Ex Parte Vessa

Patent Trial and Appeal Board

Apr 11, 2013

11423487 (P.T.A.B. Apr. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MATTHEW VESSA
__________

Appeal 2011-006718
Application 11/423,487
Technology Center 3700
__________

Before LORA GREEN, ULRIKE W. JENKS, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
medication control system. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

App
App

secu
Figu
Figu
120”
follo
(Id.)
eal 2011-0
lication 11
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rely dispen
re 3A of th
re 3A “is a
(id. at 8, ¶
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impart to
.
06718
/423,487
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mech
130
are d
eal 2011-0
lication 11
Figures
Figure 4
anical int
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escribed i
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The stem
06718
/423,487
4B of the S
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eraction of
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n the follo
surface 1
nds to the
p surface
sposed acr
tions, size
s, sizes an
e pattern o
sions 126
ainst the t
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ach into t
124 has
pecificati
s-sectiona
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oss the to
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rpt from th
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sponds to
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of the p
ons 136 c
plane 122
132 of th
aximally
l space 13
at is just
duced bel
“locking
0 with the
]). The fe
e Specific
cap 130
he key 12
the positi
132 are de
hich corr
rotrusions
orrespond
of the ke
e locking
extend thr
1 of the lo
long enou
ow.
cap 130, a
example l
atures of F
ation:
is flat,
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on of the
pressions
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s to the pa
y 120 ma
cap 130.
ough the
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and
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As a
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ge a

Appeal 2011-006718
Application 11/423,487

4
slot 138 within the internal space 131 of the locking cap 130. ...
When the handle 121 is then turned, torque imparted to the
stem 124 is further imparted to the slot 138 through the at least
one face 125 of the stem 124.
(Id.) (Emphasis added).
Claims 1-3, 5-12 and 27 are on appeal. Independent claims 1 and 27
are representative and read as follows (emphasis added):
1. A medication control system comprising:
a plurality of unique keys, each key having a stem and a
plurality of protrusions, each key being associable with a
patient; and
a plurality of locking caps configured to be locked to
medication containers to restrict access to medication contained
therein, each locking cap having an inner cap adapted to lock
onto the medication container and an outer cap surrounding and
rotatable about the inner cap, the outer cap having a plurality of
depressions corresponding to at least one of the keys and a hole
so that when the plurality of protrusions is inserted into the
plurality of depressions the stem can contact the inner cap to
unlock the locking cap.

27. A medication control system for controlling distribution of
medication in a medical facility comprising:
a plurality of unique keys, each key associable with a
patient by a unique identifier;
a plurality of template caps and a cap encoder which
accepts a template cap and one of the unique identifiers and
encodes the template cap to create a locking cap that is capable
of being unlocked by the unique key associated with the unique
identifier and each locking cap being configured to be locked to
medication containers to restrict access to medication contained
therein and each locking cap adapted to be unlocked by at least
one of the keys; and
a master key capable of unlocking every locking cap,
wherein the system permits a patient to use a unique key or
Appeal 2011-006718
Application 11/423,487

5
medical staff using the master key or the unique key to unlock
the medication container.

The claims stand rejected as follows:
I. Claims 1-3 and 5 under 35 U.S.C. § 103(a) over the combination
of Coote1 and Belden.2
II. Claims 6, 9 and 10 under 35 U.S.C. § 103(a) over the combination
of Coote, Belden, and Michael.3
III. Claims 7 and 8 under 35 U.S.C. § 103(a) over the combination of
Coote, Belden, Michael, and Machinist.4
IV. Claims 11 and 12 under 35 U.S.C. § 103(a) over the combination
of Coote, Belden, Michael, and Foster.5
V. Claim 27 under 35 U.S.C. § 103(a) over the combination of Coote
and Michael.
I.
Issue
The Examiner rejected claims 1-3 and 5 under 35 U.S.C. § 103(a)
over the combination of Coote and Belden. The Examiner finds that Coote
teaches the medication control system of the claims except that Coote “does
not disclose the outer cap having a plurality of depressions corresponding to
at least one of the keys” (Ans. 4) (emphasis omitted). However, the
Examiner finds that “[i]t would have been obvious to one of ordinary skill in

