Ex Parte Lunak et al

Patent Trial and Appeal BoardDec 6, 2012

11423060 (P.T.A.B. Dec. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RICHARD LUNAK, PAYAL LAL, GREGORY HART, and MANOJ WANGU ____________________ Appeal 2010-010800 Application 11/423,060 Technology Center 3600 ____________________ Before: LINDA E. HORNER, PATRICK R. SCANLON, and SCOTT E. KAMHOLZ, Administrative Patent Judges. Opinion for the Board by KAMHOLZ, Administrative Patent Judge. Opinion concurring by SCANLON, Administrative Patent Judge. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010800 Application 11/423,060 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the decision of the Examiner to reject claims 13-17 under 35 U.S.C. § 103(a) as being unpatentable over Holmes (US 6,640,159 B2; iss. Oct. 28, 2003) and Peroni (US 6,499,270 B2; iss. Dec. 31, 2002). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. THE CLAIMED SUBJECT MATTER The claimed subject matter is directed to methods of inserting an envelope in a patient specific location in a dispensing device. Claims 13 and 15, reproduced below, are illustrative of the claimed subject matter: 13. A method, comprising: filling an envelope with items in a centralized storage location; delivering said envelope to a dispensing device at a decentralized location; inserting said envelope into a lock-lidded, patient specific location in said dispensing device; and scanning a bar code on said envelope at the decentralized storage location to identify a patient specific location for said envelope and for updating the dispensing device's records. 15. A method, comprising: filling an envelope with items in a centralized storage location; delivering said envelope to a dispensing device at a decentralized location; and inserting said envelope into a lock-lidded, patient specific location in said dispensing device, Appeal 2010-010800 Application 11/423,060 3 wherein inserting said envelope into a lock- lidded, patient specific location includes placing a tote containing patient specific envelopes into the dispensing device, wherein said tote contains a chip having information about the contents of said tote, wherein said chip is on-board said tote, and wherein said method additionally comprises dispensing from said tote and modifying the information in said chip in response to said dispensing. ANALYSIS The Examiner found that Holmes discloses all elements of the claims except the use of a “patient specific location” in the dispensing device. Ans. 3-4. The Examiner cited Peroni for this limitation and concluded that it would have been obvious to modify Holmes to use a patient specific location for the purpose of sending packages to a particular patient. Id. at 4. Appellants present separate arguments for claim 13 and 15. Appellants also present arguments attacking the combination of Holmes and Peroni. We address each argument in turn. 1. Claims 13 and 14 Appellants argue claims 13 and 14 as a group; we select claim 13 as representative. Appellants argue: Holmes… does not teach or suggest scanning a barcode on an envelope at a decentralized storage location to identify a patient specific location for the envelope and for updating the dispensing device's records, but rather, the bar code referred to by… Holmes… merely identifies which liner was placed into a cabinet. App. Br. 5. Appeal 2010-010800 Application 11/423,060 4 Appellants’ argument does not apprise us of error in the rejection, principally because it is non-responsive to the rejection as articulated by the Examiner. Appellants attack Holmes individually rather than attack the combination. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Contrary to Appellants’ assertion on page 5 of the Appeal Brief, the Examiner did not find that Holmes discloses “scanning a bar code on said envelope at the decentralized storage location to identify a patient specific location for said envelope and for updating the dispensing device's records” as recited in claim 1; rather, the Examiner acknowledged that Holmes does not disclose the claimed “patient specific location” and relied instead on combination with Peroni to meet the limitation. Ans. 4. Appellants’ argument that “Peroni… also does not teach this element” (App. Br. 5) similarly does not address the combination. Appellants’ argument in the Reply Brief again addresses Holmes individually. See Reply Br. 2-3. Such arguments do not respond to the thrust of the rejection and so do not identify error in it. 2. Claims 15-17 The Examiner cited Holmes column 12, lines 31-33 as disclosing “modifying the information in said chip in response to said dispensing.” Ans. 4. Appellants argue that Holmes (like Peroni) does not disclose