Ex Parte Bluth

Patent Trial and Appeal Board

Jan 30, 2017

12407657 (P.T.A.B. Jan. 30, 2017)

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.
12/407,657 03/19/2009 Charles P. Bluth 101538.000011 7760
71375 7590 02/01/2017
RAKFR fr TTOSTRTT FR
EXAMINER
2929 ARCH STREET NAJARIAN, LENA
12th FLOOR
PHILADELPHIA, PA 19104 ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES P. BLUTH
Appeal 2014-001513
Application 12/407,6571
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’
final rejection of claims 21—40. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 Appellant identifies Computerized Screening, Inc. as the real party in
interest. Appeal Br. 1.
Appeal 2014-001513
Application 12/407,657
THE INVENTION
Appellant’s claims are directed to community based managed health
kiosks and prescription drug dispensing systems, and more particularly to
facilitating automated drug dispensement by a kiosk system following
authorization by a remotely located health care professional monitoring a
patient via the kiosk system. Spec. 2.
Claim 21 reproduced below, is representative of the subject
matter on appeal.
21. A kiosk system for the dispensing of prescription drugs
comprising:
one or more inputs for receiving a one or more pieces of
health information from diagnostic devices;
a real-time communication system operable to
communicate with a health care professional remote to a user,
the health care professional able to issue prescriptions, the real­
time communication system comprising a camera, microphone,
speaker, and video screen,
a privacy mechanism operable to maintain confidentiality
of the user's communication with the health care professional;
a security mechanism comprising one or more of a
thumbprint scanner, a signature pad, an access card, a pin, or
verification of photo identification, the security mechanism
operable to prevent unauthorized access to a personal health
record, the personal health record accessible to the user and the
health care professional; and
a drug dispenser configured to dispense a drug upon
verification of a prescription from the health care professional,
the drug dispenser further configured to dispense a prescribed
amount of the drug in a consumer container, the prescription
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Application 12/407,657
based on at least one of the one or more pieces of health
information and real-time communication with the user.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Asahioka
Graft, III
Hoyt
Rosenblum
Squilla
US 5,075,850
US 5,278,753
US 6,085,195
US 2005/0049746 A1
US 2006/0106646 A1
Dec. 24, 1991
Jan. 11, 1994
July 4, 2000
Mar. 3, 2005
May 18,2006
The following rejections are before us for review:
Claims 31—34 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
Claims 21, 22, and 24—29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rosenblum in view of Squilla.
Claims 23 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosenblum in view of Squilla, and further in view of
Official Notice.
Claims 31—34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Squilla in view of Rosenblum.
Claims 35, 39, and 40 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosenblum in view of Squilla, and further in view of
Graft, III.
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Application 12/407,657
Claim 36 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rosenblum in view of Squilla, in view of Graft, III, and further in view
of Asahioka.
Claims 37 and 38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosenblum in view of Squilla, in view of Graft, III, and
further in view of Hoyt.
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 3—10 of the
Answer, excluding those findings made for claims 35-40.
2. Rosenblum discloses
One option includes a telephone 3980 on the dispenser to allow
the user to speak with the central control and call center to
discuss any insurance problems, for example. The telephone
can also allow a remote pharmacist or other health care provider
to ask or answer any questions by the user.
Para. 66.
3. Rosenblum discloses “The pharmacy service provider 9006 then
enters data about the prescription into a data input device 9008 that relays
the data to a medication dispensing machine 9010, for example, any one of
the embodiments described with respect to FIGS. 1-30 hereinabove.”
Para. 197.
4. Figure 11 of Rosenblum, below, shows a remote dispenser.
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Application 12/407,657
/
3090
/
FIG* 11
Figure 11 of Rosenblum showing a remote dispenser is shown above.
5. Rosenblum discloses that the remote dispenser of Figure 11, above,
includes:
The control module 102 houses subsystems that provide the
interface between the remote dispenser 3000 and the medical
patient. These components include a 17 inch Monitor with
touch screen 202, a credit card reader 204, a
prescriptions/instructions/receipts printer 206, a prescription/
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Application 12/407,657
instructions/receipt output slot 208, an internal waste
slot/waste basket 210, speakers 212, and a controller PC 214.
Para 126.
6. Rosenblum discloses: “Dispensing machine 9110 may be, in one
example embodiment, of the kind described above in FIGS. 1-30.”
Para. 210.
