Ex Parte Austin et alDownload PDFPatent Trial and Appeal BoardOct 16, 201713567630 (P.T.A.B. Oct. 16, 2017) Copy Citation 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. 13/567,630 08/06/2012 Paul R. Austin 20120131-US-NP/XERP152US 6604 86185 7590 10/18/2017 Simpson & Simpson, PLLC 5555 Main Street Williamsville, NY 14221-5406 EXAMINER TOWNSEND, GUY K ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 10/18/2017 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): patentEFS @ idealawyers.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL R. AUSTIN, WENDELL LEWIS KIBLER, and CLAUDE S. FILLION Appeal 2016-001553 Application 13/567,630 Technology Center 3700 Before LINDA E. HORNER, MICHAEL L. HOELTER, and JEFFREY A. STEPHENS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1—7, 9-25, and 27—32. Br. 1. Claims 8 and 26 have been canceled. See Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-001553 Application 13/567,630 THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a computer-based system and method including a medication package and computer-based unit for monitoring when spaces in the package containing medication are accessed.” Spec. 11. Claims 1, 16, 31, and 32 are independent. Claim 1, illustrative of the claims on appeal, is reproduced below (re-formatted for clarity). 1. A computer-based system for implementing and monitoring a medication regimen, comprising: a medication package including: a base including a plurality of spaces for receiving at least one medication; a sheet of material including respective portions sealing the plurality of spaces with respect to the base; and, a respective electrical circuit associated with each respective portion; and, a computer-based unit including: a memory element configured to store first computer readable instructions and a medication regimen, formulated by a medical practitioner or pharmacist, for the at least one medication; a processor; a user interface; and, a wireless transmitter, wherein: the computer-based unit is attachable to the medication package or can wirelessly communicate with the medication package; and, the processor is configured to execute the first computer readable instmctions to: monitor the respective electrical circuits to detect when the respective portions are ruptured; wirelessly transmit, using the wireless transmitter, a compliance message for receipt by at least one computer, the 2 Appeal 2016-001553 Application 13/567,630 compliance message indicating whether a respective portion has been ruptured; provide, using the user interface, a first option to request assistance, or a second option informing the medical practitioner or pharmacist of a lack of desire or inability to take the at least one first medication; receive, using the user interface, election of the first or second option; and, transmit, using the wireless transmitter, a message, including the first or second selected option, to the at least first one computer. REFERENCE RELIED ON BY THE EXAMINER Niemiec US 6,961,285 B2 Nov. 1,2005 THE REJECTION ON APPEAL Claims 1—7, 9-25, and 27—32 are rejected under 35 U.S.C. § 103(a) as unpatentable over Niemiec. ANALYSIS Appellants address each independent claim 1, 16, 31, and 32 separately. Br. 10-29. We also address each such claim separately with the remaining dependent claims standing or falling with their respective parent claim. See 37 C.F.R. § 41.37(c)(l)(iv). Claim 1 Appellants initially address the limitation “provide, using the user interface, a first option to request assistance” contending that Niemiec does 3 Appeal 2016-001553 Application 13/567,630 not teach or disclose, “providing the first option of claim l.”1 Br. 10. Appellants’ Specification states that this first option “to request assistance” (i.e., “option 60”) can reflect “a patient’s medical condition, environment, preferences, or schedules.'’'’ Spec. 128 (emphasis added). This paragraph continues, stating that this option “can include a plurality of requests for example, requests for: information regarding dosage or schedule for MED [i.e., medication], or information regarding side effects.” Hence, as expressed, a request for assistance in accordance with the recited “first option” includes a patient’s request for information relating to a dosage schedule. Appellants understand (as do we) that the Examiner correlates the above referenced “computer-based unit” to Niemiec’s medication monitor 104. See Final Act. 6; Niemiec Figs. 1, 2; Br. 10. The Examiner also identifies where Niemiec teaches that a patient can access monitor 104 for “a dosing schedule” to be displayed thereon. Final Act. 6—7 (referencing Niemiec 4:47—58). Hence, the Examiner concludes that Niemiec teaches this “first option” because a patient is able to “request assistance” of Niemiec’s monitor 104. Final Act. 6—7; see also Ans. 18. On this point, Appellants contend, “Niemiec is silent regarding] providing an interactive option for the patient.” Br. 11. Appellants’ argument is not persuasive because Niemiec states that the medication monitor (104) may be implemented by “a personal digital assistant (PDA)” 1 To be clear, the “user interface” referenced in claim 1 is associated with a “computer-based unit.” See Br. 31, Claims Appendix. Further, an example of the invention describes providing the first option to a patient taking medication. See Spec. 127. 4 Appeal 2016-001553 Application 13/567,630 having “display and interface capabilities.”2 Niemiec 6:48—54; see also Ans. 17. Appellants acknowledge that in Niemiec, “[t]he user can determine if a dose has been taken in compliance with a schedule, but there is no teaching regarding an option, presented on monitor 104, to request help or contact a pharmacist or medical practitioner.”3 Br. 11, emphasis omitted. However, claim 1 does not require any “help or contact” with a pharmacist or medical practitioner since the recitation of “request assistance” encompasses a request for “information regarding dosage or schedule for MED.” Spec. 128. Appellants do not explain how Niemiec’s display of “a dosing schedule” upon request by the patient fails to satisfy the recited limitation. Niemiec 4:52—57. Appellants also contend, “[i]t is only through the application of impermissible hindsight that Niemiec can be modified to satisfy the claim 1 limitation in question.” Br. 12. First, Appellants do not indicate where the Examiner relies on teachings that are gleaned only from Appellants’ Specification rather than from the express teachings of Niemiec. Second, the Examiner is not relying on a modification of Niemiec to reach this “first option to request assistance” claim language. Accordingly, we are not persuaded that the Examiner erred in relying on Niemiec or, that Niemiec fails to teach or suggest “the first option of claim 1” as Appellants assert. Br. 10. 2 Appellants also state that the communications device can be a “PDA.” Spec. 117. 3 Appellants contend, “viewing a schedule is not the same as an option to request help or contact a pharmacist or medical practitioner.” Br. 11. 5 Appeal 2016-001553 Application 13/567,630 Appellants also address the limitation “receive, using the user interface, election of the first or second option.” Br. 12. The recited “user interface” is understood to refer to the interface of the recited “computer- based unit” (corresponding to Niemiec’s monitor 104) that receives the election of an option. Final Act. 7; see also Ans. 18. Appellants argue that because “Niemiec does not teach, suggest, or motivate providing the first option, Niemiec cannot teach receiving an election of the option.'1'’ Br. 12 (emphasis added). Appellants’ arguments are not persuasive because Niemiec teaches a monitor/PDA 104 (having “display and interface capabilities”) that receives user input when a patient elects to display “a dosing schedule” thereon. Niemiec 6:48—54; 4:47—58; see also Ans. 18—19. Appellants further contend, ‘Tflhe claim 1 limitation in question is not inherent in Niemiec” (Br. 13), but Appellants do not identify where the Examiner is relying on inherency in finding that the above limitation is taught by Niemiec (see Final Act. 7), and we fail to locate any such application thereof. Further, Appellants’ argument that the Examiner relies on ‘Tilmpermissible hindsight” (Br. 14—15) is likewise not persuasive for reasons similar to those already expressed. Appellants further address the limitation “transmit, using the wireless transmitter, a message, including the first or second selected option, to the at least first one computer.” Br. 15. The Examiner correlates this “at least first one computer” to Niemiec’s “third party computer or computer network” to which Niemiec’s monitor 104 can transmit. Final Act. 6—7; see also Niemiec Fig. 2 (illustrating multiple computers that can receive