Ex Parte Cunningham et al

Patent Trial and Appeal Board

Sep 21, 2015

12199602 (P.T.A.B. Sep. 21, 2015)

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.
12/199,602 08/27/2008 Paul Joseph Cunningham 9335-52 6247
20792 7590 09/21/2015
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
SANTIAGO CORDERO, MARIVELISSE
ART UNIT PAPER NUMBER
2676
MAIL DATE DELIVERY MODE
09/21/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL JOSEPH CUNNINGHAM, JONATHAN
ANTHONY MITCHALL, ANDREW KELLER MCCARRON,
STEFANO BRESOLIN, and VICK ALLEN HUBBARD
____________________

Appeal 2012-011324
Application 12/199,6021
Technology Center 2600
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J.
HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Parata Systems, LLC.
App. Br. 1.
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STATEMENT OF THE CASE2
The Invention
Appellants' claimed invention "relates to methods, systems, and
computer program products for operating product dispensing systems and,
more particularly, to methods, systems, and computer program products for
sending commands to product dispensing systems." Spec. 1, ll. 8–10.
Exemplary Claims
Claims 1 and 14, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitation):
1. A method of compiling information for use in a
command script for a product dispensing system, comprising:
sniffing packets associated with a print job that contains
information associated with a product to be dispensed;
filtering the packets so as to remove fields not associated
with the print job; and
combining the filtered packets to generate contiguous
data associated with the print job.

14. A method of generating a command script for a
product dispensing system, comprising:
receiving data associated with a print job that contains
information associated with a product to be dispensed;
extracting the information associated with the product
from the print job data;

2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Mar. 19, 2012); Reply Brief ("Reply Br.," filed Aug. 6, 2012); Examiner's
Answer ("Ans.," mailed June 6, 2012); Final Office Action ("Final Act.,"
mailed Oct. 17, 2011); and the original Specification ("Spec.," filed
Aug. 27, 2008).
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organizing the information associated with the product
into discrete informational units; and
generating the command script based on the organized
discrete information units.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Rostoker et al. ("Rostoker") US 5,914,955 June 22, 1999
Kofman et al. ("Kofman") US 2003/0179400 A1 Sept. 25, 2003
Gomez US 2004/0107022 A1 June 3, 2004
Segal US 6,772,943 B2 Aug. 10, 2004
Banfield et al. ("Banfield") US 2007/0164096 A1 July 19, 2007
Rejections on Appeal
R1. Claims 1–4, 9, 11, 12, 14–16, 21, 23, and 25–28 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Banfield. Ans. 4.
R2. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Banfield and Rostoker. Ans. 9.
R3. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Banfield and Kofman. Ans. 11.
R4. Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Banfield, Kofman, and Segal.
Ans. 12.
R5. Claims 6, 7, 13, 18, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Banfield and Gomez.
Ans. 16.
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R6. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Banfield, Gomez, and Kofman. Ans. 18.
R7. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Banfield, Gomez, Kofman, and
Segal. Ans. 20.
CLAIM GROUPING
Based on Appellants' separate arguments (App. Br. 6–9), we decide
the appeal of anticipation Rejection R1 of claims 1–4, 9, 11, 12, 25, and 27
on the basis of representative claim 1; and we decide the appeal of
anticipation Rejection R1 of claims 14–16, 21, 23, 26, and 28 on the basis of
representative claim 14.
We address remaining claims 5–8, 10, 13, 17–20, 22, and 24 in
rejections R2 through R7, not argued separately, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellants' arguments with respect to claims 1–28,
and we incorporate herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
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highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
1. § 102(b) Rejection R1 of Claims 1–4, 9, 11, 12, 25, and 27
Issue 1
Appellants argue (App. Br. 6–8; Reply Br. 1–2) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Banfield is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a method
that includes, inter alia, the step of "filtering the packets so as to remove
fields not associated with the print job," as recited in claim 1?
Analysis
Appellants contend Banfield is directed to modifying a print job for a
pharmacy printer by adding additional information at the printer, and thus
"makes clear that a prescription label print job includes a set of commands to
be executed by a printer along with a reference to additional content." App.
Br. 7. Further, "Banfield does not include any disclosure of removing fields
or other information from packets associated with a print job." App. Br. 8.
In addition, Appellants contend "[t]here is no description of ever removing
fields from the prescription label print job itself[; there is o]nly a
determination of whether to include additional information from an
additional content table when printing a patient's prescription label." Id.
In response to Appellants' contentions, the Examiner finds:
Whether Banfield describes removing fields from a prescription
label print job or not is irrelevant because the claimed language
of "filtering the packets so as to remove fields not associated
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with the print job" (claim 1, line 5) does not distinguish where
the fields are removed from. Specifically, "filtering the packets
so as to remove fields" does not equate to removing fields from
the filtered packets.
Ans. 26. In addition, the Examiner continues by finding
Banfield discloses ". . . network CS [] receives [a] prescription
order and . . . determines what [Catalina Health Resources]
CHR content and CHR additional content to include in a
prescription label print job for a prescription order and
generates and sends the novel printer a corresponding
prescription label print file for the prescription order".
Ans. 26 (citing Banfield ¶ 36, ll. 9–15). From this disclosure, the Examiner
finds, because CHR content is removed, not all content is printed, thus
disclosing removing fields from a prescription label print job. Ans. 26–27.
We agree with the Examiner that Banfield's disclosed removal of fields from
a print job meets the recited "filtering" limitation of claim 1. Ans. 27.
In particular, "[i]n the patentability context, claims are to be given
their broadest reasonable interpretations . . . limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to
a term "must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998). Absent an express intent to impart a novel
meaning to a claim term, the words take on the ordinary and customary
meanings attributed to them by those of ordinary skill in the art. Brookhill-
Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
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We note Appellants have not cited to a definition of "filtering" in the
Specification that would preclude the Examiner's broad but reasonable
interpretation, nor have Appellants shown the Examiner's construction is
inconsistent with Appellants' Specification.
In the Reply Brief, Appellants state, "Appellants will only address
new arguments made in the Examiner's Answer," and similarly contend
various findings of fact made by the Examiner are "arguments."3 Reply
Br. 1 et seq. Appellants further contend, additional content is not removed
by Banfield, but instead a reference is made to a location of the content table
that includes the additional content in the print job. Reply Br. 2.
"Appellants cannot find any disclosure in Banfield of removing fields or
other information from packets associated with a print job." Id.
We disagree with Appellants' contentions because Banfield discloses:
Printer 40 uses this data to determine from data in a prescription label print
file whether to include in the prescription label print job associated
informational content. It does so by implementing code matching values and
ranges of these fields to records in table 430A. Banfield ¶ 114.
Even assuming, arguendo, Appellants' recitation of "filtering . . . so as
to remove" is not considered to merely be a statement of intended use by our
reviewing court, we find Banfield's disclosure of whether to include or
exclude certain informational content from a label print job broadly but
reasonably discloses the contested "filtering" limitation of claim 1.

