Ex Parte KotidisDownload PDFPatent Trial and Appeal BoardOct 30, 201411626660 (P.T.A.B. Oct. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ___________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________ Ex parte PETROS KOTIDIS ___________ Appeal 2013-009557 Application 11/626,660 Technology Center 3600 ___________ Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R. MOHANTY, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 This is the second time this application has come up for appeal. Petros Kotidis (Appellant) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1, 4, 5, 8–10, 12–14, and 16–18, the only claims pending 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed April 19, 2013) and Reply Brief (“Reply Br.,” filed July 30, 2013), and the Examiner’s Final Office Action (“Final Act.,” mailed November 16, 2012) and Answer (“Ans.,” mailed May 30, 2013). Appeal 2013-009557 Application 11/626,660 2 in the application on appeal.2 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented a way of facilitating deployment of prescription validation systems into pharmacies (Spec. ¶ 4). An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A method for prescription validation at a pharmacy using a pharmacy validation system performing prescription validations by determining whether labels for containers correspond to contents of the containers, the pharmacy validation system comprising a label reader for reading information encoded on the labels, a machine recognition system for determining a shape of, color of, and/or symbols on contents of the container, and a spectroscopy system for determining a spectral response of the contents of the container; the method comprising: [1] the label reader reading the labels on the containers, the machine recognition system determining the contents of the containers and 2 Claims 1, 4–10, 12, and 13 were cancelled by the Examiner in an Action mailed March 2, 2009. This cancellation was confirmed in a Petition decision mailed April 1, 2010. The prior appeal therefore had only claims 2 and 3 before the panel. Claims 1, 4, 5, 8–10, 12, and 13 in the instant appeal are therefore new claims added subsequent to the prior appeal that should have been renumbered. As this has no substantive impact on the appeal, we will treat the failure to renumber as a clerical error for correction. Appeal 2013-009557 Application 11/626,660 3 the spectroscopy system determining the spectral responses of the contents of the container; [2] the pharmacy performing the prescription validations by confirming that the labels correspond to the contents and the spectral responses of the contents; [3] the validation system sending information that the prescription validations were made to an information center; [4] the information center providing billing information, for use of the prescription validation system, to the pharmacy, wherein said billing information includes a predetermined dollar cost per prescription validation and any cost for installation, maintenance and continued use of the prescription validation system by the pharmacy. [sic ;] [5] the information center periodically sending a bill based in part on the number of prescription validations performed over a period of time by the pharmacy validation system of the pharmacy and in part based on any cost for installation, maintenance and continued use of the prescription validation system by the pharmacy. The Examiner relies upon the following prior art: Wiedemer US 4,796,181 Jan. 3, 1989 Norton US 2002/0091699 A1 July 11, 2002 Gillespie US 2002/0137497 A1 Sept. 26, 2002 Gibson US 2003/0055683 A1 Mar. 20, 2003 Appeal 2013-009557 Application 11/626,660 4 Rzasa US 6,771,369 B2 Aug. 3, 2004 Monsa-Chermon WO 2006/074284 A2 July 13, 2006 Robert P. Cogdill et al., Process Analytical Technology Case Study, Part III: Calibration Monitoring and Transfer, AAPS PharmSciTech, E284– E297 (Oct. 6, 2005) (http://www.aapspharmscitech.org) (hereinafter “Cogdill”). Richard W. Jenny et al., Causes of Unsatisfactory Performance in Proficiency Testing, Clinical Chemistry 46, 89–99 (2000) (hereinafter “Jenny”). Claims 1, 4, 5, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Rzasa, Wiedemer, Monsa-Chermon, and Norton. Claims 10, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Rzasa, Gibson, and Gillespie. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Rzasa, Gibson, Gillespie, Jenny, and Cogdill. Claims 16 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Rzasa and Wiedemer. Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Rzasa, Wiedemer, and Monsa-Chermon. ISSUES The issues of obviousness turn primarily on whether the references applied show the claims as recited were predictable to one of ordinary skill. Appeal 2013-009557 Application 11/626,660 5 FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Rzasa 01. Rzasa is directed to validation and identification of packaged pharmaceuticals in retail. Rzasa 1:6–9. 02. Rzasa describes an apparatus for verifying the identity of a dispensed pharmaceutical having an analysis unit to determine a property of the dispensed pharmaceutical, an input device to receive predetermined identifying information corresponding to the dispensed pharmaceutical, and a comparison unit to compare the determined property of the dispensed pharmaceutical with the predetermined identifying information. Rzasa 3:31–39. 03. Rzasa describes an inspection system for verifying the contents of a filled prescription, using a spectrometer to determine the spectral signature of the contents of the filled prescription, a scanner to receive identifying information corresponding to the filled prescription, a data storage to store the identifying information corresponding to the filled prescription, wherein the data storage stores data items corresponding to known prescription pharmaceutical spectral signatures. Rzasa 3:57–67. 