Ex Parte Francis et alDownload PDFBoard of Patent Appeals and InterferencesJul 9, 201010190666 (B.P.A.I. Jul. 9, 2010) Copy Citation 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." Appeal 2009-008483 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 Copy with citationCopy as parenthetical citation