Ex Parte Herbert et alDownload PDFPatent Trial and Appeal BoardMay 30, 201814045420 (P.T.A.B. May. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/045,420 10/03/2013 Richard A. Herbert 32116 7590 06/01/2018 WOOD, PHILLIPS, KATZ, CLARK & MORTIMER 500 W. MADISON STREET SUITE 1130 CHICAGO, IL 60661 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 ATTORNEY DOCKET NO. CONFIRMATION NO. HER01229P00131US 5149 EXAMINER RNERA, JOSHEL ART UNIT PAPER NUMBER 1746 NOTIFICATION DATE DELIVERY MODE 06/01/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@woodphillips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD A. HERBERT and JOYCE SLABICH 1 Appeal2017-009163 Application 14/045,420 Technology Center 1700 Before BEYERL YA. FRANKLIN, CHRISTOPHER C. KENNEDY, and LILAN REN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. § 134 of the Examiner's final decision rejecting claims 4 and 7-15. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). 1 Appellants identify the real party in interest as themselves, Richard A. Herbert and Joyce Slabich. Appeal2017-009163 Application 14/045,420 STATEMENT OF THE CASE Claim 7 is illustrative of Appellants' subject matter on appeal and is set forth below: 7. A method of preparing medication to be taken by an individual, the method comprising the steps of: obtaining first and second containers respectively having first and second bodies defining first and second storage spaces within which first and second different medications are placed, each of the first and second containers having a top opening, a bottom wall, a closure for the top opening, and a peripheral wall between the top opening and bottom wall; obtaining access to a supply of labels having generic information thereon to advise an individual at least one of: a) when to take medication in an associated container; b) how many doses of medication in an associated container are to be taken; and c) how to take medication in an associated container, the supply of labels comprising a first label wherein the generic information thereon is applicable to taking of the first medication by the individual and is different than the generic information on a second label in the supply of labels that is applicable to taking of the second medication by the individual; placing the first label on the first container on the bottom wall of the first container; and placing the second label on the second container on the bottom wall of the second container. 2 Appeal2017-009163 Application 14/045,420 The Examiner relies on the following prior art references as evidence of unpatentability: Goddard Adler US 2003/0122370 Al US 8,025,314 B2 THE REJECTION July 3, 2003 Sept. 27, 2011 Claims 4 and 7-15 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Adler in view of Goddard. ANALYSIS To the extent that Appellants have presented substantive arguments for the separate patentability of any individual claims on appeal, we will address them separately consistent with 37 C.F.R. § 4I.37(c)(l)(iv). Upon consideration of the evidence on this record and each of the respective positions set forth in the record, we find that the preponderance of evidence on this record supports the Examiner's findings and conclusion that the subject matter of Appellants' claims is unpatentable over the applied art. Accordingly, we sustain the Examiner's rejection on appeal essentially for the reasons set forth in the Final Office Action and in the Examiner's Answer. We add the following for emphasis. We incorporate the Examiner's findings and stated position as set forth on pages 3-7 of the Final Office Action (this position is similarly repeated on pages 3-8 of the Answer). In response to the Examiner's position therein, Appellants argue that, as admitted by the Examiner, the primary reference of Alder fails to teach a method of placing a supply of labels on the first container and on the second container on the bottom wall. Appellants state that the Examiner 3 Appeal2017-009163 Application 14/045,420 relies on the secondary references of Goddard for the motivation to place labels on the bottom wall of a container. Appellants argue that the only direction that Goddard gives, and relied upon by the Examiner, is in paragraph [0022], wherein Goddard describes that the label/device 20 is mounted to a cap of the container but "' [ a ]ltematively', the device/label 20 'may be mounted to another location on the container 88 such that the device 20 is readily visible by a person."' Appeal Br. 6 ( quoting Goddard). Appellants argue that critical information has not been placed on the bottom wall of drug containers. Appeal Br. 6; Reply Br. 1-5. Appellants submit that one skilled in the art would not find it obvious to use the bottom wall for significant health-related information as this location is unlikely to be observed by a user. Id. The Examiner's response is set forth on pages 8-9 of the Answer. Implicit in the stated position therein is that Goddard's teaching of placing a label that is readily visible by a person suggests a location that includes a bottom wall of a container because ( as stated by the Examiner on page 9 of the Answer), if the container is being handled by the user in a manner that the bottom surface is readily visible, the claim limitation is met. We agree. With regard to Appellants' argument that the prior art does not teach the limitation of using a pictorial representation to convey generic information (Appeal Br. 7-8, Reply Br. 5---6), we agree with the Examiner's stated reply made on page 10 of the Answer. Implicit in the Examiner's stated position therein is that Alder's teaching of conveying a message using pictorial representation is a teaching that a desired message can be conveyed through use of pictorial representation. As such, a desired message, such as how to advise a user to take medication 4 Appeal2017-009163 Application 14/045,420 in the container, conveyed through use of pictorial representation would have been obvious because Alder teaches that desired messages can be conveyed by pictorial representation. In view of the above, we affirm the rejection. DECISION The rejection of claims 4 and 7-15 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a). AFFIRMED 5 Copy with citationCopy as parenthetical citation