Ex parte Lipps

Board of Patent Appeals and Interferences

Apr 28, 2000

08250223 (B.P.A.I. Apr. 28, 2000)

1
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(2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RANDALL A. LIPPS
_____________
Appeal No. 1997-1109
Application 08/250,223
______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON and DIXON, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims 1, 3-6, 8, and 22-26. Claims
9-21 and 28 have been allowed. Claims 2, 7, and 27 have been
canceled.
The disclosed invention relates to a method and device
for dispensing items from a dispensing unit wherein a
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Application No. 08/250,223
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controller controls the latching and unlatching of at least
one door blocking access to storage locations in the
dispensing unit.
Claim 22 is illustrative of the claimed invention, and it
reads as follows:
22. A dispensing unit comprising:
an enclosure having an interior accessible through a
doorway;
a plurality of storage locations within the interior
for holding items to be dispensed;
at least one openable door across said doorway;
a controller disposed on the enclosure, the
controller having means for inputting information into
the controller;
means for locking the door to prevent access to the
storage locations;
means in electrical communication with the
controller for unlocking the locking means to permit
access to the storage locations in response to
information input from said input means.

The examiner relies on the following references:
Colson Jr. et al. (Colson) 5,346,297 Sep. 13,
1994
(filed Jan. 4,
1993)
Ishizawa et al. (Ishizawa) 4,783,740 Nov. 8,
1988
Kimbrow 4,737,910 Apr. 12,
1988
Claims 1, 3-6, 8 and 26 stand rejected under 35 U.S.C.
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Application No. 08/250,223
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§ 103 as being unpatentable over Colson in view of Ishizawa.
Claims 22-24 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Colson.
Claim 25 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Colson in view of Kimbrow.
Reference is made to the briefs and the answer for the
respective positions of the appellant and the examiner.
OPINION
The rejections of claims 22, 24, and 25 are sustained.
The rejections of claims 1, 3-6, 8, 23 and 26 are reversed.
Pursuant to 37 CFR 1.196(b), claims 1, 3-6, 8, and 26 are
rejected for failure to comply with the second paragraph of 35
U.S.C. § 112.
According to appellant (Brief, page 3), the claim
language of independent claim 1, and the claims that depend
therefrom, °is inconsistent, and the input device is intended
to also be the item switch.¢ We agree. As a result of this
inconsistency, we are not able to determine exactly what
actions are needed to open the door that blocks access to the
storage locations. In addition, claim 1 states that the
plurality of item switches are °disposed next to¢ storage
Appeal No. 1997-1109
Application No. 08/250,223
Although we have reversed the obviousness rejection 1
pro forma based on In re Steele, we note in passing that
Ishizawa teaches the placement of item switches adjacent to
shelves.
4
locations, whereas the input device is °visually located on
the dispensing unit.¢ If the item switches and the input
device are the same, then we do not know whether a single
input device or a plurality of item switches are being
claimed. Accordingly, claims 1, 3-6, 8, and 26 are
indefinite.
In keeping with the provisions of 37 CFR § 1.196(b),
claims 1, 3-6, 8, and 26 are rejected under the second
paragraph of
35 U.S.C. § 112 for indefiniteness.
A claim should not be rejected over prior art if it is
necessary to engage in considerable speculation as to the
meaning of terms in the claim and assumptions as to its scope.
See In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962). Thus, as a result of the indefiniteness of independent
claim 1, and our inability to judge the merits of the elements
obviousness rejection of this claim, the obviousness rejection
of claims 1, 3-6, 8, and 26 is reversed.1
According to the examiner (Answer, page 6), Colson
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discloses (Figure 1; and column 2) all of the elements and
steps of claims 22, 23, 24, and 25, except for specifically
maintaining a controller disposed on the enclosure. The
examiner states (Answer, page 6) that Colson discloses (Figure
1; Abstract) an enclosure having an interior accessible
through a doorway, and a plurality of storage locations within
the interior for holding items to be dispensed. The examiner
also states (Answer, page 6) that Colson discloses (Figure 1;
and Abstract) at least one openable door across the doorway.
The examiner further states (Answer, page 6) that Colson
discloses a controller, means for inputting information into
the controller, means for locking the door to prevent access
to the storage locations, and means in electrical
communication with the controller for unlocking the locking
means to permit access to the storage locations in response to
information input to the input means. The examiner indicates
(Answer, page 6) that Colson does not specifically maintain a
controller disposed on the enclosure. The examiner asserts
(Answer, pages 6 and 7) that it would have been obvious to one
of ordinary skill in the art at the time of the invention to