04. If Rzasa determines that the chemical scan of the drug and the data from the prescription vial bar code are not a match, the system sends a message to the technician that the drug has failed the chemical inspection and validation process. Rzasa 9:11–16. Appeal 2013-009557 Application 11/626,660 6 Wiedemer 05. Wiedemer is directed to securing and encoding software for marketing on a pay-per-usage arrangement rather than fixed purchase price. Wiedemer 1:5–10. 06. Wiedemer describes a billing system for the distribution of personal computer software with a security module; a billing module; and at least two programs on a memory media deliverable to the user, one program being a security program and the other program being an enciphered application program, the security program serving to interrogate the security module and the billing module to determine the codes to generate a decipher algorithm and using that decipher algorithm to decipher the application program which may then be operated by the personal computer. Wiedemer 2:33–50. 07. Wiedemer describes a security program that verifies continued use of an application program, and creates billing data based on program usage. The billing data is stored at very frequent intervals and is then periodically written into the billing information area of the billing module. This system conditions the user’s access to the application program on the presence of a properly matched billing module which must also have billing authorization on it. The billing module must be matched in the sense that the application program is encoded by an algorithm the key to which is derived from the external code on the billing module. The numeric decipher key is thus unique to the user. Wiedemer 6:11–49. Appeal 2013-009557 Application 11/626,660 7 08. Wiedemer describes a security program that verifies continued use of an application program, and creates billing data based on program usage. The billing data is stored at very frequent intervals and is then periodically written into the billing information area of the billing module. This system conditions the user’s access to the application program on the presence of a properly matched billing module which must also have billing authorization on it. The billing module must be matched in the sense that the application program is encoded by an algorithm, the key to which is derived from the external code on the billing module. The numeric decipher key is thus unique to the user. Wiedemer 6:11–49. Monsa-Chermon 09. Monsa-Chermon is directed to software licensing. An intermediate entity brokers software vendors to a single user, who can pay for only actual use of the software, through the single entity, potentially with a pay cap. Monsa-Chermon Abstract. 10. Monsa-Chermon describes using execution time, CPU cycles, data transfer bandwidth, and number of disk accesses as measures of software usage under micro licenses that license software in smaller than normal amounts. Monsa-Chermon 11:33 – 12:5. Norton 11. Norton is directed to asset information management for supply chains of partner organizations. In such a supply chain, as the individual partners acquire, finance, and service assets from one another, these assets are both used and transformed into other Appeal 2013-009557 Application 11/626,660 8 assets which may travel further in the supply chain. Information about these assets can be captured in a data store whenever individual asset-related transactions between partners are facilitated by an asset management system. Asset information in such a data store replaces physical inventory as the means of most competitively satisfying customer demand. Norton ¶ 3. 12. Norton provides an Internet-based hosted system and method for accessing and reporting on the asset information associated with an extended enterprise of supply chain partners. Norton ¶ 56. 13. Norton describes how, when a customer procures an asset, that asset is placed onto a schedule. Billing takes place on a periodic basis, usually monthly. During the time the asset remains in the possession of the customer, there will be other charges which are associated with the asset, e.g., maintenance and options. Norton ¶ 63. 14. Norton describes that among such billed costs are Maintenance/Administrative Cost (the maintenance and administrative cost of the asset included in the schedule) and Installation Cost (the installation cost of the asset included in the schedule). Norton ¶¶ 162–63. Gibson 15. Gibson is directed to updating files, and more particularly, disseminating drug information. Gibson ¶ 3. 16. Gibson includes a server containing original drug information, with an update mechanism that creates update drug data for addition to the original drug information, and a transmit Appeal 2013-009557 Application 11/626,660 9 mechanism that transmits the update drug data to the remote device upon receiving a request from a remote device for the update drug data. Gibson disseminates drug information by (1) creating update drug data for addition to original drug information; (2) waiting for the remote device to request update drug data; and (3) transmitting the update drug data to the remote device. Gibson ¶¶ 7–8. 17. Gibson synchronizes remote client files with a server update process to acquire data changes that must be disseminated to the client databases. The server separates the database update data into appropriate size units for easy dissemination and prepares a confirmation for the units so that the clients can verify that all of the database updated data was applied correctly. After the updated data is prepared, the server disseminates the database update data on demand by the clients. During a connection to a client requesting updates, the server determines if there are problems with the download of data to the client. If there are problems, then the server attempts to provide the opportunity to correct the problem preventing dissemination of the database update data. The client prescription drug information dissemination system provides a similar processing by scheduling on a predetermined basis the execution of the update