Ex Parte Francis et al

Board of Patent Appeals and Interferences

Jul 9, 2010

10190666 (B.P.A.I. Jul. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
TJnited States Patent and Trademark Office
Add,&: COMMISSIONER FOR PATENTS
P 0 Box 1450
Alexandria, Virginia 22313-1450
www uspto go"
26884 7590 07/09/20 10
PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
3097 Satellite Blvd., 2nd Floor
Duluth, GA 30096
APPLICATION NO.
EXAMINER
LE, LINH GIANG
10/190,666 07/09/2002 John Brian Francis 10279.00 3574
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
MAIL DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
PTOL-90A (Rev. 04/07)
CONFIRMATION NO.
07/09/2010 PAPER
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte JOHN BRIAN FRANCIS and
JOHN C. GOODWIN I11
Appeal 2009-008483
Application 1011 90,666
Technology Center 3600
Decided: July 9, 20 10
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008483
Application 1011 90,666
STATEMENT OF THE CASE
John Brian Francis, et al. (Appellants) seek our review under 35
U.S.C. 5 134 of the final rejection of claims 1-18. We have jurisdiction
under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM-IN- PART.^
THE INVENTION
The invention is directed to refilling prescriptions via a kiosk.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of refilling a prescription comprising the steps of:
(a) displaying a prompt to enter customer identification
information by a pharmacy kiosk;
(b) recording the customer identification information by the
pharmacy kiosk;
(c) displaying a prompt to a user to scan a barcode containing
prescription information from a previous transaction by the pharmacy
kiosk;
(d) recording the prescription information by the pharmacy
kiosk using the barcode reader;
(e) determining corresponding price information for a refill of
the prescription by the pharmacy kiosk; and
(f) processing payment for the refill by the pharmacy kiosk.
2 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed Jan. 4, 2008) and the Examiner's Answer ("Answer," mailed Apr. 1,
2008).
Appeal 2009-008483
Application 1011 90,666
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability :
Rosenblum US 6,766,218 B2 Jul. 20, 2004
Feeney, Jr. US 200210032582 A1 Mar. 14, 2002
The following rejection is before us for review:
1. Claims 1-19 are rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Rosenblum and Feeney.
ISSUES
The first issue is whether claim 1 is unpatentable over Rosenblum and
Feeney under 35 U.S.C. 5 103(a). Specifically, the issue is whether one of
ordinary skill in the art would have been led by Rosenblum and Feeney to a
step of displaying a prompt to a user to scan a barcode containing
prescription information from a previous transaction by the pharmacy kiosk.
The rejection of claims 2-3, 6-1 1 and 16-18 also turn on this issue.
The second issue is whether claims 4 and 5 are unpatentable over
Rosenblum and Feeney under 35 U.S.C. 5 103(a). Specifically, the issue is
whether one of ordinary skill in the art would have been led by Rosenblum
and Feeney to a step of displaying a prompt to scan a barcode on a container
form a previous refill transaction.
The third issue is whether claim 12 is unpatentable over Rosenblum
and Feeney under 35 U.S.C. 5 103(a). Specifically, the issue is whether one
of ordinary skill in the art would have been led by Rosenblum and Feeney to
a step of displaying payment information in the customer account by a
pharmacist terminal to verify that payment was made.
Appeal 2009-008483
Application 1011 90,666
The fourth issue is whether claim 13 is unpatentable over Rosenblum
and Feeney under 35 U.S.C. 5 103(a). Specifically, the issue is whether one
of ordinary skill in the art would have been led by Rosenblum and Feeney to
a step of displaying the payment status to a pharmacist.
The fifth issue is whether claim 14 is unpatentable over Rosenblum
and Feeney under 35 U.S.C. 5 103(a). Specifically, the issue is whether the
Examiner has established a prima facie showing of obviousness in rejecting
claim 14.
The sixth issue is whether claim 15 is unpatentable over Rosenblum
and Feeney under 35 U.S.C. 5 103(a). Specifically, the issue is whether
claim 15 requires a method that is performed by a customer and requires that
a customer scan the barcode.
FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Znc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Rosenblum describes a medication dispenser that has a user interface
with a touch screen monitor. Col. 11,l. 65-col. 12,l. 1.
2. Rosenblum describes a patient entering a voucher number for a valid
prescription into the dispenser to retrieve their medication. Col. 5,ll.
45-61.
3. Rosenblum describes that a physician transmits a patient's
prescription information, including the voucher number, to the
dispenser. See col. 9,ll. 56-65.
