Ex Parte Bain

Board of Patent Appeals and Interferences

Sep 20, 2011

11648153 (B.P.A.I. Sep. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WALTER M. BAIN
____________

Appeal 2009-015152
Application 11/648,153
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-015152
Application 11/648,153

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 29-33 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a prescription
dispensing system which enables patients to obtain medications after
pharmacy hours (Spec. 5:6-11). Claim 29, reproduced below, is
representative of the subject matter on appeal.

29. A method for more efficiently filling prescriptions, the
method comprising: collecting information for a plurality of
prescriptions at a central processing location; filling the prescriptions
at the central processing location based on the information collected
for the plurality of prescriptions; and transporting the filled
prescriptions to a plurality of local pharmacies.

DISPOSITION OF THE APPEAL
The Examiner entered a grounds of rejection in the Examiner’s
Answer against claims 29-33 which were provisionally rejected on the
grounds of nonstatutory obviousness-type double patenting as being
unpatentable over claims then co-pending Application No’s. 11/648,145,
11/648,144, 11/396,293, and 10/755,849 (Ans. 3). A review of the record
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indicates that all these Application No.’s have been abandoned. As the
previously co-pending Application No.’s cited are now abandoned the basis
for this rejection is no longer applicable and this rejection is therefore
dismissed. Given that this rejection has been dismissed, the rejections
before us for review are reduced to those listed in the following section.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Lester US 6,021,392 Feb. 1, 2000
Liff US 2002/0070226 A1 Jun. 13, 2002

The following rejections are before us for review:
1. Claims 29-33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lester in view of Liff.

THE ISSUES
With regard to claim 29 the issue turns on whether it would have been
obvious to combine and modify the prior art to meet the claimed limitations
which have been argued by the Appellant. The remaining claims turn on the
same issue as they were not separately argued.

Appeal 2009-015152
Application 11/648,153

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FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1

FF1. Lester has disclosed a system for drug management (Title) and
provides drug and supply tracking from the drug supplier to a nursing station
(Abstract).
FF2. Lester in Fig. 1B discloses that items are packed, placed in “tote” 60,
and delivered to a hospital pharmacy.
FF3. Liff has discloses a method for controlling a drug dispensing system
(Title).
FF4. Liff discloses that the system enables drug prescription dispensing by
a pharmacist to the patient at a clinic, group practice, or other location
outside a pharmacy or hospital. [0008].
FF5. Liff discloses that the system includes a cabinet housing storing a
variety of packaged pharmaceuticals in a plurality of bins. Each bin includes
a dispenser for dispensing a packaged pharmaceutical in response to a
dispense signal sent from the controller [0009]. The dispensing process can
be initiated by a user at a computer terminal or from a card with patient
information [0010].
FF6. Liff in Fig. 7B shows that prescription information 168 is received by
the system and that if a review is okay 171 that a bottle is dispensed 172.

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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ANALYSIS
The Appellant argues that the rejection of claim 29 is improper
because Lester does not involve: the collection of information about
prescriptions at the central processing facility, the filling of prescriptions
based on that information, or the transporting of the filled prescriptions to
local pharmacies (Br. 4). The Appellant argues that in Lester that the drug
dispensing machines are stocked prior to the receipt of information about
specific prescriptions (Br. 4). The Appellant also argues that in Liff that the
prepackaged drugs are present in the remote control dispenser (RCD) before
the medical professional submits an instruction to fill the prescription (Br.
7). The Appellant also argues that the references would not have been
modified as stated in the rejection (Br. 8).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 4-5).
We agree with the Examiner. Claim 29 is listed below (emphasis
added):
29. A method for more efficiently filling prescriptions, the
method comprising: collecting information for a plurality of
prescriptions at a central processing location; filling the prescriptions
at the central processing location based on the information collected
for the plurality of prescriptions; and transporting the filled
prescriptions to a plurality of local pharmacies.

The Appellant has argued that Lester and Liff shows the machines
stocked by a pharmacist prior or before prior to receiving information about
the prescription (Br. 4, 7) but the claim does not exclude this. Nothing in the
claim excludes a bulk shipment of drugs being delivered to a facility or
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Application 11/648,153

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entered into drug dispensing machines before receiving specific prescription
information that is to be filled.
Here, Lester has disclosed a system for drug management that
provides drug and supply tracking from the drug supplier to a nursing station
(FF1). Lester discloses that items are packed, placed in “tote” 60, and
delivered to a hospital pharmacy (FF2). Liff discloses a system that enables
drug prescription dispensing by a pharmacist to the patient at a clinic, group
practice, or other location outside a pharmacy or hospital (FF4). In Liff, a
cabinet housing stores packaged pharmaceuticals in a plurality of bins which
are dispensed in response to a dispense signal sent from the controller and
that the dispensing process can be initiated by a user at a computer terminal
or from a card with patient information (FF5).
The modification of the system of Lester to include filling the
prescription in response to users input from a computer terminal as shown
by Liff is considered an obvious, predictable combination of known
elements in order to have a central location to package the prescriptions in
response to real time inputs of the requests to reduce costs. For these
reasons the rejection of claim 29 is sustained. The Appellant has not argued
the remaining claims separately and the rejection of these claims is sustained
for these same reasons.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 29-33 under 35 U.S.C. § 103(a) as unpatentable over Lester
in view of Liff.

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DECISION
The Examiner’s rejection of claims 29-33 is sustained.

AFFIRMED

MP