process. The update process for the client entails connecting to the server and downloading any new or updated data from the server. Any data downloaded includes a check sum in order for the client to validate that the updated data was properly propagated to the Appeal 2013-009557 Application 11/626,660 10 mirror prescription drug database. After updating the mirror prescription drug database, the client performs the integrity verification by comparing the check sum received from the server with that generated on the client from the data updated. If it is determined that a particular update did not occur correctly, the client device will attempt to download the data for a predetermined number of times. Upon unsuccessful attempts of downloading the data, the server will then terminate the update process. Once the data is downloaded, the client will be alerted in order to inform the user of particular occurrences or demands with regard to the update downloaded from the server. These alerts include, but are not limited to, the databases selected by the user for visual updates, the display list of alerts for the selected databases, the alerts selected by the user most recently, system displays of text of the alerts provided, and the logs for reporting which alerts were reviewed. Gibson ¶¶ 27–29. Gillespie 18. Gillespie is directed to providing calling name information with incoming calls. Gillespie ¶ 2. 19. When a called destination is determined to subscribe to calling name presentation, a local cache is queried to determine if the calling number is in the local cache. If the calling number is in the local cache, calling name information corresponding to the calling number is retrieved from the local cache. If the calling number is not in the local cache, a remote database is queried for the calling Appeal 2013-009557 Application 11/626,660 11 name information. The calling name information retrieved from the remote database is stored in the local cache. Gillespie ¶ 7. 20. If either data is not found in local cache or the data in local cache is stale, requested data is obtained from a remote database. The local data is received from a remote database and stored in local cache in an entry associated with the calling number. Gillespie ¶ 33. Jenny 21. Jenny is directed to causes of unsatisfactory performance in proficiency testing. Jenny Title. 22. Jenny describes calibration errors such as drift as among the causes of test errors. Jenny 90:Categorization Of Test Errors. Cogdill 23. Cogdill is directed to near-infrared spectroscopy methods for solid dosage form analysis. Cogdill Abstract. 24. Cogdill describes the importance of calibration monitoring to retain measurement accuracy. Cogdill E284:Second Column. ANALYSIS Claims 1, 4, 5, 8, and 9 rejected under 35 U.S.C. § 103(a) as unpatentable over Rzasa, Wiedemer, Monsa-Chermon, and Norton We are not persuaded by the Appellant’s argument that the art fails to describe (1) sending information that the prescription validations were made to an information center (App. Br. 6–7); (2) sending a bill based in part on the number of prescription validations performed (id. at 7); and (3) billing Appeal 2013-009557 Application 11/626,660 12 information that includes a predetermined dollar cost per prescription validation. We agree with and adopt the Examiner’s findings from the Final Office Action at pages 2–8 and the Answer at pages 2–4. As the Examiner found, Wiedemer describes writing transactional data for billing from the security monitoring program to the billing program. FF 08. Appellant responds that Wiedemer sends information in the opposite direction because the billing module is transported to another facility. Reply Br. 2. This argument ignores the fact that Wiedemer first sends information to the billing module. Appellant also responds that Wiedemer does not use confirmed prescription validations. Reply Br. 3. Appellant responds to the rejection by attacking the references separately, even though the rejection is based on the combined teachings of the references. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Rzasa describes using confirmed prescription validations as a transactional basis. Wiedemer describes sending billing data for any such transactions to a billing module. As to the second and third arguments, as the Examiner found, these are again instances of attacking the references separately in a manner similar to that in the first argument. Ans. 3. Appeal 2013-009557 Application 11/626,660 13 Claims 10, 12, and 13 rejected under 35 U.S.C. § 103(a) as unpatentable over Rzasa, Gibson, and Gillespie Claim 10 reads: 10. A method for prescription validation at a pharmacy, comprising: determining with a machine recognition system a shape of, color of, and symbols on contents of a prescription container, determining with a spectroscopy system a spectroscopic response of the contents of the prescription container, and reading information encoded on the labels of the prescription container with a label reader; searching in an internal database for a match for the contents of containers using contents data for the shape of, color of and symbols on the contents, the spectroscopic response of the contents and the information read from the labels and sending the contents data to a drug information center if no match is found in the internal database; identifying, from the drug information center, the contents by reference to a drug information center database of drug information and updating the internal database, wherein the drug information center signals an error condition when no match was found; and controlling pharmacy workflow by distributing prescriptions to be filled among working pharmacists. App. Br. 19–20. Claim 10 is in many ways broader than claim 1, but more narrow in its limitations of “sending the contents data to a drug information center if no match is found in the internal database” and “the drug information center signals an error condition when no match was found.” We are not