Appeal 2009-008483
Application 1011 90,666
4. Rosenblum describes barcode scanners 120 and 121 that are used to
scan a barcode on a product in the dispenser before it is dispensed.
Col. 12,l. 66-col. 13,l. 1 1.
5. Rosenblum also describes a label printer 122 that prints a label having
a barcode. Col. 12,l. 66-col. 13,ll. 3 and 14- 16.
6. Rosenblum describes, in column 4, lines 17-25, describes a central
server 2000 that process credit card transactions.
7. Rosenblum depicts, in figure 1, central server 2000 having a monitor.
8. Feeney discloses a physician using a scanner to enter prescription
information. Feeney [02 191.
9. Feeney in Figure 1 depicts the scanner 26, which appears to be a paper
scanner, connected to the medical office system. See Figure 1. See
also Feeney [O 1751.
10.Feeney describes a dispenser using a scanner to scan barcodes on
medication containers or bottles to verify that the correct medication
is being dispensed. Feeney [0226] and [0230]-[0234]. 1.
11 .Feeney, in paragraphs [0294]- [0299], describes that the dispenser
processes credit card transactions for a consumer.
ANALYSIS
The rejection of claim 1 under §103(a) as being unpatentable over
Rosenblum and Feeney.
The Appellants argue claims 1-3, 6- 1 1 and 16- 18 as a group (See Br.
13). We select claim 1 as the representative claim for this group, and the
Appeal 2009-008483
Application 1011 90,666
remaining claims 2-3, 6- 11 and 16-1 8 stands or falls with claim 1. 37 C.F.R.
5 41.37(c)(l)(vii) (2009).
The Appellants seem to argue that the Examiner's combination of
Rosenblum and Feeney fails to teach step "(c) displaying a prompt to a user
to scan a barcode containing prescription information from a previous
transaction by the pharmacy kiosk" of claim 1. Br. 11- 13. The Appellants
argue that portions of Feeney cited by the Examiner do not teach a barcode
that includes prescription information from a previous transaction by a
pharmacy kiosk, as require by claim 1, but instead teach a barcode on a
container of medicine that verifies the contents of the medicine. Br. 11-12.
The Appellants argue that:
[blecause claim 1 recites a step of scanning a
barcode that includes "prescription information
from a previous transaction by the pharmacy
kiosk," and because Feeney fails to disclose the
incorporation of any prescription information from
a previous transaction into a barcode, modification
of Rosenblum with the teaching of Feeney fails to
arrive at the invention recited in claim 1.
Br. 12.
The Examiner responds that it is the combination of Rosenblum and
Feeney that teaches this limitation. See Answer 7-9.
We agree with the Examiner that the combination of Rosenblum and
Feeney teach these recited steps. Rosenblum discloses, in column 11, line
65-col. 12, line 1, that the dispenser has a user interface with a touch screen
monitor and discloses, in column 5, lines 45-61, cited by the Examiner (See
Answer 3-4) , a patient inputting a voucher number of a valid prescription
into the dispenser in order to receive their medication. FF 1-2. Rosenblum
Appeal 2009-008483
Application 1011 90,666
also discloses that the physician has previously transmitted the prescription
information, with the voucher number, to the dispenser. See FF 3.
We find that the Rosenblum's voucher number corresponds to the
claimed prescription information. We note that clam 1 broadly recites that
the prescription information is from a "previous transaction by the pharmacy
kiosk" but does not require that the "previous transaction" be a previous
dispensing of medication by the kiosk and does not preclude the previous
transaction from being considered the receiving of prescription information
from the physician by the kiosk. Given the above disclosures, we find that
Rosenblum's voucher number teaches the recited prescription information
from a previous transaction by the pharmacy kiosk. Further, we find that
Rosenblum does not teach that the voucher number is in the form of a
barcode or that the voucher number is recorded by the kiosk using a barcode
reader.
While we agree with the Appellants that the cited portions of Feeney
disclose: 1) a physician using a scanner, which may not be a barcode
scanner, (see FF 1-8) and 2) a dispenser using a scanner to scan barcodes
that contain information about the identity of a medication (see FF 10) not
the identity of a prescription, we find these description more broadly teach
that barcodes and barcode reader are a means for entering information. "A
person of ordinary skill is also a person of ordinary creativity, not an
automaton." KSR Znt'l Co. v. Telejlex Znc., 550 U.S. 398, 421 (2007). See
also Allvoice Computing PLC. V. Nuance Communications, Znc., 504 F.3d
1236, 1242 (Fed. Cir. 2007).
