Ex Parte VessaDownload PDFPatent Trial and Appeal BoardApr 11, 201311423487 (P.T.A.B. Apr. 11, 2013) Copy Citation 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 Appellan rely dispen re 3A of th re 3A “is a (id. at 8, ¶ wing exce The stem torque to of the st star-shap Surroun plane 12 protrusio radial di respectiv of the p protrusio 126 is p key 120 impart to . 06718 /423,487 ST t’s invent sing medi e Specific perspecti [0032]). rpt from th 124 has a counter em 124 m ed, etc., ding the s 2 are a p ns 126 m stance of e diamete rotrusion ns 126 ar referably u has a han rque to th ATEMEN ion relates cation to a ation is re ve view of The featu e Specific at least o -part slot ay be, fo with re tem 124 lurality o ay vary am each protr rs of each s 126, an ound the s nique am dle 121 t e stem 124 2 T OF TH to medica patient (S produced b an examp res of Figu ation: ne face 1 in a lock. T r example spect to and also e f protrusio ong differ usion 126 protrusion d the ang tem 124. T ong each o hat is use . E CASE tion delive pecificatio elow. le first em re 3A are 25 so tha he cross- , hexagon the bas xtending ns 126. T ent keys 1 from the 126, the r ular distr he pattern f the diffe d to turn ry system n 1, ¶ [00 bodiment described t it can im sectional s al, rectang e plane from the he numb 20, as ma stem 124 elative len ibution of of protru rent keys the key 12 s for 01]). patient ke in the part hape ular, 122. base er of y the , the gths the sions . The 0 to y App App mech 130 are d eal 2011-0 lication 11 Figures Figure 4 anical int to unlock a escribed i A top correspo in the to 124. Di the posi position when th of protru flush ag result, th 134 to re The stem 06718 /423,487 4B of the S B is a cros eraction of container 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 e stem 1 ach into t 124 has pecificati s-sectiona the exam 90” (id.at wing exce 32 of th base plan 132 corre oss the to s and de d lengths f depressi , the base op surface 24 may m he interna a length th 3 on is repro l view of a ple key 12 9, ¶ [0033 rpt from th e locking e 122 of t sponds to p surface pths of w 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, 0. A hole on of the pressions espond to 126. H s to the pa y 120 ma cap 130. ough the cking cap gh to enga nd the ocking cap igure 4B and 134 stem 136, the ence, ttern y lay As a hole 130. 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 security d vice 310 m have align in cap me 8 w of the c . ines a pair per surface r 313. Key c key 317 evice 310 ay then b ment tabs mber 313 omponent of keyhol 406 of ca holes 424 with the lo .” (Beldon e reused o (not show to align th s of the bo es 424 (FI p member are config cking mec col. 7, ll. n another n) that ali e magnets ttle G. 2) 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 lp Copy with citationCopy as parenthetical citation