EUREKAM

Patent Trials and Appeals Board

Nov 26, 2021

2021004042 (P.T.A.B. Nov. 26, 2021)

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.
14/899,208 12/17/2015 Benoît LEFRANC 81810-000084-US-NP 9680
27572 7590 11/26/2021
HARNESS DICKEY (TROY)
5445 Corporate Dr.
Suite 200
Troy, MI 48098
EXAMINER
HUANG, FRANK F
ART UNIT PAPER NUMBER
2485
NOTIFICATION DATE DELIVERY MODE
11/26/2021 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):
sto-ptomail@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENOÎT LEFRANC, LOÏC TAMARELLE, and
GAËL LE BACCON
___________

Appeal 2021-004042
Application 14/899,208
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
JASON J. CHUNG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a non-final
rejection of claims 54 and 64–94, which constitute all the claims pending in
this application. Claims 49–53 and 55–63 were withdrawn. Claims 1–48
were canceled. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b). An Oral Hearing was conducted on November 10, 2021.
We will add a transcript of the Oral Hearing to the record in due course.
We Reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest in this
appeal is EUREKAM. See Appeal Br. 1.
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STATEMENT OF THE CASE 2
Introduction
Embodiments of Appellant’s claimed subject matter relate generally
to “a method for the secure, namely controlled and assisted, production of
drug preparations and to an imaging system adapted to implement such a
method.” Spec. ¶ 1.
Independent Claim 54
54. A device for imaging a plurality of objects such as a bottle and a
syringe, for the secure production of drug preparations, comprising:
(a) at least a pair of imaging devices so positioned as to
face each other;

(b) a reflective element for each one of the imaging
devices, inserted between the imaging device along an axis
defined by both devices and so as to reflect towards the
corresponding imaging device images of a same drug
preparation production zone, with both imaging devices having
a lens with different focal distances making it possible to zoom
on the objects with different sizes in the drug preparation
production zone;
(c) a horizontally elongated mounting block and a rack
horizontally spaced from the block adapted to hold the syringe
in a substantially horizontally elongated orientation
substantially parallel to the axis of the imaging device when
producing a drug preparation;
(d) in real time, a dynamic graphic interface using at least
a video stream to view the syringe in the preparation production

2 We herein refer to the Non-Final Office Action, mailed November 5, 2020
(“Non-Final Act.”); Appeal Brief, filed February 2, 2021 (“Appeal Br.”); the
Examiner’s Answer, mailed April 22, 2021 (“Ans.”); and the Reply Brief
(“Reply Br.”), filed June 14, 2021.

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zone with a display of information relating to a prescription;
and
(e) a computer connected to the imaging devices
operably validating a volume of the drug preparations to assist
with determining compliance between data for the prescription
and data from the production of the drug preparation.

Claims App. 1–2 (disputed claim limitations (a), (b), and (c)
emphasized).

Prior Art Evidence Relied Upon by the Examiner
Name Reference Date
Strong US 4,998,570 Mar. 12, 1991
Williams et al.
(“Williams”) US 5,597,995 Jan. 28, 1997
Kishner US 6,011,876 Jan. 4, 2000
Khan et al. (“Khan”) US 2009/0154764 A1 June 18, 2009

Rejection
Claims Rejected 35 U.S.C. § Reference(s)/Basis
54, 64–94 103 Khan, Kishner, Williams, Strong

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ISSUES AND ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. Throughout this opinion, we give the claim limitations the
broadest reasonable interpretation (BRI) consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

Independent Claim 54
Issues: Under 35 U.S.C. § 103, did the Examiner err by finding that
the combination of Khan, Kishner, Williams, and Strong teaches or suggests
the disputed representative claim 54 limitations (a), (b), and (c):
(a) at least a pair of imaging devices so positioned as to
face each other;

(b) a reflective element for each one of the imaging
devices, inserted between the imaging device along an axis
defined by both devices and so as to reflect towards the
corresponding imaging device images of a same drug
preparation production zone, with both imaging devices having
a lens with different focal distances making it possible to zoom
on the objects with different sizes in the drug preparation
production zone;
(c) a horizontally elongated mounting block and a rack
horizontally spaced from the block adapted to hold the syringe
in a substantially horizontally elongated orientation
substantially parallel to the axis of the imaging device when
producing a drug preparation;

Claim 54 (emphasis added).
Based upon our review of the record, we focus our analysis on the
specific argued structural language of limitation (b) that we find is
dispositive in this appeal: “with both imaging devices having a lens with
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different focal distances making it possible to zoom on the objects with
different sizes in the drug preparation production zone;” Claim 54
(emphasis added).
To support the rejection, the Examiner relies upon Khan’s generic
camera as described at paragraph 167. See Non-Final Act. 9. The Examiner
finds the zoom feature described in Williams teaches or suggest “imaging
devices having a lens with different focal distances,” as recited in claim 54.
Id. (citing Williams at column 8, lines 10–20).
Regarding limitation (b) of claim 54, Appellant contends:
Khan, Kishner, Williams and Strong do not teach the Claim
54(b) feature of “both imaging devices having a lens with
different focal distances making it possible to zoom on the
objects with different sizes in the drug preparation
production zone.” The Examiner’s arguments are vague and
conflicting in this regard: in his response Section 7 at page 7 of
the most recent Office Action, the Examiner cites to Col. 8 lines
10-20 of Williams, but in the rejection itself on pages 8 and 9,
the Examiner cites Khan paragraph 167, as confusingly
modified by the missile tracking optics of Kishner. Regardless,
neither reference (nor Kishner) teaches this Claim 54(b) feature.
Appeal Br. 18 (emphasis added).
The Examiner further explains the basis for the rejection in the
Answer by again citing to Khan’s generic camera (at paragraph 167) and the
“additional well known features” (e.g., zooming) from Williams. See Ans.
23. But our review of Williams reveals that the described zoom feature
(column 8, lines 10–20) has nothing to do with the claimed structure of
“both imaging devices having a lens with different focal distances,” as
recited in claim 54. Instead, we find the portion of Williams relied upon by
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the Examiner in column 8 merely describes electronic zooming of an image
on a display screen:
There is a zoom feature on both of the digitized images 14 and
16 being viewed on monitor screen 308, which enables the
pharmacist to see the necessary details to make an accurate and
proper verification of drug product 230 being dispensed. The
zoom feature on the prescription image 14 may also be used to
investigate possible alterations to the original prescription 12
being filled.
Williams, col. 8, ll. 12–18 (emphasis added).
Nor do we find that the aforementioned deficiency in Williams is
remedied by the generic camera description the Examiner relies upon in
Khan:
Any number of different imaging devices, generally shown at
4000, can be used to obtain the photoimage. For example, a
CCD camera or other type of camera can be used and any other
suitable devices that can take a photoimage of the drug vial 60
as it is being processed in the system and is located at some
location can be used.
Khan ¶ 167 (emphasis added).
We find Khan provides no teaching or suggestion of “imaging devices
having a lens with different focal distances,” as recited in claim 54. We
emphasize that the claim 54 language “with both imaging devices having a
lens with different focal distances” (emphasis added) is structural language,
which we find the Examiner has not shown by a preponderance of the
evidence of record, regardless of whether the references are considered alone
or in combination. Remaining independent claims 75 and 86 (discussed
below) recite similar structural language of commensurate scope.
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To the extent that the Examiner may be alternatively relying upon a
theory of inherency under section 103, our reviewing court has long
“recognized that inherency may supply a missing claim limitation in an
obviousness analysis.” PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals,
Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014). However, the Federal
Circuit cautions that,
[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient. . . . If, however, the disclosure is
sufficient to show that the natural result flowing from the
operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure
should be regarded as sufficient.
In re Oelrich, 666 F.2d at 581 (emphasis added) (citations and
quotation marks omitted). Thus, our early precedent, and that of
our predecessor court, established that the concept of inherency
must be limited when applied to obviousness, and is present only
when the limitation at issue is the “natural result” of the
combination of prior art elements. Id.
PAR Pharm., 773 F.3d at 1195 (quoting In re Oelrich, 666 F.2d 578, 581
(CCPA 1981)) (emphasis added).
Here, we find the evidence cited by the Examiner (Final Act. 9; Ans.
22–23) is insufficient to show that the claimed structural limitations at issue
would be the “natural result” of the cited prior art features, whether
considered alone, or in combination. On this record, the Examiner has not
shown that the generic cameras of Khan (paragraph 167), nor the electronic
zoom feature of Williams at column 8 (nor any other cited reference)
necessarily disclose(s) or otherwise describe(s) the claimed structure: “with
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both imaging devices having a lens with different focal distances.” Claim
54 (emphasis added).
Nor has the Examiner shown on this record that Kishner and Strong
overcome the aforementioned deficiencies of Khan and Williams.
Therefore, based upon our review of the record, we find a preponderance of
the evidence supports Appellant’s contentions:
Khan paragraph 0167 merely states that a CCD or other type of
camera can be used, without any disclosure of focal lengths or
zooming. Some CCD cameras cannot automatically focus such
that this is not necessarily inherent. The Examiner's arguments
about different focal lengths are speculative and improperly
employ hindsight reasoning since there is no suggestion in the
reference to do such. See In re Warner, 379 F.2d 1011, 1017
(C.C.P.A. 1967) (speculation improper).
Furthermore, Williams mentions “a zoom feature on both
of the digitized images 14 and 16 being viewed on monitor
screen 308 . . . .” But a zooming feature on a display screen is
not the same as the claimed “lens with different focal
distances.” The first is typically performed by software while
the second is typically a structural optical arrangement (which
may be optionally supplemented by software). Finally, the
Strong reference does not even employ imaging devices or
cameras. Hence, the cited references do not teach this claim
element either.
Appeal Br. 18–19 (emphasis added).

