Ex Parte Brackett et alDownload PDFPatent Trial and Appeal BoardMay 16, 201612857126 (P.T.A.B. May. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/857, 126 08/16/2010 14941 7590 05/18/2016 HONEYWELL/CONLEY ROSE Honeywell International Inc 115 Tabor Road PO Box 377 MORRIS PLAINS, NJ 07950 FIRST NAMED INVENTOR Cameron Brackett 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 ATTORNEY DOCKET NO. CONFIRMATION NO. H0024585/8364/l 12944/3250 3426 EXAMINER HULL, JAMES B ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 05/18/2016 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): patentservices-us@honeywell.com dallaspatents@dfw.conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CAMERON BRACKETT and MICHAEL HARKAVY Appeal2014-003452 Application 12/857,126 Technology Center 3700 Before JAMES P. CAL VE, LEE L. STEPINA, and AR THUR M. PESLAK, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Cameron Brackett and Michael Harkavy ("Appellants")1 appeal under 35 U.S.C. § 134 from a rejection of claims 1-3, 5-14, and 16-20.2 Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants submit Honeywell International, Inc. is the real party in interest. Appeal Br. 2. 2 Claims 4 and 15 have been canceled. Appeal Br. 16, 18 (Claims Appendix). Appeal2014-003452 Application 12/857,126 The claims are directed to a system and method for medication compliance. Spec. 16 (Abstract). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: registering at least one medication; identifying a time to take the at least one medication; when the identified time occurs, exiting a power-saving sleep mode; when the identified time occurs, instructing a user to select the at least one medication; determining if a container selected by the user is a container associated with the at least one medication; when the container selected by the user is not the container associated with the at least one medication, instructing the user to set aside the container selected by the user and to select the container associated with the at least one medication; and when the container selected by the user is the container associated with the at least one medication, instructing the user with dosage information associated with the selected medication. REFERENCES RELIED ON BY THE EXAMINER Fu Mattila de la Huerga Fukumoto Oketani US 2007 /0093935 Al US 2008/0068447 Al US 2009/0294521 Al JP411312231A JP 2000180567 A Apr. 26, 2007 Mar. 20, 2008 Dec. 3, 2009 Nov. 9, 1999 June 30, 2000 THE REJECTIONS ON APPEAL (I) Claims 1-3, 5-7, 9-14, and 16-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fu, de la Huerga, Oketani, and Mattila. (II) Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Fu, de la Huerga, Oketani, Mattila, and Fukumoto. 2 Appeal2014-003452 Application 12/857,126 OPINION Rejection(!) Appellants argue claims 1-3, 5-14, and 16-20 together. See Appeal Br. 8-14. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Fu teaches "a method and control unit for medication compliance" and "storing scheduled times when an alarm is sounded to alert a user that it is time to take a medication." Final Act. 3 (citing Fu i-fi-f 142, 159, 225, 246-247). The Examiner finds that de la Huerga "teaches a medication compliance device (Abstract) wherein the device alerts a user when it is time to consume or use a medication." Final Act. 3 (citing De La Huerga i-fi-120, 25). The Examiner further finds that "Oketani teaches an electronic device resembling a digital watch which incorporates a power-saving function wherein the electronic device transfers from usual operation to a power saving mode, and vice versa, in order to reduce power consumption." Final Act. 3 (citing Abstract). The Examiner finds that Mattila teaches a communication device that displays information to a user (including reminders and information about medication), and that Mattila discloses that the device includes a power saving mode implemented when a user does not interact with the device for a period of time. Final Act. 3 (citing Mattila i-fi-1 51, 71 ). The Examiner also finds that the device in Mattila "exits the power saving mode to display an incoming session (par. 0051 ). " Final Act. 3. The Examiner determines that it would have been obvious 3 Appeal2014-003452 Application 12/857,126 to combine a power-saving mode display function in a digital wrist watch device as taught by Oketani and a device for displaying medication reminders as taught by Mattila, wherein the device exits a power saving mode for new communications to a user wearing the reminder device, with the modified system and method of Fu, wherein a control device provides medical compliance information to a user, the device resembling a digital wrist watch, in order to minimize power to the programmable processor and associated circuitry by remaining in a power saving mode up until immediately before a preprogrammed date and time for instructing a user to select a medication is reached, thereby reducing overall power consumption and extending battery life. Final Act. 4 (emphasis added). Appellants assert that "none of Fu, de la Huerga, Oketani or Mattilla et al. disclose the step of (or apparatus for) 'identifying a time to take at least one medication; when the identified time occurs, exiting a power-saving sleepmode. '" Appeal Br. 8-9. In this regard, Appellants argue that "Oketani is merely directed to a method for indicating that [the device] is in a sleep mode" and "r\.1attila exits a po\~1er saving mode in response to itser interaction with the Mattila device." Appeal Br. 10 (emphasis added). In response, the Examiner states, Fu teaches "identifying a time to take at least one medication" in disclosing a system and method of receiving and storing information from a medication container including scheduling and dosage information, and subsequently producing an alarm to indicate the type and dosage of mediation to be taken by a user. Ans. 11. The Examiner also finds "Matilla teaches a system and method of displaying information to a patient, wherein the information may include reminders and information about medication (see Matilla, par. 0071 )"and "[i]n one embodiment, Matilla teaches a system and method of utilizing a power saving mode when there is no user interaction with the disclosed 4 Appeal2014-003452 Application 12/857,126 terminal after a predetermined time period (see Matilla, par. 0051 )." Ans. 11. Further, the Examiner finds "Matilla discloses that the terminal may exit the power saving mode in different scenarios, including one embodiment wherein the terminal exits the power saving mode to display an incoming session request interface (par. 0051 ). " Ans. 