1 Coote, US 4,775,061, issued Oct. 4, 1988.
2 Belden, Jr., US 6,912,878 B2, issued July 5, 2005.
3 Michael et al., US 6,604,643 B1, issued Aug. 12, 2003.
4 Machinist, US 2,220,937, issued Feb. 18, 1039.
5 Foster, US 5,000,019, issued Mar. 19, 1991.
Appeal 2011-006718
Application 11/423,487

6
the art at the time the invention was made to modify the device of Coote to
include the outer cap having a plurality of depressions corresponding to at
least one of the keys, as taught and suggested by Belden, Jr., for the purpose
of further securing the medication container” (id.).
Appellants contend that “even if one of skill in the art had sought to
add the alignment tabs and keyholes of Belden to the cap system in Coote,
the resulting cap and key would not function the same way as the claimed
medication control system” (App. Br. 16). “Claim[s] 1-3 and 5 recite that
when the plurality of protrusions on the key is inserted into the plurality of
depressions the stem of the key can contact the inner cap to unlock the
locking cap” (id.). In contrast, “adding depressions onto the outer ring of
Coote to match protrusions on a key would do nothing to increase the
security of the disclosed safety cap since ... inner portion 14 and outer ring
15 of the cap are the same height” (id. at 16-17).
The issue presented is:
Does the evidence of record support the Examiner’s finding that the
combination of references discloses each element of the claims?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. Coote discloses “[a] screw top closure is provided with a freely
rotating ring surrounding its periphery thus preventing the user from rotating
the closure by gripping the periphery” (Coote, Abstract).
FF2. Figure 1 of Coote is reproduced below.
App
App

“FIG
secti
whic
shou
desig
freel
enga
eal 2011-0
lication 11
. 1 is the
on” (id. at
FF3. “A
h engages
lder of wh
nated 14 w
y rotates o
gement w
FF4. Fi
06718
/423,487
upper port
col. 1, ll. 4
s shown i
the extern
ich has be
hich bear
n the inne
ith the inne
gure 2 of B
ion of a co
6-48).
n FIG. 1,
al threads
en illustrat
s threads
r portion 1
r portion
elden is r
7
ntainer wi
the cap 10
12 of a co
ed. The in
11 is surro
4 but is pr
14.” (Id. at
eproduced

th a cap in
has an int
ntainer 13
ner portio
unded by
evented fr
col. 1, l. 6
below.
place, par
ernal threa
, only the
n of cap 10
a ring 15 w
om escapi
5 to col. 2
tially in
d 11
neck and

hich
ng by its
, l. 3.)

App
App

secu
whic
not a
prop
unlo
bottl
and f
eal 2011-0
lication 11
Figure 2
rity device
FF5. “C
h extend d
ll the way
erly align
ck the mec
FF6. “L
e 318. Key
it into key
06718
/423,487
shows a d
according
ap memb
ownwardl
through c
a magnet i
hanism of
ocking de
317 may
holes 424
etailed vie
to Beldon
er 313 def
y from up
ap membe
n magneti
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vice 310 m
have align
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8
w of the c
.
ines a pair
per surface
r 313. Key
c key 317
evice 310
ay then b
ment tabs
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omponent
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406 of ca
holes 424
with the lo
.” (Beldon
e reused o
(not show
to align th

s of the bo
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p member
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col. 7, ll.
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ttle
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313, but
ured to
hanism to
10-16.)
suitable
gn with
in key 317

Appeal 2011-006718
Application 11/423,487

9
with the locking mechanism, thus facilitating the unlocking and removal of
device 310 from bottle 318.” (Id. at col. 9, ll. 46-51.)

Principles of Law
When determining whether a claim is obvious, an examiner must
make “a searching comparison of the claimed invention — including all its
limitations — with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995). As the Supreme Court pointed out in KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), “a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” Rather, the Court
stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does … because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. at 418-419 (emphasis added); see also id. at 418 (requiring a
determination of “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue”) (emphasis
added). Similarly, as our reviewing court has stated, “obviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
Appeal 2011-006718
Application 11/423,487