wireless transmissions from monitor 104); Ans. 19—20. Niemiec further expressly states that monitor 104 may forward information it receives “to a remote 6 Appeal 2016-001553 Application 13/567,630 computer via a network connection.” Niemiec 3:45—48; see also Niemiec 11:1—5. As above, such monitor information includes “a dosing schedule” as well as patient compliance with such schedule. Niemiec 4:52—57 (“whether a dose was accessed at the requisite time”). In view of Niemiec’s teaching regarding communication between the monitor and a remote computer (see, e.g., Niemiec 9:3—5), the Examiner concludes that it would have been obvious “to select the option as the message . . . and wirelessly transmit the message of the selected option.” Ans. 20. In other words, the Examiner concludes that it would have been obvious “to transmit data of an election of an option to display information on medication compliance” to a third party computer. Ans. 20. Since Niemiec readily discloses transmissions from the monitor to remote computers, Appellants’ argument about Niemiec’s silence “regarding transmission of a selection of an option as recited in claim 1” is not persuasive that it would not have been obvious to do so. See Br. 15—16. Appellants also refer to a different data transfer (i.e., between Niemiec’s instrumented medication package 102 and medication monitor 104) and repeat the argument that this transfer “is not a selection of a request for help or to contact a pharmacist or medical practitioner.” Br. 16. Appellants’ contention is not persuasive because it addresses a different communication and because the selection of the first option does not require, as discussed above, “a request for help or to contact a pharmacist or medical practitioner.” See also Br. 17 (addressing the correct communication with the same help/contact argument). Furthermore, Appellants’ subsequent allegation of ‘Tilmnermissible hindsight” (Br. 17) is likewise not persuasive. 7 Appeal 2016-001553 Application 13/567,630 In summation, and based on the record presented, we are not persuaded the Examiner erred in relying on Niemiec for concluding that claim 1, and dependent claims 2—7 and 9—15, are obvious. Claim 16 Independent claim 16 includes the limitation, “modify the instructions according to the transmission.” Br. 38. The Examiner references Niemiec 19:1—14 as teaching this limitation. Ans. 8: see also id. at 21—22. This passage in Niemiec states, “[t]he monitoring schedule may be dependent upon factors associated with the particular medication” (Niemiec 19:1—5) and thereafter discusses such factors. Niemiec further states, “[instructions could also be transmitted 662 from the central computer to the medication monitor. Such instructions could alter the intake schedule, the monitoring schedule, or provide information for a patient associated with the medication monitor.” Niemiec 19:63—67. Hence, Niemiec teaches the transmission by a remote computer to a monitor of an alteration to a variety of schedules/information. Appellants’ argument to the contrary, focusing on “the package,” or distinctions between “scheduling information,” “monitoring schedule” or “medication regimen” (Br. 18—20), is not persuasive that Niemiec fails to teach the limitation directed to a monitor receiving a transmission from a remote computer that modifies the monitor’s instructions. See Ans. 21—22. In summation, and based on the record presented, we are not persuaded the Examiner erred in relying on Niemiec for concluding that claim 16, and dependent claims 17—25 and 27—30, are obvious. 8 Appeal 2016-001553 Application 13/567,630 Claim 31 Independent claim 31 includes the limitation of an RFID “tag including a medication regimen.” Appellants do not dispute Niemiec’s disclosure of an RFID tag (see Niemiec 4:58 to 5:6), but instead dispute a teaching “regarding a medication regimen stored on the tag.” Br. 21. Niemiec is directed to “monitoring medication intake” and accomplishes this task by “identifying the condition of severable connectors” on the medication package. Niemiec 3:37-45; see also Ans. 23. Niemiec teaches, “[t]he use of severable conductors 118 in association with medication containments 120 [on package 102 (Fig. 2)] allows the detection of when a patient accesses medication.” Niemiec 4:44-46. Thus, as per Niemiec, “a patient unsure of whether they took required medication on time would be able