WALTER G. LEONARD, HENRY P. DOBLE Jr. and WALTER S. NUCKOLS

[1990] APO 15

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:     Patent application No. 37476/85 by WALTER G. LEONARD, HENRY P. DOBLE Jr. and WALTER S. NUCKOLS.  Examiner's objections.

Background

Application No. 37476/85 entitled "Calendar‑Oriented Pill Dispenser" was filed as an international application on 13 December 1984.  It has a priority date of 19 December 1983.  Following a request for examination, the examiner's first report issued on 23 September 1988.  Several sets of amendments to the specification were proposed by the applicants but the examiner maintained objections that the application is not for a manner of new manufacture and that the claims are not novel.  The matter was heard in Canberra on 18 May 1990; the applicants were represented by Messrs Malcolm Royal, patent attorney, and Greg Bartlett both from Phillips, Ormonde & Fitzpatrick, Melbourne.
Specification
         The specification indicates that the invention relates to a pill‑dispensing package or dispenser of the blister‑pack type with each pill enclosure having a numerical indicia associated therewith corresponding to a day in a calendar month.  The indicia are on both the plastic sheet front surface and the aluminium foil backing surface.  The dispenser provides a visual indication of calendar days for which pills have not been used by the patient and thus provides patient compliance information to the prescribing

physician.  The dispenser is particularly suited to the
administration of calendar‑oriented prescription drugs for the
treatment of menopausal symptoms.  Amendments to the specification lodged on 4 May 1990 propose twenty‑one claims four of which are independent.  Claim 14 is the broadest of the claims and reads as follows:

"A method of dispensing medication which is intended to be taken on a calendar oriented basis comprising the steps of:

(1)storing the medication to be dispensed for each calendar date in a separate enclosure formed on a backing sheet with a front and rear surface, where each enclosure is identified on both the front and rear surfaces with integer indicia corresponding to that calendar date;

(2)arranging the dispensing enclosures in rows; and

(3)rupturing the rear surface of the backing sheet of the enclosure corresponding to the calendar date for which the medication is to be dispensed, whereby when the dispenser is held with said enclosures facing a user to display said integer indicia positioned in proximity to said enclosures, the medication may be dispensed by pressure of a thumb against said enclosures, and whereby when the dispenser is held with the rear surface of the backing sheet facing the user to display said integer indicia positioned on the rear surface, the medication may be dispensed by pressure of a finger against said enclosures."

Prior Art
         In his reports the examiner cited the following prior art:

.US patent 3057473 for a "vitamin calendar"; this discloses a set of dispenser packs each numbered on one side for a particular day in the month.

.US patent 3225913 for a re‑usable "tablet pocket carrier"; this discloses a flat compartmented container with a lid and with each compartment numbered according to a day in the month.

.US patent 3494322.  This discloses a blister pack for dispensing contraceptive pills; the enclosures or "bubbles" are numbered 5‑25 according to the days of a menstrual period when the pills should be taken.  The numbers are on the flat (foil) side of the pack.

.Australian specification No. 416690.  This discloses a "wallet" pack comprising a foil sheet with transparent pockets held between two panels of a folded card; one panel having apertures adjacent the transparent pockets in the foil sheet and the opposite panel having hinged flaps adjacent the pockets.  Pressure on the hinged flaps forces tablets out of the transparent pockets and through the apertures.  On the outside of each panel of the wallet is a printed track indicating a dosage schedule.  The drawings show on these tracks indicia indicating days of the week.  In the third paragraph on page 2 the specification reads:

"A dosage schedule for pharmaceutical tablets can be printed both on or adjacent to the hinged flaps [in the second panel] and adjacent to the apertures in the first panel.  This will assist the user of the tablets to take them in the correct order."

.Australian specifications No. 41680/68 and No. 52638/79.  These disclose further blister packs for dispensing drugs with indicia on the bubble side and on the foil side respectively.

Submissions
         At the hearing Mr Royal suggested that the merit of the invention is in the dosage information indicia being on both the front and rear surfaces of the dispenser, thus allowing the patient to use either a thumb or finger to remove the medication from the enclosures whilst reading the dosage information.  He suggested that the dispenser does not have to be "turned over" to read the dosage information as is the case with the prior art.
He submitted that the invention was a manner of manufacture in that the information on the dispenser served a mechanical purpose according to the law on "ticket" cases. He referred me to Cooper's Application 19 RPC 53 and to Fishburn's Application 57 RPC 245. In the former case a patent was granted for a newspaper page with spaces across the printed page to enable it to be folded along the spaces and in the latter case a patent was granted for a theatre ticket with duplicate information thereon to permit the ticket to be divided either transversely or longitudinally into two disconnected sections. Mr Royal distinguished these two cases and the present case from The Continental Group Inc.'s Application (1986) 7 IPR 362 where prize indicia on the bottom of a soft drink can were found to have no mechanical purpose.
Mr Royal submitted that the claims of the applicants' specification were novel. Referring to the tests derived from Griffin v Isaacs 12 AOJP 739 and Werner v Bailey Aluminium 13 IPR 513, he suggested that the indicia on both sides of the dispenser contribute to the working of the thing because it does not have to be turned over and therefore "operates in a different way" and that "it cannot be a mere workshop variation to make a change which facilitates a different method of opening".
         I invited Mr Royal to comment on whether the feature relating to alternative use of the thumb or finger was disclosed in the specification as lodged.  He commented that this feature is

