Ex Parte Kotidis

Board of Patent Appeals and Interferences

Nov 15, 2011

11626660 (B.P.A.I. Nov. 15, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/626,660 01/24/2007 Petros Kotidis 0005.1163US1 1616
25263 7590 11/15/2011
HOUSTON ELISEEVA LLP
420 BEDFORD ST
STE 155
LEXINGTON, MA 02420
EXAMINER
NGUYEN, TRAN N
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
11/15/2011 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte PETROS KOTIDIS 8
___________ 9
10
Appeal 2010-006739 11
Application 11/626,660 12
Technology Center 3600 13
___________ 14
15
16
Before HUBERT C. LORIN, ANTON W. FETTING, and 17
BIBHU R. MOHANTY, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
21
Appeal 2010-006739
Application 11/626,660

2

STATEMENT OF THE CASE1 1
Petros Kotidis (Appellant) seeks review under 35 U.S.C. § 134 (2002) of 2
a final rejection of claims 2 and 3, the only claims pending in the application 3
on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way of facilitating deployment of prescription 6
validation systems into pharmacies (Specification ¶ 0004). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 2, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
2. A method for prescription validation, comprising: 11
a pharmacy validation system for performing validations by 12
determining whether labels for containers correspond to 13
contents of the containers; 14
the validation system sending information that the validation 15
was made to an information center; and 16
the information center billing the pharmacy based on a number 17
of validations performed by the validation system], 18
wherein the pharmacy validation system comprises: 19
a label reader for reading information encoded on the label. 20
21
The Examiner relies upon the following prior art: 22
Wiedemer US 4,796,181 Jan. 3, 1989

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 25, 2008) and Reply Brief (“Reply Br.,” filed February
10, 2009), and the Examiner’s Answer (“Ans.,” mailed December 10, 2008).
Appeal 2010-006739
Application 11/626,660

3

Ahnad US 5,925,127 Jul. 20, 1999
Gibson US 2003/0055683 A1 Mar. 20, 2003
Rzasa US 6,771,369 B2 Aug. 3, 2004
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as unpatentable 1
over Rzasa and Wiedemer.2 2
ISSUES 3
The issue of obviousness turns primarily on whether it was predictable to 4
bill Rzasa’s pharmacy based on a number of validations performed by the 5
validation system. 6
FACTS PERTINENT TO THE ISSUES 7
The following enumerated Findings of Fact (FF) are believed to be 8
supported by a preponderance of the evidence. 9
Facts Related to the Prior Art 10
Rzasa 11
01. Rzasa is directed to validation and identification of packaged 12
pharmaceuticals in retail. Rzasa 1:6-9. 13
14

2 The Examiner cancelled claims 1, 4-10, 12, and 13 after the Appellant
failed to argue the patentability of these claims under 35 U.S.C. § 101. Thus
the rejections of these claims are no longer under appeal.
Appeal 2010-006739
Application 11/626,660

4

Wiedemer 1
02. Wiedemer is directed to securing and encoding software for 2
marketing on a pay-per-usage arrangement rather than fixed 3
purchase price. 4
03. Wiedemer charges for the actual usage of software, which is the 5
total amount of time used for each of all of the times the software 6
is used. Wiedemer col. 6. Thus, Wiedemer charges based on both 7
the number of times used and the amount of time expended during 8
each usage. 9
ANALYSIS 10
We are unpersuaded by the Appellant’s argument that: 11
Wiedemer teaches that billing should be done based on program 12
usage. This probably translates to the amount of time that the 13
program is executing. In contrast, the present claims require 14
billing "based on a number of validations", and not how long 15
software is operated. That is, in the present invention, any 16
software could be executing continuously, but it is when a 17
validation is requested that a billing event is initiated. 18
Appeal Br. 5. 19
Wiedemer charges for the actual usage of software, which is the total 20
amount of time used for each of all of the times the software is used. 21
Wiedemer col. 6. Thus, Wiedemer charges based on both the number of 22
times used and the amount of time expended during each usage. FF 03. 23
Applying such transactional pricing to Rzasa would result in billing based on 24
a number of validations performed by the validation system, i.e. usage 25
measured by transactional volume. 26
Appeal 2010-006739
Application 11/626,660

5

Beyond that, the notoriety of transactional based billing is so great that 1
its applicability to any business whose output is quantifiable is to say the 2
least predictable to any consumer, much less one of ordinary skill. 3
The Appellant did not make separate arguments for claims 2 and 3, so 4
the rejection stands based on the unpersuasiveness of the argument in 5
support of claim 1. 6
CONCLUSIONS OF LAW 7
The rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable 8
over Rzasa and Wiedemer is proper. 9
DECISION 10
The rejection of claims 2 and 3 is affirmed. 11
No time period for taking any subsequent action in connection with this 12
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 13
§ 1.136(a)(1)(iv) (2007). 14
15
AFFIRMED 16
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MP 20