Ex Parte Kobayashi et al

Patent Trial and Appeal BoardOct 17, 2012

11337681 (P.T.A.B. Oct. 17, 2012)

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. 11/337,681 01/24/2006 Koichi Kobayashi 060056 4499 23850 7590 10/17/2012 KRATZ, QUINTOS & HANSON, LLP 1420 K Street, N.W. 4th Floor WASHINGTON, DC 20005 EXAMINER WAGGONER, TIMOTHY R ART UNIT PAPER NUMBER 3651 MAIL DATE DELIVERY MODE 10/17/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KOICHI KOBAYASHI, MANABU HARAGUCHI, AKINORI HATSUNO, TOSHITAKE MARUYAMA, and TETSUO SAKURAL ____________ Appeal 2010-009492 Application 11/337,681 Technology Center 3600 ____________ Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009492 Application 11/337,681 2 Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1 and 4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. REJECTION Appellants seek review of the Examiner’s rejection of claims 1 and 4 under 35 U.S.C. § 102(b) as anticipated by, or in the alterative under 35 U.S.C. § 103(a) as unpatentable over, Boyer (US 5,884,806, iss. Mar. 23, 1999) (Ans. 3); and the Examiner’s rejection of claims 1 and 4 under 35 U.S.C. § 102(b) as anticipated by, or in the alterative under 35 U.S.C. § 103(a) as unpatentable over, Tamaoki (US 6,516,969 B2, iss. Feb. 11, 2003) (Ans. 4). ANALYSIS The claimed subject matter relates to a medicine supply apparatus. Claim 1 is the only independent claim on appeal, and is reproduced below with the key disputed limitations emphasized: Claim 1: A medicine supply apparatus which fills a container with medicines discharged from a tablet case, comprising: discharge means for discharging the medicines from the tablet case; medicine detection means for detecting the medicines discharged from the tablet case; and control means for controlling the discharge means to discharge the medicines from the tablet case, counting the discharged medicines based on a detecting operation of the medicine detection means, and changing a discharge speed of the medicine by the discharge means depending on a type of medicine in the tablet case, wherein the control means changes the discharge speed depending on a size and/or a shape of the medicine in the tablet case; and wherein the control means Appeal 2010-009492 Application 11/337,681 3 increases the discharge speed in a case where the medicine in the tablet case has a small size, smaller than a predetermined reference value, and/or a round shape. ANALYSIS The Examiner finds that Boyer discloses a tablet cassette comprising a drum that spins at an optimal speed selected for each type of medication based on the medication’s physical characteristics. Ans. 3. When the final count is approached, the system goes into a “singulation” mode in which the feed rate is slowed and the drum is jogged forward to dispense single pills. Id. A detection means cooperates with a processor to control the modes. Id. The Examiner admits that Boyer does not expressly disclose a speed being increased for round or small medicaments, but finds that Boyer discloses testing to find an optimal speed for each medicament. Ans. 3. The Examiner concludes that it would have been obvious to one skilled in the art to test various speeds and arrive at a discharge speed such as an increased speed if an increased speed is the optimal speed. Id. Regarding Tamaoki, the Examiner finds that Tamaoki discloses a medicine dispensing cassette that changes speed based on size and shape, and slows dispensation when a final count is neared. Ans. 4. A sensor means keeps an accurate count and a processor changes speed when the count nears the final count. Id. The Examiner admits that Tamaoki does not expressly disclose that the speed is increased for round or small medicaments, but concludes that it would have been obvious to one skilled in the art to test various speeds and arrive at an appropriate discharge speed such as an increased speed. Ans. 4. Appeal 2010-009492 Application 11/337,681 4 Appellants argue that neither Boyer nor Tamaoki discloses a speed being increased for round or small medicaments. Br. 11. Claim 1 recites a control means changing the discharge speed depending on a size and/or a shape of the medicine in the tablet case, and increasing the discharge speed in a case where the medicine in the tablet case has a small size, smaller than a predetermined reference value, and/or a round shape. The control means changing the discharge speed “depending on a size and/or a shape of the medicine in the tablet case” is an alternative limitation and is construed to mean that the control means changes the discharge speed based on one or more of (or at least one of) a size of the medicine, a shape of the medicine, and a size and shape of the medicine. The control means increasing the discharge speed when “the medicine in the tablet case has a small size, smaller than a predetermined reference value, and/or a round shape” also creates a limitation of alternatives and is construed to mean that the control means increases the discharge speed when the medicine is one or more of (or at least one of) smaller than a predetermined reference value; round; or smaller than a predetermined reference value and round. Further, the limitations at issue are functional. Functional recitations limit the structure defined by