Poirier, Fr¿d¿ric et al.

Patent Trials and Appeals Board

Oct 5, 2020

13582878 - (D) (P.T.A.B. Oct. 5, 2020)

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.
13/582,878 04/15/2013 Frédéric Poirier 55471725-1US PTN/fb 2718
20988 7590 10/05/2020
NORTON ROSE FULBRIGHT CANADA LLP
1, PLACE VILLE MARIE
SUITE 2500
MONTREAL, QUEBEC H3B 1R1
CANADA
EXAMINER
KWON, YONG JOON
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
10/05/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
NRFCUSPTOMAIL@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FRÉDÉRIC POIRIER and ALAIN GOULET
____________________

Appeal 2019-003779
Application 13/582,878
Technology Center 2400
____________________

Before JAMES R. HUGHES, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
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Application 13/582,878

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–16 and 18, 19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Final Office Action (“Final Act.,” mailed February 27, 2018),
the Appeal Brief (“Appeal Br.,” filed September 11, 2019), the Examiner’s
Answer (“Ans.,” mailed February 11, 2019) and Appellant’s Reply Brief
(“Reply Br.,” filed April 11, 2019). We have considered in this decision
only those arguments Appellant actually raised in the Briefs. Any other
arguments which Appellant could have made, but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Exemplary Claim
An understanding of the invention can be derived from a reading of
illustrative claim 1, which is reproduced below. Claim 11 recites similar
subject matter.
1. A system for verifying medication doses in a filled
medication package having a plurality of compartments, the
plurality of compartments arranged in the filled medication
package to define a plurality of rows, with each said row
comprising a plurality of compartments to form a grid of
compartments, each compartment in the grid being assigned a
time period and a dose of medication consisting of a plurality of
pills in accordance with a prescription, the system comprising:
an imaging unit to produce at least one image of the filled
medication package;

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, RVX, Inc. is the real party in
interest. Appeal Br. 2.
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Application 13/582,878

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a verification unit communicating with the imaging unit to
receive therefrom the at least one image of the filled medication
package, the verification unit having a verification processor
having stored thereon applications executable by the
verification processor, the applications comprising:
a dose locator to determine from the at least one image a
location of any compartment of the filled medication package in
the grid, and to associate with the location in the grid an image
of the pills in said compartment and a time period based on the
location in the grid; and
a dose verifier to determine an identity of each pill in said
compartment using visual characteristics of the at least one
image of the pills, the identity of said pills being determined by
comparing the image of said pills to a database of visual
characteristics of known pill reference profiles, the verification
processor comparing the identity and time period of said pill of
said compartment to the prescription; and an interface for
producing verification output based on the comparison of the
verification unit.
Rejections2
Claims 1–16 and 18, 19 are rejected under 35 U.S.C. §112(a) or 35
U.S.C. §112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
Claims 1–11, 13–16, and 18, 19 are rejected under pre-AIA 35 U.S.C.
103(a) as being unpatentable over Bear et al. (US 8,583,281 B2, issued
November 12, 2013) in view of Alouani et al. (US 7,028,723 B1, issued
April 18, 2006).

2 The rejection of claims 1–16 and 18–19 under 35 U.S.C. § 101 has been
withdrawn by the Examiner. Ans. 3. Also, our reference to page numbers is
based upon the cover page of the Answer being page 1, as the Answer does
not contain any page numbers.
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Application 13/582,878

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Claim 12 is rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Bear in view of Alouani and further in view of Kumar
(US 5,963,664, issued October 5, 1999).
ANALYSIS
We have only considered those arguments that Appellant actually
raised in the Briefs.3
35 U.S.C. § 112(a) – Written Description
Claim 1 recites, in pertinent part, “a dose locator to determine from
the at least one image a location of any compartment of the filled
medication package in the grid.” Appeal Br. 12 (Claims Appendix)
(emphasis added).
The Examiner finds that determining a position of a compartment
based on the image is not described in the Specification of the current
application. Ans. 3.
We disagree. “[T]he description requirement does not demand any
particular form of disclosure, or that the specification recite the claimed
invention in haec verba.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1352 (Fed. Cir. 2010) (en banc) (citation omitted). Rather, “the test
for sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad,
598 F.3d at 1351.

3 Claims 2–10, 12–16 and 18, 19 are not argued separately from claims 1 and
11 in either Appellant’s briefs (Appeal Br. 7–11; Reply Br. 2–6), and will
not be separately addressed.
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Application 13/582,878

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Appellant contends:
In arguing the rejection, Examiner has focused on parts of the
specification that teach alternative embodiments and alternative
ways of determining "a location of any compartment" as claimed,
and has ignored the parts of the specification that teach that in at
least one embodiment a single image of a filled package may be
sufficient:

[0034] ... In an embodiment, the imaging unit 11
comprises a camera 11A positioned above the filled
package A to take a plan view of the filled package.
As the medication packages such as medication
trays and blister cards may have compartments that
are relatively large, a plan view may be sufficient to
show all tablets and pills for subsequent
identification. The camera produces an image of the
tablets . ...

[0035]… According to an embodiment, at least one
image of each compartment of the filled package A
is obtained, with coordinates of the camera 11A
being tagged with the image by the monitoring of
the actuators 11 B. It may also be considered to take
multiple images of each single compartment, to
obtain different focusing and ensure that the doses
will ultimately be identified.

