Ex Parte Baker et al

Board of Patent Appeals and Interferences

Aug 30, 2011

10927167 (B.P.A.I. Aug. 30, 2011)

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.
10/927,167 08/26/2004 Stuart C. Baker 9335-44IP 3144
20792 7590 08/31/2011
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
WAGGONER, TIMOTHY R
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
08/31/2011 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 STUART C. BAKER, DANIEL C. FINN, THOMAS F. GAASCH,
and WILLIAM K. HOLMES
____________

Appeal 2009-013948
Application 10/927,167
Technology Center 3600
____________

Before JOHN C. KERINS, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013948
Application 10/927,167

2
STATEMENT OF THE CASE1
Stuart Baker et al. (Appellants) appeal under 35 U.S.C. § 134 from the
Examiner’s decision to finally reject under 35 U.S.C. § 103(a) claims 1, 2, 5-
7, 9-11, 14-18, 37-48 and 51 as unpatentable over Denenberg (US 6,464,142
B1, issued Oct. 15, 2002) and Murphey (US 5,390,711, issued Feb. 21,
1995) and claims 19-22, 24-27 and 29 as unpatentable over Denenberg,
Murphey and Schlamp (US 5,385,265, issued Jan. 31, 1995).2˒3˒4 Claims 3,
4, 12 and 13 have been allowed by the Examiner.5 Claims 23, 28, 30-36, 49

1 This application is a continuation-in-part application of U.S. Serial
No. 10/830,365 filed April 22, 2004, now U.S. Patent No. 7,228,200.
2 The nonstatutory obviousness-type double patenting rejection of
claims 1-22, 24-27, 29, 37-48 and 51 over claims 1-43 of U.S. Patent No.
7,228,200 has been withdrawn by the Examiner. Miscellaneous
Communication p.2, mailed Jun. 18, 2009. A terminal disclaimer was filed
Nov. 7, 2007.
3 The prosecution history of this case shows that the only rejection of
claim 8 made by the Examiner was the double patenting rejection referenced
above at footnote 2. Since that rejection has been withdrawn by the
Examiner and the Examiner has not indicated the status of claim 8, if further
prosecution of this application occurs, the Examiner should clarify the status
of claim 8. For the purpose of this appeal, we shall not consider claim 8.
4 On Page 5 of the Examiner’s Answer, in the heading of the rejection,
the Examiner states that claims 19-27 and 29 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combined teachings of Denenberg,
Murphey and Schlamp. However, claim 23 was canceled in Appellants’
Amendment filed Nov. 13, 2006. As such, for the purpose of this appeal, we
shall consider the Examiner’s insertion of claim 23 in the heading of this
rejection as a typographical error.
5 Claims 3, 4, 12 and 13 were objected to by the Examiner as being
dependent upon a rejected base claim and otherwise indicated as being
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claim. See Non-Final Rejection, mailed
Dec. 11, 2006, at 8. Claims 3, 4, 12, and 13 are not part of the instant
appeal.
Appeal 2009-013948
Application 10/927,167
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and 50 have been canceled. We have jurisdiction over this appeal under
35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to devices for dispensing products
received in a plurality of bins from a dispensing apparatus in response to
control information synthesized from a dispense request and transaction
information marked on the products in the bins. Spec. 3, ll. 2-6 and figs. 1
and 3-6.
Claims 1 and 10 are representative of the claimed invention and read
as follows:
1. A dispensing apparatus, comprising:
a housing;
a two-dimensional array of bins in the housing;
a dispensing station on the housing;
a plurality of sensor means near the two-dimensional
array of bins for sensing transaction information on products in
the bins, the transaction information identifying a recipient of
the product;
a controller means connected to the plurality of sensor
means for maintaining a bin data structure relating transaction
information sensed on products in the bins to locations of the
bins in the two-dimensional array of bins;
an entry device for generating a dispense request;
the controller means further for producing control
information indicative of a bin in the two-dimensional array in
response to the dispense request and transaction information in
the bin data structure;
a mechanism in the housing coupled to the two-
dimensional array of bins for moving the bins to place the bin at
the dispensing station in response to the control information;
and, a door mechanism at the dispensing station for providing
access to the bin in response to the control information.

Appeal 2009-013948
Application 10/927,167
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10. A dispensing apparatus, comprising:
a housing;
a chain of bins in the housing;
a loading station on the housing for loading the bins with
products marked with transaction information;
an entry device for receiving a dispense request including
information identifying a recipient;
a controller means connected to the entry device for
producing control information in response to information
identifying a recipient and transaction information read from
products in the bins, the control information including a
location in the chain of a bin containing a product with the
information identifying the recipient;
a mechanism coupled to the chain for moving the chain
to place a bin at a dispensing location in response to the control
information; and,
a door mechanism at the dispensing location having for
providing access to the bin at the dispensing location in
response to the control information.

SUMMARY OF DECISION

We AFFIRM-IN-PART.

