Ex Parte HESS et al

Board of Patent Appeals and Interferences

Jul 28, 1999

08286785 - (D) (B.P.A.I. Jul. 28, 1999)

1 Application for patent filed August 5, 1994.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT J. HESS and SCOTT L. SULLIVAN
____________
Appeal No. 97-0064
Application No. 08/286,7851
____________
ON BRIEF
____________
Before KRASS, JERRY SMITH, and GROSS, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 16, which are all of the claims
pending in this application.
The appellants' invention relates to a pill with a micro
barcode containing identification and/or medical information
Appeal No. 97-0064
Application No. 08/286,785
2 Appellants may find U.S. Patent 5,700,998 to Palti to be
of interest.
3 Since the disclosures of Shamir and Aurenius are virtually
the same, only Shamir will be discussed in this opinion.
2
concerning the pill and also a method and device for retrieving
the information from the micro barcode. 2 Claims 1 and 5 are
illustrative of the claimed invention, and they read as follows:
1. A pill on which is imprinted micro barcode, said micro
barcode containing information pertaining to any one of
medication contents of the pill and source identification of the
pill.
5. A device for retrieving information encoded on a micro
barcode imprinted on a pill and indicating the retrieved
information to a user, comprising:
means for scanning the micro barcode on the pill to retrieve
information encoded in the micro barcode;
means for interpreting the scanned micro barcode; and
means responsive to results of interpretation by said
interpreting means for indicating information encoded in the
micro barcode in a manner understandable to the user.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Wittwer 4,478,658 Oct. 23, 1984
Shamir 5,118,369 Jun. 02, 1992
Aurenius3 5,129,974 Jul. 14, 1992
Claims 1 through 16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Wittwer in view of Shamir or Aurenius.
Reference is made to the Examiner's Answer (Paper No. 15,
mailed June 27, 1996) for the examiner's complete reasoning in
Appeal No. 97-0064
Application No. 08/286,785
4 "For each ground of rejection which appellant contests and
which applies to a group of two or more claims, the Board shall
select a single claim from the group and shall decide the appeal
as to the ground of rejection on the basis of that claim alone
unless a statement is included that the claims of the group do
not stand or fall together and, in the argument under paragraph
(c)(8) of this section, appellant explains why the claims of the
group are believed to be separately patentable. Merely pointing
out differences in what the claims cover is not an argument as to
why the claims are separately patentable" (underlining added for
emphasis).
3
support of the rejections, and to the appellants' Brief (Paper
Nos. 13 and 20, filed January 16, 1996 and April 8, 1999,
respectively) and Reply Brief (Paper No. 16, filed July 29, 1996)
for the appellants' arguments thereagainst.
OPINION
As a preliminary matter, we note that appellants state on
page 4 of the Brief that "each claim is believed to contain
patentable subject matter in its own right and should not be
grouped together." For the next four pages appellants reproduce
the limitations recited in each claim. Also, in the paragraph
bridging pages 22 and 23, appellants group claims 4, 10, and 16;
claims 5 and 11; claims 6, 7, 12, and 13; and claims 3, 8, 9, 14,
and 15; and for each group state that the references do not teach
the particular additional limitation. However, appellants have
not presented arguments in accordance with 37 CFR § 1.192(c)(7)
(1995).4 Accordingly, we will consider all of the claims as
grouped together, with claim 1 as representative.
Appeal No. 97-0064
Application No. 08/286,785
4
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by the
appellants and the examiner. As a consequence of our review, we
will reverse the obviousness rejection of claims 1 through 16.
The examiner combines Wittwer and Shamir to reject all of
the claims. Wittwer discloses (column 9, lines 19-20)
"imprinting of logos, codes or the like may be placed on the
visible surface of the label." The examiner focuses on those two
lines (Final Rejection, page 5) as "the incentive for labelling
capsules using small labels." Shamir teaches (column 4, lines
42-44) that "microlabels may be utilized in any application in
which product identification requires exceedingly small labels."
The examiner concludes (Final Rejection, page 5) that since
Wittwer teaches using small labels, and Shamir teaches using
microlabels for small labels, "it would have been an obvious
expedient for one with ordinary skill in the art to attach the
micro-labels as taught by Shamir [or Aurenius] to the capsules."
There are two problems with the examiner's conclusion.
First, the end of the paragraph in Wittwer states (column 9,
lines 31-39):
The application of indicia by imprinting provides a
