`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwusptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`12/646,943
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`12/23/2009
`
`Hitoshi ISHIWATARI
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`P034781.US.03 (466570—8)
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`1029
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`.
`EXAMINER
`Dorseywmmeym —
`Intellectual Property Department - SF
`HARMON, CHRISTOPHERR
`Columbia Center
`701 Fifth Avenue, Suite6100
`Seattle, WA 98104-7043
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`NUMBER
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`3721
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`
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`02/ 14/2013
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`ipdocket-se @ dorsey.c0m
`pogsonphoebe @ dorsey.c0m
`IPDocket_SE @ dorsey.f0undati0nip.c0m
`
`PTOL—90A (Rev. 04/07)
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`

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`Office Action Summary
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`Application No.
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`Applicant(s)
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` 12/646,943 ISHIWATARI ET AL.
`Examiner
`Art Unit
`CHRISTOPHER HARMON
`3721
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)|Zl Responsive to communication(s) filed on 02 August 2012.
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`2a)|:l This action is FINAL.
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`2b)IXI This action is non-final.
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`3)|:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)IXI Claim(s) 16 1720-24 and 31-36 is/are pending in the application.
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`5a) Of the above claim(s) _ is/are withdrawn from consideration.
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`6)|:| Claim(s)_ is/are allowed.
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`7)|Xl Claim(s) 16 1720-24 and 31-36 is/are rejected.
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`8)|:| Claim(s)_ is/are objected to.
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`9)|:I Claim((s)
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`are subject to restriction and/or election requirement.
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`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
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`httn:,I/www usntq. quwua'ertslanr events/
`h/index.'s or send an inquiry to PPeredback us Emmi.
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`Application Papers
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`10)I:| The specification is objected to by the Examiner.
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`11)|:l The drawing(s) filed on _ is/are: a)|:l accepted or b)|:l objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)|X| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)lZl All
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`b)|:l Some * c)I:I None of:
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`1.IXI Certified copies of the priority documents have been received.
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`2.|:l Certified copies of the priority documents have been received in Application No. _
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`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`
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`Attachment(s)
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`1) I] Notice of References Cited (PTO-892)
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`3) I] Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`4) D Other:
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`2) E Information Disclosure Statement(s) (PTO/SB/08)
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`Paper No(s)/Mai| Date 7/12/11' 11/15/11' 1/12/12' 8/2/12.
`US. Patent and Trademark Office
`PTOL-326 (Rev. 09-12)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20130208
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`

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`Application/Control Number: 12/646,943
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`Page 2
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`Art Unit: 3721
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`DETAILED ACTION
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`Continued Examination Under 37 CFR 1. 114
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`1.
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/12/12
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`has been entered.
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`Claim Rejections - 35 USC § 103
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`2.
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`3.
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`Claims 16-17, 20-24, and 31-36 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Lasher et al (US 5,720,154) in view of Gonyea et al. (US
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`2011/0032109).
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`Lasher et al. disclose an automated system comprising a plurality of tablet cases
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`for accommodating and discharging medicines into containers through a chutes 84,85
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`and hoppers 91, etc. in a main body 58 and container charging device 18 as claimed
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`(including computer 150; display device/monitor, motors, shutters 96, etc.; printing
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`mechanism/labeler; see figures 13 Lasher discusses performing multiple operations
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`via a control device including controlled locks, controlled distribution of products,
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`

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`Application/Control Number: 12/646,943
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`Page 3
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`Art Unit: 3721
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`inventory control, which stores data regarding the tablet count in each location
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`throughout the device in order to provide accurate distribution; see col. 8, lines 25+
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`including restricted access via operator log in.
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`Lasher et al. does not directly disclose storing data indicating operating time or
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`frequency of operation for operating elements, however Goneyea et al. describe a
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`monitoring system operating in a diagnostic mode for operating parts with
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`predetermined durability limits requiring replacement or maintenance and comparing the
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`cycle time of the parts with this limit and performing an indication of the schedule on a
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`display; see para. 13, claim 11 ; noting cumulative time and writing to data tables; para.
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`15, 19. Goneyea et al. describe inputting operational data 50 obtained from the owner
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`into the system 28 however note that they can be from other sources; para. 26; network
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`13 for communication between computers; para. 17.
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`It would have been obvious to one of ordinary skill in the art at the time of the
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`invention to include automated data collection of the various devices of Lasher et al.
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`and utilizing the monitoring system of Gonyea et al. in the invention to Lasher et al. for
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`predicting breakdowns and scheduling maintenance. Note that Lasher recognizes
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`repair of malfunctioning units; see col. 3, lines 10+.
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`Regarding claim 23, the system of Lasher et al. only discusses placing tablets
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`into lidded containers not using a thermal sealer, however sealing containers in a pliable
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`thermoplastic cover and/or bag utilizing a thermal heat sealing device is widely known in
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`the art.
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`It would have been obvious to one of ordinary skill in the art to include a thermal
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`Application/Control Number: 12/646,943
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`Page 4
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`Art Unit: 3721
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`sealing device in the modified invention to Lasher et al. in order to provide a tamper
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`evident seal.
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`The common knowledge modification in the above paragraph is taken to be
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`admitted prior art because applicant failed to traverse the examiner’s previous assertion
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`of Official Notice.
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`Response to Arguments
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`4.
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`One of ordinary skill in the art would recognize the use of the invention to
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`Gonyea et al. for a system such as Lasher et al. Automated transfer of the operating
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`data of Lasher et al. would have been obvious to one of ordinary skill in the art. The
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`control system of Lasher et al. (computer 150 and control system) currently monitors
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`product levels, locks, etc.
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`It is fully capable of monitoring/counting/collecting data of
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`batch releases, locking/unlocking, indication light flashes, etc. The transfer of data to a
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`system of Gonyea et al. could easily be performed by a network WAN or LAN as
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`provided by Gonyea et al.
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`Furthermore, note that it has been held that broadly providing a mechanical or
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`automatic means to replace manual activity which has accomplished the same result
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`involves only routine skill in the art. See In re Venner, 120 USPQ 192. Note that
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`Gonyea et al. describes manual input of operational data including multiple subjective
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`variables which may affect the outcome other than time of performance. Simple cycle
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`time monitoring is well known in the art.
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`

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`Application/Control Number: 12/646,943
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`Page 5
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`Art Unit: 3721
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`Conclusion
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`5.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to CHRISTOPHER HARMON whose telephone number is
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`(571)272-4461. The examiner can normally be reached on Monday-Friday from 8-5.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Alex Elve can be reached on (571) 272-1173. The fax phone number for
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`the organization where this application or proceeding is assigned is 571 -273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
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`/Christopher R Harmon/
`Primary Examiner, Art Unit 3721
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`