Reply Br. 2–3 (citing to Spec. ¶¶ 34, 35).
We agree with the Appellant that Paragraphs 34 and 35 of the
Specification show determining a position of a compartment based on the
image. Id. Because we find Paragraphs 34 and 35 in the Specification
provides sufficient written description support to show possession of the
claimed subject matter, we determine the Examiner’s analysis fails to
demonstrate that claims 1–16, and 18–19 lack written description support.
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Thus, we do not sustain the Examiner’s rejection of claims 1–16, and 18–19
under 35 U.S.C. § 112 (a).
35 U.S.C. § 103 – Obviousness
We have reviewed the Examiner’s obviousness rejections of claims 1–
16, and 18, 19 in light of Appellant’s contentions that the Examiner has
erred.
Further, we have reviewed the Examiner’s response to Appellant’s
arguments. The Examiner has provided a comprehensive response to each
argument presented by the Appellant on pages 2 through 9 of the Answer.
We have reviewed this response and concur with the Examiner’s findings
and conclusions. We adopt as our own (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner’s Final Action and
Answer in response to Appellant’s Appeal Brief. Final Act. 12–19; Ans. 7–
9. We have considered Appellant’s Reply Brief, but find it unpersuasive to
rebut the Examiner’s responses. We highlight and address specific findings
and arguments for emphasis as follows.
Claim 1 recites, in pertinent part, “a dose locator to determine from
the at least one image a location of any compartment of the filled medication
package in the grid, and to associate with the location in the grid an image
of the pills in said compartment and a time period based on the location in
the grid,” (hereinafter location/time period limitation) and “the identity of
said pills being determined by comparing the image of said pills to a
database of visual characteristics of known pill reference profiles…
comparing the identity and time period of said pill of said compartment to
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the prescription;” (hereinafter image comparing limitation) (Appeal Br. 12
(Claims Appendix)).
Based on Appellant’s arguments in the briefs (Appeal Br. 9–11; Reply
Br. 3–6), the principal and dispositive issue of whether the Examiner erred
in rejecting claim 1 (and claim 11) turns on whether the combination of Bear
and Alouani teaches the above disputed location/time period and image
comparing limitations.
In particular, Appellant contends “Bear does not discuss at any point
associating a time period to a compartment.” Appeal Br. 9.
We disagree with Appellant.
The Examiner determines:
Bear also associates an intake period with the compartment
because the intake period that is on the compartment is
analyzed by the image device and the acquired image is
compared to the user's profile medication dosage schedule to
determine user's compliance in taking medication (Col.13 lines
13-22).

Ans. 8.

In particular, Bear discloses:

In one embodiment, the images captured by the
PillStation dispenser originally are stored in local memory and
then transmitted to the central monitoring station. At the central
monitoring station, image recognition software (e.g., OCR and
other software) may be utilized to determine the type/number of
pills left. Each PillStation dispenser preferably has a unique
ID number and a password, allowing the PillStation dispenser
to be linked automatically to the correct user profile and
medication dosage schedule. The data analyzed by the image
recognition software then may be compared to the user's profile
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medication dosage schedule to determine the user's compliance
in taking medication.

Bear, col. 13, ll. 11–22. (emphasis added).

In other words, Bear’s teaching of linking the PillStation dispenser to
a medication dosage schedule meets the location/time period limitation.
Appellant also contends “Bear does not describe verifying the images
against a prescription.” App. Br. 11.
The Examiner determines, and we agree that Bear teaches the images
comparing limitation:
Bear discloses an image recognition software analyzing the type
and number of pills left in a compartment and compares the
analyzed imaged to the user's profile medication dosage
schedule to determine user's compliance in taking medication
(Col.13 lines 13-22), wherein the user profiles include details of
user's medication information including dosage schedule (Col.
10 lines 38-39). Therefore, Bear discloses comparing the type
of imaged pill with the intake period displayed on the
compartment with the prescription within the user’s profile.

Ans. 9.
We also agree with the Examiner that:
Alouani teaches the identity of said pills being determined by
comparing the image of said pills to a database of visual characteristics
of known pill reference profiles (Col.3 lines 30-35 determine a level of
accuracy of the filled prescription based on the actual image
information relative to corresponding expected image information,
wherein the image information contains direction 66).

Final Act. 14.
For the reasons set forth above, we agree with the Examiner that the
combination of Bear and Alouani would have taught or suggested all of the
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Application 13/582,878

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contested limitations of representative claim 1 to one of ordinary skill in the
art.

DECISION
The Examiner’s decision to reject claims 1–16, and 18, 19 under
35 U.S.C. §112, first paragraph for lack of written description is reversed.
The Examiner’s obviousness rejections of claims 1–16, and 18, 19 are
affirmed.
CONCLUSION
In summary:

TIME PERIOD FOR RESPONSE
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).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–16, 18,
19
112, first
paragraph
Written
Description
1–16, 18,
19
1–11, 13–
16, 18, 19
103(a) Bear, Alouani 1–11, 13–
16, 18, 19

12 103(a) Bear, Alouani,
Kumar
12
Overall
Outcome
1–16, 18,
19