11 (emphasis added). Appellants reply that "even if Matilla does exit the sleep mode in response to an incoming session, this is still in response to a user interaction. This is not the same as 'identifying a time to take the at least one medication; when the identified time occurs, exiting the sleep mode.'" Reply Br. 3. We are not persuaded by Appellants' arguments on this point. The Examiner's rejection modifies Fu to remain "in a power saving mode up until immediately before a preprogrammed date and time for instructing a user to select a medication is reached, thereby reducing overall power consumption and extending battery life." Final Act. 4 (emphasis added). In other words, the Examiner applies the steps of providing and exiting a sleep mode at an appropriate time to Fu's medication administering device. The Examiner articulates reasoning with rational underpinning in determining that the proposed modification would reduce overall power consumption and extend battery life. Appellants' argument that Mattila does not teach "identifying a time to take the at least one medication; when the identified time occurs, exiting the sleep mode" amounts to arguing against the references individually rather than against the Examiner's proposed combination. Appellants next assert "it is a principle of operation of Fu that 'The major objectives and advantages of the present invention are ... To provide a method and control unit that automatically establishes medication-storage 5 Appeal2014-003452 Application 12/857,126 mapping without any additional effort' (Fu, pars. [0099] and [0105])." Appeal Br. 10. Appellants contend that, in contrast: The claimed invention avoids medication-storage mapping by identifying medication in their original containers through the steps of (and apparatus for) "determining if a container selected by the user is a container associated with the at least one medication; when the container selected by the user is not the container associated with the at least one medication, instructing the user to set aside the container selected by the user and to select the container associated with the at least one medication" (claim 1, lines 7-11 ). Appeal Br. 10-11 (emphasis added). Thus, according to Appellants, "[ s ]ince Fu could not be changed to identify medications in their original containers, the claimed invention has not been rendered prim a f acie obvious." Appeal Br. 11; see also In re Ratti, 270 F.2d 810 (CCPA 1959). In response, the Examiner notes that claim 1 does not require an original container, but rather, a container associated with at least one medication. See Ans. 12-13. Further, the Examiner finds that Fu teaches using medication stored in original containers. Ans. 13. Thus, the Examiner states, "although the claims do not require the 'original' medication container with respect to the features recited in claims 1-3, 5-7, 9-14, and 16-20, the reference of Fu does disclose medication containers, including the original medication containers." Ans. 13. In reply, Appellants argue, "[h ]owever, even where the medications of Fu are stored [in] their original containers, Fu merely discloses reading the program information from those containers. This is not the same as dispensing medication from those containers or of confirming that these are the correct medications for the patient." Reply Br. 3--4. Appellants further 6 Appeal2014-003452 Application 12/857,126 state, "Fu teaches away from the claimed invention because Fu discourages dispensing medication from the original container." Reply Br. 5. We are not persuaded by Appellants' arguments. As the Examiner correctly notes, Fu teaches an embodiment in which medications are stored in their original containers. See Fu if 246 (stating "[t]he user scans the programming information, indicating request for loading. Although this particular embodiment (and some other similar situations) does not require loading the medication (medications may be stored in their original containers), for consistency the term loading is used."). Thus, Appellants' argument that "Fu could not be changed to identify medications in their original containers" (Appeal Br. 11) contradicts Fu's explicit disclosure. Further, as the Examiner noted, claim 1 does not require the container to be the original container. Accordingly, Appellants' arguments regarding Fu and original containers for medicine are not commensurate with the scope of claim 1 and do not address the Examiner's rejection. Appellants also argue that "there is no teaching or suggestion whatsoever of the method steps of (or apparatus for) [Appellants quote lines 2-11 of claim 1]" in the cited references. Appeal Br. 13. Additionally, Appellants assert that "Fu, de la Huerga [ ], Oketani[,] Mattilla, and the combination does not recognize the problem solved by the claimed invention," and therefore, there would have been no reason to combine the cited references as proposed by the Examiner. Appeal Br. 14. Appellants characterize the problem solved as "recognizing medication in their original containers using the original label on that container and providing guidance to a patient on that basis." Appeal Br. 14. Appellants do not provide any persuasive explanation as to why the Examiner's proposed combination and rationale for making the combination 7 Appeal2014-003452 Application 12/857,126 is inadequate. As discussed above, Appellants' arguments do not address the Examiner's proposed combination, are not commensurate with the scope of claim 1, and/or do not address the Examiner's rejection. Further, the Examiner finds that "[ t ]he prior art of record, including Fu, recognizes the problem or concept claimed in the present invention, by utilizing a device to capture data related to scheduling and dosage of a medication from the original medication container." Ans. 15. This finding is supported by a preponderance of the evidence. See Fu i-f 246. In any event, it is not necessary that the prior art solve the same problem as that facing the patentee: "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). "The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve." Id. at 420. Appellants do not persuasively challenge the rationale the Examiner provides for the proposed combination. We have considered all of Appellants' arguments, but find them unpersuasive. Accordingly, we sustain the Examiner's rejection of claims 1-3, 5-14, and 16-20. DECISION The Examiner's rejection of claims 1-3, 5-14, and 16-20 is affirmed. 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). 8 Appeal2014-003452 Application 12/857,126 AFFIRMED 9 Copy with citationCopy as parenthetical citation