Johnson, Sam

Patent Trials and Appeals Board

Nov 21, 2019

15057289 - (D) (P.T.A.B. Nov. 21, 2019)

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.
15/057,289 03/01/2016 Sam Johnson CAPMND.0005P 8416
32856 7590 11/21/2019
WEIDE & MILLER, LTD.
10655 Park Run Drive
SUITE 100
LAS VEGAS, NV 89144
EXAMINER
PHAM, TOAN NGOC
ART UNIT PAPER NUMBER
2684
MAIL DATE DELIVERY MODE
11/21/2019 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 TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER B. FLEIZACH, ERIC T. SEYMOUR, and
GREGORY F. HUGHES
____________

Appeal 2018-003780
Application 15/057,289
Technology Center 2600
____________

Before MAHSHID D. SAADAT, CARL L. SILVERMAN, and
ALEX A. YAP, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–6, 8–18, and 20, which constitute all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was
held on October 24, 2019.
We REVERSE.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Sam
Johnson as the real party in interest. App. Br. 3.
Appeal 2018-003780
Application 15/057,289
2
STATEMENT OF THE CASE
The invention relates to outputting captions for movies and other
video content. Abstract; Spec. ¶¶ 1–7, Figs. 1–6. Claim 1, reproduced
below, is exemplary of the subject matter on appeal (emphasis added):
1. A closed-loop medication monitoring and feedback
system comprising:
a medicinal monitoring apparatus configured to be affixed to a
medicinal container, the medicinal monitoring apparatus comprising:
a case configured to be connected to the medicinal
container;
at least one activity detector associated with said case,
said activity detector comprising a sensor that is configured to
detect a change in an amount of medication associated
with said medicinal container;
a user input device configured to receive user
identification information; and
a processing unit communicatively coupled to the at least
one activity detector; and
a computing device communicatively coupled to the medicinal
monitoring apparatus and configured to receive information from said
processing unit regarding activity associated with said medicinal
container as detected by said at least one activity detector.

App. Br. 17 (Claims App.).

THE REJECTIONS
Claims 1–6, 8–18, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over de la Huerga (US 8,391,104 B2; iss. Mar. 5, 2013)
(“Huerga”) in view of Varvarelis et al. (US 7,359,765 B2; iss. Apr. 15,
2008) (“Varvarelis”). Final Act. 2–6.
Claims 6–8 and 19–21 are provisionally rejected on the ground of non
statutory double patenting over claims 11–18 of copending Application
No. 14/610,641 (2015/0179032). Final Act. 6–8.
Appeal 2018-003780
Application 15/057,289
3
ANALYSIS
The § 103 Rejections
Appellant argues that the Examiner errs in finding the combination of
Huerga and Varvarelis teaches the claim 1 limitation said activity detector
comprising a sensor that is configured to detect a change in an amount of
medication associated with said medicinal container (also referred to as
“disputed limitation”). App. Br. 7–9; Reply Br. 1–2. According to
Appellant,
while de la Huerga discloses a method for computing remaining
doses of medication which remain, de la Huerga never discloses
any sensor which has an ability to or a configuration to detect a
change in the amount of medicine associated with a container,
such as by directly sensing medicine removed from or added to
the container. In de la Huerga, a sensor simply detects when a
container cap is removed. That is, de la Huerga calculates the
number of doses inferentially based on access events, and does
not disclose any sensor that actually detects a change in the
amount of medicine as claimed.
The claimed system has numerous advantages over the
prior art, including de la Huerga. In particular, the invention as
claimed allows the user to obtain accurate feedback concerning
an amount a medicine remaining in a medicinal container based
on the sensor feedback of the actual amount of medicine in the
container.
App. Br. 8. (Emphasis added).
Appellant presents substantially the same arguments regarding
Varvarelis: “Varvarelis is only capable of counting a pill dispensing event
and would thus not be able to detect content addition or removal through a
cap (an event outside a pill dispensing event) because no direct detection of
the contents by a sensor is provided.” Id. at 9. (Emphasis added).
Appeal 2018-003780
Application 15/057,289
4
In the Answer, the Examiner finds
Hue[r]ga to disclose at least one activity detector (115)
associated with said case, the activity detector (115), comprising
a sensor that is configured to detect a change in an amount of
medication associated with said medicinal container (col. 44,
lines 42-53). de la Huerga further discloses the quantity of
medication remaining (84) being compared with the quantity
level (1348) (col. 79, line 65-col. 80, line 12). Thus, de la Huerga
implicitly teaches that the amount of medication is changed
based on the remaining medication as compared to the quantity
level as the result of the activity detector (115).
Ans. 2–3.
In the Reply Brief, Appellant reiterates the arguments in the Appeal
Brief and further argues “de la Huerga only discloses a sensor that detects
access events and estimates medication based on the access events, and does
not disclose a sensor that is configured to detect a change in an amount of
medication, as recited in claim 1.” Reply Br. 2.
We are persuaded by Appellant’s arguments. Regarding the disputed
limitation, said activity detector comprising a sensor that is configured to
detect a change in an amount of medication associated with said medicinal
container, the Examiner’s interpretation is unreasonably broad.
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the Specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). While we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Appeal 2018-003780
Application 15/057,289
5
Here, we do not agree with the Examiner’s claim interpretation and
findings that Huergra’s calculation of doses based on access events meets
the claim 1 limitation, said activity detector comprising a sensor that is
configured to detect a change in an amount of medication associated with
said medicinal container. Although the disputed limitation does not recite
“directly” detect a change, the claim recites that the sensor (itself) is
configured to detect a change, not simply a sensor used with additional
processing to estimate a change. This interpretation is additionally
supported by several of the dependent2 claims. For example, dependent
claim 2 recites “[t]he closed-loop medication monitoring and feedback
system of Claim 1 wherein said at least one activity detector is also
configured to detect opening and/or closing of said medical container and
wherein said computing device receives information regarding said opening
and/or closing of said medicinal container as detected by said at least one
activity detector.” (Emphasis added). This recites the activity detector
function of detecting opening and closing but does not further modify the
sensor that is configured to detect a change. Thus, the sensor itself does
detect a change. A similar analysis applies to dependent claims 8 and 9.
Applying this broad, but reasonable, claim interpretation, we agree
with Appellant that Huerga and Varvarelis do not teach or suggest the
disputed limitation in which the sensor itself is configured to detect a
change.