The Supreme Court emphasized that "the principles laid down in
Graham reaffirmed the 'functional approach' of Hotchkiss, 11 How. 248."
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Application 1011 90,666
KSR, 550 U.S. at 415 (citing Graham, 383 U.S. at 12 (emphasis added)), and
reaffirmed principles based on its precedent that "[tlhe combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR, 550 U.S. at 416. The
operative question in this "functional approach" is "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." KSR, 550 U.S. at 415.
Given the above teachings of Rosenblum and Feeney, we find that one
of ordinary skill in the art would have been led to make the voucher number
of Rosenblum a barcode and to provide the dispenser of Rosenblum with a
barcode reader as a means of entering the voucher number into the
dispenser. This is nothing more than using a barcode and barcode reader for
its known function of inputting data and the combination does no more than
yield predictable results.
Accordingly, we find that the Appellants have not overcome the
rejection of claim 1, and claims 2-3, 6- 1 1 and 16- 18, which stand or fall with
claim 1, under 35 U.S.C. 5 103(a) as unpatentable over Rosenblum and
Feeney .
The rejection of claims 4 and 5 under 35 USC §103(a) as being
unpatentable over Rosenblum and Feeney.
The Appellants argue that both claims 4 and 5 require that the scanned
barcode is from a previous refill transaction and then assert that Feeney does
not disclose scanning a barcode from a previous refill transaction. Br. 14.
The Examiner does not directly respond to this argument, but cites to
Appeal 2009-008483
Application 1011 90,666
column 12, line 66 to column 13, line 11 of Rosenblum to teach both of
these limitations in the rejection. Answer 5.
Claim 4 recites "displaying a prompt to scan a barcode on a receipt
from a previous refill transaction," and claim 5 recites "displaying a prompt
to scan a barcode on a container from a previous refill transaction." Column
12, line 66 to column 13, line 11 of Rosenblum describes barcode scanners
120 and 121. FF 4. Rosenblum describes that these barcode scanners 120
and 121 scan a barcode on the product in the dispenser before it is dispensed.
Id. Further, we note that the cited passage describes a label printer 122 and
that Rosenblum describe the label printer printing a barcode on the label of
the dispensed package. FF 5. However, Rosenblum's descriptions of
barcode scanners 120 and 121 and label printer 122 do not teach an act of
displaying a prompt to scan a barcode as recites in claims 4 and 5. The
Examiner provides no other provides no other rationale to find these steps
obvious, other than stating that the step is taught by Rosenblum.
Accordingly, we find that the Appellants have overcome the rejection
of claims 4 and 5 under 35 U.S.C. 5 103(a) as being unpatentable over
Rosenblum and Feeney.
The rejection of claim 12 under §103(a) as being unpatentable over
Rosenblum and Feeney.
The Appellants argue that column 4, lines 17-25 of Rosenblum, cited
by the Examiner, does not teach a step of "displaying payment information
in the customer account by a pharmacist terminal to verify that payment was
made" because the cited passage is "devoid of any mention whatsoever of
any user interface, much less a pharmacist terminal." Br. 15- 16. The
Appeal 2009-008483
Application 1011 90,666
Examiner responds that the cited passage describes a central server 2000 that
processes transactions including credit card processing. Answer 9- 10. The
Examiner asserts that the passage correlates to Rosenblum's Figure 1 which
shows central server 2000 connected to a user interface. Answer 10. The
Examiner then construes "pharmacy terminal" to means "any user interface
and computer that processes prescription information." Id.
Claim 12 recites a method that requires an act of displaying payment
information. While Figure 1 does show central server 2000 including a
monitor and central server 2000 is described as processing credit card
transactions (FF 6-7), Rosenblum does not teach the act of displaying
payment information by the central server 2000 as recited by claim 12. The
Examiner provides no other provides no other rationale to find this step
obvious, other than stating that the step is taught by Rosenblum.
Accordingly, we find that the Appellants have overcome the rejection
of claim 12 under 35 U.S.C. 5 103(a) as being unpatentable over Rosenblum
and Feeney.
The rejection of claim 13 under §103(a) as being unpatentable over
Rosenblum and Feeney.
The Appellants argue that paragraphs [0294]- [0299] of Feeney, cited
by the Examiner, do not teach a step of "displaying payment status to a
pharmacist." Br. 19-20. The Examiner does not directly respond to this
argument (see Answer 7-12) and provides no other rationale to find this step
obvious, other than stating that the step is taught in the cited paragraphs of
Feeney (Answer 6).
