Ex Parte DiMaggio

Patent Trial and Appeal Board

Aug 28, 2013

11384554 (P.T.A.B. Aug. 28, 2013)

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.
11/384,554 03/20/2006 John DiMaggio P/4683-17 7753
2352 7590 08/28/2013
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
BUTLER, MICHAEL E
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
08/28/2013 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 JOHN DIMAGGIO
____________________

Appeal 2011-007945
Application 11/384,554
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, CHARLES N. GREENHUT, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007945
Application 11/384,554

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2 and 4-10. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a method and system for electronic
assistance in dispensing pharmaceuticals. Claim 1, reproduced below, with
emphasis added, is illustrative of the claimed subject matter:
1. A method for electronically assisting in
dispensing pharmaceuticals in one or more
pharmacies, said method comprising the steps of:
configuring an electronic system to process
a prescription order by:
defining how the system respectively
operates for different users;
defining a check to be performed on the
prescription order;
categorizing the check, and defining a
number of times that the check is to be performed
by the system as a function of the categorizing;
setting a severity level for the check and
triggering a respective warning as a function of the
severity level;
defining whether the check is to be
performed on a pharmacy by pharmacy basis;
receiving, by the system, data from a user
pertaining to the prescription order;
processing the prescription order and
verifying that the prescription order is correct;
further comprising:
generating a prescription label having a first
barcode associated with the prescription order, said
prescription label identifying the required
prescription medication, patient and a healthcare
facility at which the patient is located;
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retrieving prescription medication in
accordance with the prescription label;
determining if the prescription medication
has a second barcode associated therewith
identifying the prescription medication and if so,
scanning the second barcode to determine if the
prescription medication corresponds to the
prescription order; and
if the prescription medication does not have
a second barcode,
having a qualified individual determine if
the retrieved prescription medication is correct,
and if so,
generating a third barcode that is approved
by the qualified individual and affixing the third
barcode to the medication; said third barcode
identifying the qualified individual who inspected
the medication to determine that it is correct, the
date of the inspection and a unique sequence
number, said unique sequence number allowing
the third barcode to be scanned only once on the
date of the inspection.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mayaud
Chudy
US 5,845,255
US 6,370,841 B1
Dec. 1, 1998
Apr. 16, 2002

REJECTIONS
Claims 1, 2 and 4-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mayaud and Chudy. Ans. 3.

Appeal 2011-007945
Application 11/384,554

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OPINION
Claim 1 is the sole independent claim in this case. Appellant and the
Examiner appear to generally agree as to what the prior art discloses. The
issues in this case relate to the proper construction of the claim, in particular,
the conditional clauses emphasized above.
The Examiner’s interpretation of this language is summarized on page
7 of the Answer:
Applicant has premised the generation of a third barcode
label upon a condition that is a function of an external attribute
wherein that attribute of the article being worked upon. If the
prescription medication is both incorrect and lacks a second
barcode, the condition for generating the third barcode is
premised upon a condition that might not come about and does
not exist so the limitation is not present. As such, applicant's
limitation of generating the third barcode is absent. Applicant
may not distinguish his claim from the prior art premised upon
the external condition of the unclaimed item worked upon.
Chudy et al. generates a third barcode if the prescription
does not have a second barcode.
Chudy et al. generates the barcode unconditionally. As
such Chudy et al. satisfies the limitation. As applicant points
out Chudy et al. prints all the time. Since Chudy et al. does
generate the third barcode all the time it also means it prints the
barcode if the prescription does not have a second barcode.
Printing the third barcode is correct and printing a third barcode
if the second barcode is incorrect satisfies the claim limitation
of printing a third barcode if the second barcode is correct. The
claim does not have a required step if the barcode is incorrect.
As such, Chudy et al. teaches the limitation of printing a third
barcode if the second barcode is incorrect, the limitation is
satisfied.

The Examiner concludes that it would have been obvious to
affix three bar code readable labels to medication package sets
and supersets to of medications as in Mauyaud [sic] to maintain
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Application 11/384,554

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verify correctness chain and to assist in directing the medication
to the correct location as taught by Chudy et al.
Ans. 6.
Conditional language must be construed like any other language of the
claim. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F. 3d 1363 (Fed. Cir.
2003). The first condition regarding the presence of the second label does
not present a situation where the claim recites only an antecedent condition
and consequent—something that is arguably satisfied by always performing
the consequent. For example, in a purely logical context, “if A then B” is
satisfied by “always B.” Rather, the claim requires making a decision if the
label is present and specifies what happens both if the label is present and if
it is not. Reply Br. 2. In contrast, the second condition “if so” or “if [the
medication is incorrect]” imposes no such restriction. With respect to the “if
so” condition the Examiner raises a valid point: the claim does not expressly
require any specific step to be performed if the medication is incorrect or
that the third barcode only be generated if the medication is correct. We
recognize that a compelling argument could be made that one skilled in the
art would not understand the claim to cover a process that includes affixing a
misleading label to incorrect medication. However, to interpret the claim in
this way would arguably be reading “only” into the claim prior to “if so”
where there is no express basis for that language.
While the Examiner’s interpretation of the “if [the medication is
correct]” condition at issue may, arguably, be reasonable, we cannot agree
with the Examiner’s interpretation of the “if the prescription medication
does not have a second barcode” limitation as essentially being optional or
extraneous since the claim specifies different steps to be performed “if the
prescription medication has a second barcode.” Even assuming the
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Examiner’s interpretation of the “if so” clause is reasonable, the result of all
the possible permutations of the claimed process is never a process in which
three barcodes are affixed to the medication as the Examiner suggests. See
Ans. 6. The possible combinations are first barcode and second barcode; first
barcode and third barcode (when there is no second barcode and the
medication is correct); and first barcode with or without the third barcode
(when there is no second barcode and the medication is incorrect).
Accordingly, we find ourselves in agreement with Appellant that the
Examiner has not properly construed the scope of the claim for purposes of
determining patentability. Thus, we are constrained to reverse the
Examiner’s rejection.

DECISION
The Examiner’s rejection is reversed.

REVERSED

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