Ex Parte Muncy et al

Patent Trial and Appeal Board

Aug 10, 2016

12815666 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/815,666 06/15/2010
1009 7590 08/12/2016
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40513
FIRST NAMED INVENTOR
Robert B. Muncy JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1638-002 1856
EXAMINER
COLLINS, MICHAEL
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
08/12/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
uspto@iplawl.net
laura@iplawl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT B. MUNCY, JR.,
WILLIAM R. DIETER,
ANTHONY J. MCELDOWNEY,
JOHN T. HENNINGER, and
RICHARD R. MUSE
Appeal2014-006639
Application 12/815,666
Technology Center 3600
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
GORDON D. KINDER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 41-84. App. Br. 1, 5. Claims 1--40 have been cancelled.
App. Br. 20 (Claims Appendix). We have jurisdiction under 35 U.S.C.
§ 6(b ). We REVERSE.
Appeal2014-006639
Application 12/815,666
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a dispenser and, more
specifically, a pill dispenser and method." Spec. 1: 19-20. Claims 41, 64,
and 73 are independent. Claim 41 is illustrative of the claims on appeal and
is reproduced below:
41. A pill dispenser, comprising:
a housing, defining an interior;
a holder including a plurality of recesses for holding
pills: and
a movable barrier having an aperture that enables a pill to
be released from the holder.
REFERENCE RELIED ON BY THE EXAMINER
Dumont us 6,021,918 Feb. 8,2000
THE REJECTION ON APPEAL
Claims 41-84 are rejected under 35 U.S.C. § 102(b) as anticipated by
Dumont.
ANALYSIS
Each independent claim on appeal (i.e., claims 41, 64, and 73)
includes the limitation of "a holder" and "a movable barrier." The "holder"
recited in each independent claim includes "recesses for holding pills" and
the "movable barrier" recited in each independent claim includes "an
aperture that enables a pill to be released from the holder."
The Examiner initially correlates Dumont's items 56, 70, 84, and 86
(as well as other items) to the claimed "holder," and Dumont's items 56, 70,
84, and 86 to the claimed "movable barrier." Final Act. 3-4. However,
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Application 12/815,666
apparently in response to Appellants' arguments (see infra), the Examiner
acknowledges that Dumont "could more clearly be cited ... by a more
specific citing of the prior art elements." Ans. 12. In providing this clarity,
the Examiner correlates Dumont's item 56 to the claimed "holder" and
Dumont's items 70, 84, and 86 to the claimed "movable barrier." Ans. 12;
see also Ans. 13.
Prior to the Examiner's clarification (see supra), Appellants argued
that item 56 could not be considered to be a "movable barrier" because,
according to Dumont, item or base plate 56 is stationary and items 70, 84,
and 86 move with respect to plate 56. 1 App. Br. 11; see also App. Br. 12-
14. We agree with Appellants that the Examiner's initial finding of plate 56
being a "movable" barrier is not accurate.
Addressing now the Examiner's clarification that plate 56 is the
"holder," as stated supra, each independent claim also recites that this
"holder" includes "a plurality of recesses for holding pills." On this point,
the Examiner finds that plate 56 "includes a plurality of recesses 64, 66, 68,
cut-out 62, and the recesses in between the nibs 60." Ans. 12. However,
Appellants point out that items 62, 64, 66, and 68 are actually openings or
apertures "that extend through the base plate 56" and that the Examiner
provides no support "for the allegation that such a hole corresponds to a
recess." Reply Br. 3. In short, Appellants contend, "the holes 62, 64, 66,
and 68 of Dumont are incapable of 'holding pills,' as any pill would pass
1 Dumont teaches that rings 84, and 86 "ride on the base plate 56." Dumont
3:42--43; id. at 4:8-10. Additionally, Dumont teaches a pill dispenser where
the pill-containing disk 70 and rings (i.e., 84 and 86) are rotated to
sequentially align with openings in the base plate (56) so that the pills can be
dispensed. See id. at Fig. 3B and 5: 1 to 6:35 ("Description of Operation").
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Application 12/815,666
through such holes." Reply Br. 3; see also Dumont Fig. 2. There is merit to
Appellants' argument. Further, regarding the Examiner's reliance on "the
recesses in between the nibs 60," these nibs are upwardly spaced (Dumont
3:12-13) and hence the spaces between the nibs are not recesses for holding
pills therein. See also Reply Br. 3. Furthermore, Dumont teaches that these
nibs 60 align movable rings 70, 84, and 86 on plate 56. Dumont 3 :42--44.
Consequently, we agree with Appellants that by the Examiner correlating
Dumont's item 56 to the claimed "holder," the Examiner fails to indicate
where Dumont teaches the limitation of "a holder including a plurality of
recesses for holding pills."
We further note Appellants' argument that the Examiner's reliance on
the same structure as teaching different claim limitations is "improper."
App. Br. 15; Reply Br. 2 (each referencing In re Robertson, 169 F.3d 743
(Fed. Cir. 1999)). There is no such per se rule and instead, our reviewing
court in Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221 (Fed. Cir. 2011)
provided guidance that one must look to the Specification to ascertain if
there is support therein to preclude the same structure from satisfying both
limitations. In Powell, the court stated, "[t]he specification teaches that the
cutting box may also function as a 'dust collection structure' to collect
sawdust and wood chips generated during the wood cutting process. It does
not suggest that the claim terms require separate structures." Powell, 663
F.3d at 1231-2 (citations omitted).
In the present matter, we likewise find no indication that Appellants'
Specification requires separate holding and barrier structures. See e.g., Spec.
2:21 to 3: 1; 3: 12-14; and 4:2-8. As such, we are not persuaded the
Examiner's rejection was improper on this basis when correlating Dumont's
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Application 12/815,666
items 56, 70, 84, and 86 to both the claimed holder and the claimed barrier.
However, for the reasons stated supra, we do not agree that Dumont
anticipates all the limitations of independent claims 41, 64, and 73 based on
the findings (and clarifications thereof) expressed by the Examiner.
Accordingly, we reverse the Examiner's rejection of claims 41-84 as
being anticipated by Dumont. We do not form an opinion as to whether
Dumont renders the recited claim language obvious because no such
rejection is before us for review.
DECISION
The Examiner's rejection of claims 41-84 as being anticipated by
Dumont is reversed.
REVERSED
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