modify the system of Colson to employ a controller on the
enclosure, in lieu of the stand-alone unit, because this would
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allow for the enclosure to stand alone and operate without a
side unit, which would °optimally allow for a plurality of
such units to stand side by side.¢ We agree with the examiner
because as computers decrease in size, the space needed for
them correspondingly decreases in size. As a matter of
interest, we note that Colson already discloses (column 7,
lines 8-15; Figure 12) an electronic control circuit board 119
(i.e., a controller) contained within the enclosure.
Based upon the foregoing, the obviousness rejection of
claim 22 is sustained.
Appellant argues (Brief, page 4) that Colson does not
disclose the input means including a touch sensitive screen on
the controller as in claim 23. We agree. The examiner’s
contentions to the contrary notwithstanding, the keyboard in
Colson is not a touch sensitive screen (Answer, page 7). For
this reason, the obviousness rejection of claim 23 is
reversed.
The obviousness rejection of claim 24 is sustained,
however, because Colson does have a keyboard in communication
with the controller (column 4, lines 39-52).
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According to the examiner (Answer, page 7), Colson does
not disclose a plurality of item switches spaced apart from
some of the shelves. Kimbrow discloses (column 1, lines 55-68
and column 2, lines 1-40) a plurality of item switches located
in close proximity and corresponding to at least some of the
storage locations, wherein each item switch is positioned so
that it can be visually correlated with items in the
corresponding storage location before an item is removed, and
wherein the item switches are connected to the controller so
that the actuation of the item switches produces a record of
items removed from or placed into the dispensing unit. The
examiner is of the opinion (Answer, page 7) that it would have
been obvious to one of ordinary skill in the art at the time
of the invention °to employ the 'touch' system of Kimbrow with
the medical dispensing cabinet of Colson because this allows
for easy accountability of products.¢ We agree.
Appellant argues (Brief, page 9) that Kimbrow °does not
teach inclusion of a controller on the dispensing unit
enclosure and interlocking of the controller to a door also on
the enclosure.¢ As indicated supra, the examiner addressed
the obviousness of placing the controller on the dispenser
unit based upon the teachings and suggestions of Colson alone.
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Therefore, appellant’s argument is not persuasive.
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In summary, the obviousness rejection of claim 25 is
sustained.
Appellant argues (Reply Brief, pages 1-3) that the claims
on appeal should be allowed because the Office allowed similar
claims in Colson’s U.S. patent 5,520,450. The PTO is not
bound to repeat an error that may have been made in issuing
the noted patent to Colson. See Ex parte Tayama, 24 USPQ2d
1614, 1618 (Bd. Pat. App. & Int. 1992).
DECISION
The decision of the examiner rejecting claims 22, 24, and
25 under 35 U.S.C. § 103 is affirmed. The decision of the
examiner rejecting claim 23 under 35 U.S.C. § 103(a)is
reversed. The decision of the examiner rejecting claims 1, 3-
6, 8, and
26 under 35 U.S.C. § 103 is reversed because of our finding
that these claims are indefinite.
As a result of the indefiniteness of claims 1, 3-6, 8,
and 26, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997,
by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10,
1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct.
21, 1997)). 37 CFR § 1.196(b) provides that, °A new ground
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Application No. 08/250,223
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of rejection shall not be considered final for purposes of
judicial review.¢
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Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b) (amended effective
Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office
63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that
°[a] new ground of rejection shall not be considered final for
purposes of judicial review.¢
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of
the original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of facts
relating to the claims so rejected, or both,
and have the mater reconsidered by the
examiner, in which event the application will
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be remanded to the examiner . . . .
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(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record . . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or
145 with respect to the affirmed rejection, the effective date
of the affirmance is deferred until conclusion of the
prosecution before the examiner unless, as a mere incident to
the limited prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for rehearing thereof.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
37 CFR 1.196(b)
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Administrative Patent Judge )
KWH/CR:hh
Appeal No. 1997-1109
Application No. 08/250,223
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JAMES M. HESLIN
TOWNSEND AND TOWNSEND AND CREW L.L.P.
TWO EMBARCADERO CENTER, 8TH FLOOR
SAN FRANCISCO, CA 94111-3834