (2) some receptacles at a time, and (3) all receptacles at a time. As
such, there are a finite number of ways in identifying the receptacles of
medication dose packs to be filled, and it would have been obvious to try
option (3), which relates to the claimed subject matter. See Bayer Schering
Pharma AG v. Barr Laboratories, Inc., 575 F.3d 1341, 1347 (Fed. Cir.
2009).
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In view of the foregoing discussion, we agree with the Examiner’s
ultimate decision to reject claims 1–22 based on Carson and Chudy.
However, for the reasons discussed above, we modify the Examiner’s
grounds for rejecting claims 1 and 10 to be based on any one of: anticipation
or obviousness in view of Carson alone, or obviousness based on Carson and
Chudy, according to the modified reasoning discussed above. As we have
supplemented the Examiner’s findings and reasoning, we designate this
opinion as including a new ground of rejection under 37 C.F.R. § 41.50(b)
so as to afford Appellant the procedural options for response associated
therewith.

CONCLUSION
The Examiner’s rejection of claims 1–22 is affirmed. We designate
this affirmance as including a new ground of rejection.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
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 prosecution will be
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remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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)(1)(iv).

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Grounds
1–22 103 Carson, Chuddy 1–22 1–22
1, 10 102/103 Carson 1, 10
Overall
Outcome
1–22 1–22

AFFIRMED; 37 C.F.R. § 41.50(b)