ANALYSIS
35 U.S.C. $ 101 Rejection
We will not sustain the rejection of claims 31—34 under 35 U.S.C.
§101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289 (2012)).
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Thus, to perform this test, we must first determine whether the claims at
issue are directed to an abstract idea. If the claims are not directed to an
abstract idea, the inquiry ends.
We find that the rejected claims are not directed to an abstract idea.
Claim 31 requires, inter alia, receiving one or more pieces of diagnostic
information from a user of a kiosk system; transmitting audio and video, by a
real-time communication system; receiving a prescription for a drug, the
prescription issued by the health care professional based on the personal
health record, the one or more pieces of diagnostic information, and the
audio and video from the user. We, thus, find that, when considered as a
whole, claim 31 is directed to a technological improvement for using a
managed health system to fill prescriptions by using, inter alia, a kiosk,
audio and video signals, and a real time communication system. See McRO,
Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)).
Claim 21
The Appellant argued independent claim 21, and dependent claims 22
and 24—29 as a group. (Appeal Br. 8). Thus, claim 21 is the representative
claim for this group, and the remaining claims stand or fall with claim 21.
See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
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Application 12/407,657
Appellant argues, “Rosenblum, however, appears to disclose that
prescriptions are written upon an in-person examination of a patient by a
physician.” (Appeal Br. 9). The Appellant further argues,
As noted, the above reference appears to disclose a dispensing
machine located remotely to a prescribing medical service
provider. This is not the same as the subject matter of claim 21,
which recites “a health care professional remote to a user” and
“[dispensing] a drug upon verification of a prescription from
the health care professional...the prescription based on at least
one of the one or more pieces of health information and real­
time communication with the user.”
(Appeal Br. 11).
The Examiner found that the real-time communication system for
remote communication with a health care professional is disclosed by
Rosenblum at “para. 66, 126, 221, and Fig. 11.” (Answer 4).
We agree with the Examiner’s finding because paragraph 66 of
Rosenblum explicitly discloses, “[t]he telephone can also allow a remote
pharmacist or other health care provider to ask or answer any questions by
the user (emphasis added).” (FF. 2).
Appellant further argues
[The] prescription writing module is not the same as a kiosk,
and a prescription is not the same as health information from
diagnostic devices - a prescription is instead a consequence of
making a diagnoses based on diagnostic information and
developing a treatment plan. Accordingly, the cited portion of
Rosenblum does not appear to disclose the claimed subject
matter involving “a kiosk with one or more inputs for receiving
a one or more pieces of health information from diagnostic
devices.”
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(Appeal Br. 12—13).
The Examiner found that,
[T]he Rosenblum reference teaches a kiosk with a medical
service provider prescribing a medication for a patient and a
dispensing machine located remotely from the location of the
prescribing medical service provider (see para. 197 and
Figs. 11-12 of Rosenblum).
(Answer 17).
We disagree with Appellant. Appellant’s Specification does not
specifically define the term “kiosk;” nor does it utilize the term “contrary” to
its customary meaning. The ordinary and customary definition of the term
“kiosk” is: “a small stand-alone device providing information and services
on a computer screen.”2 According to Rosenblum, the dispensing machine
9010 may be part of any one of the embodiments shown in Figures 1—30.
(FF. 3, 6). We find that the device shown in Figure 11 meets the definition
of a kiosk because it includes a computer screen on which the pharmacist
information is presented. (FF. 2—5). We further find no error with a finding
that a prescription is a piece of information from a diagnostic device because
prescriptions ultimately are derived from information derived from a
diagnostic device, e.g., a statin prescribed from (as a result of) a CAT scan
of the heart.
Appellant next argues that:
The above portion of Rosenblum appears to disclose a virtual
private network. This is not the same as the subject matter of
2 https://www.merriam-webster.com/dictionary/kiosk (last visited 1/17/2017)
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claim 21, at least because VPN network security does not
address the audio or visual aspects of confidentiality discussed
above. Even if a VPN were utilized to encrypt network
transmissions emanating from the kiosk, the user’s verbal
communications would still be subject to surveillance.
(Appeal Br. 13; see also Reply Br. 2—3).
We disagree with Appellant. Claim 21 only requires a privacy
mechanism operable to maintain confidentiality of the user’s communication
with the health care professional. To the extent that the hardware supporting
the VPN is considered to be a mechanism, we find no error with the
Examiner’s use of the VPN to meet the limitation because the claim does not
distinguish the type of information being protected. Notwithstanding, we
find that the device shown in Figure 11 inherently includes a privacy
mechanism at the cabinet module 104, which is recessed into the device.