further visual characteristic that enhances the tamper-
evident capabilities of the seal. As difficult as it
is to cosmetically reconstruct a fractured seal, so
much more so is the reconstruction of a fractured logo
to assure alignment, continuity, etc. Imprinting,
Appeal No. 97-0064
Application No. 08/286,785
5
therefore, serves as a valuable additional step that
enhances the tamper-evident qualities of the capsule
seal prepared by the present invention.
In other words, the code or logo in Wittwer must be visible, as
it must assist in assuring alignment. The examiner asserts
(Answer, page 4), "[a]lthough the presence of the codes on the
label would enhance tampering evidence, this is just considered
as an additional benefit of printing the codes on the label's
surface. The codes, themselves, have several old and known
utilities such as containing useful information for
identification purposes." The examiner's reasoning, however, is
backwards; the presence of the codes is specified as being for
enhancing tampering evidence, and any utility such as for
identification purposes would be the additional benefits. As
explained by appellants (Brief, page 16), to print a micro
barcode, which would not be visible to the human eye, would
"frustrate Wittwer's goal in promoting anti-tampering through
visual inspection of the label itself with the human eye."
Second, the examiner has skipped a step in combining the
references. For Shamir to be applied, the primary reference must
include "product identification [which] requires exceedingly
small labels" (Shamir, column 4, lines 42-44, underlining added
for emphasis). While it is true that the capsules of Wittwer use
small labels, as explained by appellants (Brief, page 11),
Appeal No. 97-0064
Application No. 08/286,785
6
"Wittwer uses labels strictly for anti-tampering purposes;
product identification is not even a consideration." Although
one could view product identification as being encompassed by
"logos, codes or the like," Wittwer specifies that the codes or
logos must remain visible. Therefore, they cannot be exceedingly
small. Accordingly, Shamir is not applicable and, as such, not
properly combinable with Wittwer.
In addition, the examiner states (Final Rejection, page 6)
that "[a]s to the claimed medication contents of the pills, it is
respectfully submitted that the use of a regular size label
having the contents and the source identification of the medicine
is notoriously well known." We agree that such information is
generally included on a label on the medicine bottle. However,
we cannot agree with the examiner's conclusion that "it would
have been an obvious expedient for one with ordinary skill in the
art to print the information on a micro-barcode label with art
recognized equivalent," without some evidence showing either the
need to have such information on each pill or the equivalence of
providing the information on the bottle with having it on each
pill. The examiner's "further motivation" (Final Rejection, page
6) for moving the information to the individual pill, i.e., to
"prevent fraudulent [sic] in the case that the contents of the
pills are considered critical" comes straight from appellants'
Appeal No. 97-0064
Application No. 08/286,785
7
specification without any suggestion in the prior art, and
therefore does not provide a proper basis for obviousness.
"There must be some reason, suggestion, or motivation found in
the prior art whereby a person of ordinary skill in the field of
the invention would make the combination. That knowledge can not
come from the applicant's invention itself." See In re Oetiker,
977 F.2d 1443, 1447, 24 USPQ2d 1443, 1446 (Fed. Cir. 1992).
The examiner further states (Answer, page 8) that "if one
has decided to go from visual verification to machine
verification, there is no desire to maintain the size of
Wittwer's label." We agree that labels that are to be read by
machine generally do not need to be visible to the human eye.
However, in the present case, the examiner has presented no
rationale for moving to machine verification. Further, as the
purpose of Wittwer is visual verification, changing the size and
switching to machine verification would be contrary to the
teachings of the primary reference. Accordingly, we cannot
sustain the obviousness rejection of claim 1 and its dependents,
claims 2 through 4. Further, since each of claims 5 and 11
includes the limitation of a micro barcode imprinted on a pill,
we must reverse the obviousness rejection of claims 5, 11, and
their dependents, claims 6 through 10 and 12 through 16.
Appeal No. 97-0064
Application No. 08/286,785
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CONCLUSION
The decision of the examiner rejecting claims 1 through 16
under 35 U.S.C. § 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
clm
Appeal No. 97-0064
Application No. 08/286,785
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Scott L. Sullivan
Darby & Darby
805 Third Avenue
New York, NY 10022