Ex Parte Kobayashi et al

Patent Trial and Appeal Board

Oct 17, 2012

11337681 (P.T.A.B. Oct. 17, 2012)

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.
11/337,681 01/24/2006 Koichi Kobayashi 060056 4499
23850 7590 10/17/2012
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
EXAMINER
WAGGONER, TIMOTHY R
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
10/17/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KOICHI KOBAYASHI, MANABU HARAGUCHI,
AKINORI HATSUNO, TOSHITAKE MARUYAMA, and
TETSUO SAKURAL
____________

Appeal 2010-009492
Application 11/337,681
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and
JILL D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/337,681

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Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

REJECTION
Appellants seek review of the Examiner’s rejection of claims 1 and 4
under 35 U.S.C. § 102(b) as anticipated by, or in the alterative under 35
U.S.C. § 103(a) as unpatentable over, Boyer (US 5,884,806, iss. Mar. 23,
1999) (Ans. 3); and the Examiner’s rejection of claims 1 and 4 under 35
U.S.C. § 102(b) as anticipated by, or in the alterative under 35 U.S.C. §
103(a) as unpatentable over, Tamaoki (US 6,516,969 B2, iss. Feb. 11, 2003)
(Ans. 4).
ANALYSIS
The claimed subject matter relates to a medicine supply apparatus.
Claim 1 is the only independent claim on appeal, and is reproduced below
with the key disputed limitations emphasized:
Claim 1: A medicine supply apparatus which fills a
container with medicines discharged from a tablet case,
comprising:
discharge means for discharging the medicines from the
tablet case;
medicine detection means for detecting the medicines
discharged from the tablet case; and
control means for controlling the discharge means to
discharge the medicines from the tablet case, counting the
discharged medicines based on a detecting operation of the
medicine detection means, and changing a discharge speed of
the medicine by the discharge means depending on a type of
medicine in the tablet case, wherein the control means changes
the discharge speed depending on a size and/or a shape of the
medicine in the tablet case; and wherein the control means
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Application 11/337,681

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increases the discharge speed in a case where the medicine in
the tablet case has a small size, smaller than a predetermined
reference value, and/or a round shape.