Appeal 2009-008483
Application 1011 90,666
We agree with the Appellants. The cited paragraphs of Feeney
describe a consumer interacting with the system to pay for medication (FF
11) but does not describe an act of "displaying payment status to a
pharmacist" as required by claim 13.
Accordingly, we find that the Appellants have overcome the rejection
of claim 13 under 35 U.S.C. 5 103(a) as being unpatentable over Rosenblum
and Feeney.
The rejection of claim 14 under §103(a) as being unpatentable over
Rosenblum and Feeney.
The Appellants argue that "because the Examiner has failed to
identify any basis for the rejection of claim 14, the rejection of claim 14 is
improper." Br. 20. The Examiner responds that page 2 of the July 31, 2007
Final Office Action [hereinafter, Final Office Action] included claim 14 in
the statement of the rejection that claim 14 repeats the limitations of claim 1.
Answer 12.
While we agree that the Final Office Action does not separately
address claim 14, claim 14 was included in the statement of the rejection
(Final Office Action 2) and, therefore, it is plain that the Examiner takes the
position that the combination of Rosenblum and Feeney render obvious the
subject matter of claim 14. Further, independent claim 14 recites a
combination of the limitations recited in claims 1, 8, and 10. The Examiner
separately and specifically addresses where the subject matter of each of
these claims is taught in the cited references and articulates reasoning with
some rational underpinning to support the legal conclusion of obviousness.
See Answer 3-6, Final Office Action 2-5. Therefore, we find that the
Appeal 2009-008483
Application 1011 90,666
Examiner has addresses the claimed subject matter and has established a
prima facie case of obviousness for the claimed subject matter.
Since the Appellants have provided no arguments to rebut the prima
face case, we find that Appellants have not overcome the rejection of claim
14 under 35 U.S.C. 5 103(a) as being unpatentable over Rosenblum and
Feeney .
The rejection of claim 15 under §103(a) as being unpatentable over
Rosenblum and Feeney.
The Appellants argue that the method of claim 15, specifically steps
(c) and (d), is performed by a customer. See Br. 21-22. The Appellants
assert:
Therefore, because claim 15 recites refilling
a prescription by a customer scanning a barcode
that is in the possession of the customer and which
contains prescription information and because
Feeney fails to disclose a customer scanning a
barcode for refilling a prescription or the
incorporation of any prescription information in a
bottle label, modification of Rosenblum with the
teaching of Feeney fails to arrive at the invention
recited in claim 15.
BR. 22.
We find that the Appellants' arguments are directed to limitations not
required by claim 15. Claim 15 does not require the method, including steps
(c) and (d), be performed by a customer. Claim 15 recites "(c) displaying on
a display to a user a prompt to scan a barcode in the possession of the user
and containing prescription information; (d) recording the prescription
information by the pharmacy kiosk using the barcode reader." Step (c)
Appeal 2009-008483
Application 1011 90,666
broadly recites a "user" and claim 15 does not recite any other limitations
that require the user to be a customer. Nor does claim 15 recite any
limitations that require the recording step (d) to be performed by a customer
using a barcode reader. Further, we note that claim 15 does not require that
the barcode, which contains the prescription information, be incorporated on
a bottle label. Claim 15 does not recite a bottle or a label.
Finally, in as much as the Appellants argue the bar code of Feeney
does not contain prescription information (See Br. 21-22), we refer to our
reasoning above in addressing this argument with respect to claim 1.
Therefore, we find that the Appellants have not overcome the Examiner's
rejection of claim 15 under 5 103(a) as being unpatentable over Rosenblum
and Feeney.
The rejection of claim 19 under §103(a) as being unpatentable over
Rosenblum and Feeney.
Claim 19 was rejected under 5 103(a) as being unpatentable over
Rosenblum and Feeney on page 2 of the Final Office Action mailed on July
3 1, 2007 and page 1 of the Notice of Appeal filed November 2, 2007 lists
claim 19 as being appealed. However, in their Appeal Brief, the Appellants
state that "[tlhe rejection of claim 19 is not appealed" (Br. 2) and present no
arguments rebutting the rejection of claim 19. Therefore, we shall
summarily sustain the rejection of claim 19 under 5 103(a).
DECISION
The decision of the Examiner to reject claims 1-3, 6-1 1, and 14-19 is
affirmed.
Appeal 2009-008483
Application 1011 90,666
The decision of the Examiner to reject claims 4, 5, 12, and 13 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a)(l)(iv) (2007).
AFFIRMED-IN-PART
mev
PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
3097 SATELLITE BLVD., 2ND FLOOR
DULUTH GA 30096