Ex Parte Lim et al

Patent Trial and Appeal Board

Jun 8, 2017

13880505 (P.T.A.B. Jun. 8, 2017)

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. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/880,505 06/25/2013 Adrian Wai Ming Lim 5408-131357 5359
28289 7590 06/12/2017
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
ROERSMA, ANDREW MARK
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
06/12/2017 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):
patents @ webblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRIAN WAI MING LIM and YU LING ABRAHAM CHAN
Appeal 2016-004927
Application 13/880,505
Technology Center 3600
Before THU A. DANG, JUSTIN BUSCH, and STEVEN M. AMUNDSON,
Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—7, 9, and 20-23, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Purapharm International
(HK) Limited. App. Br. 3.
Appeal 2016-004927
Application 13/880,505
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “relates to a dispensing
system for traditional Chinese medicines.” Spec. 1:2—3.2 The Specification
explains that a dispensing unit includes an operating table and a framework
with “a back plate having semi-cylindrical inner and outer surfaces; and a
plurality of horizontal arc shelves connected to the semi-cylindrical inner
surface of the back plate.” Abstract.
Exemplary Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows:
1. A dispensing system for traditional Chinese medicine,
wherein said system comprises
an independent medicine dispensing unit including a
framework for putting medicine bottles thereon and an
operating table on which a pharmacist may perform
corresponding operations, and
the framework includes: a back plate having an inner
surface and an outer surface which are semi-cylindrical,
vertically oriented, and concentric; and a plurality of horizontal
arc shelves which are connected to the semi-cylindrical inner
surface of the back plate and are configured to support medicine
bottles thereon; each of the horizontal arc shelves having a
radially inner edge and a radially outer edge which are centered
on a central axis of the semi-cylindrical inner surface and outer
surface of the back plate; and
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed April 19, 2013; “Final Act.” for the Final Office Action,
mailed February 23, 2015; “App. Br.” for the Appeal Brief, filed October 23,
2015; “Ans.” for the Examiner’s Answer, mailed February 8, 2016; and
“Reply Br.” for the Reply Brief, filed April 6, 2016.
2
Appeal 2016-004927
Application 13/880,505
the operating table has a generally semi-circular
horizontal plate member for the pharmacist to perform
corresponding operations thereon, the plate member being
positioned below the framework; when viewed from a top view,
the plate member having its semi-circular contour or border
generally coincided with a vertical projection of the cylindrical
outer surface of the back plate, and the plate member having a
center which is substantially on the central axis of the
cylindrical outer surface of the back plate; and
the shelves designed such that, for the shelves with
vertical distances from the plate member of the operating table
being equal to or greater than a predetermined value, the inner
edges of these shelves become gradually closer to the central
axis of the back plate, as the respective heights of the shelves
increase,
wherein each shelf is provided with a plurality of
recesses to receive the medicine bottles therein, and
wherein each recess comprises a depression with respect
to an upper surface of each shelf, the depression being sized to
receive lower portions of the medicine bottles.
App. Br. 23 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Borsani et al. (“Borsani”) US 3,663,079 May 16, 1972
Swensson US 3,834,777 Sept. 10, 1974
Ellis US 5,749,478 May 12, 1998
Scaioli US 2004/0250740 Al Dec. 16, 2004
Golias, Jr. et al. (“Golias”) US 7,452,039 B1 Nov. 18, 2008
The Rejections on Appeal
Claims 1—7, 9, and 20-23 stand rejected under 35 U.S.C. § 112 11 for
failing to comply with the written-description requirement. Final Act. 2—3.
3
Appeal 2016-004927
Application 13/880,505
Claims 1—7, 9, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Swensson and Ellis. Final Act. 4—8.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Swensson, Ellis, and Scaioli. Final Act. 8.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Swensson, Ellis, and Golias. Final Act. 9.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Swensson, Ellis, and Borsani. Final Act. 9.
ANALYSIS
We have reviewed the rejections of claims 1—7, 9, and 20-23 in light
of Appellants’ arguments that the Examiner erred. For the reasons explained
below, we disagree with Appellants’ assertions regarding error by the
Examiner. Except as noted below, we adopt the Examiner’s findings in the
Final Office Action (Final Act. 4—10) and Answer (Ans. 4—10). We add the
following to address and emphasize specific findings and arguments.
The Rejection of Claims 1—7, 9,
and20—23 Under 35 U.S.C. § 112 f 1
Section 112’s written-description requirement serves to “clearly allow
persons of ordinary skill in the art to recognize that [the inventor] invented
what is claimed.” AriadPharm., Inc. v. EliLilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc) (alteration in original) (quoting Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)); see Blue Calypso,
LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). “[T]he test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad,
4
Appeal 2016-004927
Application 13/880,505
598 F.3d at 1351; Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275,
1296 (Fed. Cir. 2017). The “test requires an objective inquiry into the four
comers of the specification from the perspective of a person of ordinary skill
in the art.” Ariad, 598 F.3d at 1351. The written-description requirement
does not, however, “demand any particular form of disclosure” or require
that “the specification recite the claimed invention in haec verba.” Id.
at 1352. The analysis for sufficiency of disclosure may consider “such
descriptive means as words, stmctures, figures, diagrams, formulas, etc.”