ANALYSIS
The Examiner finds that Boyer discloses a tablet cassette comprising a
drum that spins at an optimal speed selected for each type of medication
based on the medication’s physical characteristics. Ans. 3. When the final
count is approached, the system goes into a “singulation” mode in which the
feed rate is slowed and the drum is jogged forward to dispense single pills.
Id. A detection means cooperates with a processor to control the modes. Id.
The Examiner admits that Boyer does not expressly disclose a speed
being increased for round or small medicaments, but finds that Boyer
discloses testing to find an optimal speed for each medicament. Ans. 3. The
Examiner concludes that it would have been obvious to one skilled in the art
to test various speeds and arrive at a discharge speed such as an increased
speed if an increased speed is the optimal speed. Id.
Regarding Tamaoki, the Examiner finds that Tamaoki discloses a
medicine dispensing cassette that changes speed based on size and shape,
and slows dispensation when a final count is neared. Ans. 4. A sensor
means keeps an accurate count and a processor changes speed when the
count nears the final count. Id.
The Examiner admits that Tamaoki does not expressly disclose that
the speed is increased for round or small medicaments, but concludes that it
would have been obvious to one skilled in the art to test various speeds and
arrive at an appropriate discharge speed such as an increased speed. Ans. 4.
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Appellants argue that neither Boyer nor Tamaoki discloses a speed
being increased for round or small medicaments. Br. 11.
Claim 1 recites a control means changing the discharge speed
depending on a size and/or a shape of the medicine in the tablet case, and
increasing the discharge speed in a case where the medicine in the tablet
case has a small size, smaller than a predetermined reference value, and/or
a round shape.
The control means changing the discharge speed “depending on a size
and/or a shape of the medicine in the tablet case” is an alternative limitation
and is construed to mean that the control means changes the discharge speed
based on one or more of (or at least one of) a size of the medicine, a shape of
the medicine, and a size and shape of the medicine. The control means
increasing the discharge speed when “the medicine in the tablet case has a
small size, smaller than a predetermined reference value, and/or a round
shape” also creates a limitation of alternatives and is construed to mean that
the control means increases the discharge speed when the medicine is one or
more of (or at least one of) smaller than a predetermined reference value;
round; or smaller than a predetermined reference value and round.
Further, the limitations at issue are functional. Functional recitations
limit the structure defined by an apparatus claim. That is, the structure must
be capable of performing the recited function in order to satisfy the
functional limitation. However, where there is reason to conclude that the
structure of the prior art is inherently capable of performing the claimed
function, the burden shifts to the applicant to show that the claimed function
patentably distinguishes the claimed structure from the prior art structure.
See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
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We agree with the Examiner that both Boyer and Tamaoki provide
disclosure providing the Examiner with a reason to believe that the structure
of each of Boyer and Tamaoki is inherently capable of performing the
claimed functions of (1) changing the discharge speed based on one or more
of a size of the medicine, a shape of the medicine, and a size and shape of
the medicine, and (2) increasing the discharge speed when the medicine is
one or more of smaller that a predetermined reference value; round; or
smaller than a predetermined reference value and round. Appellants offer no
evidence to rebut the Examiner’s belief.
Boyer specifically states that its device is able to “count accurately at
a speed commensurate with a high-throughput pharmacy fulfillment system”
(col.1, ll. 51-53), and that its software “rotates the tube at different speeds to
effect an optimal flow for specifically-sized and -shaped pills” (col. 5, ll. 14-
16). Boyer therefore discloses a device that runs at an optimal speed for
medications of various sizes and shapes, the optimal speed being defined by
a high speed that does not compromise accuracy of the pill count. Likewise,
Tamaoki discloses an object of the application being “to speed up the
dispensing of medications from a tablet case” while preventing an overrun
given that “the sizes and shapes of medications are not the same.” Col. 1, ll.
36-51. Tamaoki therefore discloses a device that runs as fast as possible for
medicine of various sizes and shapes, without compromising an accuracy of
the pill count (i.e., an overrun).
Appellants argue, with respect to Boyer, that there is no guarantee that
one medicine will be supplied by one rotation of tube (5), and that a plurality
of medicines will fall down at once (or in a short time), which would be
more of a problem when the medicine is small-sized and round-shaped. Br.
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12. Appellants also argue:
It would appear that the helix (6) and tube (5) would have
to be designed specifically for use in a case where small or
round medicines were being dispensed rather than other
medicaments, in order for any dispensing of a single unit of
medicament, requiring reconstruction of the Boyer et al. device
dependent upon the type of medicine that is to be dispensed.
Id. Appellants offer no evidence, in the form of declarations or otherwise, to
support these attorney arguments regarding the technical limits of Boyer’s
apparatus.
The Examiner finds that the abstract of Boyer states that the invention
is capable of dispensing “pills of all shapes and sizes,” and states that it
would have been obvious to one skilled in the art to determine the optimal
speed for feeding pills, which would include increasing the speed for small
and or round pills. Ans. 4.
Appellants argue, with respect to Tamaoki, that the shape of drum
(13) and portion (13a) of Tamaoki will treat only pills or tablets (not
capsules). Br. 12.
The Examiner concludes that the claims do not recite dispensing
capsules, and that there is no reason that Tamaoki's drum could not be used
to dispense all three types of medications. Ans. 5.
With respect to Appellants’ argument that “testing [for optimal speed]
should not be required by one skilled in the art and the need for any such
testing would be evidence of unobviousness” (Br. 14), the Examiner finds
that both Boyer and Tamaoki disclose feed rates designated for different
medicines being dispensed, and that the appropriate or optimal feed rate
would need to be determined by testing, implying that the requirement for
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such testing does not render optimization for a particular pill size non-
obvious. Ans. 5.
We are not persuaded by Appellants’ arguments that certain technical
limits on the operation of Boyer and Tamaoki render the references
incapable of performing the recited functions. The claimed function does
not patentably distinguish the claimed structure from the prior art structure.
We sustain the rejection of claim 1 under § 102(b) as being
anticipated by, or, in the alternative, under § 103(a) as being unpatentable
over, Boyer. We also sustain the rejection of claim 1 under § 102(b) as
being anticipated by, or, in the alternative, under § 103(a) as being
unpatentable over, Tamaoki.
Appellants do not advance any argument suggesting that claim 4
might be patentable over Boyer or Tamaoki if claim 1 is unpatentable over
Boyer or Tamaoki. We therefore sustain the rejections of claim 4 under
§ 102(b) as being anticipated by, or, in the alternative, under § 103(a) as
being unpatentable over, Boyer and Tamaoki.
DECISION
We AFFIRM the Examiner’s rejection of claims 1 and 4 under
§ 102(b) as being anticipated by, or, in the alternative, under § 103(a) as
being unpatentable over, Boyer.
We AFFIRM the Examiner’s rejection of claims 1 and 4 under
§ 102(b) as being anticipated by, or, in the alternative, under § 103(a) as
being unpatentable over, Tamaoki.
AFFIRMED

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