`
`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.
`
`11/337,681
`
`23850
`
`
`
`
`
`FILING DATE
`
`01/24/2006
`
`7590
`
`10/17/2012
`
`KRATZ, QUINTOS & HANSON,LLP
`1420 K Street, N.W.
`4th Floor
`WASHINGTON, DC 20005
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
` CONFIRMATIONNO.
`
`
`Koichi Kobayashi
`
`060056
`
`4499
`
`WAGGONER,TIMOTHYR
`
`3651
`
`MAIL DATE
`
`10/17/2012
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`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 TRADEMARKOFFICE
`
`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, MICHELLER. OSINSKI, and
`JILL D. HILL, Administrative Patent Judges.
`
`HILL, Administrative Patent Judge.
`
`DECISION ON APPEAL
`
`
`
`Appeal 2010-009492
`Application 11/337,681
`
`Appellants appeal under 35 U.S.C. § 134 from a final rejection of
`
`claims | and 4. Wehavejurisdiction under 35 U.S.C. § 6(b).
`
`We AFFIRM.
`
`REJECTION
`
`Appellants seek review of the Examiner’s rejection of claims | 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 | 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 | is the only independentclaim on appeal, and is reproduced below
`
`with the key disputed limitations emphasized:
`
`Claim 1: A medicine supply apparatus whichfills a
`container with medicines discharged from a tablet case,
`comprising:
`discharge means for discharging the medicines from the
`tablet case;
`medicine detection meansfor detecting the medicines
`discharged from the tablet case; and
`control meansfor controlling the discharge meansto
`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
`
`
`
`Appeal 2010-009492
`Application 11/337,681
`
`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 Examinerfinds 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 dispensesingle pills.
`
`Id. A detection means cooperates with a processor to control the modes. Jd.
`
`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 obviousto oneskilled 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. Jd.
`
`Regarding Tamaoki, the Examinerfinds that Tamaoki discloses a
`
`medicine dispensing cassette that changes speed based on size and shape,
`
`and slowsdispensation whena final count is neared. Ans. 4. A sensor
`
`means keepsan accurate count and a processor changes speed whenthe
`
`count nears the final count. Jd.
`
`The Examiner admits that Tamaoki does not expressly disclose that
`
`the speed is increased for round or small medicaments, but concludesthatit
`
`would have been obviousto one skilled in the art to test various speeds and
`
`arrive at an appropriate discharge speed such as an increased speed. Ans. 4.
`
`
`
`Appeal 2010-009492
`Application 11/337,681
`
`Appellants argue that neither Boyer nor Tamaokidiscloses a speed
`
`being increased for round or small medicaments. Br. 11.
`
`Claim | 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 medicinein the tablet
`
`case has a small size, smaller than a predetermined reference value, and/or
`
`around 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 medicinein 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 medicineis 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 orderto 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).
`
`
`
`Appeal 2010-009492
`Application 11/337,681
`
`Weagree 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 Tamaokiis 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 medicineis
`
`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.
`
`Boyerspecifically states that its device is able to “count accurately at
`
`a speed commensurate with a high-throughput pharmacy fulfillment system”
`
`(col.1, Il. 51-53), and that its software “rotates the tube at different speeds to
`
`effect an optimal flow for specifically-sized and -shapedpills”(col. 5, Il. 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 ofthe 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, IL.
`
`36-51. Tamaokitherefore 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.
`
`
`
`Appeal 2010-009492
`Application 11/337,681
`
`12. Appellants also argue:
`
`It would appearthat 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 Boyeret al. device
`dependent upon the type of medicinethat 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 Examinerfindsthat the abstract of Boyerstates that the invention
`
`is capable of dispensing “pills of all shapes and sizes,” andstates thatit
`
`would have been obviousto 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 concludesthat the claims do notrecite dispensing
`
`capsules, and that there is no reason that Tamaoki's drum could not be used
`
`to dispenseall 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 Tamaokidisclose feed rates designated for different
`
`medicines being dispensed, and that the appropriate or optimal feed rate
`
`would need to be determinedby testing, implying that the requirement for
`
`
`
`Appeal 2010-009492
`Application 11/337,681
`
`such testing does not render optimization for a particular pill size non-
`
`obvious. Ans. 5.
`
`Weare not persuaded by Appellants’ arguments that certain technical
`
`limits on the operation of Boyer and Tamaokirenderthe references
`
`incapable of performing the recited functions. The claimed function does
`
`not patentably distinguish the claimed structure from the prior art structure.
`
`Wesustain the rejection of claim | under § 102(b) as being
`
`anticipated by,or, in the alternative, under § 103(a) as being unpatentable
`
`over, Boyer. Wealso sustain the rejection of claim | 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 Tamaokiif claim | is unpatentable over
`
`Boyer or Tamaoki. Wetherefore 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 | 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 | and 4 under
`
`§ 102(b) as being anticipated by,or, in the alternative, under § 103(a) as
`
`being unpatentable over, Tamaoki.
`
`AFFIRMED
`
`mls
`
`
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