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
The Examiner finds that the Specification does not support the
limitation “wherein each recess comprises a depression with respect to an
upper surface of each shelf, the depression being sized to receive lower
portions of the medicine bottles” in claim 1. Final Act. 2—3; Ans. 3^4. The
Examiner further finds that (1) the “original disclosure does not contain the
word ‘depression’” and (2) the limitation “wherein each shelf is provided
with a plurality of recesses to receive the medicine bottles therein” in the
original claims does not require a depression with respect to a shelf’s upper
surface. Ans. 2—3.
Appellants argue that the Examiner erred in finding the Specification
lacks support for claim 1 ’s “recess comprises a depression” limitation. App.
Br. 10-11; Reply Br. 2—3. We agree with Appellants that the Specification
provides adequate disclosure to reasonably convey to those skilled in the art
that Appellants had possession of claim l’s “recess comprises a depression”
limitation. The Specification discloses a shelf with a side wall, a rear wall,
and a partition having coincident upper surfaces corresponding to the shelf’s
upper surface. Spec. Fig. ID; see Ans. 2. The side wall, the rear wall, and
5
Appeal 2016-004927
Application 13/880,505
the partition define a depression with respect to the shelf’s upper surface.
The Specification also discloses that the shelf “supports] the medicine
bottles thereon.” Spec. 2:10-12, 6:33—7:1. Thus, the Specification provides
adequate disclosure regarding claim 1 ’s “recess comprises a depression”
limitation. Consequently, we do not sustain the rejection of claims 1—7, 9,
and 20—23 for failing to comply with the written-description requirement.
The Rejection of Claims 1—7, 9,
and 23 Under 35 U.S.C. § 103(a)
“Plurality of Recesses to Receive the Medicine Bottles Therein”
Appellants argue that the Examiner erred in rejecting claim 1 because
(1) claim 1 “requires that the recess is an element of the horizontal arc shelf
and not a separate structure or element extending from the shelf’;
(2) Swensson’s shelves lack “‘a plurality of recesses to receive medicine
bottles therein’ as specified by claim 1”; and (3) Ellis’s dividers “constitute a
separate piece or element from the upper surface” of Ellis’s shelf. App.
Br. 14; see Reply Br. 4. Appellants also argue that “the plain-meaning of
claim 1 would be understood to require that the recesses are part of the shelf
and not a separate structure, as contended by the Examiner.” Reply Br. 4.
Appellants’ arguments do not persuade us of Examiner error. Claim 1
specifies that “each shelf is provided with a plurality of recesses to receive
the medicine bottles therein.” App. Br. 23 (Claims App.). “[Djuring
examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). Accordingly, the Examiner reasons, and we agree,
that the phrase “provided with” does not require “the recesses to be an
6
Appeal 2016-004927
Application 13/880,505
element of the shelf’ but instead permits “a separate structure or element
extending from the shelf.” Ans. 4.
The Examiner finds, and we agree, that Ellis “discloses a shelf 2 that
holds products 6 between dividers 30” and the “dividers 30 form recesses for
receiving lower portions of products 6.” Final Act. 5 (citing Ellis 2:19-28,
2:61—3:6). Ellis instructs that the “dividers 30 are arranged so as to form
rows in which product 6 may be stocked.” Ellis 2:61—62. Ellis Figure 2
depicts the dividers 30 cooperating with one another and with the end walls
14 to form rows that extend from the shelf s front edge 24 to near the shelf s
rear edge 26. Id. Fig. 2. Ellis Figure 1 illustrates multiple shelves
supporting products, such as bottles, arranged in rows, i.e., rows formed by
the dividers 30 and the end walls 14. Id. Fig. 1. Given the broadest
reasonable interpretation of the claims, we find no error with the Examiner’s
determination that the claimed “plurality of recesses to receive the medicine
bottles therein” reads on Ellis’s rows in each shelf.
“Each Recess Comprises a Depression with
Respect to an Upper Surface of Each Shelf”
Appellants assert that the Examiner erred in rejecting claim 1 because
(1) “Appellants’ specification appropriately describes that the recesses are
depressions in an upper surface of the shelf rather than a divider mounted to
the shelf as suggested by the Examiner” and (2) Ellis’s dividers “clearly are
not depressions with respect to an upper surface of the shelf, and are not
sized to receive a lower portion of the medicine bottle.” App. Br. 15.