10
Analysis
We agree with Appellants that the cited references do not support a
prima facie case of obviousness. The Examiner has not adequately
explained how the references would have suggested locking caps configured
with a plurality of depressions such that when a key having a plurality of
protrusions is matched to the plurality of depressions, the key stem contacts
the inner cap to permit the unlocking of the locking cap.
Conclusion of Law
We conclude that the preponderance of the evidence of record does
not support the Examiner’s conclusion that the cited prior art discloses a
system having all limitations of independent claim 1 and dependent claims
thereto (claims 2-3 and 5). We thus, reverse the rejections under 35 U.S.C.
§ 103(a) that rely on the teachings of Coote and Belden.
II. – IV.
Claims 6-12 are rejected under a series of rejections under 35 U.S.C.
§ 103(a) that rely on the combined teachings of Coote and Belden. Having
reversed the rejection of claim 1 over the combination of Coote and Belden,
we necessarily reverse the obviousness rejections further relying upon
Machinist, Michael, and/or Foster because none of Machinist, Michael, or
Foster cures the deficiencies of Coote and Belden, discussed above.
V.
Issue
The Examiner rejected claim 27 under 35 U.S.C. § 103(a) over the
combination of Coote and Michael. The Examiner finds that Coote teaches
the medication control system of claim 27 expect that Coote “does not
Appeal 2011-006718
Application 11/423,487

11
disclose a master key capable of unlocking every locking cap.” (Ans. 8).
However, the Examiner finds that Michael discloses “a bottle security device
wherein a master key (‘common key’) is capable of unlocking every locking
cap” and that “[i]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to modify Coote’s medication system to
include a master key capable of unlocking every locking cap, as taught and
suggested by Michael et al., for the purpose of allowing access to the
medication system if the designated key is not available” (id. at 8-9).
The issue presented is:
Does the evidence of record support the Examiner’s findings that the
cited prior art renders obvious a medication control system having a master
key as recited in claim 27?
Additional Findings of Fact
FF7. Michael discloses a bottle security device, or electronic article
surveillance (EAS) tag, designed to “fit a variety of differently sized bottles
while being openable with a common key” (Michael col. 1, l. 65, to col. 2, l.
1).
FF8. Michael discloses that an EAS tag “may be utilized to prevent
the unauthorized opening of a typical wine or liquor bottle” (id. col. 1, ll. 64-
65).
Principles of Law
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
Appeal 2011-006718
Application 11/423,487

12
subject matter pertains.”’ KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
“Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004).
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992).
Analysis
Appellants contend that the master key of Michael “is used to unlock
bottle security devices securing an electronic article surveillance (EAS) tag
to a liquor bottle to deter, stop and/or catch shoplifters” and thus “one of
skill in the art would not have looked to EAS art to modify a safety bottle
cap, such as disclosed in Coote” (App. Br. 26). We are not persuaded.
Michael expressly discloses that an EAS tag “may be utilized to prevent the
unauthorized opening of a ... bottle” (FF8). As such, we find the device of
Michael to be reasonably pertinent to the problem of preventing
unauthorized opening of a bottle, the particular problem with which
Appellant is concerned (see, e.g., Specification 1).
Appeal 2011-006718
Application 11/423,487

13
Appellants further contend that “there would be no logical reason to
include a master key, such as disclosed in Michael, with the safety bottle cap
in Coote, since there would be no need for the seller of the hazardous
material with the safety bottle cap to ever gain access to the contents” (id.).
We are not persuaded. As stated by the Examiner, a person of ordinary skill
in the art would have sought to modify the system of Coote with a master
key such as “allowing access to the medication system if the designated key
is not available” (Ans. 9), for example, when “the specific key designated
for that specific lock was lost or malfunctioning” (id. at 11). Appellants’
arguments fail to adequately rebut this finding of the Examiner.
Conclusion of Law
The evidence of record supports the Examiner’s findings that the cited
prior art renders obvious a medication control system having a master key as
recited in claim 27.
SUMMARY
We reverse the rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a)
over the combination of Coote and Belden.
We reverse the rejection of claims 6, 9 and 10 under 35 U.S.C.
§ 103(a) over the combination of Coote, Belden, and Michael.
We reverse the rejection of claims 7 and 8 under 35 U.S.C. § 103(a)
over the combination of Coote, Belden, Michael, and Machinist.
We reverse the rejection of claims 11 and 12 under 35 U.S.C. § 103(a)
over the combination of Coote, Belden, Michael, and Foster.
We affirm the rejection of claims 27 under 35 U.S.C. § 103(a) over
the combination of Coote and Michael.
Appeal 2011-006718
Application 11/423,487

14

AFFIRMED-IN-PART

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