persuaded by the Appellant’s argument that the art fails to describe these limitations. App. Br. 10–12. We agree with and adopt the Examiner’s findings from the Final Office Action at pages 11–14 and the Answer at pages 5–6. As the Examiner found, Gillespie describes the Appeal 2013-009557 Application 11/626,660 14 conditional testing for the presence of information, and Gibson describes finding the needed information from an external source. Thus, Gillespie shows it was known to test for a match with an internal database and looking elsewhere if not found, and Gibson shows it was known to download that needed information from an external source. Both Gibson and Rzasa describe raising an error flag. Although Appellant responds that Gibson does not update its database at an arbitrary time as determined by an error condition (Reply Br. 3–4), it is Gillespie that shows it was known to refresh memory on an as needed basis. Claim 14 rejected under 35 U.S.C. § 103(a) as unpatentable over Rzasa, Gibson, Gillespie, Jenny, and Cogdill Claim 14 reads: 14. A method as claimed in claim 10, further comprising sending a signal from the drug information center to recalibrate the machine recognition system, the spectroscopy system and the label reader when no match was found. App. Br. 20. We are not persuaded by the Appellant’s argument that the art fails to describe these limitations. App. Br. 13. We agree with and adopt the Examiner’s findings from the Final Office Action at pages 16–17 and the Answer at page 7. As the Examiner found, given that Jenny and Cogdill show the general need to maintain equipment calibration and to monitor the calibration to ensure the calibration is maintained, it is simply a question of how to trigger the recalibration. As the comparison between knowledge base and measured results occurs after the measurement, common sense Appeal 2013-009557 Application 11/626,660 15 dictates that the trigger comes from the results of monitoring, and monitoring necessarily requires the results of that comparison. Claims 16 and 18 rejected under 35 U.S.C. § 103(a) as unpatentable over Rzasa and Wiedemer Claim 16 reads: 16. A method for prescription validation at a pharmacy using a pharmacy validation system performing prescription validations by determining whether labels for containers correspond to contents of the containers, the pharmacy validation system comprising a label reader for reading information encoded on the labels, a machine recognition system for determining a shape of, color of, and/or symbols on contents of the container, and a spectroscopy system for determining a spectral response of the contents of the container; the method comprising: the label reader reading the labels on the containers, the machine recognition system determining the contents of the containers and the spectroscopy system determining the spectral responses of the contents of the container; the pharmacy performing the prescription validations by confirming that the labels correspond to the contents and the spectral responses of the contents; the validation system sending information that the prescription validations were made to an information center; the information center updating billing information of the pharmacy by receiving a number of prescription validations and multiplying the number times a monetary amount per validation; and the information center periodically sending a bill of the updated billing information to the pharmacy. App. Br. 20–21. Claim 16 is in many ways broader than claim 1, but more narrow in its limitations of “multiplying the number times a monetary amount per Appeal 2013-009557 Application 11/626,660 16 validation” and “periodically sending a bill of the updated billing information to the pharmacy.” We are not persuaded by the Appellant’s argument that the art fails to describe these limitations. App. Br. 14–16. We agree with and adopt the Examiner’s findings from the Final Office Action at pages 17–20. As the Examiner found, Wiedemer creates billing information on a per transaction basis. Billing on a per transaction basis implies multiplying the number of transactions by the per transaction rate to derive the product as the amount billed. Rzasa describes the transactions being validations. Sending a bill to the payor is implicit in the very concept of a bill. We are not persuaded by the Appellant’s argument that Wiedemer bills for additional transactions. This argument is premised on the example in Wiedemer of billing based on CPU time. Wiedemer is not used to show billing for CPU time, but for billing on a transactional basis. Again, Rzasa describes the transactions being validations. Claim 17 rejected under 35 U.S.C. § 103(a) as unpatentable over Rzasa, Wiedemer, and Monsa-Chermon Claim 17 reads: 17. A method as claimed in claim 16, where the monetary amount is a few cents per validation. App. Br. 21. We are not persuaded by the Appellant’s argument that the art fails to describe these limitations. App. Br. 16. We agree with and adopt the Examiner’s findings from the Final Office Action at pages 21–22. As the Examiner found, Monsa-Chermon describes such micro transaction amounts. Appeal 2013-009557 Application 11/626,660 17 CONCLUSIONS OF LAW The rejection of claims 1, 4, 5, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over Rzasa, Wiedemer, Monsa-Chermon, and Norton is proper. The rejection of claims 10, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over Rzasa, Gibson, and Gillespie is proper. The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over Rzasa, Gibson, Gillespie, Jenny, and Cogdill is proper. The rejection of claims 16 and 18 under 35 U.S.C. § 103(a) as unpatentable over Rzasa and Wiedemer is proper. The rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over Rzasa, Wiedemer, and Monsa-Chermon is proper. DECISION The rejections of claims 1, 4, 5, 8–10, 12–14, and 16–18 are 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)(1)(iv) (2011). AFFIRMED hh Copy with citationCopy as parenthetical citation