3 We note the Board, as well as Examiners, make findings of fact, reach
conclusions of law, and make decisions regarding the exercise of discretion,
and do not make "arguments," "admissions," or "concessions" because
neither the Examiner nor the Board are parties in any ex parte proceeding.
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Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 1, and claims 2–4, 9,
11, 12, 25, and 27, which fall therewith. See Claim Grouping, supra.
§ 103(a) Rejections R2 and R4–R6 of Claims 5–8, 10, and 13
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 and R4–R6 of claims 5–8, 10, and 13 under
§ 103 (see App. Br. 8 and 10–12), we sustain the Examiner's rejection of
these claims, as they fall with independent claim 1. Arguments not made are
considered waived. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir
2008) ("When the appellant fails to contest a ground of rejection to the
Board, section 1.192(c)(7) [(now 37 C.F.R. § 41.37(c)(1)(vii))] imposes no
burden on the Board to consider the merits of that ground of rejection . . .
[T]he Board may treat any argument with respect to that ground of rejection
as waived.").
2. § 102(b) Rejection R1 of Claims 14–16, 21, 23, 26, and 28
Issue 2
Appellants argue (App. Br. 8–10; Reply Br. 2–3) the Examiner's
rejection of claim 14 under 35 U.S.C. § 102(b) as being anticipated by
Banfield is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a method
that includes, inter alia, the steps of "extracting the information associated
with the product from the print job data," and "organizing the information
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associated with the product into discrete informational units," as recited in
claim 14?
Analysis
Appellants contend, similar to the contested limitation of claim 1, "Banfield
is directed to modifying a print job for a pharmacy printer by adding, at the
pharmacy printer, additional information to be added to a prescription label,
and then printing the additional information with the patient's prescription
label." App. Br. 9. Appellants further contend paragraph 120 of Banfield,
cited by the Examiner, is directed to what type of information can be
included in a print job, not what type of information can be extracted from a
print job . . . [and] therefore, does not . . . [disclose] extracting information
associated with a product to be dispensed from print job data and then
organizing the extracted information into discrete information units. Id.
However, Appellants have drafted claim 14 to broadly recite, in both
contested limitations, "information associated with the product." As the
Examiner finds, such a recitation does not require "data associated" with a
print job to be limited to a part of a print job, but instead encompasses any
data associated with or related to a print job. Further, such a recitation does
not preclude the Examiner's broad but reasonable interpretation that receipt
of XML tagged data by printer 40, and application of Boolean combinations
of rules to match data fields and respective combinations discloses
extracting information associated with the product. Ans. 7 (citing Banfield
¶ 120), 28–29.
In addition, the Examiner finds the recited "discrete informational
units" is disclosed by the listing of different information units at the end of
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Banfield, paragraph 120. Ans. 7. We agree with the Examiner's findings
regarding the contested "organizing" limitation of claim 14.
We have considered Appellants' arguments concerning the rejection of
claim 14 in the Reply Brief (Reply Br. 2–3),4 but do not find them to be
persuasive under the broadest reasonable interpretation standard of claim
construction.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 14, and claims 15,
16, 21, and 23 which fall therewith. See Claim Grouping, supra.
§ 103(a) Rejections R3–R5 and R7 of Claims 17–20, 22, and 24
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R3–R5 and R7 of Claims 17–20, 22, and 24 under
§ 103 (see App. Br. 9–12), we sustain the Examiner's rejection of these
claims, as they fall with independent claim 14. Arguments not made are
considered waived.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1–3) not in response to a shift in the Examiner's position in
the Answer, we note "[a]ny bases for asserting error, whether factual or

4 Appellants, for the first time, argue the Examiner erred in finding Banfield
discloses the "generating the command script based on the organized
discrete information units." Reply Br. 3. Even assuming our reviewing
court should find this new argument to be timely, we do not find it to be
persuasive.
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legal, that are not raised in the principal brief are waived." Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech.,
Inc. v. Ion Beam Appl. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue
not raised by an appellant in its opening brief . . . is waived.").
CONCLUSIONS
(1) The Examiner did not err with respect to anticipation Rejection
R1 of claims 1–4, 9, 11, 12, 14–16, 21, 23, and 25–28 under 35 U.S.C.
§ 102(b) over the cited prior art of record, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 through R7 of claims 5–8, 10, 13, 17–20, 22, and 24 under 35
U.S.C. § 103(a) over the cited prior art combinations of record, and we
sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1–28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED

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