Ex Parte 6155485 et al

Board of Patent Appeals and Interferences

Sep 17, 2010

90007995 (B.P.A.I. Sep. 17, 2010)

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.
90/007,995 06/16/2006 6155485 447599 7381
30955 7590 09/17/2010
LATHROP & GAGE LLP
4845 PEARL EAST CIRCLE
SUITE 201
BOULDER, CO 80301
EXAMINER
TIBBITS, PIA FLORENCE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/17/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ScriptPro LLC,
Patent Owner
____________

Appeal 2010-007567
Reexamination Control 90/007,995
Patent 6,155,485
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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ScriptPro LLC, the owner of the patent under reexamination
(hereinafter “the ‘485 Patent”), appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1-41 (Appeal Brief 5 (filed June 12, 2009)
(hereinafter “App. Br.”); Final Office Action (mailed November 28, 2008)
(hereinafter “Final”)). We have jurisdiction under 35 U.S.C. §§ 134(b) and
306.
We AFFIRM.

STATEMENT OF THE CASE
This reexamination proceeding was initiated by Patent Owner
(Corrected Request for Ex Parte Reexamination filed June 16, 2006).
We heard Patent Owner’s oral arguments on August 11, 2010, a
written transcript of which was entered into the record on August 31, 2010.
The ‘485 Patent states that the invention involves a medicament
dispensing apparatus that verifies that the correct supply container has been
accessed for filling a prescription, provides medicament indicia on the
prescription label representative of a physical attribute of the medicament,
and enables printing of prescription label in a selected second language.
(Col. 1, ll. 48-54.)
Claims 1-37 have not been amended during the course of this
reexamination proceeding. Claims 38-41 have been added.
Claims 1 and 36 on appeal read as follows:
1. A method of filling a prescription for a medicament
including a designated amount of the medicament, said method
comprising:
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(a) retrieving a supply container of medicament
corresponding to the prescription, there being
prescription data corresponding to the prescription
including the medicament stored in a computer, the
container having machine-readable container
indicia thereon representative of the medicament
therein;
(b) using an indicia-reading device coupled with said
computer to read said container indicia, to produce
container data representative thereof, and to
provide said container data to said computer;
(c) in said computer, comparing said container data
and said prescription data to determine a match
therebetween;
(d) only if a match in step (c), prompting a printer to
print a package label representative of said
prescription, said package label including
medicament indicia representative of at least one
physical attribute of the prescription medicament;
(e) removing the designated amount of medicament
from said container and placing said designated
amount into a package; and
(f) applying said package label to said package.

36. A prescription-filling apparatus for filling a
prescription for a medicament including a designated amount of
the medicament, said apparatus comprising:
a language database including language data
corresponding to the prescription in a second language;
a computer including means for accessing said language
database for retrieving language data therefrom corresponding
to the prescription to be filled; and
a printer coupled with said computer and operable to
print a prescription label representative of the prescription,
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said computer including means for activating said printer
to print a prescription label with prescription data thereon
corresponding to said second language, said computer further
includes means for activating said printer to print a first
prescription label in a first language and a second prescription
label in said second language.
(Corrected Claims App’x, App. Br. 21, 27.)

The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed August 4, 2009, hereinafter
“Ans.,” 2-3):
Baum US 4,918,604 Apr. 17, 1990
Nellhaus ‘937 US 5,031,937 July 16, 1991
Liff US 5,713,485 Feb. 3, 1998
Nellhaus ‘264 US 5,845,264 Dec. 1, 1998
Walker US 5,883,370 Mar. 16, 1999
Ursula Jones, “How to Get More from Your Label” (1998).
Carol Ukens, “Oregon Board Pushes New Labels to Cut Rx Errors,” Drug
Topics, The Newsmagazine for Pharmacists, WM 001821 (1997).
Physicians’ Desk Reference (Medical Economics Data 1991) (hereinafter
“Physicians’ Desk Reference PDR 45”).
Physicians’ Desk Reference (Medical Economics Data 1995) (hereinafter
“Physicians’ Desk Reference PDR 49”).
Compendium of Drug Therapy (Edwin S. Geffner ed.), Biomedical
Information Company, 1986).
Appellant relied on the following (Evidence App’x, App. Br. App’x
A):
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Declaration of Michael E. Coughlin, Oct. 30, 2008.2

