10949070 (P.T.A.B. Oct. 11, 2013)

Ex Parte DiMaggio et al

Patent Trial and Appeal BoardOct 11, 2013

10949070 (P.T.A.B. Oct. 11, 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. 10/949,070 09/24/2004 John P. DiMaggio 036806-514-C1 3873 7590 10/15/2013 Louis C. Dujmich Ostrolenk, Faber, Gerb & Soffen, LLP 1180 Avenue of the Americas New York, NY 10036-8403 EXAMINER NAJARIAN, LENA ART UNIT PAPER NUMBER 3686 MAIL DATE DELIVERY MODE 10/15/2013 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 P. DIMAGGIO, MARY EDITH POTTS-HOZLOCK, and THOMAS JOSEPH WEISS ____________________ Appeal 2011-010501 Application 10/949,070 Technology Center 3600 ____________________ Before: STEFAN STAICOVICI, CHARLES N. GREENHUT, and BART A. GERSTENBLITH, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010501 Application 10/949,070 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 3-13, and 16-19. We have jurisdiction under 35 U.S.C. § 6(b). This appeal is related to appeals 2011-011323 (U.S. Application no. 11/384,555), 2010- 011350 (U.S. Application no. 10/610,681), and 2011-007945 (U.S. Application no. 11/384,554). We reverse. The claims are directed to a method of dispensing pharmaceuticals. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for electronically assisting in dispensing pharmaceuticals to patient care facilities, the method comprising: receiving a prescription order; conducting a triage data entry on the prescription order, the triage data entry comprising the steps of: determining if an intervention is associated with the prescription order, the intervention being clinical or non- clinical; if there is no associated intervention, proceeding to order entry; if there is an associated intervention, determining if the intervention is clinical or non-clinical, and if it is clinical, resolving the intervention with the assistance of a pharmacist and then proceeding to order entry; if the intervention is non-clinical, passing the prescription order to a further work station for resolution of the non-clinical intervention, and once resolved, then proceeding to order entry; conducting the order entry on the prescription order by entering data associated with the prescription order into a computer system including an intervention database; based on features of the order, associating with the order an intervention from the intervention database, the intervention being associated with a route through the system; and Appeal 2011-010501 Application 10/949,070 3 routing data associated with the prescription order along the route associated with the intervention; wherein the intervention includes an identifier that identifies a route through the system, further comprising: checking the prescription order, the step of checking comprising comparing the prescription order to the entered data; once the prescription order is checked, generating a prescription label to be placed on a prescription medication in accordance with the prescription order, the prescription label including a first barcode identifying the medication, the patient and the patient care facility; thereafter verifying the type and quantity of product identified in the prescription order, said step of verifying comprising: scanning the first barcode and a second barcode disposed on the prescription medication to determine that the prescription medication is in conformity with the prescription order; and if the first and second barcodes agree, placing the prescription medication in a delivery tote for delivery to the patient care facility; and if not, redirecting the prescription medication for further review; the delivery tote having a third barcode identifying the patient care facility, and if the first and second barcodes agree, scanning the third barcode to determine that the prescription order is correctly associated with the delivery tote. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Rhodes East Mahar Krupa U.S. 5,666,492 U.S. 5,963,453 U.S. 6,769,228 B1 U.S. 6,976,628 B2 Sep. 9, 1997 Oct. 5, 1999 Aug. 3, 2004 Dec. 20, 2005 Kapp U.S. 2002/0010595 A1 Jan. 24, 2002 Appeal 2011-010501 Application 10/949,070 4 Rice Sullivan Broussard U.S. 2002/0029223 A1 U.S. 2002/0077865 A1 U.S. 2004/0138921 A1 Mar. 7, 2002 Jun. 20, 2002 Jul. 15, 2004 REJECTIONS Claims 1 and 4-6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rice, Krupa, Mahar, and Sullivan. Ans. 4. Claims 3 and 7-9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rice, Krupa, Mahar, Sullivan, and Broussard. Ans. 8-9. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Rice, Krupa, Mahar, Sullivan, and Kapp. Ans. 10. Claims 11-13, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rhodes, East, Krupa, Mahar, and Sullivan. Ans. 10. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rhodes, East, Krupa, Mahar, Sullivan, and Kapp. Ans. 15. OPINION Each of the independent claims involved in this appeal requires “conducting a triage data entry on the prescription order” which includes “determining if an intervention is associated with the prescription order” and if so, “determining if the intervention is clinical or non-clinical.” App. Br., Claims App’x. The claims further define the procedure followed in each case, clinical or non-clinical. See id. The Examiner found that Rice discloses determining if an intervention is associated with the order. Ans. 5 (citing Rice para. [0013]). However, the Examiner found that Rice does not disclose determining if the intervention is Appeal 2011-010501 Application 10/949,070 5 clinical or non-clinical. The Examiner cites Sullivan for this step. Ans. 7-8 (citing Sullivan paras. [0136] and [0140]). The Examiner found that Sullivan discloses resolving the intervention with the assistance of a pharmacist if the intervention is clinical. Ans. 8. The Examiner did not make any finding that Sullivan does anything in particular if the intervention is determined to be “non-clinical.” Rather, the Examiner appears to rely on Rice for the step to be performed if the intervention is determined to be “non-clinical.” Ans. 5 (citing Rice paras. [0037]-[0039], figs. 1, 3). Appellants’ Specification expressly defines what is meant by “clinical” and “non-clinical”: By “clinical action”, we mean an action that should be performed by a user having a requisite degree of pharmaceutical training or, in some cases, a user being supervised by a supervisor having a requisite degree of pharmaceutical training. A “non-clinical action” refers to any other action not requiring pharmaceutical training. . . . . . . . . . . The non-clinical tasks 54 may be divided into customer service tasks 56 and order entry tasks 58. Examples of clinical tasks include, for example, communicating with facilities (e.g., nursing homes, hospitals) regarding, for example, clinical medication issues (e.g., drugs, dosages, interactions, etc.), undertaking care planning, prioritizing activities to optimize workflow, reviewing orders of new facilities and interacting with order entry staff and verifying pharmacists. Examples of customer service tasks include, for example, prioritization of customer service requests (e.g., by department, urgency and action required to respond), researching questions, issues and incidents, preparing incident reports and overseeing quality control. Examples of order entry tasks include, for example, collection of facsimiles, prioritizing and sorting new and refill orders, reviewing orders for Appeal 2011-010501 Application 10/949,070 6 completeness, interacting with billing, initiating clinical services, researching questions for clinical pharmacist, reviewing orders of new facilities and providing filing/clerical support. Spec. 5, 8. The portions of Rice cited by the Examiner relate to drug interactions—a function expressly defined by Appellants as “clinical.” While the Examiner does not appear to rely on Sullivan to meet this limitation, the portions of Sullivan cited by the Examiner relate to drug interactions and allergies. Like interactions, we believe drug allergies would also be understood in light of the Specification to relate to an issue requiring “clinical” intervention. Thus, as Appellants point out, the record before us does not appear to address the step of making a determination if the intervention is clinical or non-clinical. See Reply Br. 2-3. The cited prior art and the Examiner’s explanation also do not appear to address the limitation regarding the course of action that must be followed should the determination be made that the intervention is “non-clinical.” Accordingly, we cannot sustain the Examiner’s rejections. Appeal 2011-010501 Application 10/949,070 7 DECISION The Examiner’s rejections are reversed. REVERSED msc