(FF. 4, 5). “It is well settled that a prior art reference may anticipate when
the claim limitations not expressly found in that reference are nonetheless
inherent in it. [...] ‘Under the principles of inherency, if the prior art
necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.’” In re Cruciferous Sprout Lit., 301 F.3d 1343,
1349, (Fed. Cir. 2002) (citations omitted).
Claim 30
Appellant’s challenge to the Official Notice as to the old and well-
known use of use an emergency release mechanism is insufficient to
establish error with the Examiner’s finding because the Appellant has not
specifically pointed out the supposed errors in the Examiner’s taking of
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Official Notice, “includ[ing] stating why the noticed fact is not considered to
be common knowledge or well-known in the art.” See 37 CFR § 1.111(b).
An adequate traverse must contain adequate information or argument to
create on its face a reasonable doubt regarding the circumstances justifying
Examiner’s notice of what is well known to one of ordinary skill in the art.
In re Boon, 439 F.2d 724, 728 (CCPA 1971). That has not been done here.
When an Appellant does not seasonably traverse a well-known statement
during examination, the object of the well-known statement is taken to be
admitted prior art. In re Chevenard, 139 F.2d 711 (CCPA 1943).
Independent Claim 31
Appellant argues that “[t]he Examiner cites to ten paragraphs of
Squilla as allegedly disclosing these elements of claim 31. However, none
of the cited paragraphs appear to be relevant to issuing a prescription.”
(Appeal Br. 15, Reply Br. 4).
That argument is not well taken because the Appellant is attacking the
Squilla reference individually when the rejection is based on a combination
of references, and the Examiner relies on Rosenblum, and not Squilla, as
disclosing “dispensing a drug based on the prescription by delivering
[(issuing)] the prescribed quantity in a consumer container to the user.”
(Final Act. 9; see In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re
Young, 403 F.2d 754, 757-58 (CCPA 1968)).
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We also affirm the rejections of dependent claims 32, 33, and 34
because Appellant has not challenged such with any reasonable specificity
{see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
Claims 35, 36, 37, 39 and 40
Concerning independent claim 35, Appellant argues:
Although the cited paragraphs refer to digital cameras, it would
be unreasonable to interpret [digital] cameras as constituting
“inputs for diagnostic devices,” in light of the plain language of
claim 39 and its parent claim 35. First, even if a digital camera
were to be considered a diagnostic device, it cannot be both a
diagnostic device and an input for a diagnostic device. Second,
in parent claim 35 a camera is described as an element of a real­
time communication system, not as an input for a diagnostic
device.
(Appeal Br. 20-21).
We agree with Appellant. Because claim 35 requires a camera as part
of the real-time communication system, the camera cannot then again be
used by the Examiner to meet the claim requirement of “one or more input
devices configured to receive user input for the health assessment
questionnaire.” See Texas Instr. Inc. v. United States Int 7 Trade Comm ’n,
988 F.2d 1165, 1171 (Fed. Cir. 1993) (Claim language cannot be mere
surplusage. An express limitation cannot be read out of the claim); Unique
Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir. 1991) (Two distinct
claim elements should each be given full effect.).
Even taking the EPR Medical Card 30 in Squilla to be the result of a
questionnaire, the data of this card are inputted by a “doctor/specialist 70,
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nurse 72, medical assistant 74, clerical assistant 76, or pharmacist 78,” and
not the user as required by the claims. (Squilla, para. 48). It is not apparent
and the Examiner has not explained why one having ordinary skill in the art
would know to allow the patient to enter data otherwise reserved for input by
a medical professional.
Accordingly, we will not sustain the rejection of independent
claim 35, nor the rejection of claims 36-40,3 which depend therefrom.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 21—34 under
35U.S.C. § 103.
We conclude the Examiner did err in rejecting claims 35—40 under
35U.S.C. § 103.
We conclude the Examiner did err in rejecting claims 31—34 under
35U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 21—40 is affirmed-in­
part.
3 We note that the additional references cited in the separate rejections of
claim 36 using Asahioka, and claims 37 and 38 using Hoyt, respectively, do
not remedy the defect in the claim interpretation discussed above concerning
claim 35.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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