this limitation. App. Br. 6. In response, the Examiner takes the position that “[t]he claims simply recite scanning a bar code to identify a location and updating the records.” Ans. 5 (emphasis added). Appeal 2010-010800 Application 11/423,060 5 We cannot sustain the rejection on this record. While Holmes indeed discloses reading information from an identification device on a bin (col. 12, ll. 28-29), that the identification device may be a “smart… chip” (l. 31), and that records associated with the identification device are updated in response to dispensing (ll. 53-55), Holmes states that the information is “updated within the processor” (l. 54, emphasis added), not “in said chip” as required by claim 15. The Examiner’s finding that Holmes discloses modifying information “in said chip” is therefore incorrect. The Examiner’s characterization of this limitation as simply “updating the records” ignores the distinction between updating records in a smart chip and updating records in a processor. We cannot sustain the rejection as articulated. We reverse the rejection of claim 15 and of its dependent claims 16 and 17. 3. Combination of Holmes and Peroni Appellants argue that the Examiner’s combination of Holmes and Peroni would result in “each drawer [being] a patient-specific drawer,” thereby “[wasting] a great deal of space… because not all patients would require full drawers of medications.” App. Br. 7. This result, Appellants argue, is “in direct contradiction” to Holmes’s stated purpose, and “would render it unsatisfactory for its intended purpose and would change its principle of operation.” Id. at 7-8 (citing Holmes, col. 1, lines 52-54). In response, the Examiner notes that “simply making the drawers patient specific would not at all preclude… Holmes… from being able to utilize storage space so that a large number of items can be stored in it.” Ans. 5. Appellants reply by repeating their argument. Reply Br. 3. Appellants’ argument does not apprise us of error in the rejection. The cited passage in Holmes merely indicates that it would be “desirable to Appeal 2010-010800 Application 11/423,060 6 efficiently utilize the space of each drawer so that a maximum number of items could be held within the cabinet.” It does not indicate the manner in which this efficiency is achieved. As the Examiner indicates, Holmes may still achieve the “desir[ed]” efficiency in other ways, such as by appropriately sizing the drawers. A preponderance of the evidence of record therefore does not support Appellants’ contention that Holmes would be rendered unsatisfactory for its intended purpose, and its principle of operation changed, if modified as proposed by the Examiner. DECISION For the above reasons, the Examiner’s decision to reject claims 13 and 14 is AFFIRMED, and the Examiner’s decision to reject claims 15-17 is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Klh Appeal 2010-010800 Application 11/423,060 1 SCANLON, Administrative Patent Judge, concurring: I concur in the panel’s decision, but write separately because my reasons for sustaining the Examiner’s rejection of claim 13 differs from those of the majority. In asserting that neither Holmes nor Peroni, alone or in combination, teaches or suggests all of the elements of independent claim 13, Appellants assert that Holmes “teaches using a bar code on a liner to determine into which drawer a particular liner has already been placed” while claim 13 “recites scanning a bar code on an envelope to determine where an envelope belongs (i.e., into which particular lock-lidded, patient specific location the envelope belongs).” App. Br. 5. Appellants then state: This is a significant difference as Appellants’ claimed invention indicates a particular patient specific location into which the envelope is to be placed, whereas the Holmes reference merely recognizes the drawer location of the liner after it has been placed into the cabinet. Appellants note that the Peroni reference also does not teach this element, and the Final Office Action does not cite the Peroni reference for this purpose. Id. To the extent Appellants are arguing that Peroni does not teach “a particular patient specific location into which the envelope is to be placed,” I find such an argument unconvincing. The Examiner finds that Peroni discloses inserting medicine into a patient specific location. Ans. 4. I agree with the Examiner’s finding. The Abstract and column 15, lines 8-11 of Peroni disclose placing packages into a “patient specific drawer.” Accordingly, I agree with the majority to sustain the Examiner’s rejection of claim 13, and of claim 14 which depends therefrom and for which Appellants have not advanced any separate argument.