Accordingly, for essentially the same reasons argued by Appellant in
the Briefs, as discussed above, we are constrained on this record to reverse
the Examiner’s rejection of independent claim 54, and all claims which
depend thereon.

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Independent Claim 75
To support the rejection of claim 75, the Examiner states: “see
rejection of claim 54, see rejection of claim 54 for a device, i.e. para. 167, a
camera typically zoom[s] in and out to take a photo.” Non-Final Act. 11.
Because independent claim 75 recites similar structural features
(“multiple cameras adapted to image the objects, the cameras having
different focal lengths”), and as per our discussion above for claim 54, we
are constrained on this record to reverse the Examiner’s rejection of claim
75 for essentially the same reasons argued by Appellant in the Briefs. For
the same reasons, we also reverse the Examiner’s rejection of all claims
which depend directly or indirectly from independent claim 75.

Independent Claim 86
We note remaining independent claim 86 similarly recites language
that requires specific structures, i.e., two different types of cameras, (a) and
(b), with each camera having specified focal lengths that are defined in the
claim:

86. A drug preparation imaging device comprising:

(a) a scene camera having a focal length adapted for overall
detection of a drug preparation site;

(b) a processing camera having a focal length adapted for at
least one of shape, character, volume or identification imaging
of a drug container;
(emphases added).

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“In the absence of any evidence to the contrary, we must presume that
the use of . . . different terms in the claims connotes different meanings.” CAE
Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317
(Fed. Cir. 2000). Accord Bd. of Regents of the Univ. of Tex. Sys. v. BENQ
Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008) (“Different claim terms are
presumed to have different meanings.”) (citation omitted).
Here, for both of the claimed (different) camera structures (a) and (b),
the Examiner merely supports the rejection by stating: “see rejection of
claim 54.” Non-Final Act. 17.
We find the Examiner has not fully developed the record to establish
how the claimed specific “scene camera” and “processing camera”
structures are taught or suggested by the cited portions of the prior art of
record. Accordingly, as per our discussion above for independent claims 54
and 75, we are similarly constrained on this record to reverse the Examiner’s
rejection of independent claim 86, and all claims which depend thereon, for
essentially the same reasons argued by Appellant in the Briefs, as pertaining
to the dispositive structural limitations.
Because we agree with at least one of the dispositive arguments
advanced by Appellant, we need not reach the merits of Appellant’s other
arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (finding an administrative agency is at liberty to reach a decision
based on “a single dispositive issue”).

CONCLUSION
The Examiner erred in rejecting claims 54 and 64–94 as being
obvious under 35 U.S.C. § 103 over the cited combinations of references.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
54, 64–94

103

Khan, Kishner,
Williams, Strong
54, 64–94

REVERSED