Ex Parte 7343220 et al

Patent Trials and Appeals Board

Sep 27, 2013

95000606 - (S) (P.T.A.B. Sep. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,606 02/04/2011 7343220 CRAN01-00526 7023
42624 7590 02/28/2017
DAVIDSON BERQUIST JACKSON & GOWDEY LLP
8300 Greensboro Dr, Suite 500
McLean, VA 22102
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/28/2017 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
____________________

CRANE CO.
Requester
v.
Patent of AUTOMATED MERCHANDISING SYSTEMS,
INC.
Appellant, Patent Owner
____________________

Appeal 2013-007855
Inter partes Reexamination Control 95/000,606
Patent US 7,343,220 C1
Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge SONG.

Opinion Dissenting filed by Administrative Patent Judge McCARTHY.

SONG, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

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In the Request for Rehearing (hereinafter “Rehr’g Req.”), the Patent
Owner requests reconsideration under 37 C.F.R. § 41.79 of our Decision
mailed September 27, 2013 (hereinafter “Original Decision” or “Orig.
Dec.”) affirming Rejections A, C and G of claims 1–37 (Orig. Dec. 41).
Rejection A was based on the combination of Schuller and Dragne;
Rejection C was based on the combination of Schuller, Dragne, and Friend;
while Rejection G was based on the combination of Schuller, Levasseur,
Dragne, Endl and Friend (Orig. Dec. 6). The Patent Owner asserts that in
the Original Decision, we misapprehended or overlooked various issues, and
requests modification of the Original Decision.
In disagreeing with the findings and conclusions of the Board as set
forth in the Original Decision, many of the arguments submitted in the
Request for Rehearing reiterate the Patent Owner’s arguments submitted in
its Appeal Brief and Rebuttal Brief. Because such arguments have been
already sufficiently addressed in the Original Decision, we refer to relevant
portions thereof. However, in view of the Rehearing Request, we further
clarify certain aspects of the Original Decision.
Correspondingly, we grant the Request to the extent that we consider
the Patent Owner’s arguments infra, but DENY the request to modify our
Original Decision.

Preliminary Issue
We initially note that in addition to the Request for Rehearing, the
Patent Owner has filed a SUPPLEMENTAL BRIEF IN SUPPORT OF
REQUEST FOR RECONSIDERATION on May 1, 2015, again requesting
the Board to terminate the present inter partes reexamination proceeding,
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and noting Federal Circuit’s decision in Automated Merchandising Systems,
Inc. v. Michelle K. Lee, in which the court found the U.S. Patent and
Trademark Office’s refusal to terminate the proceedings was not a final
agency action. Automated Merchandising Syst., 782 F.3d 1376, 1380–82
(Fed. Cir. 2015).
However, as noted in the Original Decision, “[t]he Patent Owner has
not made any showing that the denial of the request is appealable to the
Patent Trial and Appeal Board.” (Orig. Dec. 2, fn. 2). In addition, as also
noted in the Original Decision, “[t]he Patent Owner’s request already has
been addressed in a ‘Decision on Petition under 37 C.F.R. §1.181(a)
Requesting Vacatur of the Proceedings’ Mailed April 14, 2011.” (Orig. Dec.
2, fn. 2). In this regard, the Patent Owner again had petitioned to terminate
the reexamination proceeding, the petition having been dismissed in the
Decision Dismissing Petition to Terminate Inter Partes Reexamination
Proceeding, mailed November 19, 2012, which resulted in the decision in
Automated Merchandising Systems. While the Federal Circuit has
determined that the decision denying the Patent Owner’s requested relief is
not final agency action, the substance of the request has been addressed by
the Patent Office. Thus, we decline to discuss this issue any further.

Issue 1
The Patent Owner argues that the Original Decision improperly relies
on “official notice” to establish a contested fact, and to supply the
motivation to combine references (Rehr’g Req. 2). Specifically, the Patent
Owner asserts that in Finding 13, “the Board took Official Notice that
electronic systems were less prone to wear and failure than mechanical
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systems based on the grounds that moving parts are subject to friction,” and
that this finding provided the basis upon which the optical sensor of
Dragne/Friend or Levasseur was substituted into the vending machine of
Schuller (id. at 2–3). The Patent Owner also asserts that the Board took
official notice that “impact sensors were known to suffer from insufficient
sensitivity to light or heavy products and the deformation of the mechanical
sensor.” (Id. at 3).
The Patent Owner mischaracterizes the Original Decision. The Board
did not enter a new fact finding or take official notice in Finding 13, but
instead, reproduced what the Examiner stated in the Answer, as well as the
Examiner’s other findings set forth in the Action Closing Prosecution
consistent therewith (Orig. Dec. 12). The Board did agree with the
Examiner’s findings already of record in stating “[]the Examiner’s adoption
of the proposed finding is a reasonable exercise of official notice, since the
fact that interacting moving parts are subject to frictional wear is susceptible
of instant and unquestionable demonstration as being well-known.” (Id.).
Thus, the Board merely understood the Examiner’s finding as to interacting
moving parts being subject to frictional wear to be a reasonable exercise of
official notice because friction causing wear in interacting moving parts is
well-known.
Similarly, the Board did not enter a new fact finding or take official
notice in Finding 14, but instead, reproduced the Requester’s proposed
finding adopted by the Examiner, which was that mechanical sensing
mechanisms such as that disclosed in Schuller lack sensitivity range to allow
detection of light-weight products as well as heavy products (Orig. Dec. 12–
13). The Board did find that these findings were consistent with the
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statements of the Patent Owner’s declarant Mr. McAlexander (id. at 13) who
declared that, as to the mechanical sensing system disclosed in Schuller:
Lighter items (e.g., chewing gum, mints, life-savers, etc) would
not have sufficient weight to displace fingers 219 and
associated bar 217 and cause the actuation of the buttons of the
two switches 227 and 229, as described by the Schuller Patent.
The reliability of vending lighter items would be, at best,
inconsistent. Further, smaller sized items such as chewing
gum, mints, life-savers, etc[.] would be prone to fall between
adjacent fingers 219 and completely avoid being detected.
Selecting such items of a size smaller than “Cartons of
Cigarettes or Like Packages” could cause the vending of
multiple items before a vended item would contact and displace
fingers 219.
(Decl. McAlexander 8, emphasis added).
Substantively, based on the above-noted erroneous assertions with
respect to the Original Decision, the Patent Owner argues that:
Even if friction and wear were an obvious problem with the
Schuller device, taking official notice that electronic sensors are
preferable to mechanical sensors [] is baseless. Not only is that
assertion wrong, it is a fact in dispute in this case. Both types
of sensors have their applications and their deficiencies. If
electronic sensors are better than mechanical sensor, as the
Board’s official notice purports, it fails to explain why
mechanical sensors were used in the first place or why they
continue to be used in many applications.
(Rehr’g Req. 3–4).
However, the Patent Owner again mischaracterizes the Original
Decision in that there is no “official notice that electronic sensors are
preferable to mechanical sensors,” or that electronic sensors are “better than
mechanical sensor” as asserted (Id.; see also id. at 5). In this regard, the
Patent Owner appears to mischaracterize the rejection at hand.
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The Examiner’s rejection, and the Board’s affirmance thereof in the
Original Decision, are principally based on substitution of a mechanical
sensing system with an optical sensing system to allow for greater sensitivity
range so also to allow accurate detection of light-weight products, and/or to
avoid “wear and potential failure due to interaction between [] parts (e.g.
friction).” (Orig. Dec. 28; see also id. at 12–13, 20; FF 13, 14, 41; Orig.
Dec. 31–33). The optical system such as that disclosed in Dragne (and for
that matter, Friend) does not rely on the weight of the object for detection so
as to allow for detection of passage of even light-weight objects. In
addition, the optical systems such as that disclosed in Dragne avoids
potential problems that can be caused by frictional wear because there are no
interacting moving parts. Accordingly, the rejection is based on addressing
inaccurate detection of light-weight objects so as to increase the sensitivity
range, and on avoiding the frictional wear present in interacting moving
parts, which could result in potential failure. Such reasons for substituting
the mechanical sensing system of Schuller with an optical system are
rational and sufficient to support the conclusion of obviousness. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Such substitution, however,
does not necessarily indicate any superiority as to one over the other as
suggested by the Patent Owner, but merely a valid basis for so doing.
In KSR, the Supreme Court affirmed that “when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR, 550 U.S. at 416. The
claimed invention substitutes a mechanical sensing system with an optical
sensing system to attain predictable results. While ambient light can be
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problematic in applying an optical sensing system to glass front vending
machines, the prior art optical sensing systems had already recognized the
problem that ambient light could cause, and had already provided a solution
for addressing such a problem as evidenced by Dragne and Endl (Orig. Dec.
15, 17, 22; FF 23, 31, 47).
We do not disagree with the Patent Owner’s assertion that electronic
(i.e., optical) sensing systems are also subject to wear and failure (Rehr’g
Req. 4). However, the wear in such optical sensing systems is not frictional
wear, and correspondingly, the potential failure would also not be due to
frictional wear. As already explained (Orig. Dec. 30), “a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); see also Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)(“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”). As noted, the substitution is proposed to
address a specific functional problem or limitation in sensing light-weight
objects, and to address a cause for potential failure, which are associated
with the mechanical system disclosed in Schuller. We are in agreement with
the Examiner that such substitution would have been obvious to one of
ordinary skill in the art.
The Patent Owner also argues that the Board failed to provide any
insight “as to why it would have been obvious to use an optical sensor over
another type of electronic sensor,” and that “[t]he fact that an optical sensor
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has been used in a vending machine does not suffice as proof of that fact.”
(Rehr’g Req. 5). However, the fact that there may have been other
electronic sensors available such as impact and vibration sensors, does not
detract from the fact that an optical sensor would have been suitable and
obvious. In addition, the fact that optical sensors have already been used in
vending machines supports the Examiner’s obviousness conclusion. In this
regard, Levasseur explicitly teaches that optical sensors can be used in
substitution for mechanical sensors in the context of vending machines
(Orig. Dec. 20–21; FF 41; see also RAN 19 stating “Levasseur is pertinent
to the combination of Schuller, Dragne and Friend because Levasseur
explicitly teaches that an electromechanical type sensor (like in Schuller) is
interchangeable with a photoelectric or optical type of sensor (like in Dragne
or Friend)”; see also Ans. 17).
The Patent Owner further argues that there is no explanation as to why
one of ordinary skill would have placed the optical sensor in the position
claimed to detect products as they freely fall through the vend space (Rehr’g
Req. 5). However, the Original Decision explained that:
In addition, one of ordinary skill in the art would have had
reason to position the replacement optical sensing system in
approximately the same position occupied by Schuller's vend
flap 29 in order to maintain the relationships between different
components of the vending machine. The proposed substitution
would have yielded a vending machine including ‘an optical
vend-sensing system configured to sense when said selected
product freely falls through said vend space’ as recited in
representative claim 1.
(Orig. Dec. 32; see also id. at 30).
Moreover, as also explained in the Original Decision:
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an optical sensing system, once substituted for Schuller’s vend
flap 29, would have sensed vended items as the items fell freely
through the light beams of the optical sensing system.
(Id. at 33; see also id. stating “the limitation requiring ‘an optical vend-
sensing system configured to sense when said selected product freely falls
through said vend space’ adds nothing of patentable consequence as
compared to the suggested combination of prior art.”).
In addition, in footnote 3, the Patent Owner states:
The Board failed to address numerous distinguishing claim
limitations by treating claim 1 as representative. Claim 1 is not
representative of the patentability of all claims of the ’220
patent and AMS never asserted otherwise. For example, claim
28 of the ’220 patent requires, at least two light emitters and
that the light emitted from each of the two light emitters is
detected by at least two of the plurality of light detectors.
(Rehr’g Req. 6).
However, the Patent Owner did not present arguments directed to
claim 28 in its Appeal Brief, and thus, this argument is new. As set forth in
the Original Decision:
With the exception of ground of rejection C, the Patent Owner
argues the patentability of all of the claims as a group without
specifically arguing the language of any particular claim. We
group all of the appealed claims together for purposes of
grounds of rejection A and G; and specifically address only the
language of representative claim 1. See 37 C.F.R.
§ 41.67(c)(l)(vii) (2011).
(Orig. Dec. 8).
The Original Decision further states:
Only issues and findings of fact contested by the
Appellant/Patent Owner have been considered. See 37 C.F.R.
§ 41.67(c)(1)(vii) (2011); In re Jung, 637 F.3d 1356, 1365 (Fed.
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Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI
2010).
(Id.).
The cited Regulation in both of the above portions of the Original
Decision states, inter alia:
When multiple claims subject to the same ground of rejection
are argued as a group by appellant, the Board may select a
single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.
37 C.F.R. § 41.67(c)(l)(vii) (2011).
Thus, the responsibility was upon the Patent Owner to explicitly argue
in its Appeal Brief, any claims and limitations therein, for which it wished to
have the Board specifically consider. See also In re Jung, 637 F.3d at 1365;
Ex Parte Frye, 94 USPQ2d at 1075–76. In this regard, the Board also
addressed various other claims to the extent that they were raised and argued
in the Patent Owner’s Appeal Brief (Orig. Dec. 36–40).1