The Examiner rejected claims 1-41 as follows:
I. Claims 1-4, 7, 11-19, 23-26, and 41 under 35 U.S.C. § 103(a) as
unpatentable over Walker in view of Baum or Liff (Ans. 4);
II. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Walker
in view of Baum or Liff, and further in view of Jones (Ans.
162);
III. Claims 21, 22, 36, and 37 under 35 U.S.C. § 103(a) as
unpatentable over Walker in view of Baum or Liff, further in
view of Jones and Nellhaus ‘264 (Ans. 183);
IV. Claims 9, 10, 20, and 38 under 35 U.S.C. § 103(a) as
unpatentable over Walker in view of Baum or Liff, further in
view of Nellhaus ‘937, Ukens, and the combination of
Physicians’ Desk Reference PDR 45, Physicians’ Desk
Reference PDR 49, and Compendium (Ans. 163);
V. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Walker
in view of Baum or Liff, further in view of Nellhaus ‘937, and
the combination of Physicians’ Desk Reference PDR 45,
Physicians’ Desk Reference PDR 49, and Compendium (Ans,
101;

2 Appellant also attempts to rely on an additional Declaration of Michael E.
Coughlin, filed with the Notice of Appeal on December 29, 2008. However,
Appellant did not petition the Examiner’s decision not to consider the
Declaration because Appellant had not presented good and sufficient reasons
why the Declaration was not presented earlier. (Ans. 228.) See 37 C.F.R. §
1.181. Accordingly, the additional Declaration is not before us on appeal.
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VI. Claims 6 and 27-35 under 35 U.S.C. § 103(a) as unpatentable
over Walker in view of Baum or Liff, further in view of
Nellhaus ‘937, and the combination of Physicians’ Desk
Reference PDR 45, Physicians’ Desk Reference PDR 49, and
Compendium, and further in view of Nellhaus ‘264 and Ukens
(Ans. 103); and
VII. Claims 39 and 40 under 35 U.S.C. § 103(a) as unpatentable
over Walker in view of Baum or Liff, further in view of
Nellhaus ‘937, the combination of Physicians’ Desk Reference
PDR 45, Physicians’ Desk Reference PDR 49, and
Compendium, Nellhaus ‘264, and Ukens, and further in view of
Jones (Ans. 210).

ISSUES
Consistent with both the Examiner’s and Appellant’s Briefs, the
majority of our discussion will focus on Rejections I and III, which include
representative independent claims 1 and 36. We address Rejections II and
IV-VII, each which involves the same primary references as in Rejections I
and III, as necessary in view of Appellant’s specific arguments in the Briefs.
The Examiner found that Walker discloses all of the limitations of
claim 1, except for the printing of a physical attribute on a package label as
recited in step (d). (Ans. 15; Final 21.) The Examiner found that Baum and
Liff both disclose printing a graphic illustration of a drug obtained from a
data file on a package label. (Ans. 19-21; Final 21, 22.) The Examiner
determined that it would have been obvious to modify Walker’s system to
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include a graphic illustration, such as a color illustration or printed picture of
a prescribed drug, and print it on a package label to provide for a better
educated consumer/patient and increased security. (Ans. 19-21; Final 23-
24.)
Regarding claim 36, the Examiner found that the combined teachings
of Walker, Baum, and Liff, fail to disclose printing a second language on a
package label. (Ans. 199-202; Final 35-36.) The Examiner found that Jones
discloses that it is old and well known in the art to print one label having
multiple languages to meet multilingual requirements as well as to eliminate
the need for individual single language labels. (Ans. 202; Final 35.) The
Examiner also found that Nellhaus ‘264 discloses the used of a text database
and an extended database containing textual information about the drug.
(Ans. 202; Final 36-37.) The Examiner determined that it would have been
obvious to have printed labels with multiple languages in order to meet
multilingual requirements and that one would have turned to Nellhaus ‘264
in order to find a solution for storage of multilingual textual information.
(Ans. 202-203; Final 37.)
Appellant contends that the rejection fails to show conditional printing
of a medicament attribute on the basis of computer matching that is traceable
back to the supply container. (App. Br. 18.) Specifically, Appellant argues
that none of Walker, Baum, and Liff provides a database to facilitate the
matching step. (App. Br. 19, 30.) Appellant also contends that there was no
database in existence at the time of the invention and that the combination
would have been impossible due to lack of technical feasibility to make the
combination. (App. Br. 19, 22-23.) Appellant points to Ukens and the
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Coughlin Declaration as evidence that at the time of the invention, one of
ordinary skill could not have developed a pharmacy dispensing system
operable to print a prescription label with an attribute of a medicament.
(App. Br. 22-23.) Appellant argues that secondary considerations such as
long felt need, commercial success, and copying by Wal-Mart outweigh the
Examiner’s evidence of obviousness. (App. Br. 25-29.)
Thus, the principal issues in this appeal are:
Did the Examiner err in concluding that a person of ordinary skill in
the art would have found it obvious to modify the system of Walker to
include printing a physical attribute of a prescription medicament on a
package label as disclosed by Baum or Liff, or printing a label with multiple
languages as disclosed by Jones and Nellhaus ‘264?
Does Appellant’s evidence of secondary considerations outweigh the
Examiner’s evidence of obviousness?