Appellants’ assertions do not persuade us of Examiner error. The
Examiner finds, and we agree, that the Specification does not describe a
shelf’s upper surface or “even point to an upper surface in the figures.”
7
Appeal 2016-004927
Application 13/880,505
Ans. 5. Accordingly, the Examiner reasons that “claim 1 is broad as to ‘an
upper surface’.” Id.
The Examiner determines that the claimed “an upper surface of each
shelf’ corresponds to an upper surface of Ellis’s dividers 30, i.e., “‘an upper
surface of each shelf’ is defined at the upper surfaces of the dividers.” Final
Act. 5; Ans. 5. Consistent with that determination, Ellis Figure 2 shows the
upper surface of the dividers 30 coincident with the upper surface of the
shelf s side walls 14 and the shelf s rear wall 71. Ellis Fig. 2. The rows
formed by the dividers 30 and the end walls 14 comprise depressions with
respect to the shelf s upper surface. Ellis’s disclosure of depressions with
respect to a shelf’s upper surface parallels the Specification’s disclosure of
depressions with respect to a shelf s upper surface, discussed above for the
rejection under 35 U.S.C. § 112 11.
Further, Ellis Figure 1 shows products, such as bottles, arranged in
rows on shelves, i.e., arranged in depressions with respect to a shelf s upper
surface. Ellis Fig. 1. Claim 1 does not require that a depression receive only
one medicine bottle but instead permits a depression to receive multiple
medicine bottles. App. Br. 23 (Claims App.). Thus, we agree with the
Examiner’s finding that Ellis discloses depressions “sized to receive lower
portions of the medicine bottles” according to claim 1.
Motivation to Combine S wens son and Ellis
Appellants argue that the Examiner erred in rejecting claim 1 because
“the Examiner has failed to provide sufficient motivation for combining the
disclosures of Swensson and Ellis to arrive at the claimed invention.” App.
Br. 16; see Reply Br. 5—6. Appellants assert that Swensson discloses
“suitable means for segmenting or dividing” the shelves 39. App. Br. 16.
8
Appeal 2016-004927
Application 13/880,505
Based on that assertion, Appellants contend that “there would be no reason
for one of ordinary skill in the art to replace the portions of the frame or
body (30) in Swensson which divides the shelves (39) with the dividers (30)
disclosed in Ellis.” Id. Appellants also contend that modifying Swensson’s
shelves with Ellis’s dividers “would require an entire redesign” of
Swensson’s shelves “to accommodate” the “perpendicular tab projections
31” at the ends of the dividers 30. Id. at 16—17; see Ellis 2:62—65.
Appellants additionally contend that modifying Swensson’s inclined shelves
with recesses comprising depressions “would destroy” Swensson’s intended
gravity-feed purpose, i.e., “to provide continual advancement along” the
inclined shelves, because “the recesses would naturally prevent the articles
from sliding along the shelf surface.” App. Br. 17; see Reply Br. 5.
Appellants’ contentions do not persuade us of Examiner error. The
Examiner finds, and we agree, that (1) Swensson’s dividers partition the
shelves in half; (2) Ellis’s dividers “provide significantly more
compartments than Swensson’s two halves”; (3) “[o]ne would be motivated
to select a divider based on what is being stored on the shelves”; (4) “[o]ne
would be motivated to combine Swensson and Ellis to compartmentalize the
shelves into small compartments or into more compartments,” i.e., “to hold
small items (small medicine bottles)”; and (5) “[sjwitching one known
divider for another is . . . within the level of ordinary skill in the art.”
Ans. 6—7. Accordingly, the Examiner provides “articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR Int 7 Co. v.
Teleflex, Inc., 550 U.S. 398, 415, 418 (2007).
9
Appeal 2016-004927
Application 13/880,505
With regard to Appellants’ contention that modifying Swensson’s
shelves with Ellis’s dividers “would require an entire redesign” of
Swensson’s shelves, the Examiner finds, and we agree, that adding suitable
channels to accommodate the dividers “is not ‘an entire redesign’” and is
“within the level of ordinary skill in the art” because adding suitable
channels helps attach the dividers to the shelves. Ans. 7.
Moreover, Appellants’ contention that modifying Swensson’s inclined
shelves with recesses comprising depressions “would destroy” Swensson’s
intended gravity-feed purpose disregards Swensson’s disclosure. In the
Answer, the Examiner finds, and we agree, that Swensson discloses
“changing the angle of the shelves” and “making shelves in any of the
sections horizontal.” Ans. 7 (citing Swensson 4:43—67, 5:41 44). In the
Reply Brief, Appellants do not address those findings. Reply Br. 5—6.