1 Notwithstanding the fact that the Patent Owner’s argument with respect to
claim 28 is new, it is also without merit because both Friend and Endl
clearly discloses the limitation asserted to be missing in the prior art.
Specifically, the Original Decision further found that:
35. Friend’s optical sensor module 16 includes a pair of
photo diodes 46, 48 for generating electrical signals responsive
to received radiation. (Friend, col. 2, l. 67 – col. 3, l. 3). The
two photo diodes 46, 48, are active detector mechanisms that
are configured to receive electromagnetic radiation generated
by at least one emitter mechanism, that is, the array 42 of
LEDs CR1-CR7. (Friend, col. 2, ll. 46-52; col. 3, ll. 16-20; see
also Ans. 9-10).
(Orig. Dec. 18; FF 35 (underlining added for emphasis)).
Moreover, as set forth in the Original Decision, “Endl describes a
photoelectric sensing system including multiple light sources 20-24 in the
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Issue 2
The Patent Owner argues that the Original Decision is erroneous
because the Board did not construe the claim terms “vend space” and
“ambient light,” and applied these terms inconsistently (Rehr’g Req. 6).
The Original Decision finds, and sufficiently discusses, that Schuller
discloses a vertical passage 13 that defines a vend space in a vending
machine (Orig. Dec. 27; see also id. at 10–11; FF 5–12). The Patent Owner
sets forth its interpretation of “vend space,” and asserts that the recited vend
space must be unconstrained and extend down into a bin so that the selected
product would fall into the bin (Rehr’g Req. 7). According to the Patent
Owner, Schuller does not disclose a “fully open, unconstrained space”
because vend flap 29 (i.e., impact sensor) and gate 25 “covers the entire area
above the bin when closed.” (Id. at 8). However, the Patent Owner argues
limitations not appearing in the claim as the claims do not recite a “fully
open, unconstrained” vend space. In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (features not appearing in the claims cannot be relied upon for
patentability). The fact that there may be pivotable fingers that extend into
the space does not mean that the space is not a vend space, Schuller
disclosing a vertical passage 13 through which the product is vended.
Moreover, even if the claim was interpreted to require that the recited
detection region be “fully open, unconstrained space” extending into the bin,

form of LEDs. Endl teaches focusing light beams 30-34 generated by the
light sources 20-24 onto light sensors 41-45 to detect the presence of an
object blocking one or more of the beams 30-34. (Endl, col. 1, ll. 2-5; col. 2,
ll. 58-64; and fig. 1).” (Orig. Dec. 21–22; FF 45).

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the Patent Owner’s argument is unpersuasive because it argues this
limitation in the context of Schuller individually. In re Keller, 642 F.2d 413,
425 (CCPA 1981) (Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references). Specifically, the Patent Owner ignores the fact
that upon modifying Schuller in the manner suggested for the reasons noted
in the rejection, the combination results in the vend space of Schuller being a
“fully open, unconstrained space.” As already pointed out supra, the
Original Decision states that “[t]he proposed substitution would have yielded
a vending machine including ‘an optical vend-sensing system configured to
sense when said selected product freely falls through said vend space.’”
(Orig. Dec. 32). The Original Decision further states that “an optical sensing
system, once substituted for Schuller’s vend flap 29, would have sensed
vended items as the items fell freely through the light beams of the optical
sensing system.” (Id. at 33). Gate 25 is disclosed in Schuller as moving to
its open position when the consumer purchases and selects the product
(Orig. Dec. 11; FF 10). Nowhere does Schuller teach an instance where the
gate does not open when the purchase and selection is made.
The Patent Owner also argues that the limitation “ambient light”
means and refers to light that is “external to the system,” but that this
definition was ignored by the Board (Rehr’g Req. 9). In this regard, the
Patent Owner asserts that “there is no external ambient light within either the
Dragne or Friend seed tubes.” (Id.). However, this limitation was
sufficiently addressed in the Original Decision (Orig. Dec. 15, 17, 22 31,
33–34; FF 23, 29, 31, 46–47). Not only does Dragne address the problem of
“ambient light,” Endl also explicitly recognizes the problem raised by
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ambient light that is external to an optical sensing system (Orig. Dec. 22; FF
46; see also RAN 20 stating “Endl is pertinent to the combination of
Schuller and Dragne because Endl explicitly teaches that the accuracy of a
photoelectric sensing system is affected by ambient light”; see also Ans. 18).
Importantly, the Patent Owner’s argument is again misdirected
because whether the “ambient light” disclosed in Dragne is “internal” or
“external” ambient light does not impact the fact that Dragne’s system
accounts for light other than the excitation light provided by its disclosed
system for detecting the falling object. As explained in the Original
Decision with respect to Dragne:
During the calibration, the voltage V1 represents a combination
of the light transmitted by the light transmitter 15 and of any
ambient light. Hence, the voltage V1, and the calibration
process as a whole, is based on ambient light. Were an optical
sensing unit 11 the type described by Dragne placed in a
vending machine near a transparent front, the calibration
performed in accordance with the teachings of Dragne at
column 7, lines 19–28 would be based, at least in part, on
ambient light entering through the transparent front. (See Ans.
7).
(Orig. Dec. 17 (emphasis added); FF 29).
Dragne teaches using infrared LEDs in the light transmitter, and a
potting material containing a pigment tending to filter light outside the
infrared range, so as to make the sensing system less sensitive to ambient
light (see Orig. Dec. 15; FF 23; Dragne, col. 5, ll. 54–60 and col. 6, ll. 22–
24). Whether this ambient light is generated inside or outside the system is
not pertinent as the system in Dragne does not discriminate as to where the
ambient light originates. Dragne also teaches including within the receiver
circuit monitoring the light receiver, a DC compressor circuit that cooperates
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with the resistor to filter out the effects of ambient light, and again, whether
this ambient light is generated inside or outside the system is not pertinent
(see Orig. Dec. 16–17; FF 27–32; Dragne, col. 8, ll. 20–23).
Thus, as the Original Decision further explained:
Had one of ordinary skill in the art installed an optical sensing
system similar to that described by Dragne, including a
microprocessor 13 and a control circuit 17 for performing the
calibration process described by Dragne, into a vending
machine of the type described by Schuller, the optical sensing
unit would have performed the calibration process based on
ambient light entering the vending machine through the
transparent front. (FF 29; see also Ans. 7).
(Orig. Dec. 35 (emphasis added)).

Issue 3
The Patent Owner objects to various findings set forth in the Original
Decision as being inaccurate and/or incomplete (Rehr’g Req. 10–14).
However, upon review of the contentions of the Patent Owner, we discern
no error in the findings as set forth in the Original Decision. We nonetheless
address specific arguments of the Patent Owner as to certain findings.
As to Findings 10 and 12 regarding Schuller, the Patent Owner argues
that because the dispensed carton impacts and deflects sensing means 29, the
carton does not freely fall as required by the claims (Rehr’g Req. 10). The
Patent Owner also argues that if gate 25 does not open, the dispensed carton
would not reach the bin (id.). As to Finding 10, as noted supra, gate 25 is
disclosed in Schuller as moving to its open position whenever the consumer
purchases and selects the product (Orig. Dec. 10; FF 10). Nowhere does
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Schuller teach an instance where the gate does not open when the purchase
and selection is made.
Finding 12 finds that as a cigarette carton drops “(that is, free
falling),” it strikes the fingers 219 of the sensing means 29 (Orig. Dec. 10;
FF 12). While we disagree with the Patent Owner that the mere fact that the
dropping carton strikes the fingers makes the carton’s fall, no longer a “free
fall,” the Patent Owner misses the point of the obviousness rejection, which
as discussed supra, is principally based on the combination of Schuller with
Dragne in which the mechanical sensing system of Schuller is substituted
with the optical sensing system of Dragne. Such substitution eliminates the
fingers so that, as already noted supra, “[t]he proposed substitution would
have yielded a vending machine including ‘an optical vend-sensing system
configured to sense when said selected product freely falls through said vend
space.’” (Orig. Dec. 32). As also pointed out, “an optical sensing system,
once substituted for Schuller’s vend flap 29, would have sensed vended
items as the items fell freely through the light beams of the optical sensing
system.” (Id. at 33).
As to Finding 27, the Patent Owner again argues that there is no
external ambient light in the device of Dragne because the tubes are made of
metal, and that the rejection is based on this “fundamental flaw.” (Rehr’g
Req. 11). Firstly, we observe that Dragne explicitly discloses “ambient
light.” (See e.g., Orig. Dec. 15; FF 23). While Dragne does not disclose
whether the referenced “ambient light” is external, internal, or some
combination of both, this again, is not dispositive. As discussed supra, the
rejection substitutes Schuller’s mechanical sensing system with the optical
sensing system disclosed in Dragne, in which case, the optical system would
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account for external ambient light (or any light other than the excitation light
provided by its disclosed system) that may be present (Orig. Dec. 17; FF 29;
see also Orig. Dec. at 31). The optical system of Dragne does not
discriminate as to where the ambient light originates.
The Patent Owner’s arguments appears to be premised on the belief
that the motivation for the combination of prior art references must be the
same as the reason that motivated the inventor of the subject ’220 patent.
Under such a view, the motivation for combining the references must stem
from the fact that glass front vending machines allow in external ambient
light, and because (according to the Patent Owner) there is no “external
ambient light” in the seed dispensing systems, there is no motivation for the
combination of prior art as suggested in the rejection. However, that is not
the law. “In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim.” KSR,
550 U.S. at 419. Moreover, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim. Id.
at 418. What is required is an articulated reasoning with rational
underpinnings in support of the rejection, which has been provided. Id.

