10121472 (B.P.A.I. Mar. 30, 2011)

Ex Parte Fralic

Board of Patent Appeals and InterferencesMar 30, 2011

10121472 (B.P.A.I. Mar. 30, 2011)

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. 10/121,472 04/11/2002 Donald R. Fralic 3633-020645 1802 7590 03/30/2011 Webb Ziesenheim Logsdon Orkin & Hanson, P.C. Suite 700 436 Seventh Avenue Pittsburgh, PA 15219 EXAMINER KOPPIKAR, VIVEK D ART UNIT PAPER NUMBER 3686 MAIL DATE DELIVERY MODE 03/30/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DONALD R. FRALIC ____________ Appeal 2010-007328 Application 10/121,472 Technology Center 3600 ____________ Before, MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH A. FISCHETTI, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-007328 Application 10/121,472 Appellant has filed a Request for Rehearing under 37 C.F.R. § 41.50(b)(2) (2007) and 37 C.F.R. § 41.52(a)(1) (2007) for reconsideration of our Decision dated November 23, 2010. In the Decision, we found that the Examiner did not err in rejecting claims 1-4 and 6-15 under 35 U.S.C. 103(a) as being unpatentable over United Healthcare in view of Sloane and in further view of Hardesty and "Whither Medicare". Points Raised by Appellant on Reconsideration: 1. Appellant maintains that the issue statement in the Decision is misplaced. (Request 2). However, Appellant fails to recognize that our Decision frames the issue in response to Appellant’s corresponding assertion that: …prescription drugs are sold in a highly regulated environment with required participation of medical doctors, pharmacists, and possibly, insuring entities….the mobile apparatus disclosed in the Sloane et al. document, which is used in an unregulated retail shopping environment (not a regulated prescription drug distribution environment), is not suitable, and would not be utilized, for buying prescription drugs.” (Appeal Br. 4). As we found in our Decision (page 5), Sloane discloses a plan where the user has a choice between comparable products (Answer 5). Thus, Sloane is important to the combination under 35 U.S.C. § 103(a) in that it supports the requirement of selecting a first form of a prescription drug over Appeal 2010-007328 Application 10/121,472 3 a second, more costly form of the prescription drug. Our framing of the issue in this manner was thus necessary to illustrate how-over-the counter medicines prescribed by a physician, such as sold in Sloane, meet the claim requirement of a “prescription drug”. Hence, we disagree with Appellant that an over-the-counter medication cannot be a prescription drug (Request 5), because, as we found in our Decision, we interpret a prescription drug to be any medication which is prescribed by a physician. (Decision 6). During prosecution the PTO gives claims their “broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Limitations appearing in the specification but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) 2. Appellant also asserts: that Sloane "teaches finding a comparable product (i.e. prescription) at a lower price (or at a different price) and this step necessarily determines a cost difference between two forms of a similar product)" does not have any bearing on United Healthcare meeting the limitations of claims 1 and 10 that the participants voluntarily participate in the plan. Mandatory in United Healthcare is the opposite of voluntary in claims 1 and 10. (Request 4). Initially, we note that the Examiner found that Medicare provides an explicit teaching of a voluntary participation in a plan. (Answer 6). While not immediately apparent from our Decision’s initial response to point 2 supra, the Decision nevertheless on page 7 confirmed this Examiner’s Appeal 2010-007328 Application 10/121,472 4 finding as correct, and moreover extended its analysis as why a person with ordinary skill in the art would combine the voluntary feature of Medicare with the feature of choosing a lesser known brand drug in exchange for savings. (Decision 7). The Decision thus more importantly clearly states that neither we nor the Examiner relied in any way on the mandatory feature disclosed in United Healthcare, but instead found that Medicare and/or Sloane1 teach voluntary participation in a plan in lieu of the mandatory feature in United Healthcare. (Decision 6, 7). 3. Appellant asserts that, “… it should be understood that reimbursement for payment of the prescription drug (or non-prescription drug) is completely different than allocating a percentage of a cost difference between two different forms of the same prescription drug.” (Request 5). We find Appellant’s argument unpersuasive because the Examiner found that allotting a cost difference between at least two participants is taught by Hardesty at ¶ [0010]. (Answer 5). Our Decision confirmed (Decision 7) that Hardesty at this section discloses cost savings in the form of rebates that can be distributed to other persons, such as charities. (Decision, FF 3). Thus, the argument is not well taken because the Appellant is attacking Sloane for not teaching allocating, when the Examiner 1 Sloane discloses choosing between comparable products (Answer 5), and hence discloses operating in a voluntary system because the operation of “choosing” connotes a non-mandatory condition. Even more, Sloane at column 13, lines 26-29 of Sloan discloses the shopper voluntarily participating in the “Show Me” plan wherein the shopper may select between a name brand, or a store brand product. Appeal 2010-007328 Application 10/121,472 5 relied on Hardesty for the allocating feature. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968). 4. Appellant however ultimately argues that “…the rebate in Hardesty is allocated to the consumer who can choose how the rebate is distributed. To this end, allocating a cost difference between at least two enrolled participants in claims 1 and 10 is simply not the same as rebates to individual consumers in Hardesty who can then choose to distribute their rebates to others, such as charities. (Request 6) We disagree with Appellant because the Decision at (FF 3) found that Hardesty discloses allocating value between the recipient customer and a designated beneficiary. We further found that: … a person with ordinary skill in the art would know to use the rebate distribution feature of Hardesty in the context of a heath care plan to pass on savings to another participant, particularly in the context of, e.g., family flexible spending accounts (FSA). With such FSA plans, savings can be earned and distributed against a family limit which would result in other family member participants receiving additional care without surpassing the prescribed limit. Thus, in such scenarios, cost savings would be realized among participant family members. (Decision 7). This is consistent with a similar family-based sharing feature disclosed Hardesty wherein the rebate value can be allocated between the consumer’s heirs ([0034]). Accordingly, we are not persuaded by Appellant’s assertions here. Appeal 2010-007328 Application 10/121,472 6 5. For the reasons above, we are not convinced that Appellant has shown with particularity points believed to have been misapprehended or overlooked by the Board in rendering its earlier decision. Accordingly, Appellant’s Request for Rehearing insofar as Appellant seeks an establishment error in the Decision of the Board is Denied. DECISION Our decision to affirm the decision of the Examiner to reject the claims on appeal under 35 U.S.C. § 103(a) over "United Healthcare” in view of Sloane and in further view of Hardesty and "Whither Medicare" has not been shown to have been erroneous. However, because in so affirming we used a different rationale than that articulated by the Examiner with respect to the issue of voluntary participants, we grant the request for rehearing only to the extent that we denominate the Decision a new ground of rejection under 37 C.F.R. § 41.50(b). 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) (2007). REHEARING GRANTED ONLY AS TO DENOMINATE A NEW GROUND OF REJECTION UNDER 37 CFR 41.50(b) Appeal 2010-007328 Application 10/121,472 7 MP