FINDINGS OF FACT (“FF”)
1. The ‘485 Patent discloses that a computer used in the
medicament dispensing station includes a prescription database,
an attribute database, a medicament database, and a language
translation database, which “may stored locally such as on the
hard drive of computer 16 or may be stored remotely such as on
a server computer or central pharmacy computer.” (Col. 2, ll.
34-39.)
2. Walker describes an automated drug prescription filling system
that uses bar codes to confirm a match between the prescribed
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medicament and the pharmacy container before printing a label
for the prescription container. (Col. 1, ll. 49-67.)
3. Walker discloses that the doctor’s computer system may
include detailed information on the prescription drug including
standard directions for use of the drug, which “may be
outputted upon entry and used by the doctor to advise the
patient or to consider when prescribing and/or printed out and
provided to the patient.” (Col. 5, ll. 39-47.)
4. Baum discloses a computer program for digitally representing a
depiction of a pill or capsule, which is retrieved from a
computer file of data and printed on a label. (Col. 1, ll. 18-27;
Abstract.) Baum also discloses a “multiplicity of files of data,”
where “each file of data represent[s] in color a graphic
illustration of a different prescription drug.” (Abstract.)
5. Baum discloses: “the system of the present invention is readily
adapted for dispensing of prescription drugs by retail
pharmacies.” (Col. 1, ll. 51-54.)
6. Baum discloses that in response to a request for a prescription,
a main frame computer finds the prescription data packet in its
memory and sends the data to a microcomputer, where “[u]pon
confirming that the display data conforms with that on the
prescription itself, the dispensing pharmacist then actuates a
transmit key 27 which causes a printer 19 to print prescription
labels.” (Col. 2, ll. 24-53.)
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7. Baum further discloses:
[t]he program routines for depicting pictures of each
different pill or drug capsule can either be provided by
using computer graphics to paint a picture of each different
pill or capsule to be prescribed by the system or,
alternatively, a video camera can be employed to take a
video picture of each pill or capsule which is digitized as a
routine to generate the pill or capsule illustration when
applied to the printer 19.

(Col. 3, ll. 39-46.)
8. Liff discloses a drug dispensing system that includes a host
computer and a printer capable of printing packaging labels
with pharmaceutical information such as a printed picture of the
pharmaceutical, in order to provide additional security. (Col. 6,
ll. 36-48.)
9. Liff discloses “[u]pon validating the bar-code 98 of the
dispensed package 74, the computer generates a label 58
containing prescription information at a label printer 54.” (Col.
5, ll. 26-28.)
10. Nellhaus ‘264 discloses bar code identification of drugs, where
drug information is provided through interaction of a bar code
and a drug identification database and extended drug
identification database. (Col. 5, l. 25 – col. 6, l. 16.)
11. Jones discloses that one label may be printed in twelve
languages due to multilingual requirements. (Jones, p. 1.)
12. Ukens discloses packaging labels containing a description or
picture of the drug “could also be printed out in the pharmacy
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when the prescription is entered into the computer system, but .
. . not all operating systems will work with the available
database.” (Ukens, col. 1, 3.)
13. Ukens also quotes Steven Schulte, R.Ph.-pharmacy inspector:
“‘[w]e tried to show drug manufacturers the benefits of
accuracy labels for themselves and the public, but we didn’t get
very far in that fishing expedition,’ added Shulte. ‘The reaction
from the pharmacy profession has been very favorable.’”
(Ukens, col. 3.)
14. Nellhaus ‘937 discloses that visual depictions of medication can
be reproduced from the Physicians’ Desk Reference (PDR) or
Compendium of Drug Therapy. (Col. 2, ll. 9-14.)
15. Mr. Coughlin declared that he was invited to attend a meeting
of the Oregon Board of Pharmacy (“The Board”) by Mr.
Schulte where the Board planned to propose a requirement to
print drug descriptive information on prescription labels.
(Coughlin Decl., paras. 7-8.)
16. The other participants at the Board meeting including
representatives from chain pharmacies and representatives from
software companies objected to including drug descriptive
information on labels because “they had no way to do it” and it
would drive up the costs of prescriptions/software, and “there
was no source of drug description information for them to use.”
(Coughlin Decl., para. 10.)
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17. Mr. Coughlin declared that there were a number of technical
difficulties involved in placing an image on a prescription label
including the lack of necessary permissions to obtain and/or
modify data from the Physicians’ Desk Reference, lack of a
single database that contained the necessary information about
the drugs, and lack of multi-language capability. (Coughlin
Decl., para. 12.)
18. Mr. Coughlin declared that Ukens confirms that the
combination of Walker, Baum, Liff, and the other references of
record would have produced an inoperable result. (Coughlin
Decl., para. 12.)