Issue 4
The Patent Owner argues that the Board’s analogous art analysis is
erroneous because Dragne and Friend are not “reasonably pertinent to the
particular problem faced by the inventor.” (Rehr’g Req. 15). However, this
issue has been sufficiently addressed (Orig. Dec. 14–15; FF 22 and fn. 8;
Orig. Dec. 19; FF 36; Orig. Dec. 26). As explained, even if the prior art
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reference is not in the same field of endeavor, a reference is analogous if
“the reference [] is reasonably pertinent to the particular problem with which
the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
The Patent Owner again defines its problem very narrowly (Rehr’g Req. 14),
but such a definition essentially reads out the “reasonably pertinent”
qualifier to the analogous art test.

Issue 5
Finally, the Patent Owner argues that the Original Decision
misapprehends, and misapplies, the law regarding proof of commercial
success (Rehr’g Req. 14). The Patent Owner’s argument is based on its
disagreement with the Board’s weighing of the evidence of secondary
considerations proffered. The Board set forth its consideration of the
proffered evidence in the Original Decision (Orig. Dec. 22–25, 31–36; FF
48–55). While the Patent Owner has asserted that the proffered evidence
indicates commercial success, we observe that none of the evidence is of
high quality for the reasons already explained in the Original Decision, and
the proffered evidence lacks sufficient detail to support the Patent Owner’s
assertions as to what the evidence show. Much has been asserted but the
information that would support these assertions and make them persuasive
has not been provided by the Patent Owner. When the proffered evidence is
considered in its totality and cumulatively, it does not persuade us that the
claimed invention was unobvious.
Although generally agreeing that most of the Patent Owner’s
arguments in the Request for Rehearing are unpersuasive, our colleague
nonetheless dissents, opining that the rehearing should be granted and the
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claims found to be patentable. The dissent is based, at least in part, on the
proffered secondary considerations, including sales evidence, licensing
evidence, and two advertisements, the dissent disagreeing with our weighing
of this evidence proffered by the Patent Owner. Nonetheless, we are of the
opinion that the evidence is of poor quality and of little probative value.
For example, as to the licenses, as set forth in the Original Decision
(Orig. Dec. 23–24, 31–32; FF 50), the Patent Owner has not provided
information regarding the actual value of these licenses in generating
royalties, or regarding the number of products manufactured under the
licenses. Without evidence as to the value of the licenses, coupled with
sufficient evidence as to the vending machine market to put the value or
impact of the licenses into perspective, the licenses are not persuasive
indicators of commercial success. In this regard, the licenses may have been
taken due to litigation or threat thereof, as compared to the cost of the
license (not provided), rather than due to industry recognition that the
claimed subject matter was valuable or nonobvious. Iron Grip Barbell Co.
v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004) (the law
“specifically require affirmative evidence of nexus where the evidence of
commercial success presented is a license, because it is often ‘cheaper to
take licenses than to defend infringement lawsuits.’”).
As to sales, the Patent Owner has asserted that sales in 1999 were
294% over its 1998 sales levels but the Patent Owner does not provide what
the 1998 sales levels were (or for that matter, what sales levels were for any
year) so that the percentage increase cannot be appropriately considered
(Schull Decl. ¶ 12). To the contrary, the Patent Owner testifies that it did
not have an established customer base in 1998 (id. ¶ 11), and that its product
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with “Sensit®” vend detection feature was introduced in 1998 (id. ¶ 10),
which implies that the sales volume in 1998 may have been very small. The
same can be said of the Patent Owner’s sales in 2000, which is said to have
increased another 60% over some unknown, but potentially small, 1999
sales levels (id. ¶ 12). In this respect, it is not entirely surprising that after
2000, the Patent Owner “never again experienced the sales growth of 1999
and 2000.” (Schull Decl. ¶ 12).
While testimony is provided in 2011 that over 50,000 units have been
sold since 1998, and that “tens of millions of dollars in revenue” has been
generated, the vagueness of the units sold, vagueness of the revenue, lack of
specific yearly information, and lack of any evidence as to what the asserted
sale and revenue numbers mean in the context of the vending machine
market, all limit the probative value of the evidence. In re Huang, 100 F.3d
135, 140 (Fed. Cir. 1996) (“Although Huang’s affidavit certainly indicates
that many units have been sold, it provides no indication of whether this
represents a substantial quantity in this market. This court has noted in the
past that evidence related solely to the number of units sold provides a very
weak showing of commercial success, if any”); see also In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed.Cir.1991) (“[I]nformation solely on
numbers of units sold is insufficient to establish commercial success.”);
Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1150-51 (Fed. Cir. 1983) (“There
was no evidence of market share, of growth in market share, of replacing
earlier units sold by others or of dollar amounts, and no evidence of a nexus
between sales and the merits of the invention. Under such circumstances,
consideration of the totality of the evidence, including that relating to
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commercial success, does not require a holding that the invention would
have been nonobvious at the time it was made to one skilled in the art.”).
Moreover, the evidence is inadequate to establish that such
commercial sales evidence is attributable to the unique characteristics of the
product. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (the Appellant
must offer proof “that the sales were a direct result of the unique
characteristics of the claimed invention-as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter.”).
While the Crane advertisements referenced in the dissent do highlight the
infrared beam vend-sensing feature, they also make clear that vending
machines are provided with multiple other features that can enhance the
desirability and sales of vending machines.2 We are not provided with
information regarding the products of the Patent Owner that the asserted
commercial success evidence is based and features provided thereon, which
would allow establishment of a sufficient nexus between the claimed
invention and the product sold and the asserted commercial success.
In the above regard, the Patent Owner also does not provide us with
adequate information as to the marketing and pricing of the products,
especially considering that, in its own words, the company did not have an
established customer base, and the product was introduced in 1998. The
products introduced by the Patent Owner may have been aggressively

2 For example, in addition to the infrared beam vend-sensing system, Crane
advertisements also tout features including: reestablishment of credit;
refund; consistent home position of spirals; no machine downtime (App. Br.
Attachment 2, Advertisement 1); slide out dividers; shelf tilting for easy
loading; continuous price rolls; pricing data recall (App. Br. Attachment 3,
Advertisement 2).
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marketed and aggressively priced to allow entry of a newly introduced
product into the market. The Patent Owner wants the Board to attribute the
alleged success to the claimed invention. However, there are too many
missing pieces of the puzzle that will allow us to fairly attribute the asserted
success to the claimed invention instead of some other factors. The Patent
Owner has not provided persuasive evidence supporting such attribution.
We do not disagree with the dissent that Crane advertisements make
clear that the allegedly infringing SureVend™ feature is an important
feature. However, to extrapolate from provision of such a feature in a
competitor’s product to the conclusion that such a feature would have been
unobvious to one of ordinary skill in the art, in our view, goes too far. The
law provides the Patent Owner with various ways in which the secondary
consideration evidence can support the ultimate conclusion of
unobviousness. However, there are requirements for providing adequate
supporting evidence and proof.
For example, the above cited In re Huang provides guidance as to the
types of evidence required to persuasively establish commercial success
while Iron Grip Barbell provides guidance as to evaluating licenses. To the
extent that Patent Owner’s evidence implies copying (Schull Dec. ¶¶ 13, 14,
21, 22; Appeal Br. Attachments 2 and 3), “[n]ot every competing product
that arguably falls within the scope of a patent is evidence of copying.
Otherwise every infringement suit would automatically confirm the
nonobviousness of the patent. Rather, copying requires the replication of a
specific product.” Iron Grip Barbell Co. Inc. v. USA Sports, Inc., 392 F.3d
1317, 1325 (Fed. Cir. 2004). Copying
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may be demonstrated either through internal documents, see
Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc.,
344 F.3d 1186, 1196-97 (Fed.Cir.2003); direct evidence such as
disassembling a patented prototype, photographing its features,
and using the photograph as a blueprint to build a virtually
identical replica, see Advanced Display Sys., Inc. v. Kent State
Univ., 212 F.3d 1272, 1285 (Fed.Cir.2000); or access to, and
substantial similarity to, the patented product (as opposed to the
patent), Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d
1015, 1027 (Fed.Cir.1985), overruled on other grounds by,
Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356,
1359 (Fed.Cir.1999) (en banc).
Iron Grip Barbell Co. Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed.
Cir. 2004).
In the present appeal, we are simply not provided with evidence of
sufficient quality that support the Patent Owner’s assertions, which are based
on general and vague statements. The dissent weighs the proffered evidence
more favorably, and in view of the skill of those in the vending machine art,
concludes unobviousness of the claims. In our view, the proffered evidence
is of little probative value, and is inadequate to show that the claimed
invention would not have been obvious to one of ordinary skill in the
vending machine art. We discuss issues raised by the dissent as to the
person of ordinary skill infra.

