DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant argues that the combination of Baarman and Dvorak was improper for the rejections of claims 1 and 12. Furthermore, the Applicant argues that the combination of Baarman and Dvorak do not teach the limitations of newly amended independent claims 1 and 12.
In response, the Applicant is herein referred to the new 102 rejections of claims 1 and 12 using the Dvorak reference.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2,10-13,21-22 rejected under 35 U.S.C. 102(a)(2) as being anticipated by Dvorak et al. (US 2016/0158107).
Claim 1, Dvorak discloses a device comprising a tamper-resistant outer housing (para.0005), wherein the tamper-resistant outer housing comprises an outer sheath (104); a display (abstract); a biometric scanner (142); an interior assembly comprising: a pill bottle (102), wherein the pill bottle is sized such that it fits within the outer sheath (104) of the tamper-resistant outer housing; a chute (192) for transmitting a single pill from the pill bottle to a user; a mechanism (172; para.0049) for dispensing the single pill from a plurality of pills in the pill bottle (102) defining an opening configured to engage the single pill in the pill bottle, wherein the mechanism for dispensing the single pill is actuated to transfer the single pill to the chute (12); a locking mechanism (121) to secure the interior assembly to the tamper-resistant outer housing.
Claim 2, Dvorak discloses wherein the biometric scanner comprises a fingerprint scanner
(142).
Claim 10, Dvorak discloses the display is configured to show the user a number of pills
remaining and an amount of time until a next pill is dispensed (para.0081).
Claim 11, Dvorak discloses wherein the locking mechanism comprises a tamper- resistant lock and key (para.0015).
Claim 12, Dvorak discloses a device comprising: a tamper-resistant outer housing (para.0005) wherein the tamper-resistant outer housing comprises an outer sheath (104); a display (abstract); a biometric scanner (142); and an interior assembly comprising: a pill bottle (102) wherein the pill bottle is sized such that it fits within the outer sheath (104) of the tamper-resistant outer housing; a pill wheel (plurality of holes in 172) defining a hole (plurality of holes in 172) sized for a single pill; a chute (192) for transmitting the single pill from the pill bottle (102) to a user; a mechanism (172) for dispensing the single pill from a plurality of pills in the pill bottle (102), wherein the mechanism for dispensing the single pill is actuated to transfer the single pill to the chute (192); a locking mechanism (121) to secure the interior assembly to the tamper-resistant outer housing.
Claim 13, Dvorak discloses wherein the biometric scanner comprises a fingerprint scanner
(142).
Claim 21, Dvorak discloses the display is configured to show the user a number of pills
remaining and an amount of time until a next pill is dispensed (para.0081).
Claim 22, Dvorak discloses wherein the locking mechanism comprises a tamper- resistant lock and key (para.0015).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 3,14 rejected under 35 U.S.C. 103 as being unpatentable over Dvorak et al. (US 2016/0158107) in view of Clark (US 2002/0074341).
Claim 3, Dvorak does not explicitly disclose wherein the tamper-resistant outer housing is formed from one selected from a group consisting of nylon, metal, and polycarbonate.
Clark discloses wherein the tamper-resistant outer housing is formed from one selected from a
group consisting of nylon, metal, and polycarbonate (para.0020). Therefore, it would have been obvious
to one of ordinary skill in the art to provide the device of Dvorak with wherein the
tamper-resistant outer housing is formed from one selected from a group consisting of nylon, metal,
and polycarbonate because it's a very well-known configuration in the art and merely requires routine
skill to implement.
Claim 14, Dvorak does not explicitly disclose wherein the tamper-resistant outer housing is formed from one selected from a group consisting of nylon, metal, and polycarbonate.
Clark discloses wherein the tamper-resistant outer housing is formed from one selected from a group consisting of nylon, metal, and polycarbonate (para.0020). Therefore, it would have been obvious
to one of ordinary skill in the art to provide the device of Dvorak with wherein the
tamper-resistant outer housing is formed from one selected from a group consisting of nylon, metal,
and polycarbonate because it's a very well-known configuration in the art and merely requires routine
skill to implement.