an apparatus claim. That is, the structure must be capable of performing the recited function in order to satisfy the functional limitation. However, where there is reason to conclude that the structure of the prior art is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appeal 2010-009492 Application 11/337,681 5 We agree with the Examiner that both Boyer and Tamaoki provide disclosure providing the Examiner with a reason to believe that the structure of each of Boyer and Tamaoki is inherently capable of performing the claimed functions of (1) changing the discharge speed based on one or more of a size of the medicine, a shape of the medicine, and a size and shape of the medicine, and (2) increasing the discharge speed when the medicine is one or more of smaller that a predetermined reference value; round; or smaller than a predetermined reference value and round. Appellants offer no evidence to rebut the Examiner’s belief. Boyer specifically states that its device is able to “count accurately at a speed commensurate with a high-throughput pharmacy fulfillment system” (col.1, ll. 51-53), and that its software “rotates the tube at different speeds to effect an optimal flow for specifically-sized and -shaped pills” (col. 5, ll. 14- 16). Boyer therefore discloses a device that runs at an optimal speed for medications of various sizes and shapes, the optimal speed being defined by a high speed that does not compromise accuracy of the pill count. Likewise, Tamaoki discloses an object of the application being “to speed up the dispensing of medications from a tablet case” while preventing an overrun given that “the sizes and shapes of medications are not the same.” Col. 1, ll. 36-51. Tamaoki therefore discloses a device that runs as fast as possible for medicine of various sizes and shapes, without compromising an accuracy of the pill count (i.e., an overrun). Appellants argue, with respect to Boyer, that there is no guarantee that one medicine will be supplied by one rotation of tube (5), and that a plurality of medicines will fall down at once (or in a short time), which would be more of a problem when the medicine is small-sized and round-shaped. Br. Appeal 2010-009492 Application 11/337,681 6 12. Appellants also argue: It would appear that the helix (6) and tube (5) would have to be designed specifically for use in a case where small or round medicines were being dispensed rather than other medicaments, in order for any dispensing of a single unit of medicament, requiring reconstruction of the Boyer et al. device dependent upon the type of medicine that is to be dispensed. Id. Appellants offer no evidence, in the form of declarations or otherwise, to support these attorney arguments regarding the technical limits of Boyer’s apparatus. The Examiner finds that the abstract of Boyer states that the invention is capable of dispensing “pills of all shapes and sizes,” and states that it would have been obvious to one skilled in the art to determine the optimal speed for feeding pills, which would include increasing the speed for small and or round pills. Ans. 4. Appellants argue, with respect to Tamaoki, that the shape of drum (13) and portion (13a) of Tamaoki will treat only pills or tablets (not capsules). Br. 12. The Examiner concludes that the claims do not recite dispensing capsules, and that there is no reason that Tamaoki's drum could not be used to dispense all three types of medications. Ans. 5. With respect to Appellants’ argument that “testing [for optimal speed] should not be required by one skilled in the art and the need for any such testing would be evidence of unobviousness” (Br. 14), the Examiner finds that both Boyer and Tamaoki disclose feed rates designated for different medicines being dispensed, and that the appropriate or optimal feed rate would need to be determined by testing, implying that the requirement for Appeal 2010-009492 Application 11/337,681 7 such testing does not render optimization for a particular pill size non- obvious. Ans. 5. We are not persuaded by Appellants’ arguments that certain technical limits on the operation of Boyer and Tamaoki render the references incapable of performing the recited functions. The claimed function does not patentably distinguish the claimed structure from the prior art structure. We sustain the rejection of claim 1 under § 102(b) as being anticipated by, or, in the alternative, under § 103(a) as being unpatentable over, Boyer. We also sustain the rejection of claim 1 under § 102(b) as being anticipated by, or, in the alternative, under § 103(a) as being unpatentable over, Tamaoki. Appellants do not advance any argument suggesting that claim 4 might be patentable over Boyer or Tamaoki if claim 1 is unpatentable over Boyer or Tamaoki. We therefore sustain the rejections of claim 4 under § 102(b) as being anticipated by, or, in the alternative, under § 103(a) as being unpatentable over, Boyer and Tamaoki. DECISION We AFFIRM the Examiner’s rejection of claims 1 and 4 under § 102(b) as being anticipated by, or, in the alternative, under § 103(a) as being unpatentable over, Boyer. We AFFIRM the Examiner’s rejection of claims 1 and 4 under § 102(b) as being anticipated by, or, in the alternative, under § 103(a) as being unpatentable over, Tamaoki. AFFIRMED mls