PRINCIPLES OF LAW
In KSR, the Supreme Court explained, “[w]hen a work is available in
one field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103 likely bars its
patentability.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.
“Even if a reference discloses an inoperative device, it is prior art for
all that it teaches.” Beckman Instruments v. LKB Produkter AB, 892 F.2d
1547, 1551, (Fed. Cir. 1989); Symbol Techs. Inc. v. Opticon Inc., 935 F.2d
1569, 1578 (Fed. Cir. 1991) (“a non-enabling reference may qualify as prior
art for the purpose of determining obviousness under § 103.”)
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ANALYSIS
While Appellant has separately grouped each of the seven grounds of
rejection, as mentioned above, the majority of Appellant’s arguments focus
on Rejections I and III. Accordingly, we confine the majority of our
discussion to appealed claims 1 and 36, which contain claim limitations
representative of the arguments made by Appellants, and address other
claims only to the extent that Appellants have argued them separately
pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Specifically, our comments with
respect to Rejection I apply equally to Rejection VI. Our comments with
respect to Rejection III apply equally to Rejections II and VII, and we
separately address Rejections IV and V.
Rejection I
Viewing the prior art as a whole, we are unpersuaded by Appellant’s
argument that Walker in view of Baum or Liff fails to show conditional
printing of a medicament attribute on the basis of computer matching that is
traceable back to the supply container. Walker discloses that a prescription
for a medicament is matched with the corresponding pharmacy container via
a bar code scan and that in order for processing to continue, such as printing
of a label, there must be a match. (FF 2 & 3.) Both Baum and Liff disclose
a system for printing an image of a medicament on a prescription label,
where each contains a verification step before dispensing a package label.
(FF 4-6, 8, & 9.) Baum in particular discloses that the medicament
information is present in a data packet that is retrieved from the computer.
(FF 6.) Thus, when combined, the evidence supports the Examiner’s
determination that the attribute data such as the images of medicaments
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disclosed in Baum and Liff would have been traceable back to the supply
container in accordance with the matching step disclosed in Walker.
While Appellant contends that providing a database with the recited
physical attribute data was not feasible at the time of the invention, we are
not persuaded that the evidence on the record is sufficient to support
Appellant’s arguments. Initially, we note that claim 1 does not specifically
require an attribute database, and that Appellant argues claims 6 and 27-35
(Rejection VI) separately as reciting databases. (App. Br. 33.) Accordingly
Appellant’s arguments are not commensurate in scope with the claims not
specifically reciting databases as represented by claim 1.
For claims 6 and 27-35, Baum expressly discloses that physical
attribute data is retrieved from a file of data and provides direction as to how
images of medicaments may be added to the data file. (FF 6 & 7.)
Moreover, rather than providing evidence that databases including physical
attributes of medicaments were not feasible at the time of the invention,
Ukens discloses the existence of an “available database.” (FF 12.)
Although Ukens discloses that the not all operating systems will work with
the available database, the implication of this statement is that at least some
operating systems were compatible with the available database. (FF 12.)
In light of the prior art discussed above, we are not persuaded by the
general statements in the Coughlin Declaration that with respect to including
drug descriptive information on labels, the statements that the chain
pharmacy and software company representatives “had no way to do it” (FF
16) necessarily means that providing the requisite databases would have
been impossible to one of ordinary skill in the art at the time of the
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invention. The chain pharmacies and software companies were also
concerned over the cost of prescriptions and software. (FF 16.) Thus, given
the opposition to a rule that would increase the costs experienced by
pharmacies and software companies, we are not persuaded that one of
ordinary skill in the art would have been unable to implement the proposed
rule. Importantly, Appellant has provided no direct statements from the
representatives of chain pharmacies or software companies to support
Appellant’s position. In addition, although the Coughlin Declaration states
that there was no source of drug descriptive information to use, there is
insufficient evidence, particularly in light of Baum and Ukens, that
designing and populating attribute databases, even if expensive, would have
beyond the level of one of ordinary skill in the art. In re Farenkopf, 713
F.2d 714, 718 (Fed. Cir. 1983) (reference does not teach away from addition
of inhibitor to an Angiotensin I standard solution or composition, where
reference indicated that adding inhibitor “can be costly”). Indeed, Baum
specifically discloses a “multiplicity of files of data” of drug illustrations (FF
4). Appellant has not provided any evidence that such database lacks
enablement. Accordingly, Appellant’s arguments are not persuasive.
Rejection III
Regarding claim 36, Appellant again relies on the Coughlin
Declaration for the proposition that linking multiple languages to other
system data was not possible at the time of the invention. (App. Br. 30 &
34.) However, as discussed above, Appellant has not provided sufficient
evidence that the “lack of multi-language capability” was a problem that
would have been beyond a person having ordinary skill in the art. Indeed,
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Jones discloses that one label may be printed in twelve languages, and
Nellhaus ‘264 discloses databases that contain drug information. (FF 10 &
11.) In the absence of a description of the specific problems that would have
prevented one of ordinary skill in the art from including drug information in
different languages in the databases disclosed by Nellhaus ‘264, the general
statements in the Coughlin Declaration do not outweigh the Examiner’s
evidence of obviousness.
Rejections IV and V
Regarding claims 5 and 9, which are representative of the claims
subject to Rejections IV and V, we are not persuaded by Appellant’s
argument that Nellhaus ‘937 incorrectly stated that visual depictions can be
directly reproduced from the Physicians’ Desk Reference. (App. Br. 30-33.)
Specifically, the Coughlin Declaration does not explain why the PDR
images could not be reproduced as a matter of routine in the art, particularly
when Baum discloses that a video camera can be used to take pictures of
pills or capsules, which then may be digitized as a routine. (FF 7.) In
addition, whether the PDR images had been licensed as of 1997, does not
provide any information as to whether the use of the images would have
been impossible. Further, the Coughlin Declaration provides insufficient
facts to support the statement that no one had licensed the PDR data.
Nonetheless, Baul specifically refers to drug illustrations in a multiplicity of
files (FF 4). Thus, Appellant’s arguments are unconvincing.

