Ex Parte de Beus et alDownload PDFPatent Trial and Appeal BoardJun 27, 201311250029 (P.T.A.B. Jun. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIC A. DE BEUS and ROMAN D. LICCINI ____________ Appeal 2010-008224 Application 11/250,029 Technology Center 3600 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. FISCHETTI, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Eric de Beus, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-5, 9-15, 19, and 20. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2010-008224 Application 11/250,029 2 SUMMARY OF DECISION We Affirm-in-Part.1 THE INVENTION The invention is directed to a method of managing multiple medications. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for enabling a proper dispensation of medication, comprising: generating a personalized schedule, the personalized schedule including time periods for taking medication, and dosage information for taking medication; printing, using a printing device, the personalized schedule for taking medication on a recording medium, the recording medium being divided into medication sections by perforations, each medication section including a portion of the printed personalized schedule therein, the portion of the printed personalized schedule corresponding to the medication associated with the medication section, the portion of the printed personalized schedule including an indication of a time of day to take the medication associated with the medication section; and adding an appropriate amount of appropriate medication to each medication section, the appropriate amount of appropriate medication corresponding to the dosage information for taking medication. 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Jan. 7, 2010) and Reply Brief (“Reply Br.,” filed May 14, 2010), and the Examiner’s Answer (“Answer,” mailed Mar. 17, 2010). Appeal 2010-008224 Application 11/250,029 3 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Halvorson Walker Whaley Nakagawa US 4,847,764 US 5,883,370 US 5,995,938 US 7,201,275 B2 Jul. 11, 1989 Mar. 16, 1999 Nov. 30, 1999 Apr. 10, 2007 “[T]he Examiner takes Official Notice that it is old and well known in the medical printing arts to bind printed material in booklet form. Providing a bound printed medical data in booklet form is a customary means of displaying medical text data.” Ans. 11-12; 14. [Official Notice I.] “[T]he Examiner takes Official Notice that it is old and well known in the medical printing arts to bind printed material that in booklet form, which represents a pre-ordained timeline. Providing a bound printed medical data in this form is a customary means of displaying medical text data, where the user is adhering to a schedule.” Ans. 12; 14. [Official Notice II.] The following rejections are before us for review: 1. Claims 1-5 are rejected under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, and Walker. 2. Claims 9 and 10 are rejected under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, Walker, and Official Notice I and II. 3. Claims 11-15 are rejected under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, Walker, and Halvorson. 4. Claims 19 and 20 are rejected under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, Walker, and Halvorson, and Official Notice I and II. Appeal 2010-008224 Application 11/250,029 4 ISSUES Did the Examiner err in rejecting the claims as obvious over the cited prior art combinations? FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. ANALYSIS The rejection of claims 1-5 under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, and Walker. Claims 1, 3, and 5 The Appellants argue that “Whaley, Nakagawa et al., and Walker et al., singly or in combination, fails to disclose or suggest adding an appropriate amount of appropriate medication to each medication section wherein each medication section includes a portion of the printed personalized schedule including an indication of a time of day to take the medication associated with the medication section, as set forth by independent claim 1.”App. Br. 8. We disagree. Nakagawa discloses an appropriate amount of appropriate medication in medication section. See for example Figs. 4(a)-4d) of Nakagawa reproduced below. App App This “eac sche asso Fig. eal 2010-0 lication 11 Figs. 4(a also kno tablets o 13. is not in d The diff h medicati dule ... inc ciated with 2 of the Sp 08224 /250,029 )-4(d) dep wn as blis r capsules ispute. erence betw on section luding an the medic ecification ict prior ar ter packs, in pocket een Naka includes a indication ation sect , reprodu 5 t press thr containing portions (3 gawa and portion o of a time ion” (claim ced below ough pack pharmace 22). See c the claime f the print of day to t 1). This : ages (PTP uticals suc ol. 1, ll. 1 d method ed persona ake the m is exempl s), h as 0- is that lized edication ified in App App As s Tabl the w infor mate desc 83 (F eal 2010-0 lication 11 Figure 2 medicati informat dose of m hown in th et” and “0 The diff ords print mation pr rial absent riptive ma ed. Cir. 1 08224 /250,029 depicts a on with ea ion instruc edication e Figures .5mg”. erence betw ed on the inted. Pate a new and terial and t 994); In re recording ch individ ting whic correspon above, Na een Naka sheet. Thi ntable we unobviou he substra Ngai, 367 6 medium 1 ual section h day and ding to th kagawa in gawa and s is a diffe ight need n s function te. See In F.3d 133 35 and car 220 cont what time e section. stead inclu the claime rence in th ot be give al relation re Lowry, 6, 1338 (F rier for a aining prin to take the des the wo d subject e type of n to descr ship betw 32 F.3d 1 ed. Cir. 20 ted rds “The matter are iptive een the 579, 1582 04). In - Appeal 2010-008224 Application 11/250,029 7 that regard, the Appellants have not come forward with evidence sufficient to show that the the claimed method is functionally affected by printing “an indication of a time of day to take the medication associated with the medication section” as opposed to “The Tablet” and “0.5mg” as disclosed in Nakagawa. Absent such evidence, it is reasonable to conclude that the claim limitation that “each medication section includes a portion of the printed personalized schedule ... including an indication of a time of day to take the medication associated with the medication section” (claim 1) is descriptive and not functionally related to any step in the claimed method and as such falls under the category of patentably inconsequential subject matter. See Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005) (informative). Common situations involving nonfunctional descriptive material are: - a computer-readable storage medium that differs from the prior art solely with respect to nonfunctional descriptive material, such as music or a literary work, encoded on the medium, - a computer that differs from the prior art solely with respect to nonfunctional descriptive material that cannot alter how the machine functions (i.e., the descriptive material does not reconfigure the computer), or - a process that differs from the prior art only with respect to nonfunctional descriptive material that cannot alter how the process steps are to be performed to achieve the utility of the invention. Thus, if the prior art suggests storing a song on a disk, merely choosing a particular song to store on the disk would be presumed to be well within the level of ordinary skill in the art at the time the invention was made. The difference between the prior art and the claimed invention is simply a rearrangement of nonfunctional descriptive material. See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative). Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious. In re Ngai, 367 F.3d Appeal 2010-008224 Application 11/250,029 8 at 1339. Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). Accordingly we are not persuaded as to error in the rejection of claim 1 on the grounds that “Whaley, Nakagawa et al., and Walker et al., singly or in combination, fails to disclose or suggest adding an appropriate amount of appropriate medication to each medication section wherein each medication section includes a portion of the printed personalized schedule including an indication of a time of day to take the medication associated with the medication section, as set forth by independent claim 1.” App. Br. 8. The rejection of claims 3 and 5 is sustained for the same reasons. These claims stand or fall with claim 1. See App. Br. 11. Claims 2 and 4 Claim 2 further limits the method of claim 1 so that “the recording medium is digestible.” The Examiner relies on “Nakagawa Fig:3(a)-(d), 4(b) Items: T, 370 & related text.” Ans. 9. The cited disclosure states: “a metal (backing) foil 370.” Metal foil is not “digestible” as that term is ordinarily and customarily defined; that is, an action by the body to change a substance in order to absorb it. The rejection of claim 2 is reversed. The rejection of Claim 4, which also includes the limitation “the recording medium is digestible” is reversed for the same reason. Appeal 2010-008224 Application 11/250,029 9 The rejection of claims 9 and 10 under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, Walker, and Official Notice I and II. Claim 9 calls for “binding the recording medium in booklet” and claim 10, which further limits the claim 9 booklet, provides that “the booklet represents a pre-determined period of time.” The Examiner took the position that the subject matter of these claim limitations are old and well known in the art. Regarding claim 9, although the Appellants concede the conventionality of binding a recording medium in a booklet (App. Br. 12), “it is not well known to bind a recording medium wherein the recording medium has been divided into medication sections by perforations and an appropriate amount of appropriate medication has been added to each medication section.” App. Br. 12. Appellants’ argument challenging the rejection of claim 9 is not persuasive as to error in the rejection. The Examiner did not make a finding that “bind[ing] a recording medium wherein the recording medium has been divided into medication sections by perforations and an appropriate amount of appropriate medication has been added to each medication section” was well known. Rather, given the conventionality of binding a recording medium in a booklet, it would have been obvious to incorporate this feature in Nakagawa and thereby yield, as expected, the claimed combination. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-416 (2007). The Appellants argument challenging the rejection of claim 10 tracks that of claim 9. The Appellants concede that “it is well known to provide bound printed medical data in a booklet form wherein the booklet represents Appeal 2010-008224 Application 11/250,029 10 a pre-determined period of time.” App. Br. 13. For the same reasons (i.e., in light of KSR), it would have been obvious to incorporate this feature in Nakagawa and thereby yield, as expected, the claimed combination. The rejection of claims 11-15 under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, Walker, and Halvorson. Claims 11, 13, and 15 The challenge to the rejection of claim 11 tracks that if claim 1. Here, too, the Appellants argue that “Whaley, Nakagawa et al., Walker et al., and Halvorson, singly or in combination, fails to disclose or suggest adding an appropriate amount of appropriate medication to each medication section wherein each medication section includes a portion of the printed personalized schedule including an indication of a time of day to take the medication associated with the medication section, as set forth by independent claim 11.” App. Br. 17. For the reasons discussed supra with respect to the rejection of claim 1, we are not persuaded as to error in the rejection of claim 11. The rejection of claims 13 and 15 is sustained for the same reasons. These claims stand or fall with claim 11. See App. Br. 21. Claims 12 and 14 Like claims 2 and 4, via claims 12 and 14, “the recording medium is digestible.” Metal foil is not normally considered “digestible.” Accordingly, the rejection of these claims is reversed. Appeal 2010-008224 Application 11/250,029 11 The rejection of claims 19 and 20 under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, Walker, and Halvorson, and Official Notice I and II. The Appellants arguments are unpersuasive as to error in the rejection of claims 19 and 20 for the same reasons given supra with respect to the arguments challenging the rejection of claims 9 and 10, since the claims are the same. CONCLUSIONS The rejection of claim 1, 3, and 5 under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, and Walker is affirmed. The rejection of claims 2 and 4 under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, and Walker is reversed. The rejection of claims 9 and 10 under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, Walker, and Official Notice I and II, is affirmed. The rejection of claims 11, 13, and 15 under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, Walker, and Halvorson is affirmed. The rejection of claims 12 and 14 under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, Walker, and Halvorson is reversed. The rejection of claims 19 and 20 under 35 U.S.C. §103(a) as being unpatentable over Whaley, Nakagawa, Walker, and Halvorson, and Official Notice I and II, is affirmed. Appeal 2010-008224 Application 11/250,029 12 DECISION The decision of the Examiner to reject claims 1, 3, 5, 9, 10, 11, 13, 15, 19 , and 20 is affirmed. The decision of the Examiner to reject claims 2, 4, 12, and 14 is reversed. Accordingly, the decision of the Examiner to reject claims 1-5, 9-15, 19, and 20 is affirmed-in-part. AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation