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 .
This action is in response to the preliminary amendment and documents received on January 9, 2025.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
INVENTION I. Claims 1-10 and 18 drawn to a method and apparatus for generating settings for drug product packaging classified in B65B 59/103.
INVENTION II. Claims 11-17 drawn to a method for generating a layout of drug product placement, classified in B65B 5/103.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, the subcombination claimed in Invention I has separate utility such as a drug packaging system that is not limited to a specific drug product layout configuration as required in the subcombination of Invention II. Likewise, the subcombination of invention II does not require the step of generating settings for a packaging system as required in the subcombination of Invention I. 1
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
During a telephone conversation with D. Scott Moore (Reg. No. 42,011) on December 12, 2025 a provisional election was made without traverse to prosecute Invention II, claims 11-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-10 and 18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 11 and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CARSON et al. (US 8,914,146).
In reference to claim 11, CARSON et al. discloses a product packaging method comprising: receiving a dispensing history 560, 586 of a dispensary that identifies a plurality of drug product (inventory-column 32 lines 27-36 & column 33 lines 3-52); receiving an identifier 940 for a drug product packaging system 90 (figure 2A & 2C; column 39 lines 8-17); and generating a layout configuration that identifies placement of the plurality of drug products in cell locations 94 of the drug product packaging system (figure 5; column 12 lines 49-63).
Regarding claims 15 and 16, CARSON et al. further discloses generating a layout configuration wherein adjacent cell locations 94 contain the same of the plurality of drug products (figure 19B); and wherein the plurality of drug products come from a common dispenser 26.
With respect to claim 17, column 27 lines 29-40 of CARSON et al. further discloses identifying the plurality of drug products using the National Drug Code (NDC).
Allowable Subject Matter
Claims 12-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter in claims 12 and 13: Upon examination, the art considered as a whole, alone or in combination, neither anticipated nor renders obvious the claimed drug product packaging method comprising the steps of generating a layout configuration that identifies placement of a plurality of drug products in cell locations of a drug product packaging system based on the dispensing history and a drug identifier; determining a cannister size for one of the plurality of drug products based on the size of the plurality of drug products; and generating the layout configuration based on the canister size for one of the plurality of drug products for the purpose of effectively managing a drug product packaging system and quickly dispensing drug product therefrom.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to the attached PTO-892 for a notice of references cited and recommended for consideration based on their disclosure of limitations related to the claimed invention; in particular, CHUDY (US 10,427,819) teaches dispensing drug products from a canister at a speed based on the quantity of drug products to be dispensed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GLORIA R WEEKS whose telephone number is (571)272-4473. The examiner can normally be reached M-F 8am-2pm & 5pm-7pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Information Help line 1-800-786-9199
/GLORIA R WEEKS/Primary Examiner, Art Unit 3731
December 29, 2025
1 See MPEP § 806.05(d).