Claims 4-9,15-20 rejected under 35 U.S.C. 103 as being unpatentable over Dvorak et al. (US 2016/0158107) in view of Song (US 8,936,175).
Claim 4, Dvorak does not disclose a programming means for programming the
device.
Song discloses a programming means for programming the device (abstract; C6:L20-67).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the device of
Dvorak with wherein a programming means for programming the device because it's a very well-known configuration in the art and merely requires routine skill to implement such a configuration since it further enhances the compliance by the patient taking the medications.
Claim 5, Dvorak does not disclose wherein the programming means comprises a plug for connecting the device to a programming device.
Song discloses wherein the programming means comprises a plug for connecting the device to a
programming device (abstract; C6:L20-67; wired connection to the computer). Therefore, it would have
been obvious to one of ordinary skill in the art to provide the device of Dvorak with wherein the programming means comprises a plug for connecting the device to a programming device
because it's a very well-known configuration in the art and merely requires routine skill to implement
such a configuration since it further enhances the compliance by the patient taking the medications.
Claim 6, Dvorak does not disclose wherein the plug is concealed behind the
outer housing when the device is fully assembled.
Song discloses wherein the programming means comprises a plug for connecting the device to a
programming device (abstract; C6:L20-67; wired connection to the computer). Therefore, it would have
been obvious to one of ordinary skill in the art to provide the device of Dvorak with wherein the programming means comprises a plug for connecting the device to a programming device because it's a very well-known configuration in the art and merely requires routine skill to implement such a configuration since it further enhances the compliance by the patient taking the medications.
Although Song does not explicitly disclose wherein the plug (abstract; C6:L20-67; wired
connection to the computer) is concealed behind the outer housing when the device is fully assembled, it would have been very obvious to one of ordinary skill in the art to position the wired connection in any arbitrary and/or needed location after assembling the device.
Claim 7, Dvorak does not disclose wherein the programming device comprises
one selected from a group consisting of a smartphone, tablet, laptop, dedicated computing device, and
personal computer.
Song discloses wherein the programming device comprises one selected from a group consisting
of a smartphone, tablet, laptop, dedicated computing device, and personal computer (abstract; C6:L20-
67; wired connection to the computer). Therefore, it would have been obvious to one of ordinary skill in
the art to provide the device of Dvorak with wherein the programming device comprises one selected from a group consisting of a smartphone, tablet, laptop, dedicated computing device, and personal computer because it's a very well-known configuration in the art and merely requires routine skill to implement such a configuration since it further enhances the compliance by the patient taking the medications.
Claim 8, Dvorak does not disclose further comprising an application for programming the device to dispense the pill at a predetermined time interval.
Song discloses an application for programming the device to dispense the pill at a predetermined time interval (abstract; C6:L20-67; wired connection to the computer; the ability to program the device for timed-dispensing inherently includes an application). Therefore, it would have
been obvious to one of ordinary skill in the art to provide the device of Dvorak with an application for programming the device to dispense the pill at a predetermined time interval because it's a very well-known configuration in the art and merely requires routine skill to implement such a configuration since it further enhances the compliance by the patient taking the medications.
Claim 9, Dvorak does not disclose wherein the application prompts a pharmacist to enter relevant information about the user and a prescription of the user.
Song discloses wherein the application prompts a pharmacist to enter relevant information
about the user and a prescription of the user (abstract; C6:L20-67; wired connection to the computer;
the ability to program the device for timed-dispensing inherently includes an application wherein the
pharmacist is prompted to enter pertinent information about the patient and patient's drug regimen).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the device of
Dvorak with wherein the application prompts a pharmacist to enter relevant information about the user and a prescription of the user because it's a very well-known configuration in the art and merely requires routine skill to implement such a configuration since it further enhances the compliance by the patient taking the medications.
Claim 15, Dvorak does not disclose a programming means for programming the device.
