Ex Parte Butler

Patent Trial and Appeal Board

Nov 26, 2013

11422484 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte C. DAVID BUTLER
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Appeal 2011-010428
Application 11/422,484
Technology Center 3600
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Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/422,484

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-5, 15, 20, and 22-47 under 35 U.S.C. § 102(b) as
anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over, Reese (US 6,711,460 B1, iss. Mar. 23, 2004).1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellant’s claimed invention relates to “systems for dispensing
prescription drugs, and more particularly to such systems that are usable in
physicians’ offices.” Spec., para. [0001]. Claim 1, reproduced below, is the
sole independent claim and representative of the claimed subject matter.
1. A prescription dispensing system
comprising:
a dispensing station for holding an inventory
of prescription medications;
a secure internet connection to the
dispensing station for access by a potential
prescription medication recipient, by healthcare
personnel in a physician office and by pharmacy
personnel at the pharmacy distribution center in a
remote location;

1 Appellant also asks us to review the Examiner’s objection to claims 1-47
based upon the drawings. App. Br. 10. That issue is reviewable by petition
under 37 C.F.R. § 1.181, and is not within the jurisdiction of the Board. In
re Mindick, 371 F.2d 892, 894 (CCPA 1967). See Manual of Patent
Examining Procedure (MPEP) §§ 706.01, 1002, and 1201. We further note
that, because there is no ground of rejection as to claims 6-14, 16-19, and 21,
we confine our decision to claims 1-5, 15, 20, and 22-47.
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at least two webcams for visual and auditory
communication between the location of the
dispensing station and the pharmacy personnel via
the internet to allow identification of the correct
medication, identification and communication with
the correct potential prescription medication
recipient, and visual validation and recording of all
documentation from the physician's office or
potential prescription medication recipient;
a biometric reader disposed at the dispensing
station for identifying a potential prescription
medication recipient, said biometric reader being
connected via the secure internet connection to the
remote location.
ANALYSIS
Claims 1, 3-5, 15, 22-24, 26-29, 31-37, 39, 40, 42, and 44-47
Appellant argues claims 1, 3-5, 15, 22-24, 26-29, 31-37, 39, 40, 42,
and 44-47 as a group. Br. 7. We take claim 1 as representative pursuant to
37 C.F.R. § 41.37(c)(1)(vii) (2011), and claims 3-5, 15, 22-24, 26-29, 31-37,
39, 40, 42, and 44-47 stand or fall with claim 1.
The Examiner finds that Reese discloses all of the elements of the
prescription dispensing system of claim 1.2 Ans. 5. Appellant’s sole
argument against the rejection of claim 1 is that the claimed dispensing
station requires “a mechanism small enough to be used ‘in a physician’s
office,’” and the facility disclosed by Reese “could never be installed in a
‘physician’s office’ where space is at a premium.” Br. 11.
We do not find this argument convincing. Instead, we agree with the
Examiner’s statement that some physician’s offices “include multiple rooms