Additional Issues
The dissenting opinion is also based on the finding that some level of
effort and expense would have been required to utilize the sensing system of
Dragne in a transparent front vending machine, which has a much larger
vend space, and the finding that a person of ordinary skill is not an expert in
the field of optical sensors.
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The level of skill of those in the vending machine art is, at minimum,
exemplified by the prior art of record, which includes Levasseur, Tanaka,
Percy, and Truitt, as well as the admitted prior art. In this respect, there is
no dispute that optical sensors have been used in vending machines to detect
proper vending of products. In fact, the Patent Owner has admitted that
optical sensors were even used in transparent front vending machines to
sense proper vending, but only by providing such a sensor in an enclosed
location not subjected to ambient light (Appeal Brief 11, stating that in a
prior art glass front vending machine, “an optical sensor within an elevator
worked only when it stopped at the bottom of a glass front vending machine,
and this bin was covered to keep out light.”). While such optical sensors
were not used at a location exposed to ambient light, Schuller clearly teaches
the desirability of sensing the proper vending of product in a transparent
front vending machines as the product falls by providing a vend-sensing
system, albeit an electromechanical sensing system. Thus, we view the
suggested combination as applied in the rejections of substituting an optical
sensing system for the electromechanical sensing system of Schuller to be a
natural and logical progression of the vending machine art, which would
have been obvious to one of ordinary skill.
In addition, each of these prior art vending machines include
electronic controls to not only process the currency inserted and the product
selected by the consumer, but also to process the signal/information
provided by the vend-sensing system, and to deal with the situation in which
a product is not properly vended. Schuller itself discloses the relatively high
level of skill that a person of ordinary skill in the vending machine art
possesses in terms of electronics and signal processing, including the signal
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from the provided electromechanical sensing system (see Schuller, Figs. 14–
16 and disclosure related thereto). Similarly, Levasseur discloses a vending
control system that demonstrates a relatively sophisticated level of skill in
electronics and signal processing in the vending machine art, including the
signal from the provided vend-sensing system (see Levesseur, Figs. 1–5 and
disclosure related thereto). Levasseur further teaches the substitutability of
an optical system for a mechanical system, thereby indicating that such
substitution is within the skill of those in the art (Orig. Dec. 20–21, FF 41;
Levasseur, col. 3, ll. 10–14).
Furthermore, the use of a single light emitter and receiver, as well as
the use of multiple light emitter and receivers were known in the vending
machine art (Tanaka Figs. 1–3). In this regard, Tanaka discusses that “in the
prior art, it was necessary to eliminate detection light ray dead zones by
arranging multiple sets, usually 5 to 6 sets, of detection units in parallel in
the width direction of the receiving tray chamber.” (Tanaka, pg. 4).
Correspondingly, scaling of a detection system to include multiple sets of
emitters and receivers was also already known and within the skill of those
of ordinary skill in the vending machine art. Hence, in our view, the
evidence indicates that the level of skill of those in the vending machine art
was quite high and sophisticated, not only in the context of the mechanical
components of a vending machine, but the electronic controls and sensing
systems, as well as processing signals associated therewith. Accordingly, in
our view, modification of the vending machine of Schuller in the manner
suggested in the rejection would have been within his or her level of skill.
To any extent that the skill of those in the art was lacking, we agree with the
dissent that one of ordinary skill would have had a reason to look into other
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art, such as the art of optical sensing systems. In this regard, as the dissent
agrees, the seed dispensing system of Dragne, while in a different field, is
reasonably pertinent to the problem confronting the inventors.
While the dissent also notes the size difference between the seed
transport ducts of Dragne and a detection region, as discussed above, we are
of the opinion that scaling of the system disclosed in Dragne is well within
the level of skill of those in the art. We further observe that articles typically
dispensed in vending machines are many orders of magnitude larger in size
than seeds, thereby implying that any such scaling of the system disclosed in
Dragne may be minimal.3
In addition, while there may costs associated with such a
modification,4 the fact that a combination may not be made by businessmen
for economic reasons does not mean that a person of ordinary skill in the art
would not make the combination. See Orthopedic Equipment Company, Inc.
et al. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (“the fact that
the two disclosed apparatus would not be combined by businessmen for
economic reasons is not the same as saying that it could not be done because
skilled persons in the art felt that there was some technological
incompatibility that prevented their combination. Only the latter fact is

3 Obviously, the system would have to be scaled up in size to deal with the
larger vend space relative to the seed tube in Dragne, but the relative sizes of
the vend space versus the item being vended would appear to be fairly
similar. Thus, we do not agree with our colleague that such scaling “would
have required significant modification to serve as a vend-sensing system in a
vending machine.” Dissent 4.

4 By cost, we refer to costs of modification, not the cost of manufacture,
which may or may not be reduced/increased in using optical electronics
instead of electromechanical components.
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telling on the issue of nonobviousness.”). Moreover, in the present case,
there is an economic motivation in favor of modifying Schuller in the
manner suggested. As explained, such modification allows the vending
machine of the type disclosed in Schuller to vend, and allows better
detection of vending of, smaller and lighter products, thereby increasing the
variety of products that can be sold (see Orig. Dec. 30).
Accordingly, having fully considered the evidence of record in its
totality, we are of the view that the rejection of the claims is appropriate, and
are not persuaded of error.

DECISION
While we have considered the Original Decision in view of the
Request for Rehearing, and have elaborated on certain aspects of it, we
decline to modify the Original Decision in any respect.

DENIED

Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

CRANE CO.
Respondent, Requester
v.
Patent of AUTOMATED MERCHANDISING SYSTEMS,
INC.
Appellant, Patent Owner
________________

Appeal 2013-006814
Inter Partes Reexamination Control 95/000,607
Patent No. US 7,191,915 C1
Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge, dissenting.

INTRODUCTION
I join my colleagues in denying rehearing of the issue raised in the
“Supplemental Brief in Support of Request for Reconsideration on Appeal to
Board,” dated May 1, 2015. In addition, I disagree with many, if not most,
of the arguments raised by the Patent Owner in the “Patent Owner’s Request
for Reconsideration of the Decision on Appeal,” dated October 28, 2013
(“Rehearing Request” or “Reh’g Req.”). Nevertheless, having reviewed the
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Record, including the “Appeal Brief,” dated August 13, 2012 (“Appeal
Brief” or “App. Br.”); and the “Patent Owner’s Rebuttal Brief,” dated
February 25, 2013 (“Rebuttal Brief” or “Reb. Br.”),1 in view of the
arguments raised in the Rehearing Request, I believe that I misapprehended
or overlooked sufficient points to justify granting the Rehearing Request.
My colleagues affirm the Examiner’s decision rejecting, under pre-
AIA 35 U.S.C. § 103(a), claims 1–4, 6–10, 12–26, 28–32, 34 and 35 as
being unpatentable over Schuller (US 3,901,366, issued Aug. 26, 1975) and
Dragne (US 5,883,383, issued Mar. 16, 1999) (Ground A); claims 6, 10, 11,
16, 27, 34, 36 and 37 as being unpatentable over Schuller, Dragne and
Friend (US 4,634,855, issued Jan. 6, 1987) (Ground C); and claims 1-37 as
being unpatentable over Schuller, Levasseur (US 4,359,147, issued Nov. 16,
1982), Dragne, Endl (US 3,742,222, issued June 26, 1973) and Friend
(Ground G). I disagree.
As set forth in the “Decision on Appeal,” mailed September 27, 2013
(“Decision”), the claims on appeal relate to a glass front vending machine
including an optical system for sensing when the vending machine
successfully vends a selected product. (′220 patent, col. 3, ll. 13-15). The
Patent Owner asserts that the claimed subject enables the machine to sense
the delivery of a selected product by:
equipping [the] glass front vending [machine] with an optical
sensor system using a plane of electromagnetic radiation that
substantially spans the vend space through which [the] selected
product will freely fall into a bin for retrieval by a consumer[.]
. . . [T]o detect that product as it freely falls through the vend
space, the optical sensor system calibrates for and adjusts to

1 The Requester has not participated in this appeal.
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changing ambient light conditions faced by transparent front
vending machines.
(App. Br. 2 & 3).
Claims 1, 6, 10, 16, 28 and 34 are independent. Claim 1 recites:
1. A vending machine, comprising:
a transparent front;
a dispensing mechanism configured to perform vending
operations and dispense a product upon selection by a
consumer,
a vend space comprising a portion of space in said
vending machine through which said selected product will
freely fall, independent of a product lowering elevator, into a
bin portion for retrieval by the consumer, and
an optical vend-sensing system configured to sense when
said selected product freely falls through said vend space,
said optical vend-sensing system comprising:
an emitter mechanism configured to generate
electromagnetic radiation that substantially spans said
vend space,
a detector mechanism configured to receive
electromagnetic radiation generated by said emitter
mechanism and to detect changes in said electromagnetic
radiation caused by said selected product as it freely falls
through said vend space, the emitter mechanism and the
detector mechanism being positioned above a customer
accessible portion of the retrieval bin portion, and
a calibration circuit for calibrating the optical
vend-sensing system based on ambient light entering the
vending machine through the transparent front.
(See App. Br. 31 & 32 (Claims App’x)).
Schuller describes a machine for displaying cartons of cigarettes or
other cartoned merchandise through transparent front doors; and for
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dispensing selected cartons to a purchaser. (See “Examiner’s Answer,”
mailed January 23, 2013 (“Ans.”), at 5 & 6, citing Schuller, col. 3, ll. 34–37;
see also Schuller, col. 1, ll. 5–7 & 14–22). Schuller’s machine includes an
electromechanical vend-sensing system capable of sensing when a carton
falls through a vertical passage 13 toward a customer-accessible delivery
chamber. The Examiner concludes that the subject matter of claims 1–37
would have been obvious based on a proposed replacement of Schuller’s
electromechanical vend-sensing system with an optical system that is
“accurate” in the sense of being capable of sensing the passage of small or
lightweight items. (See Ans. 6 & 30). Taking into account the fact that the
secondary references, Dragne and Friend, are taken from an arguably
different field of endeavor; that the optical sensing systems described by
Dragne and Friend would have required significant modification to serve as
vend-sensing systems in vending machines; and that the objective evidence
indicates industry recognition that the claimed subject matter represented a
technical advance in the design of vending machines, the Examiner’s
articulated reason for the proposed modification does not convince me that
the subject matter of the appealed claims would have been obvious.

CLAIM INTERPRETATION
Claims undergoing reexamination are given their broadest reasonable
interpretation. In re American Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). “Therefore, we look to the specification to see it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
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More specifically, “the PTO applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary usage as they
would [have] be[en] understood by one of ordinary skill in the art.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
The broadest reasonable interpretation must be reasonable under
general claim construction principles. See Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Thus, for example, our
reviewing court cautions us against reading limitations into claims from
embodiments described in the specification, absent a clear disclaimer.
American Acad. of Sci. Tech Ctr., 367 F.3d at 1369. On the other hand, a
proper claim interpretation “tak[es] into account whatever enlightenment . . .
may be afforded by the written description contained in the applicant’s
specification.” Morris, 127 F.3d at 1504. “The PTO should also consult the
patent’s prosecution history in proceedings in which the patent has been
brought back for a second review.” Proxyconn, 789 F.3d at 1298.

“Vend Space” and “Freely Fall”
The Patent Owner criticizes the Decision for not formally interpreting
the term “vend space.” (See Reh’g Req. 7 & 8). Independent claim 1 recites
a vending machine including “a vend space comprising a portion of space in
said vending machine through which said selected product will freely fall,
independent of a product lowering elevator, into a bin portion for retrieval
by the consumer.” (App. Br. 31 (Claims App’x)). Independent claims 6 and
16 recite vending machines having similar vend spaces. (See App. Br. 33 &
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37 (Claims App’x)). Independent claim 10 recites a vending machine
including:
a dispensing mechanism configured to perform vending
operations in order to dispense a product selected by a
consumer from said product storage and display area to a
product delivery path, said product delivery path including a
vend space defined by a front to rear depth in the area between
said transparent front and said product storage and display area
and across a substantial width of the vending machine, and
defining a portion of the space in said vending machine through
which said selected product will freely fall, independent of a
product lowering or guiding mechanism, into a bin portion for
retrieval by the consumer.
(App. Br. 35 (Claims App’x)). Independent claim 28 recites a vending
method including steps of:
advancing a product to be vended from an area where it
is displayed to a vend space located behind said transparent
front of the vending machine and in front of the product display
area and extending to a product retrieval bin; [and]
monitoring a substantially unconstrained cross-sectional
area of said vend space through which the product being vended
freely falls with a monitoring system located to detect when the
product falls through said unconstrained vend space.
(App. Br. 41 (Claims App’x)).
The ʼ220 does not formally define either the term “vend space” or the
term “freely fall.” In fact, the term freely fall does not appear in the written
description of the ʼ220 patent. (See Ans. 23). Nevertheless, the language of
claims 1, 6, 10, 16 and 28 provides a reliable basis for interpreting the terms.
A “vend space” is, in the words of claim 10, “defined by a front to rear depth
in the area between said transparent front and said product storage and
display area and across a substantial width of the vending machine.” Claim
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28 recites that the vend space “extend[s] to [the] product retrieval.” To
“freely fall” is to fall through the vend space subject to no other constraint
than the force of gravity. In particular, in the words of claim 10, to “freely
fall” is to fall “independent[ly] of a product lowering or guiding
mechanism.” Although the selected product will freely fall through the vend
space into the retrieval bin or retrieval bin portion, no independent claim
recites that the vend space extends into the retrieval bin. 2
This interpretation of the term “vend space” is at least consistent with
the disclosure of the ʼ220 patent. For example, in describing one
embodiment, the ʼ220 patent teaches that:
Vending, upon selection, is accomplished by causing the
respective motor assembly or assemblies for the spiral or spirals
of the respective column to turn through a sufficient angular
distance, as to advance all of the products nested in the turns of
the respective spiral or spirals forward such that the leading one
loses support from below as it reaches the front of the
respective tray support surface and the runout at the front end or
ends of the respective spiral or spirals, and drops through the
vend space 24 behind the glass front 22 down into a vend
hopper 26, from which it can be retrieved by the customer, by
temporarily pushing in from the bottom on the top-hinged,
resiliently urged closed door 28.
(ʼ220 patent, col. 5, l. 65 – col. 6, l. 10). In Figure 1 of the ʼ220 patent, the
reference numeral 24 is connected by a lead line to the space between the
transparent front 22 and the front ends of the tray assemblies 16 of the
dispensing units 16a. Consistent with the text, Figure 1 depicts the vend