Song discloses a programming means for programming the device (abstract; C6:L20-67). Therefore, it would have been obvious to one of ordinary skill in the art to provide the device of Dvorak with wherein a programming means for programming the device because it's a very well-known configuration in the art and merely requires routine skill to implement such a configuration since it further enhances the compliance by the patient taking the medications.
Claim 16, Dvorak does not disclose wherein the programming means comprises a plug for connecting the device to a programming device.
Song discloses wherein the programming means comprises a plug for connecting the device to a
programming device (abstract; C6:L20-67; wired connection to the computer). Therefore, it would have
been obvious to one of ordinary skill in the art to provide the device of Dvorak with wherein the programming means comprises a plug for connecting the device to a programming device because it's a very well-known configuration in the art and merely requires routine skill to implement such a configuration since it further enhances the compliance by the patient taking the medications.
Claim 17, Dvorak does not disclose wherein the plug is concealed behind the
outer housing when the device is fully assembled.
Song discloses wherein the programming means comprises a plug for connecting the device to a
programming device (abstract; C6:L20-67; wired connection to the computer). Therefore, it would have
been obvious to one of ordinary skill in the art to provide the device of Dvorak with wherein the programming means comprises a plug for connecting the device to a programming device because it's a very well-known configuration in the art and merely requires routine skill to implement such a configuration since it further enhances the compliance by the patient taking the medications.
Although Song does not explicitly disclose wherein the plug (abstract; C6:L20-67; wired connection to the computer) is concealed behind the outer housing when the device is fully assembled,
it would have been very obvious to one of ordinary skill in the art to position the wired connection in any arbitrary and/or needed location after assembling the device.
Claim 18, Dvorak does not disclose wherein the programming device comprises one selected from a group consisting of a smartphone, tablet, laptop, dedicated computing device, and personal computer.
Song discloses wherein the programming device comprises one selected from a group consisting of a smartphone, tablet, laptop, dedicated computing device, and personal computer (abstract; C6:L20- 67; wired connection to the computer). Therefore, it would have been obvious to one of ordinary skill in the art to provide the device of Baarman in view of Dvorak with wherein the programming device comprises one selected from a group consisting of a smartphone, tablet, laptop, dedicated computing device, and personal computer because it's a very well-known configuration in the art and merely requires routine skill to implement such a configuration since it further enhances the compliance by the patient taking the medications.
Claim 19, Dvorak does not disclose further comprising an application for programming the device to dispense the pill at a predetermined time interval.
Song discloses an application for programming the device to dispense the pill at a predetermined time interval (abstract; C6:L20-67; wired connection to the computer; the ability to program the device for timed-dispensing inherently includes an application). Therefore, it would have
been obvious to one of ordinary skill in the art to provide the device of Dvorak with an application for programming the device to dispense the pill at a predetermined time interval because it's a very well-known configuration in the art and merely requires routine skill to implement such a configuration since it further enhances the compliance by the patient taking the medications.
Claim 20, Dvorak does not disclose wherein the application prompts a pharmacist to enter relevant information about the user and a prescription of the user.
Song discloses wherein the application prompts a pharmacist to enter relevant information
about the user and a prescription of the user (abstract; C6:L20-67; wired connection to the computer;
the ability to program the device for timed-dispensing inherently includes an application wherein the
pharmacist is prompted to enter pertinent information about the patient and patient's drug regimen).
Therefore, it would have been obvious to one of ordinary skill in the art to provide the device of Dvorak with wherein the application prompts a pharmacist to enter relevant information about the user and a prescription of the user because it's a very well-known configuration in the art and merely requires routine skill to implement such a configuration since it further enhances the compliance by the patient taking the medications.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AYODEJI T OJOFEITIMI whose telephone number is (571)272-6557. The examiner can normally be reached 8:30 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, GENE CRAWFORD can be reached at (571) 272-6911. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AYODEJI T OJOFEITIMI/Examiner, Art Unit 3651
/GENE O CRAWFORD/Supervisory Patent Examiner, Art Unit 3651