2 See Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1351
(Fed. Cir. 2005) (“The doctrine of claim differentiation creates a
presumption that each claim in a patent has a different scope. The difference
in meaning and scope between claims is presumed to be significant to the
extent that the absence of such difference in meaning and scope would make
a claim superfluous.”) (internal quotation marks and citations omitted).
Appeal 2018-003780
Application 15/057,289
6
In view of the above, we do not sustain the rejection of claim 1, and
dependent claims 2–6, 8–18, and 20. Cf. In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent
claims from which they depend are nonobvious . . . .”).
The Double Patenting Rejections
The Examiner finds that “[a]lthough the claims at issue are not
identical, they are not patentably distinct from each other because they both
claimed the same subject matter including a medicinal container with an
activity detector, memory and computing device configured to receive
information regarding the activity associated with the container.” Final Act.
8.
Appellant argues the Examiner provides insufficient analysis for the
rejection and the finality of this rejection is improper. App. Br. 13–14.
Appellant further argues
the present claim 1 recites said activity detector comprising a sensor
that is configured to detect a change in an amount of medication
associated with said medicinal container. Reviewing each of
independent claim 1, 9, and 11 of U.S. 14/610,641 reveals that none of
[] those claims include such a feature. Rather, claims 1, 9, and 11 of
U.S. 14/610,641 are directed to scheduling configurations of a
monitoring apparatus. None of those claims include any features
directed to a sensor to detect a change in an amount of medication.
Thus, the present claims are different from and patentably distinct over
the claims in U.S. 14/610,641. Therefore, it is respectfully requested
that the double patenting rejection be withdrawn.
App. Br. 13–14.
In the Answer, the Examiner finds “both inventions are directed to the
same common subject matter with respect to the medicine container and the
activity detector for detecting activities of the medicine container. The
container's activity, whether it detects the opening/closing of the container,
Appeal 2018-003780
Application 15/057,289
7
consumptions or remaining quantity/amount is merely claiming the same
endeavor to detect any activities or actions associated with the medicine
container. Thus, the actions by the activity detector are not patentably
distinct.” Ans. 7–8.
In the Reply Brief, Appellant argues the Examiner’s findings are
conclusory. Reply Br. 6.
We are persuaded by Appellant’s arguments. Regarding Appellant’s
argument that none of the claims in US 14/610,641 recites the claim 1
limitation, “said activity detector comprising a sensor that is configured to
detect a change in an amount of medication associated with said medicinal
container,” our discussion, supra, regarding the correct claim interpretation
is applicable. In particular, the Examiner does not sufficiently explain why
the broad, but reasonable, construction of the disputed limitation does not
distinguish claim 1 from the claims in US 14/610,641.
In view of the above, we do not sustain the provisional double
patenting rejection of claims 1–6, 8–18, and 20.
Because our decision with regard to the disputed limitation is
dispositive of the rejections, we do not address additional arguments raised
by Appellant.

Appeal 2018-003780
Application 15/057,289
8

DECISION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–18, and 20 103(a) de la Huerga and
Varvarelis
1–6, 8–18, and 20

1–6, 8–18, and 20 Double Patenting 1–6, 8–18, and 20
Overall Outcome 1–6, 8–18, and 20

REVERSED