2 Although I give the terms “vend space” and “freely fall” their
broadest reasonable interpretations for purposes of this opinion, my
interpretation would not have changed in the event that the ʼ220 patent
expired during this proceeding.
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space 24 as a space within which a product pushed off the front end of a tray
assembly 16 might fall unobstructed toward the vend hopper or retrieval bin
26.
The interpretation of the terms “vend space” and “freely fall” is
supported by the prosecution history of prior Reexamination 90/009,232.
During the course of the prior reexamination, the prior examiner rejected
claims, 1–37 under § 103(a) as being unpatentable over two prior art
combinations. Both prior art combinations relied on Levasseur as teaching
the use of an optical sensor for vend detection in a vending machine. (See
Office Action, mailed Feb. 6, 2009 in Reexamination 90/009,232, at 2; see
also Decision 20 & 21 (FF 40 & 41)). On page 16 of a “Patent Owner’s
Response to Official Action,” dated March 9, 2009, the Patent Owner argued
that:
The term “vend space as used in the claims here refers to
the space between the transparent front, the front of the product
storage and display area and extends across a substantial width
of the vending machine and extending to a product retrieval bin.
The definition of the term “vend space” is clearly set
forth in the application (and in the claims). It is the space in
front of the product tray assemblies and the inside of the
transparent front “through which the article freely falls into a
customer-accessible hopper.”
On page 35, the Patent Owner’s expanded on this argument:
The Examiner turns to Levasseur to allegedly show a
control circuit and a sensor to sense product delivery in a
vending machine. As conceded in the Office Action, however,
Levasseur’s sensor is a single point sensor 143. As described in
Levasseur, that point sensor is located in a passageway or a
chute. See [“Declaration of Joseph C. McAlexander, III
Pursuant to 37 C.F.R. 1.248,” executed May 24, 2011
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(“McAlexander Decl.”)], p. 5. [See also Levasseur, col. 7, ll.
48–58.] Thus, Levasseur is a system that channels or directs a
product through a passageway or chute to a single point sensor.
This is not the system recited in the claims of the ʼ220 patent.
The ʼ220 patent claims require the vend detection system to
detect the vended product as it “freely falls” toward a retrieval
bin. In a transparent-front vending machine like those recited
in the ʼ220 patent claims, there is only one area above the
retrieval bin in which vended products “freely fall”—the area
behind the glass, in front of the vending spirals or mechanisms,
and above the retrieval bin. Levasseur does not have such a
vend space and Levasseur’s single point sensor is not located to
detect products as they “freely fall” into a retrieval bin. See
[McAlexander Decl.,] p. 5.
On page 4 of a “Notice of Intent to Issue Ex Parte Reexamination
Certificate,” mailed February 26, 2010, the prior examiner agreed with the
Patent Owner that:
The prior art fail[ed] to teach an optical vend-sensing system in
a transparent front vending machine that monitors an
unconstrained/unreduced cross-section of a product delivery
path/vend space to detect passage of a product as it freely [fell]
upon being dispensed, the vend-sensing system producing a
light plane or radiation field that substantially span[ned] the
unconstratined/unreduced cross-section. Instead, the patent
owner argues that the prior art (e.g., Levasseur) [taught]
channeling products to a product detector and/or monitoring an
area where dispensed products [came] to rest.
The Patent Owner’s argument, on which the prior examiner appears to
have relied, supports the interpretation of the terms “vend space” and “freely
falls” articulated earlier. In particular, the prosecution history of the
Reexamination 90/009,232 indicates that the term “freely fall” excludes
falling through a passageway or chute within a vending machine.
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“Ambient Light” and “Calibration”
Claims 1 and 6 each recite a vending machine including an optical
vend-sensing system and “a calibration circuit for calibrating the optical
vend-sensing system based on ambient light entering the vending machine
through the transparent front.” The ʼ220 patent uses the term “ambient
light” narrowly to refer to external ambient light, that is, ambient light
originating outside the vending machine. (Decision 33, citing ʼ220 patent,
col. 16, ll. 22 & 23 (“The ambient light is external to the system and
excitation light is from the system.”); Reh’g Req. 9).
A secondary reference, Dragne, describes optical sensing units 11 for
counting seeds moving through seed transport ducts 12 of a planter. (See
Dragne, col. 1, ll. 4–7 & col. 4, l. 66 – col. 5, l. 7). Dragne also uses the
term “ambient light” (see, e.g., Dragne, col. 5, ll. 55–57 & col. 8, ll. 20–23),
but uses the term in a broader sense than does the ʼ915 patent. As the Patent
Owner’s expert testifies, “ambient light” as the term is used in Dragne
“applies to whatever connotes ‘ambient’ inside the tube. Ambient simply
means ‘surrounding’ that which is present.” (“Declaration of Joseph C.
McAlexander, III Pursuant to 37 CFR 1.248,” executed May 24, 2011
(“McAlexander Decl.”), at 13).
The term “calibration” or “calibrating” is more difficult to interpret.
One general purpose dictionary defines the term “calibrate” as sufficiently
broad to encompass “[t]o check, adjust, or determine by comparison with a
standard.” (THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE (Houghton Mifflin Co., 4th ed., 2009), available at
http://www.thefreedictionary.com/calibrate (last visited September 10,
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2013)). Facially, this definition appears consistent with the usage of the
term in the written description of the ʼ220 patent. For example, the “full
calibration” discussed in column 16 of the ’220 patent is an iterative process
for bringing a set of optical and control parameters of the vend-sensing
system within ranges of standard values. (See ’220 patent, col. 16, ll. 18–
60). Although the constraint of the variables within ranges of standard
values is somewhat analogous to comparison with standard values, the gist
of the “full calibration” is the incremental variation of the “PULSE” variable
until a stable value is reached. (See ʼ915 patent, col. 16, ll. 49–60). When
carefully considered, the dictionary definition is not consistent with the
written description of the ʼ220 patent.
Instead, the term “calibration” is best interpreted as a self-adjusting
process. During the course of prior Reexamination 90/009,232, the
Examiner rejected claims 1 and 6 under § 103(a) as being unpatentable over
two prior art combinations. Both prior art combinations relied on Dogul (US
5,218,196, issued June 8, 1993), based on the Examiner’s finding that an
optical intrusion-detection sensor described by Dogul included a control
circuit 21 that functioned “to self-adjust/self-calibrate the sensor in order to
compensate for changing light conditions.” (Office Action, mailed Feb. 6,
2009 in Reexamination 90/009,232, at 4). The Patent Owner argued that
Dogul failed to disclose “a calibration circuit that calibrates the sensor for
ambient light changes” because the control circuit 21 “merely adjust[ed]
sensors to account for changes in the output of the LED emitters themselves,
or to account for attenuation of light reaching the sensors.” (“Patent
Owner’s Response to Official Action,” dated March 9, 2009, at 35 & 36).
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The Patent Owner did not challenge the Examiner interchangeable use of the
words “self-adjust” and “self-calibrate,” indicating that the Examiner’s
understanding of the term “calibrate” was correct. Indeed, it appears that the
terms are used interchangeably by vending machine manufacturers other
than the Patent Owner—an advertisement by the Requester reproduced as
Attachment 2 to the Appeal Brief describes its optical vend-sensing system
as having “Automatic Self-calibration—No Adjustment Is Necessary.” This
statement supports the interpretation of the term “calibrating” as “self-
adjusting.”

PRINCIPLES OF LAW
Section 103(a) provides that:
A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of
this title, if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said
subject matter pertains.
The statute is broadly consistent with the “functional approach to questions
of patentability” taken earlier by the Supreme Court in Hotchkiss v.
Greenwood, 11 How. 248 (1850): “In practice, Hotchkiss has required a
comparison between the subject matter of the patent, or patent application,
and the background skill of the calling. It has been from this comparison
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that patentability was in each case determined.” Graham v. John Deere Co.,
383 U.S. 1, 12 (1966).3
The Supreme Court discussed the factual framework to be used in
analyzing obviousness in Graham:
While the ultimate question of patent validity is one of
law, [Great Atlantic & Pac. Tea Co. v. Supermarket Equip.
Corp., 340 US 147, 150 (1950)], the § 103 condition, which is
but one of three conditions, each of which must be satisfied,
lends itself to several basic factual inquiries. Under § 103, the
scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to
be ascertained; and the level of ordinary skill in the pertinent art
resolved. Against this background, the obviousness or
nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented. As indicia of obviousness or