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Secondary Considerations
Once a prima facie case of obviousness has been established,
objective evidence of secondary considerations, when present, must be
considered in making an obviousness decision. See Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983). Any initial
obviousness determination is reconsidered anew in view of the proffered
evidence of nonobviousness. See In re Rinehart, 531 F.2d 1048, 1052
(CCPA 1976); In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990); Ex
Parte Quist, No. 2008-001183, at 10-11 (BPAI June 2, 2010) (Precedential)
(available at
http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd08001183.pdf).
The ultimate determination of whether a claimed invention would
have been obvious or non-obvious is a legal conclusion, which is made
based on considering and weighing all of the facts in evidence. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
A “nexus” must be established between the merits of the claimed
invention and the evidence of secondary considerations in order for the
evidence to be given substantial weight. See In re GPAC, Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995). The scope of the “objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support.” In re Tiffin, 448 F.2d 791, 792 (CCPA
1971); see also In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003).
The objective evidence is not commensurate in scope (coextensive)
with the claimed subject matter if the claims are unreasonably broader in
scope than the scope of the objective evidence, e.g., if the product included
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elements or features not recited in the claims which may be responsible for
the commercial success or praise. See Joy Techs., Inc. v. Manbeck, 751 F.
Supp. 225, 229-30 (D.D.C. 1990), aff'd, 959 F.2d 226 (Fed. Cir. 1992).