Because Swensson discloses horizontal shelves, including horizontal arc
shelves, gravity feed does not constitute an essential aspect of Swensson’s
shelves. See Swensson 4:33—36, 4:43—67, 5:41—44, Figs. 3—7. In addition,
Appellants’ contention wrongly assumes that the depressions necessarily
prevent product movement. As explained above, Ellis Figure 1 shows
products, such as bottles, arranged in rows on shelves, i.e., arranged in
depressions with respect to a shelf’s upper surface. Ellis Fig. 1. The
depressions in Ellis Figure 1 permit products to slide by gravity when a shelf
resides in the stocking position “A” or the display position “B.” See id.
2:19-28, Fig. 1; see also Ans. 7.
10
Appeal 2016-004927
Application 13/880,505
Summary for Independent Claim 1
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Swensson and Ellis. Hence, we sustain the rejection of claim 1.
Dependent Claims 2,4—7,9, and 23
Appellants do not make any separate patentability arguments for
dependent claims 2, 4—7, 9, and 23. App. Br. 12—19; Reply Br. 4—6.
Because Appellants do not argue the claims separately, we sustain the
obviousness rejection of claims 2, 4—7, 9, and 23 for the same reasons as
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Dependent Claim 3
Claim 3 depends indirectly from claim 1 and recites:
wherein for the shelves with vertical distances from the plate
member of the operating table being equal to or greater than
said predetermined value, the distances of inner edges of these
shelves from a single predetermined point on the central axis
are substantially identical or increased along an inclined straight
locus, and a distance of the single predetermined point from the
plate member is equal to said predetermined value.
App. Br. 24 (Claims App.). Appellants assert that the Examiner erred in
rejecting claim 3 because “Swensson does not disclose or suggest that the
distance between the inner edges of the shelves and the single predetermined
point is identical or increases in a straight locus.” App. Br. 18. Appellants
also assert that adjusting the length of Swensson’s shelves to accommodate
users with longer or shorter arms, as the Examiner proposes, “would not
result in the positioning required by claim 3” but instead would cause the
shelves to have “a different parabolic or arcuate profile.” Id. at 18—19.
11
Appeal 2016-004927
Application 13/880,505
Appellants’ assertions do not persuade us of Examiner error.
Swensson discloses that upper shelves 39 extend progressively farther than
lower shelves 39 such that the ends of the shelves “form an arcuate profile”
that “conform[s] to the arcuate path of the arm of an individual as it is
moved upwardly.” Swensson 4:52—62. The Examiner finds, and we agree,
that (1) “Swensson’s ‘arcuate path’ and an arm rotating defines a path in the
shape of an arc (a segment of a circle)”; (2) the claimed “single
predetermined point” corresponds to the center of that circle; (3) that circle
has a constant radius; and (4) the distance from the center of that circle to
each of the shelf ends forming the arcuate profile is identical. Ans. 8—9.
Consistent with the Examiner’s findings, the Specification explains that “the
distances D of inner edges of the[] shelves from a predetermined point P . . .
are substantially identical” when “the inner edges of the shelves are
positioned on a[] circular arc . . . .” Spec. 8:3—7. Appellants have not
apprised us of error in the Examiner’s findings. Consequently, we sustain
the obviousness rejection of claim 3.
The Rejections of Claims 20—22 Under 35 U.S.C. § 103(a)
Claims 20-22 depend from claim 1 and further define various features
in the dispensing system, e.g., by specifying that the operating table is
formed of tempered glass. App. Br. 27 (Claims App.). For claims 20—22,
Appellants contend that in Scaioli, Golias, and Borsani “[tjhere is no
teaching or suggestion . . . regarding horizontal arc shelves including a
plurality of recesses.” Id. at 19-20. Appellants also contend that Scaioli,
Golias, and Borsani “fail[] to provide any motivation for modifying
Swensson and/or Ellis for the purpose of providing the claimed horizontal
arc shelves.” Id. at 19—21.
12
Appeal 2016-004927
Application 13/880,505
Appellants’ contentions do not persuade us of Examiner error
because, as the Examiner explains, “[n]one of Scaioli, Golias, and Borasani
[sic] are relied upon for horizontal shelves or recesses therein.” Ans. 10. As
noted above, Swensson teaches or suggests horizontal arc shelves, and Ellis
teaches or suggests shelves having a plurality of recesses comprising
depressions. See Final Act. 4—5; Ans. 4—8; see also Swensson 3:19-29,
4:17-29, 4:43-67, 5:41^15, Figs. 3-7; Ellis 2:19-28, 2:61-3:6, Figs. 1-2.
Consequently, we sustain the obviousness rejections of claims 20-22.
DECISION
We reverse the Examiner’s rejection of claims 1—7, 9, and 20—23
under 35U.S.C. § 112 | 1 but affirm the Examiner’s rejection of claims 1—7,
9, and 20-23 under 35 U.S.C. § 103(a). Because we have affirmed at least
one ground of rejection with respect to each claim on appeal, the Examiner’s
decision is affirmed. See 37 C.F.R. §41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
13