3 The Supreme Court held in Graham that the “legislative history, as
well as other sources, show that the [1952] revision was not intended by
Congress to change the general level of patentable invention. [It held] that
[§ 103] was intended merely as a codification of judicial precendents
embracing the Hotchkiss condition.” Id. at 17. Nevertheless, the Reviser’s
Note indicated that § 103 was “added to the statute for uniformity and
definiteness;” and the “section should have a stabilizing effect and minimize
great departures which have appeared in some cases.” Federico,
Commentary on the New Patent Act, 35 U.S.C. 1, 20 (West Publ’g 1974). A
commentator active in the drafting of the 1952 codification stated that,
“[w]hile it is not believed that Congress intended any radical change in the
level of invention or patentable novelty, nevertheless, it is believed that
some modification was intended in the direction of moderating the extreme
degrees of strictness exhibited by a number of judicial opinions over the
[previous] dozen or more years; that is, some change of attitude more
favorable to patents was hoped for.” (Id. at 20 & 21).
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nonobviousness, these inquiries may have relevancy. See Note,
Subtests of “Nonobviousness,” 112 U. Pa. L.Rev. 1169 (1964).
Id. at 17–18.
On the one hand, the Supreme Court instructs us that claimed subject
matter “composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). On the
other hand, the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416 (italics added for emphasis). Within these bounds, the
Supreme Court has left it to the inferior courts to define the precise contours
of obviousness under § 103(a).
Our reviewing court has further defined the test for obviousness as
follows:
If all the elements of an invention are found in a combination of
prior art references,
a proper analysis under §103 requires, inter alia,
consideration of two factors: (1) whether the prior
art would have suggested to those of ordinary skill
in the art that they should make the claimed
composition or device, or carry out the claimed
process; and (2) whether the prior art would also
have revealed that in so making or carrying out,
those of ordinary skill would have a reasonable
expectation of success.
Velander v. Gardner, 348 F.3d 1359, 1363 (Fed. Cir. 2003) (quoting In re
Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991)). The motivation or reason to
combine the teachings of the prior art “need not be found in the references
sought to be combined, but may be found in any number of sources,
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including common knowledge, the prior art as a whole, or the nature of the
problem itself.” DyStar Textilfabriken GmbH v. C.H. Patrick Co., 464 F.3d
1356, 1361 (Fed. Cir. 2006). In a reexamination proceeding, it is
appropriate to consider all of the evidence of record bearing on the
knowledge of one of ordinary skill in the art in order to determine whether
there would have been a motivation or reason to combine the teachings of
the references as claimed. Randall Mfg. v. Rea, 733 F.2d 1355, 1362–63
(Fed. Cir. 2013).
The Supreme Court warns us against an overly rigid application of a
“teaching-suggestion-motivation” test for obviousness. In particular, the
Court cautions us that “[r]igid preventative rules that deny factfinders
recourse to common sense . . . are neither necessary under [the Court’s] case
law nor consistent with it.” KSR Int’l at 421. Nevertheless, the Court
recognizes that “it can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does. This is because
inventions in most, if not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will be combinations
of what, in some sense, is already known.” Id. at 418–19. In addition, the
Supreme Court instructs inferior tribunals to make explicit their reasons for
concluding that the subject matter of a claim would have been obvious, in
order to facilitate review. See id. at 418.
The nature of the motivation or reason required to prove obviousness
depends on the circumstances of the case. In certain simple fact scenarios,
little in the way of motivation may be required to satisfy the test for
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obviousness. Drawing on its precedent, the Supreme Court instructs us that,
“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l at 416 (citing United States v. Adams, 383 U.S. 39, 50–51 (1966)). In
such a case, the conclusion of obviousness might be justified based on the
normal desire of artisans to consider known alternatives in search of an
improvement to a conventional device or process. The Supreme Court also
instructs us that,
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
KSR Int’l at 417. In the former case, the design incentives or other market
forces may provide the motivation. In the latter case, the prospect of
improving the similar device may provide the motivation.
The Supreme Court recognizes that the analysis of obviousness in
other fact scenarios may prove less simple:
Following these principles may be more difficult in other cases
than it is here because the claimed subject matter may involve
more than the simple substitution of one known element for
another or the mere application of a known technique to a piece
of prior art ready for the improvement. Often, it will be
necessary for a court to look to interrelated teachings of
multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background
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knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.
KSR Int’l at 417–18.
Our reviewing court has emphasized that obviousness can only be
determined on the basis of a fact-specific inquiry. See In re Ochiai, 71 F.3d
1565, 1569 (Fed. Cir. 1995). In particular, the Board must consider
objective evidence of patentability, such as evidence tending to establish one
of the “secondary considerations” enumerated by the Supreme Court in
Graham, in any case where such evidence is of record. “Whether before the
Board or a court, [our reviewing court] has emphasized that consideration of
the objective indicia is part of the whole obviousness analysis, not just an
afterthought.” Leo Pharma. Prods., Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed.
Cir. 2013). The mere presence of objective evidence does not imply
patentability. See Leapfrog Enterps., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1372 (Fed. Cir. 2007). For this reason, it can be useful for a party
submitting objective evidence to explain how the evidence impacts the
analysis whether the claimed subject matter would have been obvious.
Nevertheless, where present, objective evidence “may often establish that an
invention appearing to have been obvious in light of the prior art was not.”
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983).
Our reviewing court instructs us that there is a fundamental
requirement for objective evidence to be persuasive:
“For objective evidence of secondary considerations to be
accorded substantial weight, its proponent must establish a
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nexus between the evidence and the merits of the claimed
invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246
(Fed. Cir. 2010) (quotation omitted). Where the offered
secondary consideration actually results from something other
than what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention. Tokai Corp. v.
Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If
commercial success is due to an element in the prior art, no
nexus exists.”); Ormco Corp. [v. Align Tech., Inc., 469 F.3d
1299, 1312 (Fed. Cir. 2006)] (“[I]f the feature that creates the
commercial success was known in the prior art, the success is
not pertinent.”).
In re Kao, 639 F.3d 1057, 1068–69 (Fed. Cir. 2011). The nexus between
secondary evidence, such as evidence of commercial success or licensing,
and the subject matter of a claim may be established by secondary evidence
independent of the economic data or licenses submitted to prove such
secondary indicia. See, e.g., Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir.
2013) (finding a nexus between licenses and the claimed subject matter
based, at least in part, on a news article describing a novel feature of the
claimed subject matter as a “key part” of the licensed technology).

SCOPE AND CONTENT OF THE PRIOR ART
Schuller
Schuller’s vendor includes a bank of dispensing modules D1–D4
sharing a common control module CM. (See Schuller, col. 2, ll. 62–67 &
Fig. 1). Each dispenser module D1-D4 of Schuller’s vendor includes a
cabinet 9 having a transparent front door 11 and a plurality of vertically-
arranged article dispensers 3 within the cabinet 9. Each dispenser 3 holds a
row of cigarette cartons to be vended. (See Schuller, col. 3, ll. 21–26 & 34–
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37; & Figs. 3 & 4). Schuller describes the dispensers 3 as being spaced
rearwardly from the front 11 of each cabinet 9 to provide a vertical passage
13 within the cabinet 9. (See Schuller, col. 3, ll. 31–34 & Fig. 6). Each
dispenser 3 includes a screw-driven pusher 95 for feeding cartons forward
and dropping the forward-most carton off the front end of the dispenser 3
into the vertical passage 13 when the forward-most carton is purchased by a
customer. (See Schuller, col. 3, ll. 31–34 & 47–51; see also id. col. 16, ll.
16–19 & 38–43; & Fig. 6).
The Examiner correctly finds that Schuller does not describe a
vending machine including a vend-sensing system operating by
electromagnetic radiation. (See Ans. 6). Instead, each of Schuller’s cabinets
9 includes an electromechanical vend-sensing means for verifying that an
article purchased by a customer has been dispensed. The vend-sensing
means includes a vend flap 29 located just below the window 17, above the
gate 25 and the delivery chamber 19. The vend flap 29 includes a pivotable,
spring loaded horizontal rocker bar 217 mounting fingers 219 that project
into the path of a carton falling from a dispenser 3. (See Schuller, col. 3, ll.
57–62; col. 7, ll. 27–39; & Fig. 6; see also Ans. 5 & 6 (“[T]he sensing
system 29 includes horizontally oriented fingers 219 which substantially
completely span a cross-section of the vend space (Figs. 6 and 8) to detect
the free-falling product (col. 16, lns. 38–45).”)). A carton purchased and
selected by a customer will freely (that is, unobstructedly) fall through the
vertical passage 13. (See Schuller, col. 3, ll. 31–57 & Fig. 6; see also Ans.
5).
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The Patent Owner correctly points out on page 10 of its Rehearing
Request that the electromechanical vend-sensing system described by
Schuller necessarily obstructs the movement of a carton that theretofore had
fallen freely through the vertical passage 13 onto the vend flap 29. This
argument highlights a problem with Schuller’s machine.
Among the objects of Schuller’s vending machine is to provide for the
“effective display of the articles stocked in the vendor” through transparent
front windows. (Schuller, col. 1, ll. 26–49; see also id., col. 3, ll. 34–37).
Although Schuller’s machine itself is designed to sell cartons of cigarettes or
other cartoned merchandise (See Schuller, col. 1, ll. 5–7 & 14–22), a
vending machine capable of displaying and vending both large and small
products likely would have found a larger customer base. The Patent
Owner’s expert witness points out that Schuller’s vend flap 29 would have
prevented Schuller’s vending machine from selling and dispensing smaller,
lighter products. (See McAlexander Decl. 8). One familiar with the
teachings of Schuller would have had reason to modify Schuller’s
transparent front vending machine to sense the dispensing of both larger,
heavier items and smaller, lighter items.
The Examiner relied on this problem, at least in part, in rejecting
claims 1–37. The secondary reference, Dragne, describes optical sensing
units 11 for counting seeds moving through seed transport ducts 12 of a
planter. (See Dragne, col. 1, ll. 4–7 & col. 4, l. 66 – col. 5, l. 7). Dragne
addresses the problem of sensing the passage of small items such as seeds
while providing an unobstructed path for the items to move past the sensor.
It teaches that each duct 12 “includes openings 12A and 12B which allow
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the mounting of [a] transmitter and receiver in the openings in a manner
which maintains the duct substantially closed and does not interfere with the
flow of seeds or particles through the duct.” (Dragne, col. 5, ll. 28–32).
Dragne also addresses the problem of “dark sections (or blind spots)” that
might permit small items such as seeds to pass through the detection zone
undetected. (See, e.g., Dragne, col. 1, ll. 56–59 & col 5, l. 62 – col. 6, l. 6).
Friend describes an optical sensor for counting small items, such as
seeds, flowing through a conduit 12. (Friend, col. 1, ll. 29–35). Friend, like
Dragne, addresses the problem “spatial non-uniformity of the light source
and/or of the light detectors so that the signals generated by the light
detectors vary, depending upon what portion of the light beam is
interrupted.” (Friend, col. 1, ll. 16–19).
On page 6 of the Answer, the Examiner concludes that it would have
been obvious “to associate electromagnetic radiation operation with the
Schuller sensing system in order to replace the wear and failure prone
mechanical system with an accurate electronic system.” (See also Ans. 11 &
30). Subsequently, on page 22 of the Answer, the Examiner finds that
“Dragne does teach means for sensing falling articles (col. 1, lns. 8–14),
which is also accurate (col. 6, lns. 2–6).” Column 2, lines 2–6, of Dragne
refer to Dragne’s teaching addressing the problem of blind spots that might
permit seeds to pass through the detection zone undetected. Hence, where
the Examiner uses the word “accurate” to describe optical sensors, the
Examiner is referring to the capacity of the optical sensors to correctly sense
the passage of both large and small objects. The Examiner’s conclusion that
it would have been obvious “to associate electromagnetic radiation operation
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with the Schuller sensing system in order to replace the wear and failure
prone mechanical system with an accurate electronic system” (Ans. 6)
means that it would have been obvious to replace Schuller’s
electromechanical system with an optical system capable of sensing the
passage of both larger and smaller items (See Ans. 21).4

4 The Examiner finds that “the existence of friction, and the effects it
has on moving mechanical parts, would [have] be[en] known to the skilled
artisan in the absence of the ‘Maldanis Declaration.’” (Ans. 23). To the
extent that this statement is an exercise of Official Notice, it is a reasonable
exercise. (See Decision 12 (“[T]he fact that interacting moving parts are
subject to frictional wear is susceptible of instant and unquestionable
demonstration as being well-known.”)). The Patent Owner does not appear
to contest this fact. (See, e.g., Reh’g Req. 4 (“Those vending machines have
numerous mechanical devices, including dozens of spiral-driven dispenser
mechanisms, rotating delivery bin doors and rotating security plates that
swing into position as the bin door is pushed open. All of these mechanical
items are subject to friction and wear, but the electronic detection boards
remain prone to failure, even in the absence of friction.”)).