to review the times at which medication containments 120 were accessed, and compare this information with an intake schedule identifying when a dose was supposed to have been taken.” Niemiec 4:47— 52. More specifically, Niemiec teaches the use of an RFID tag to transmit data from the package to the monitor “such as times at which severable conductors 118 were severed.” Niemiec 5:1—6; see also Niemiec 4:62—67. Niemiec also teaches a pharmacist that may “associate 638 the specific instrumented medication package with the prescription prior to dispensing 640 the medication.” Niemiec 18:29—31. In view of such teachings (including Niemiec’s teaching that the RFID can store and transmit data (Niemiec 5:1—6)), the Examiner concludes that it would have been obvious “to provide the RFID tag for data transmission including a medication regimen including a dosing schedule, as disclosed in different embodiments.” Ans. 23—24. Appellants’arguments about Niemiec’s 9 Appeal 2016-001553 Application 13/567,630 silence “regarding a medication regimen stored on the tag” is not persuasive that this limitation would not have been obvious in view of Niemiec’s teachings. See Br. 20-26. Appellants’ additional assertion regarding the Examiner’s reliance on inherency (Br. 23) is equally not persuasive of Examiner error. In summation, and based on the record presented, we are not persuaded the Examiner erred in relying on Niemiec for concluding that claim 31 was obvious. Claim 32 Claim 32 includes the limitation, “storing, in a second memory element for at least one computer, second computer readable instructions” (emphasis added by Appellants, Br. 26). Appellants contend that the Examiner did not address this italicized portion but assumes “the Examiner is referring to computer 200 as the at least one computer.” Br. 27. We agree with Appellants’ understanding of the Examiner’s rejection (see Final Act. 10 referencing Niemiec 9:4—12) and further note that Niemiec teaches, “remote computer 200 may be a single computer or one of several computers in a network.” Niemiec 8:17—18. Appellants thereafter address the limitation “modify the instructions according to the transmission” and refer to “arguments for claim 16” regarding this limitation. Br. 27. As indicated above, such arguments were not deemed persuasive of Examiner error. See also Ans. 25—26. Appellants further reference another limitation of claim 32 directed to the transmission of “a second message, regarding the non-compliance with respect to the medication regimen.” Br. 28. Appellants contend that this limitation directed to a second non-compliance message is lacking. Br. 28. 10 Appeal 2016-001553 Application 13/567,630 However, Appellants do not dispute that Niemiec addresses non-compliant situations such as when a patient is not taking medication on time, or is abusing the medication. Niemiec 4:52—57; 9:20-25; see also Ans. 26—27. Niemiec also discloses a physician using the system to ascertain “the status of a patient in completing a course of medication.” Niemiec 8:40-41. The Examiner concludes that in view of such teachings (and others), it would have been obvious “to transmit a second non-compliance message in response to a first message regarding monitoring medication dosing, as disclosed in different embodiments.” Ans. 27; see also Ans. 26. Appellants’ argument about Niemiec’s silence “regarding transmitting a second message, regarding non-compliance, to a communications device” is not persuasive because it does not address the Examiner’s determination that such a non-compliance message would have been obvious in light of Niemiec’s teachings. See Br. 28. Appellants also present the general allegation that “Niemiec does not teach any device analogous to the communications device of claim 32” (Br. 29), but fail to further elaborate as to why Niemiec’s monitor 104 is not analogous to Appellants’ communication device since both are “accessible by a patient for whom the at least one medication has been prescribed” as claimed. Accordingly, in summation and based on the record presented, we are not persuaded the Examiner erred in relying on Niemiec for concluding that claim 32 was obvious. DECISION The Examiner’s rejection of claims 1—7, 9—25, and 27—32 is affirmed. 11 Appeal 2016-001553 Application 13/567,630 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 12 Copy with citationCopy as parenthetical citation