`
`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
`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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`
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`CONF {MATION NO.
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`12/646,943
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`12/23/2009
`
`Hitoshi ISHIWATARI
`
`P034781.US.03 (492666—3)
`
`1029
`
`.
`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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`
`
`
`
`08/23/2013
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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):
`
`p0gson.ph0ebe@dorsey.com
`docketingdept-sf@ dorsey.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 12/646,943 ISHIWATARI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`3721CHRISTOPHER HARMON first“
`
`-- 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 CFR 1.136(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
`
`1)IXI Responsive to communication(s) filed on 13 June 2013.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:| This action is non-final.
`a)IXl This action is FINAL.
`3)I: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)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte 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.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`
`7)IZ| Claim(s) 16 1720-24 and 31-36 is/are rejected.
`8)I:I Claim(s) _ is/are objected to.
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`9)|:l Claim((s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events"
`
`
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`h/index.‘s or send an inquiry to PPI-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`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
`12)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some * c)I:I None of the:
`a)le All
`1.|ZI Certified copies of the priority documents have been received.
`2.|:| Certified copies of the priority documents have been received in Application No.
`3.|: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)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
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`1) D Notice of References Cited (PTO-892)
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`3) I] Interview Summary (PTO-413)
`
`Paper NOISI/Ma” Date —
`PTO/SB/08
`t
`St t
`I
`D'
`t'
`f
`2 I:l I
`)
`4) I:I Other:
`a emen (s)(
`Isc osure
`n orma Ion
`)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL-326 (Rev. 05-13)
`
`Part of Paper No./Mai| Date 20130819
`
`Office Action Summary
`
`

`

`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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`Claim Rejections - 35 USC § 103
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`1.
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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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`2.
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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 1-3. Lasher discusses performing multiple operations
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`via a control device including controlled locks, controlled distribution of products,
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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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`

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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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`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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`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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`3.
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`Arguments presented in the response of 6/13/13 are not agreed with. While
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`features of an apparatus may be recited either structurally or functionally, claims
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`

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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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`directed towards an apparatus must be distinguished from the prior art in terms of
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`structure rather than function. See In re Schreiber, 128 F.3d 1473-78, 44 USPQ2d
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`1429-32 (Fed.Cir. 1997) and Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
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`1464, 1469, 15 USPQ2d 1525, 1528 (Fed.Cir. 1990).
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`The control system of Lasher et al. (computer 150 and control system) monitors
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`product levels, locks, etc. (using read/write data) in order to generate signals and
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`operate different dispensing cells.
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`The teachings of Gonyea et al. are not limited to performing calculations based
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`on estimated future event data. The system in Gonyea is designed to incorporate
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`operational data (para. 21) comprising events which may affect the maintenance
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`schedule and directly differentiates estimated events from actual (para. 26). The
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`system of Gonyea assigns replacement and part values which takes into account
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`operational conditions and events and uses all data variables to adjust a maintenance
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`schedule (see para. 31 -34, 47) including past repair history (para 48) and can be
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`manipulated by user input data for consideration (para 52). The system of Gonyea is
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`operational to schedule a maintenance event for individual parts of a machine in order
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`to prevent part failure during operation.
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`The transfer of data to a system of Gonyea et al. could easily be performed by a
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`network WAN or LAN as provided by Gonyea et al. Note that Gonyea et al. describes
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`manual input of operational data including multiple subjective variables which may affect
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`the outcome other than time of performance. Simple cycle time monitoring is well
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`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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`Lasher recognizes that dispensing cells may require repair and discloses a
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`control system which recognizes when cells are malfunctioning/under repair to continue
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`operation; see col.9, lines 49+. Note that a person of ordinary skill in the art would
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`recognize that it would improve similar devices in the same way, using the technique is
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`obvious unless its actual application is beyond that person’s skill. While evaluating
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`obviousness, one must ask whether the improvement is more than the predictable use
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`of prior-art elements according to their established functions; see KSR Int. v. Telef/ex
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`550 US_(2007).
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`To determine whether there was an apparent reason to combine the known
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`elements in the way a patent claims, it will often be necessary to look to interrelated
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`teachings of multiple patents; to the effects of demands known to the design community
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`or present in the marketplace; and to the background knowledge possessed by a
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`person having ordinary skill in the art; ibid.
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`The analysis need not seek out precise teachings directed to the challenged
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`claimed specific subject matter, for a court can consider the inferences and creative
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`steps a person of ordinary skill in the art would employ. Under the correct analysis, any
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`need or problem known in the field and addressed by the patent can provide a reason
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`for combining the elements in the manner claimed; ibid.
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`In order to avoid device part failure during operation of the invention to Lasher, it
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`would have been obvious to one of ordinary skill in the art to utilize a part design failure
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`maintenance program such as taught by Gonyea et al. for providing
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`

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`Application/Control Number: 12/646,943
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`Page 6
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`Art Unit: 3721
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`indication/performing preemptive maintenance/replacement on device parts prior to
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`failure.
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`Conclusion
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`4.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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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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`

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`Application/Control Number: 12/646,943
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`Page 7
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`Art Unit: 3721
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`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
`
`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.
`
`/Christopher R Harmon/
`Primary Examiner, Art Unit 3721
`
`