Finding of Fact 13 on page 12 of the Decision may be fairly read as
suggesting that we sustained a finding that “it [was] also generally
understood that ‘electronic’ systems, i.e. systems without moving parts or
with few moving parts, [were] less subject to wear and potential failure
compared to ‘mechanical’ systems, due to an absence of such wear and
failure prone parts.” In view of the testimony in paragraph 23, on pages 5
and 6 of the “Declaration of Sharon F. Shull,” executed May 17, 2001, the
Examiner has not proven that electronic devices, such as optical vend-
sensing systems, are less prone to failure than mechanical vend-sensing
systems. The Decision did not rely on such a finding as a reason or
motivation supporting the conclusion that the subject matter of the appealed
claims would have been obvious. (See, e.g., Decision 30, ll. 1–19). I do not
understand my colleagues to rely on such a finding as a reason why the
claimed subject matter would have been obvious.
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Dragne
Dragne describes optical sensing units 11 for counting seeds moving
through seed transport ducts 12 of a planter. (See Dragne, col. 1, ll. 4–7 &
col. 4, l. 66 – col. 5, l. 7). Each of Dragne’s optical sensing units 11 includes
a light transmitter 15 and a receiver 16. Dragne’s light transmitter 15
includes a plurality of light emitting diodes (“LEDs”) 29 mounted on a base
wall 23 of a ceramic transmitter housing 22. (See Dragne, col. 5, ll. 39–48;
& Figs. 3 & 4). Dragne’s light receiver 16 includes a photo silicon diode 32
in the form of an elongated strip mounted on a base wall 23 of a ceramic
receiver housing 22. (See Dragne, col. 6, ll. 7–9; & Figs. 3 & 4). A
microprocessor 13 controls the light transmitter 15 and the light receiver 16.
(See Dragne, col. 5, ll. 15–25; & Figs. 2 & 3). An optical system such as
that described by Dragne counts seeds 38 by sensing pulses generated by
momentary reductions in light intensity (as compared to a steady state
intensity) caused by the passage of seeds falling between the light
transmitter 15 and the receiver 16; and then by counting the pulses to obtain
a seed count value. (See Dragne, col. 1, ll. 8–14).
Dragne’s microprocessor 13, along with a control circuit 17, controls
the intensity of light transmitted by the light transmitter 15 by modulating
the pulse width and frequency of current pulses supplied to the LEDs. (See
Dragne, col. 5, ll. 19–21 & col. 7, ll. 1–18). More specifically, the
microprocessor 13 modulates the current passing through the control
circuit 17 so as to provide current to the LEDs 29 in the form of a train of
square wave pulses. The microprocessor 13 controls the intensity of light
emitted from the LEDs 29 by controlling the pulse width and duty cycle of
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the current pulses. (See Dragne, col. 7, ll. 1–18). Dragne teaches that the
“microprocessor [13] generates the pulse signal having a duty cycle
determined by an algorithm within the microprocessor. The algorithm used
determines the condition present at power up and determines the duty cycle
to bring the receiver [16] to the optimum level.” (Dragne, col. 7, ll. 14–18).
As mentioned earlier, Dragne addresses the problem of sensing
structure obstructing the path of movement of small items such as seeds. It
teaches that each duct 12 “includes openings 12A and 12B which allow the
mounting of the transmitter and receiver in the openings in a manner which
maintains the duct substantially closed and does not interfere with the flow
of seeds or particles through the duct.” (Dragne, col. 5, ll. 28–32). Dragne
also addresses the problem of "dark sections (or blind spots" that might
permit seeds to pass through the detection zone undetected. (See, e.g.,
Dragne, col. 1, ll. 56–59 & col 5, l. 62 – col. 6, l. 6; & Ans. 11 & 12).
Dragne teaches fixing the depth of the base wall 23 into the housing 22 such
that the conical beams transmitted by the LEDs 29 would tend to intersect
within the potting material 31. Dragne additionally teaches that, if the depth
of the base wall 23 into the housing 22 were sufficient, the light emerging
from the surface of the housing would not contain any dark sections or blind
spots which were less illuminated; and no seed or particle would escape
detection by passing through dark areas between beams transmitted by two
of the LEDs 29. (Dragne, col 5, l. 62 – col. 6, l. 6; & Figs. 3 & 4).
I find that the Examiner has not proven that more than a minimal
amount of external ambient light, if any, penetrates the seed transport ducts
12 in which Dragne’s optical sensing units 11 reside. The Patent Owner’s
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expert witness correctly points out that Dragne describes the seed transport
ducts 12 as “substantially closed.” (See McAlexander Decl. 9, citing
Dragne, col. 5, ll. 28–32). In addition, the Patent Owner’s expert has
demonstrated expertise in the electronics industries (see McAlexander Decl.
1); and has provided a plausible explanation within the scope of his expertise
as to how “ambient light” might be generated within Dragne’s optical
sensing units 11 without exposure to external ambient light. (See
McAlexander Decl. 13).
Nevertheless, Dragne addresses the problem of operating an optical
sensing unit in the presence of ambient light, regardless whether the ambient
light is external ambient light or ambient light originating within the optical
sensing unit. (See, e.g., Dragne, col. 5, ll. 55–61; col. 6, ll. 22–24; & col. 8,
ll. 20–23). More specifically, it teaches two techniques for filtering out the
effects of ambient light. First, Dragne teaches the use of a transmitter 15
including LEDs 29 that emit infrared light at a frequency outside the
anticipated frequency spectrum of the ambient light. Both the LEDs 29 of
the transmitter 15 and the photo silicon diode 32 of the receiver 16 are
potted in a material 31 containing a pigment for filtering light outside the
infrared range. (See Dragne, col. 5, ll. 44–60; col. 6, ll. 7–24; & Fig. 3).
Dragne also teaches the use of a DC compressor circuit to filter changes in
the steady state current emitted by a transistor 34 coupled to a photo diode
32 (that is, in the DC component of the signal generated initially by the
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receiver 16) due to ambient light. (See Dragne, col. 7, l. 62 – col. 8, l. 23 &
Fig. 5; see also id., col. 5, ll. 60–63).5
The Patent Owner’s expert has identified differences in the sources of
external ambient light and ambient light originating within the optical
sensing unit (see McAlexander Decl. 13), but has not articulated any
persuasive physical difference between internal and external ambient light. I
find that Drange’s teachings would apply to the filtering of the effects of
either external ambient light or ambient light originating inside the optical
sensing unit.
The Patent Owner characterizes the DC compressor circuit as a filter.
(See, e.g., Reh’g Req. 11). I agree. To the extent that the Patent Owner
wishes to imply that the DC compressor is not a calibrating (that is, a self-
adjusting) circuit, I also agree. Nevertheless, the Patent Owner has not
shown that the DC compressor circuit is inoperative for the purpose of
filtering the effects of ambient light.
Dragne teaches that:
In operation, when the steady state current is low, the diodes
[48, 49] conduct little current through the DC compressor so the

5 Dragne also describes a process by which the duty cycle of pulsed
current supplied to the LEDs 29 may be optimized at when an optical
sensing unit 11 is powered up. (See Dragne, col. 7, ll. 1–38). Although this
process may broadly be described as a calibration, it cannot compensate for
changes in ambient light intensity while the optical sensing unit is operating.
Having reconsidered the findings in the Decision regarding the description at
column 7, lines 1–38 of Dragne, I find that Dragne’s teachings regarding this
optimization process would have been of limited value to one of ordinary
skill in the art seeking to install an optical vend-sensing system in a location
exposed to ambient light of varying intensity entering through a transparent
front window or panel of a vending machine. (See, e.g., Reh’g Req. 11).
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impedance of the load, defined by the DC compressor and the
load resistor 41, is constituted by the load resistor and it thus
maintained relatively high. As the steady state current
increases, the current through the diodes is increased so that the
load seen by the current emerging from the transistor [34] is
decreased thus maintaining the voltage V1 [that is, the voltage
signal output by the DC compressor circuit] at an automatically
biased, substantially constant level. In other words, when the
current is very low the DC compressor is in effect turned off so
that the loads seen by the current is equal to the high impedance
of the resistor 41. When the current is increased, the DC
compressor turns on so that the load seen by the increased
current is equal to the combination of the impedance of the DC
compressor and the load resistor 41 which has a total
impedance significantly less than that of the load resistor 41
thus maintaining the voltage V1 at a lower level. The DC
compressor therefore automatically controls the voltage V1 so
that it is maintained at a preferred level for application to the
remaining parts of the analysis circuit as described hereinafter.
(Dragne, col. 7, l. 66 – col. 8, l. 19 & Fig. 5). One may reasonably infer that
this non-linear behavior of the DC compressor circuit is due to the behavior
of the two non-linear components of the circuit, namely, the diodes 48, 49.
Once the diodes 48, 49 “turn on,” their impedances will be approximately
linear. Within this linear range, the DC compressor circuit will filter out at
least a portion of the DC component of the signal emitted by the transistor
34. I find, contrary to the testimony of the Patent Owner’s expert (see
McAlexander Decl. 10 & 11), that the DC compressor circuit would
compensate for both the effects of slowly-varying ambient light and the
scattering of light internally by dust and the like while operating in its linear
range.
Dragne also teaches that the “frequency range of the LEDs and the
receiver is arranged to be in the infrared range so as to be different from the
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ambient light.” (Dragne, col. 5, ll. 55–57). Dragne further teaches that both
the LEDs 29 of the transmitter 15 and the photo diode 32 of the receiver are
potted in a potting material 31 that “contains a pigment which tends to filter
light outside the infrared range [that is, outside the range of excitation
frequencies] so as to make the system less responsive to ambient light.”
(Dragne, col. 5, ll. 58–61; see also id., col. 5, ll. 53–55 & col. 6, ll. 22–24).
The Patent Owner argues that CD compressor circuit cannot “detect”
ambient light because ambient light cannot penetrate the potting material 31.
(See App. Br. 16 & 17, citing McAlexander Decl. 11 & 12). This argument
is not persuasive. Dragne describes the potting material as merely
“tend[ing] to filter light outside the infrared range,” thereby making the
system “less responsive to ambient light.” (Id., col. 5, ll. 58–61). Even
assuming that Dragne uses the term “ambient light” to refer only to light
outside the infrared range, Dragne acknowledges that some of the ambient
light may reach the photo diode 32 despite the pigment in the potting
material 32. The potting material 31 is not a perfect filter. The intensity of
ambient light may affect the DC component of the output of the photo diode
32 as well as the signal emitted by the transistor 34. Therefore, I find
Dragne’s statement that the “DC compressor thus filters out changes in
steady state current which can be due to ambient light,” as well as other
factors such as dust (Dragne, col. 8, ll. 20–23), persuasive.

