Ex Parte Heffron

Patent Trial and Appeal BoardAug 28, 2013

11928928 (P.T.A.B. Aug. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID HEFFRON ____________ Appeal 2011-009504 Application 11/928,928 Technology Center 3600 ____________ Before: JAMES P. CALVE, WILLIAM A. CAPP and BEVERLY M. BUNTING, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 21-32 as anticipated under 35 U.S.C. §§ 102(a), (b) & (e) by Haitin (US 2007/0088461 A1, pub. Apr. 19, 2007). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-009504 Application 11/928,928 - 2 - THE INVENTION Appellant’s invention is a method for dispensing medication. Spec. 2, para. [0006]. Claim 21, reproduced below, is illustrative of the subject matter on appeal. 21. A method for dispensing different types of medication to a plurality of patients, the method comprising: receiving a request for a medication from an individual patient; determining if the requested medication is an optional medication; confirming, via an affixed secured apparatus located within the individual patient's room, compatibility of the requested medication with medications currently being administered to the individual patient; selectively dispensing the requested medication, only if the requested medication is an optional medication compatible with medications currently being administered to the individual patient, from the affixed secured apparatus; moving a mobile apparatus between patient rooms, the mobile apparatus carrying required medications for the plurality of patients; and dispensing one of the required medications for the individual patient from the mobile apparatus. OPINION The Examiner finds that Haitin discloses all of the elements of claim 21. Ans. 4. In particular, the Examiner finds that Haitin discloses use of an affixed secured apparatus located within the individual patient’s rooms. Id., citing medicine cabinet 30 (fig. 1) and Haitin, para. [0081]. Appellant traverses the Examiner’s rejection, among other things, by arguing that Haitin’s cabinet 30 is located in a centralized area in a medical Appeal 2011-009504 Application 11/928,928 - 3 - facility as opposed to being one of a plurality of devices, each of which is affixed and secured in individual patient’s rooms, as claimed. App. Br. 11- 12. The Examiner responds that Haitin’s systems can be utilized in facilities or clinics of all sizes, including facilities having only a few beds. Ans. 10. The Examiner further responds that a facility with only a few beds and with only one patient would constitute an individual patient’s “rooms.”1 Id. The Examiner also hypothesizes that a hospital ward with only a single room to house Haitin’s system and all patient beds on the ward would include an individual patient’s room. Id. The Examiner then relies on principles of inherency to reason that, since Haitin’s device, in its normal and usual operation in a small medical facility with only one patient room and/or only one patient, would necessarily perform the claimed method, then the method claimed is considered to be anticipated by the prior art device. Id., citing In re King, 802 F.2d 1324 (Fed. Cir. 1986). Appellant replies that claim 1 recites a method for dispensing medication to a plurality of patients. Reply Br. 4. Appellant further replies that the claimed invention contemplates moving a mobile apparatus between patient rooms. Id. Thus, Appellant interprets claim 21 as requiring a system that serves multiple patients located in multiple rooms, which is distinguishable from the hypothetical single room, single patient scenario on which the Examiner’s inherency theory depends. Reply Br. 4-5. Haitin discloses a system of administering medication that relies on a single, centralized cabinet 30 that is common to a medical facility comprised of a plurality of beds. Haitin, para. [0038]. There is no provision in Haitin 1 Plural form (rooms) applied by the Examiner. Id. Appeal 2011-009504 Application 11/928,928 - 4 - to locate a medicine cabinet in each patient room of a medical facility that has a plurality of patient rooms. A person of ordinary skill in the art would not understand that Haitin expressly or inherently discloses a secured apparatus fixedly located within each individual patient’s room of a multi- room facility for dispensing optional medications. Appellant’s use of the phrase “between patient rooms” in claim 21, properly construed, indicates that the claimed method requires that the plurality of patients be situated in more than a just a single patient room and, therefore, a plurality of medicine cabinets is required to practice the claimed method, with one of the plurality of medicine cabinets being located in each of a plurality of patient rooms. In this case, the Examiner erred in interpreting claim 21 in such a way that Haitin’s single medicine cabinet 30 is capable of satisfying the limitation directed to “an affixed secured apparatus located within the individual patient’s room.” Clms. App’x. Accordingly, we do not sustain the Examiner’s anticipation rejection of claim 21, neither do we sustain the rejection of claims 22-32 that depend therefrom. DECISION The decision of the Examiner to reject claims 21-32 as anticipated by Haitin is REVERSED. REVERSED mls