"a functional limitation that naturally follows from what is disclosed in the specification ... that point is in substance disclosed because a person who reads the specification will see that the apparatus can be used in either technique ... by pressure of the finger or pressure of the thumb ... the dual functional characteristic is inherent from what is disclosed ... [this feature] is to emphasise the manner of manufacture point rather than to really claim anything different."

Decision
         Clearly there are similarities between the present invention and those discussed in Cooper's Application and in Fishburn's Application and it could be argued that there is some degree of mechanical purpose in the information on both sides of the dispenser.  However I think that this is not the only matter to be considered in this case.
         I note that Cooper's Application (1901) and Fishburn's Application (1938) are relatively old decisions of the Attorney General and the Appeal Tribunal in Great Britain and novelty as comprehended under the Australian Act was not a factor in accepting those applications.  Another significant decision is that of the Commissioner's delegate in Janome Sewing Machine Co.'s Application  (1982) AOJP 1355 for a dressmaking pattern characterized by information thereon in the form of tables and multiple cut out lines for different sized dresses.  The information was found to be for a mechanical purpose, viz. at page 5 (unreported):

"In the present case the lines of the pattern form a template for the cutting out of the fabric; I am satisfied that a mechanical purpose is served thereby and that the claims are directed to a manner of manufacture."

However the application was refused on the ground of lack of novelty.
         It is established Patent Office practice where an invention differs from what is known only in its information content that such an invention is found to be not novel.  See for example:
         Cobianchi's Application (1959) 29 AOJP 2133
         Ticket Seal Ltd.'s Application (1974) 44 AOJP 4274
         Thomson & Thomson's Application (1975) 45 AOJP 873
         Fortuna Agencies Ltd.'s Application (1977) 47 AOJP 2138
         Janome Sewing Machine Co.'s Application, supra
         The Continental Group Inc.'s Application, supra
Indoor Cricket Arenas v AICF [1987] AIPC 90‑395.
         On comparing claim 14 of the present application with Australian specification No. 416690, which I consider to be the closest citation, I deduce that there are two features referred to in the claim which are not disclosed in the citation, viz:

1.Information in the form of integer indicia corresponding to calendar dates.

2.Alternate methods of dispensing the medication by use of either thumb or finger.

I do not see any merit or inventive ingenuity in this first differentiating feature.  I deduce from the prior art that it is well‑known that information on pill dispensers can be in the form of calendar dates; those relating to menstrual periods for example.  The use of 31 days instead of 20 does not involve the inventive faculty.  This difference also does not contribute to the working of the dispenser, it is merely alternative information.
         Also, I do not see any merit or inventive ingenuity in the second differentiating feature.  There is no direct reference in the prior art to using either the finger or the thumb to dispense medication from blister packs so I imagine that people would use the packs in a variety of ways; it is even possible for example that a finger could be used when the information is on the blister side of the dispenser facing the user.  Thus I think that the prior art does disclose the use of fingers or thumbs, such a disclosure is inherent in the nature of the blister packs.  Mr Royal used a similar argument to allege that the alternative thumb or finger feature is inherent in the applicants' specification as lodged, and I agree with him on this point, but I think that if this feature is inherent in the applicants' invention then it is fair to say that a similar feature is inherent in the prior art.
         All the essential features of the invention as claimed in claim 14 are disclosed in the citation, I see no merit or inventive ingenuity in the other features, thus I find that claim 14 is not novel.  Additional features in the other claims of the specification relate to:

.Well‑known features of blister packs such as an aluminium foil backing sheet.

.Statements of advantages of the invention such as those relating to "monitoring of user compliance".

.Use of the invention for estrogen therapy such as drugs to be enclosed and dimensions of the enclosures.

None of these things I consider to be capable of conferring novelty; they are matters of common knowledge, mere workshop improvements or mere statements of advantages.
         I conclude that there is no patentable subject matter in the applicants' specification and I thus refuse to accept the application and complete specification.

(J.I. WELSH)