2 Despite rejecting claim 1 as either anticipated by or obvious over Reese,
the Examiner does not provide an obviousness analysis.
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and areas” and the “system of Reese including the vault would easily fit
[into] the physical parameters of such a location.” Ans. 8. Appellant does
not argue persuasively that Reese’s system is too large to fit into any
physician’s office. Furthermore, Appellant’s interpretation of the claim term
“dispensing station” as being something small enough to be used in a
physician’s office is overly narrow when considered in light of the
Specification. For instance, Appellant notes that paragraph [0026] of the
Specification provides that the “dispensing station is preferably disposed in a
physician’s office or similar convenient location.” Br. 11. However, this
passage merely specifies a preference for disposing a dispensing station in a
physician’s office or similar convenient location, which is not limited in
size. As such, the Specification does not support Appellant’s claim
construction.
In view of the above, Appellant does not apprise us of error, and we
sustain the rejection of claim 1. Claims 3-5, 15, 22-24, 26-29, 31-37, 39, 40,
42, and 44-47 fall with claim 1.
Claim 2
Appellant argues that Reese does not disclose a dispensing station
inventory matching a profile of usually dispensed medications used in a
physician’s office as required by claim 2. Br. 12. In response, the Examiner
indicates that “Reese has limited storage space” and thus must “be selective
in storing medications” and “as such it is inherent that a pharmacy limit its
stock to those medications which are likely to be needed,” which would
“define a profile of use and demand.” Ans. 8-9. However, this statement
does not establish that Reese either anticipates or renders obvious the
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claimed profile-matching inventory. As such, we do not sustain the rejection
of claim 2.
Claim 20
Appellant argues that Reese discloses “measuring out the required
amount of [liquid] medication, apparently from a larger container,” but
does not disclose the claim 20 feature of liquid medication being stored in
predetermined units. Br. 12 (emphasis added). The Examiner finds that,
because storage containers of bulk liquid medications are “predetermined
units,” Reese discloses liquid medications stored in predetermined units.
Ans. 9.
We construe claims by applying the broadest reasonable interpretation
consistent with the specification, reading the claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art.
E.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Appellant’s Specification provides little description of the
“predetermined units” (see Spec., para. [00032]), and Appellant does not
point to anything in the Specification that would suggest the term has a
particular meaning other than the plain meaning of the words. As such, we
agree with the Examiner that the broadest reasonable interpretation of
“predetermined units” would include storage containers of bulk liquid
medications. Because Reese discloses measuring liquid medication (Reese,
col. 10, ll. 11-13), the reference inherently includes some sort of storage
container for the liquid medication (which Appellant essentially concedes by
noting that Reese’s measured medication is “apparently from a large
container”). We agree with the Examiner that such a container is a
“predetermined unit” and thus sustain the rejection of claim 20.
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Claim 25
The Examiner finds that the individual drug storage cells 286, 288,
290 of Reese correspond to the removable module of claim 25, and “Reese
discloses a modular dispensing cabinet including a plurality of arrangements
and storage locations and devices capable of being removed and refilled at a
remote pharmacy.” Ans. 6, 9 (emphasis added). However, the storage cells
286, 288, 290 store “[p]rescription medications, or other items that may be
ordered or needed for compounding” that are retrieved or removed from the
cells by drug retrieval robot 292. Reese, col. 9, ll. 31-33; col. 10, ll. 40-49.
Reese does not disclose that the storage cells 286, 288, 290 are removable.
As such, we agree with Appellant that Reese does not disclose a removable
module that holds an inventory of medications. Br. 13. We thus do not
sustain the rejection of claim 25.
Claims 30 and 41
Claims 30 and 41 both require that at least one of the claimed
webcams is disposed in a physician’s office. We agree with Appellant’s
argument that Reese does not disclose placing cameras in a physician’s
office. Br. 13, 14. The Examiner points to column 12, lines 49-60 of Reese
as disclosing webcams disposed in a physician’s office and also states
“[c]amera 278 is located in the user interface for use in communicating with
the remote pharmacist and could be used to transmit the prescriptions.
Figure 15 describes multiple ways of transmitting the prescription including
scanning in and image 618.” Ans. 6, 7, 10. However, the cited passage of
Reese does not disclose placing cameras in a physician’s office, and the
Examiner’s explanation does not establish that Reese either anticipates or
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renders obvious the limitation of webcams disposed in a physician’s office.
Accordingly, we do not sustain the rejection of claims 30 and 41.
Claim 38
Claim 38 recites that “the healthcare professional authorizes use of the
dispensing station by the authorized caregiver or patient, said pharmacist
authorizing dispensing of medication from said dispensing station to said
authorized caregiver or patient.” In rejecting this claim, the Examiner finds
that “[a]nyone can use the device and the various inputs of biometrics and
video can all be used for the approval process” and
Reese disclose[s] the system being manned or unmanned
and if the system is located in the office of a physician
access to the system is limited by the personnel operating
the system and working in the office. After the system is
accessed and the prescription transmitted to the remote
pharmacist control is then handed over to the remote
pharmacist.
Ans. 7, 10. Because these statements fail to explain how Reese anticipates
or renders obvious the claimed subject matter, the Examiner has not
adequately supported the rejection. We thus cannot sustain the rejection of
claim 38.
Claim 43
Claim 43 calls for “including barcoded modules containing an
updateable, specified combination of medication containers for said
dispensing station’s inventory.” Appellant asserts that “Reese teaches bar-
codes, but . . . has no teaching of a ‘dispensing station’ or the ‘inventory’ for
a dispensing station.” Br. 14. We disagree with Appellant’s assertion for
the reasons discussed supra. Instead, we agree with the Examiner’s finding
that Figures 8-10 of Reese disclose the claimed modules. Ans. 7.
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Furthermore, we note that Reese discloses “the drug storage cell 286
contains machine readable indicia in the form of a bar code strip 328 on the
front of the lower shelf of the cell 286.” Reese, col. 9, ll. 46-49 (emphasis
added).
For these reasons, we sustain the rejection of claim 43.
DECISION
We affirm the decision of the Examiner rejecting claims 1, 3-5, 15,
20, 22-24, 26-29, 31-37, 39, 40, and 42-47 and reverse the decision rejecting
claims 2, 25, 30, 38, and 41.
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).

AFFIRMED-IN-PART

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