Ex Parte Henkel

Board of Patent Appeals and Interferences

Nov 16, 2011

11134113 (B.P.A.I. Nov. 16, 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.
11/134,113 05/20/2005 Claus Henkel 34662-291613 9818
23342 7590 11/16/2011
KILPATRICK TOWNSEND & STOCKTON LLP
1001 WEST FOURTH STREET
WINSTON-SALEM, NC 27101
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
11/16/2011 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 CLAUS HENKEL
____________________

Appeal 2010-000582
Application 11/134,113
Technology Center 3700
____________________

Before: STEVEN D. A. MCCARTHY, ROBERT A. CLARKE, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000582
Application 11/134,113
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3-7, and 25-38. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to systems of automated tablet dispensing,
prescription filling, and packaging. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A system for automated tablet dispensing comprising: a
canister that holds tablets and is removably engaged with a
counter; the counter including: a hopper assembly that
receives tablets from the canister and transfers the tablets to
a sensor, the hopper assembly including a dispenser reserve,
singulation channels, and a vibrator; the sensor, which
counts the tablets; and a buffer with two compartments that
hold counted tablets before releasing the counted tablets into
vials; and a nozzle assembly through which counted tablets
from the buffer are emptied into individual vials or trays.

REJECTIONS
Claims 1, 3-7 and 25-38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Riley et al. (U.S. Patent No. 5,348,061 issued Sep.
20, 1994) in view of Briscoe et al. (U.S. Patent No. 4,999,977 issued Mar.
19, 1991). Ans. 3.

OPINION
In rejecting independent claims 1 and 37 “the examiner takes an
official notice that such use of vibrator on packaging machine in order to
dispense tablets out of the hopper, is old, well known, and available on the
art” and concludes “[t]herefore, it would have been obvious to one having
Appeal 2010-000582
Application 11/134,113
3
ordinary skill in the art at the time the invention was made to have modified
Riley in view of Briscoe’s system by the use of vibrator, in order to assist
and improve the feeding of the tablet through the machine.” Ans. 3.
The Examiner may take official notice of facts “beyond the record
which, while not generally notorious, are capable of such instant and
unquestionable demonstration as to defy dispute.” In re Ahlert, 424 F.2d
1088, 1091 (CCPA 1970) (citation omitted). However,
[a]ssertions of technical facts in areas of esoteric technology
must always be supported by citation to some reference work
recognized as standard in the pertinent art and the appellant
given, in the Patent Office, the opportunity to challenge the
correctness of the assertion or the notoriety or repute of the
cited reference.
Id. (citation omitted). Where, as here, the Examiner relies on some unknown
authority to resolve a contested core factual issue, Appellant is effectively
deprived of this opportunity. App. Br. 8-9. This results in a record that is
insulated from meaningful appellate review. See, e.g., In re Zurko, 258 F.3d
1379, 1386 (Fed. Cir. 2001).
Furthermore, even if the Examiner’s determination that vibrators used
to empty hoppers were, in and of themselves, known in the art, was
ultimately correct, this fact alone is not sufficient to support the Examiner’s
determination that it would have been obvious to incorporate such a
structure into Riley. Riley’s channel members 46 and extensions 43, 45,
interpreted by the Examiner as the claimed “hopper1,” exhibit structural and
functional differences from a hopper as that term would be understood in

1 The Examiner first refers to Riley’s accumulator 70 as the claimed
“hopper” (Ans. 3) but later clarifies that Riley’s accumulator 70 is
interpreted as the claimed “buffer” and Riley’s channels 46 and extensions
43, 45 are interpreted as the claimed “hopper.” Ans. 6.
Appeal 2010-000582
Application 11/134,113
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light of Appellant’s Specification. A “hopper” would likely be understood
by one of ordinary skill in the art as something capable of storing a reserve
of tablets. Spec. 10:10-18. In contrast, Riley’s channel members 46 and
extensions 43, 45 merely form a channel. Riley, col. 4, ll. 15-36. Even
presuming it was reasonable for the Examiner to interpret Riley’s channel
members 46 and extensions 43, 45 as a “hopper,” it is not apparent, and the
Examiner does not explain, how a vibrator could be incorporated into Riley
to provide some benefit to this structure. “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).

DECISION
The Examiner’s rejection of claims 1, 3-7 and 25-38 is reversed.

REVERSED

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