OPINION
The obviousness rejection over Denenberg and Murphey
Claims 1 and 51
Each of independent claims 1 and 51 require a plurality of sensors for
detecting “transaction information identifying a recipient of the product.”
Br., Claims Appendix.
The Examiner found that Denenberg discloses: (1) a plurality
of sensors for sensing products in bins and (2) inputting transaction
information, but fails to disclose a sensor in the bin reading the transaction
information. Ans. 3. See also Denenberg fig. 5B. The Examiner further
Appeal 2009-013948
Application 10/927,167
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found that Murphey discloses a sensor in the storage area that reads
transaction information from products being dispensed. Id. The Examiner
concluded that it would be obvious to a person skilled in the art to modify
Denenberg to parallel its sensor to read the transaction of the product, as
taught by Murphey, because it provides another method of entering data.
Ans. 4.
Appellants argue that Denenberg and Murphey, either alone or in
combination, fail to disclose transaction information that identifies the
recipient of a product. Br. 7-9. Specifically, Appellants argue that article
sensor 23 of Denenberg is used to detect the presence or absence of a
package in bin 66 not to detect identifying information regarding the
recipient of a product. Br. 8. According to Appellants, “there is no
connection in the Denenberg system between . . . any transaction
information that may be input into the Denenberg system regarding a
particular package and . . . the article sensor 23 that may detect that
package.” Id. As evidence, Appellants note that: (1) scanner 157 of
Murphey merely detects the presence of bar code 158 on cone cup 25 to
allow cone cup 25 to be dispensed for use; and (2) bar code 158 of Murphey
does not contain any transaction information that would identify the
recipient of cone cup 25. Br. 8-9.
In response, the Examiner notes that:
Denenberg teaches scanning a barcode of a
prescription package, for entering data on or
associated with an item. Murphy teaches a
barcode reader in a storage location and a device
that holds the barcode in position to be scanned.
Ans. 7
Appeal 2009-013948
Application 10/927,167
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Hence, according to the Examiner, “[t]he only change one skilled in the art
must achieve is where the product is scanned not whether it is scanned.” Id.
We disagree with Examiner’s simplistic position for the following reasons.
In this case, like Appellants, we find that article scanner 23 of
Denenberg, located adjacent to a storage location, merely detects the
insertion or removal of a prescription from the storage location. Denenberg
col. 7, ll. 11-13, col. 11, ll. 46-50, col. 11 l. 66 through col. 12, l. 1, and figs.
5A--5B and 8A-8B. We could not find any portion of Denenberg and the
Examiner has not pointed to any portion that discloses that article scanner 23
detects transaction information identifying a recipient of a prescription. In
addition, we also find that scanner 50 is used by pharmacy personnel to scan
into the system bar coded data on or associated with an item (prescription).
Denenberg, col. 7, l. 66 through col. 8, l. 2. With respect to the disclosure of
Murphey, like Appellants, we find that product code scanner 157 detects bar
code 158 printed on cone cup 25 merely to verify the presence of cone cup
25 in cup hopper 91 and to permit the snow cone making process to
continue. Murphey col. 9, l. 50 through col. 10, l. 5 and fig. 20. We could
not find any portion of Murphey and the Examiner has not pointed to any
portion that discloses a sensor in the storage area that reads (senses) any
transaction information from the cone cup being dispensed. As such, as far
as we understand the disclosures of Denenberg and Murphey, the sensors
of both Denenberg and Murphey have similar functions, namely, to merely
detect the presence or absence of a product in a location. Hence, neither
the article scanner 23 of Denenberg nor the product code scanner 157 of
Murphey detects transaction information identifying the recipient of a
product, as called for by each of independent claims 1 and 51.
Appeal 2009-013948
Application 10/927,167
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Therefore, since neither Denenberg nor Murphey discloses sensors
that identify the recipient of a product, the rejection of independent claims 1
and 51 and their respective dependent claims 2, 5-7 and 9 cannot be
sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).

Claims 10 and 37
In contrast to independent claims 1 and 51, which require sensors
to sense (read) transaction information on products in bins that identify
a recipient of the product, independent claims 10 and 37 merely require
a controller means for producing control information in response to
transaction information identifying a recipient read from products in the
bins. Br., Claims Appendix. In other words, independent claims 10 and 37
do not require that sensors sense (read) the transaction information on the
products in the bins, but merely that such transaction information is read
from the products in the bins.
The Examiner found, and we agree, that Denenberg discloses a
dispensing apparatus including controller means 12 connected to an entry
device (user work station 16) for producing control information (storage
location). Ans. 3. See also, Denenberg col. 4, ll. 27-35 and fig. 2. We
further find that Denenberg discloses that control information (storage
location) is in response to information identifying a recipient 84. We further
find that pharmacy personnel use a scanner to read identifying data 98
(transaction information identifying a recipient) from products in the
bins/trays into the dispensing system. Denenberg col. 10, ll. 5-47 and fig. 2.
Hence, since Denenberg discloses controller 12 for producing control
information in response to identifying data 98 read from products in the
bins/trays, we find that Denenberg discloses a controller means for
Appeal 2009-013948
Application 10/927,167
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producing control information in response to transaction information
identifying a recipient read from products in the bins, as required by each of
independent claims 10 and 37.
Accordingly, for the foregoing reasons, the rejection of independent
claims 10 and 37 under 35 U.S.C. § 103(a) as unpatentable over Denenberg
and Murphey is sustained.
Appellants do not argue claims 11, 14-18 and 38-48 separate from
independent claims 10 and 37, respectively. Br. 7-10. Accordingly, the
rejection of claims 11, 14-18 and 38-48 over the combined teachings of
Denenberg and Murphey is likewise sustained.

The obviousness rejection over Denenberg, Murphey, and Schlamp
Like independent claims 1 and 51, independent claim 19 similarly
requires a sensor for sensing transaction information “identifying a recipient
of the product.” Br., Claims Appendix. The addition of Schlamp does not
remedy the deficiencies of Denenberg and Murphey as described above.
Accordingly, the rejection of claims 19-22, 24-27 and 29 as unpatentable
over Denenberg, Murphey and Schlamp cannot be sustained.

DECISION
The decision of the Examiner is affirmed as to claims 10, 11, 14-18
and 37-48 and reversed as to claims 1, 2, 5-7, 9, 19-22, 24-27, 29 and 51.
No time period for taking any subsequent action in connection with
this appeal may be extended under C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

JRG