Long-Felt Need
Establishing long-felt need requires objective evidence showing
existence of a persistent problem recognized by those of ordinary skill in the
art for which a solution was not known. In re Gershon, 372 F.2d 535, 539
(CCPA 1967). In addition, the long-felt need must not have been satisfied
by another before the invention by applicant. Newell Cos., Inc. v. Kenney
Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). Hence, the appellant must
present affidavits or other factual evidence of “a failure of others to provide
a feasible solution to [a] long-standing problem” and evidence “that experts
did not foresee” the solution claimed. See In re Piasecki, 745 F.2d 1468,
1475 (Fed. Cir. 1984). Finally, the invention must satisfy the long-felt need.
In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971).
Appellant contends that there was a long felt need for a pharmacy
dispensing system that included the capability to print an attribute such as an
image or descriptive text on a prescription label to help reduce pharmacy
dispensing errors. (App. Br. 25.) Appellant acknowledges that Baum and
Nellhaus ‘937 disclose showing images of pills on prescription labels, but
argues that because of technical problems in printing pill images the need
was unmet at the time of the invention. (App. Br. 25-26.) Appellant
contends that had such printing been feasible, Appellant would not have
been approached in order to help persuade the attendees of the Board
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meeting that a requirement for prescription labels to include images of pills
would be feasible. (App. Br. 26.) Appellant again points to the Coughlin
Declaration where industry members stated that they had no way to
implement the proposed requirement. (App. Br. 26.)
However, in view of Baum and Liff, which both disclose images of
pills on prescription labels, we are not persuaded that there was a long felt
need that was unsatisfied by others. In addition, as discussed above, in view
of the prior art, the Coughlin Declaration is not sufficient to establish that
that printing labels with physical attributes of a medicament would not have
been feasible.

Commercial Success/Copying
If evidence of commercial success is relied upon, the Appellant must
offer proof “that the sales were a direct result of the unique characteristics
of the claimed invention—as opposed to other economic and commercial
factors unrelated to the quality of the patented subject matter.” In re Huang,
100 F.3d 135, 140 (Fed. Cir. 1996). The evidence must also demonstrate
commercial success in the relevant market. See Id. In addition, there must
be a nexus between the commercial success and merits of the claimed
invention. Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026
(Fed. Cir. 1985).
The mere fact of copying is insufficient to make the action significant
in an obviousness analysis. Cable Elec. Prods., Inc. v. Genmark, Inc., 770
F.2d 1015, 1027 (Fed. Cir. 1985), overruled on other grounds by, Midwest
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20
Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999)
(en banc).
Appellant contends that commercial success has been demonstrated
because Appellant’s systems operate in thousands of pharmacies in over 10
countries. (App. Br. 27.) Appellant also argues that commercial success has
been shown because Wal-Mart copied Appellant’s systems and methods.
(App. Br. 27-28.) Appellant contends that a nexus between the claims and
the commercial success is shown by Wal-Mart’s actions as well as laws
requiring accuracy labels. (App. Br. 28.)
Appellant provides insufficient evidence to establish a nexus between
the claims and the alleged commercial success. Although Appellant’s
systems may operate in a large number of pharmacies, Appellant has
provided no sales data, evidence of market share, or other data which would
establish commercial success of a system within the scope of the claims. In
addition, the existence of laws in some States requiring accuracy labels is a
regulatory factor that is unrelated to the merits of the invention.
Regarding Appellant’s allegations of copying, Appellant does not
provide sufficient details correlating the systems employed by Wal-Mart to
the present claims. Moreover, Appellant’s argument that Wal-Mart
emphasized an invalidity/unenforceability defense (App. Br. 28), provides
evidence that Wal-Mart’s copying may be attributed to other factors, such as
lack of concern for patent property or contempt for the patentees ability to
enforce the patent. Cable Elec. Prods., 770 F.2d at 1028. Thus, Appellant’s
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evidence of commercial success is not sufficient to outweigh the Examiner’s
evidence of obviousness.3
CONCLUSION
On this record, Appellant has failed to demonstrate any error in the
Examiner’s factual findings and conclusions that:
a person of ordinary skill in the art would have found it obvious to
modify the system of Walker to include printing a physical attribute of a
prescription medicament on a package label as disclosed by Baum or Liff or
printing a label with multiple languages as disclosed by Jones and Nellhaus
‘264;
Appellant’s evidence of secondary considerations outweigh the
Examiner’s evidence of obviousness.

DECISION
The Examiner’s decision to reject claims 1-41 under 35 U.S.C. §
103(a) is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

3 To the extent that Appellant’s arguments rely on evidence presented in the
second Coughlin Declarations, e.g., for professional approval (App. Br. 29),
such arguments are not persuasive as they are insufficiently supported by
evidence in the record. See n.2 infra.
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22

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