Friend
Friend describes an optical sensor module 16 for counting seeds
moving through a conduit 12 of a seed planter. (Friend, col. 1, ll. 7–9).
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Friend’s optical sensor module 16 includes an array 42 of infrared LEDs
CR1–CR7 mounted on the inner surface of the end plate 30 behind the
window 38; and a pair of photo diodes 46, 48 mounted on the inner surface
of the end plate 32 behind a window 40. (See Friend, col. 2, ll. 46–50; col.
2, l. 67 – col. 3, l. 3; & Figs. 2 & 5). The LEDs CR1–CR7 are arranged in a
row so as to project radiation across the flow passage 14. (See Friend, col. 2,
ll. 56–59 & Fig. 1). The two photo diodes 46, 48, are active detector
mechanisms configured to generate an electrical signal corresponding to the
intensity of infrared radiation received by the photo diodes. (See Friend, col.
3, ll. 16–20; & Figs. 1, 2 & 5). The optical sensor module 16 counts seeds
by sensing variations in the radiation received by the photo diodes 46, 48
caused by the passage of the seeds through the flow passage 14 between the
windows 38, 40 (see Friend, col. 1, ll. 56–68 & Fig. 1); and processing the
signal output by the photo diodes 46, 48 to obtain a seed count value (see
Friend, col. 2, ll. 1–7).
As mentioned earlier, Friend addresses the problem of “spatial non-
uniformity of the light source and/or of the light detectors so that the signals
generated by the light detectors vary, depending upon what portion of the
light beam is interrupted.” (Friend, col. 1, ll. 16–19). Friend addresses this
problem in a manner similar to that adopted by Dragne, by assuring the
beams overlap prior to entering the seed flow passage 14:
As best seen in FIG. 2, this array [42] of LEDs [CR1-CR7]
extends substantially across the entire length of the seed flow
path 14 and transversely to the direction of seed flow which is
downwards, viewing FIG. 1. The radiation beam generated by
each LED has a wide angular dispersion approaching that of a
point light source mounted on a planar surface. Thus, the
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beams from adjacent pairs of LEDs intersect with each other
well before they reach the nearest window 38. This assures that
all areas in the seed flow path between windows 38 and 40 are
illuminated.
(Friend, col. 2, ll. 56–66). In other words, Friend teaches preventing “dead
zones” within the beam through which small items such as seeds might pass
undetected by assuring a relatively even distribution of light across the
cross-section of the seed flow passage 14.
I find that the Examiner has not proven that external ambient light
penetrates the conduit 12 in which Friend’s optical sensor module 16
resides. The Patent Owner’s expert witness correctly describes the conduit
12 enclosing Friend’s seed flow passage 14 as “sealed.” (See McAlexander
Decl. 15 & 16, citing Friend, Fig. 1 and accompanying text). In addition, the
Patent Owner’s expert has provided a plausible explanation as to how
“ambient light” might be generated within Friend’s seed flow passage 14
without exposure to external ambient light, namely, due to scattering of the
excitation light by dust within the passage. (See McAlexander Decl. 16 &
17). Although the expert’s testimony regarding the presence of dust within
the seed flow passages of agricultural machinery is outside the expert’s
proven actual knowledge or expertise, it is based on reasonable inferences
drawn from the collective teachings of Friend and Dragne.
Nevertheless, Friend addresses the problem of operating an optical
sensor module in the presence of ambient light. As was true with respect to
Dragne, the Patent Owner’s expert does not testify as to any physical
distinction between external ambient light and ambient light attributable to
sources, such as dust scattering, originating within Friend’s conduits 12.
Each of Friend’s windows 38, 40 includes an opaque coating or mask 37, 41
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with an elongated slit aperture 39, 43. (See Friend, col. 3, ll. 54–61; col. 3, l.
63–col. 4, l. 2; & Figs. 1 & 4). In addition, the photo diodes 46, 48 are
mounted in a longitudinal slot 45 in the end plate 32. (See Friend, col. 3, ll.
3–6). The slit apertures 39, 43 and the longitudinal slot 45 as depicted in
Figure 2 are aligned to permit only radiation projected along a plane
extending between the array 42 of LEDs CR1–CR7 and the longitudinal slot
45 to reach the photo diodes 46, 48. Friend teaches that restricting the photo
diodes 46, 48 so as to receive only radiation projected along the plane
reduces the amount of “ambient light” detected by the photo diodes.
(Friend, col. 3, ll. 6–15).
In addition, Friend teaches an algorithm for processing the output
from the optical sensor module 16. Friend’s microprocessor 54 processes
the signal output by the photo diodes 46, 48 by sampling the signal at
periodic intervals; converting the sampled signal to a digital parameter,
INPUT; subtracting the INPUT from a digital parameter OFFSET
representing the slowly variable steady-state level of the signal; integrating
the difference SIGNAL  OFFSET – INPUT; and comparing both the
difference SIGNAL and its integral, PULSE, to threshold values to
determine whether one or more seeds have passed through the conduit 12.
(See generally Friend, col. 5, l. 1 – col. 6, l. 44; see also id., Figs. 5, 7a & 7b;
Ans. 8).
Friend teaches that the algorithm used to process the output from the
photodiodes 46, 48 “compensates for changes in the steady-state signal
produced by the photo diodes when no articles are in transit through the
beam.” (Friend, col. 2, ll. 7–13). It is, in fact, a calibration circuit in the
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sense of being self-adjusting. More specifically, it teaches updating the
value of the digital parameter OFFSET if the value of the difference
SIGNAL is non-zero for more than a fixed period of time. Friend teaches
incrementing OFFSET if SIGNAL is negative for more than the fixed period
of time. Friend teaches decrementing OFFSET if SIGNAL is positive for
more than the fixed period of time. (Friend, col. 5, ll. 21–52; & Figs. 7a &
7c). In this manner, OFFSET floats with an increase or decrease in the
steady-state level of the signal output by the photodiodes 46, 48, including
changes in the steady-state level caused by changes in the level of ambient
light. (See Ans. 15). Common sense suggests that, by compensating for
changes in the steady-state signal produced by the photo diodes 46, 48 when
no articles are in transit through the beam, the algorithm necessarily would
compensate for the effects of slowly-varying external ambient light on the
signal output by the photo diodes.
The circuitry implementing Friend’s algorithm is a “calibration
circuit” as that term is interpreted above. The algorithm self-adjusts by
incrementing or decrementing the value of the OFFSET variable based on
the value of the SIGNAL variable.

Levasseur
Levasseur describes a vending machine including a control circuit 20
and a sensor device 148 located on a product delivery means or chute so as
to respond when a product that is to be delivered by the machine passes
through the product delivery means or chute. Levasseur teaches that the
sensor might be either mechanical, electromechanical, photoelectric or
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optical, among a small number of other alternatives (See Levasseur, col. 7,
ll. 48–58; see also id., col. 2, ll. 44–46 and col. 2, l. 66 – col. 3, l. 14),
thereby suggesting the interchangeability of a mechanical or
electromechanical sensor, on the one hand, and a photoelectric or optical
sensor, on the other, for at least some purposes (see Ans. 17).

Endl
Endl describes a safety device including an optical sensor for a
machine used in a manufacturing operation. (See Endl, col. 2, ll. 35–39 and
col. 6, ll. 24–29.) In a manufacturing operation, the optical sensor is subject
to exposure to external ambient light, such as light from incandescent or
fluorescent lights. (Cf. Endl, col. 6, ll. 47–53 (describing the modulation of
ambient light produced by incandescent and fluorescent lamps)). Endl
teaches that the “sensitivity of photoelectric systems to ambient light has
long been a problem” (Endl, col. 6, ll. 19–20; see also Ans. 18), particularly
for a sensor required to sense the passage of small objects with accuracy.
More specifically, Endl teaches that:
Prior multiple light beam system[s] have depended on a
variation in the total light received to detect the interruption of a
beam. The received light is converted into an electrical signal
which may be amplified and the level of the signal used to
provide an output. To respond to a small object, the setting of
the level sensor is quite critical. Changes in the ambient light,
temperature, humidity, aging of components and the like may
cause false signals.
(Endl, col. 1, ll. 7–15).
Endl teaches that it was “common to provide shielding around the
light sensor to restrict the light reaching it to that which is emitted by the
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associated light source.” (See Endl, col. 6, ll. 20–23). On the other hand,
Endl also taught that:
Where the [optical sensing] system operates in a brightly
lighted area, as is usually the situation in a manufacturing
operation, it is impractical to screen the photo sensor from all
ambient light; and it is necessary to reduce the sensitivity of the
system so that it is not triggered by changes in the ambient light
level. The use of a pulsed light source permits electrical
filtering of the sensor output which substantially eliminates all
ambient light effects.
(Endl, col. 6, ll. 24–31). Endl observes that ambient light from artificial
sources such as incandescent and fluorescent bulbs powered by
commercially available, alternating current power sources typically have
relatively low pulse rates. It teaches coupling the light detectors 140 used to
sense interruption of light beams to amplification circuit that filter out the
low frequency portion of the output signal attributable to ambient light. (See
Endl, col. 6, ll. 31–60).

DIFFERENCES BETWEEN THE PRIOR ART
AND THE CLAIMS AT ISSUE
The Examiner correctly finds that “Schuller teaches all claimed
elements/features except for the sensing system operating optically and with
a calibration circuit.” (Ans. 6) That said, the Patent Owner points out that
one of ordinary skill in the art could not have obtained the claimed subject
matter merely by substituting an optical sensing system such as that
described by Dragne or Friend for the electromechanical sensing system
described by Schuller. (See App. Br. 20 & 21). For example, the Examiner
has not shown that the size of a seed transport duct 12 as described by
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Dragne, or of a seed flow passage 14 as described by Friend, was
comparable in size to the vend space of a transparent front vending machine.
Some level of effort and expense would have been required to scale the
sensing system taught by Dragne or Friend up to the dimensions required to
span the vend space of a transparent front vending machine. Apart from this
problem of scale, both Dragne and Friend described systems for counting
seeds flowing through a seed transport duct or conduit. One of ordinary skill
in the art seeking to adapt the teachings of Dragne and Friend to the problem
of sensing that a product had been dispensed, one-at-a-time, within a
vending machine would have had to modify the signal processing circuitry
of Dragne, or the signal processing algorithm of Friend. (See App. Br. 20 &
21). Proof that the subject matter of the appealed claims would have been
obvious would require the articulation of a reason or motivation for
modifying the vending machine described by Schuller sufficiently
compelling to justify the level of effort and expense likely required to carry
out the modification.

LEVEL OF ORDINARY SKILL IN THE ART
In order to properly evaluate the evidence in this case, one must
reorient one’s thinking from what the various devices described in the prior
art were capable of doing when considered in hindsight, to what one of
ordinary skill in the art knew those devices to be capable of doing at the
pertinent time. The record supports a finding that one of ordinary skill in the
pertinent art was a person with engineering training and experience in the
design of vending machines. Levasseur describes the use of an optical
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delivery sensor, albeit within a closed chute. (See Levasseur, col. 7, ll. 48–
58). Likewise, Percy (US 5,651,476, issued July 29, 1997) and Truitt (US
5,927,539, issued July 27, 1999) describe optical delivery sensors used in
closed-front vending machines. (See Percy, col. 3, ll. 49–62 & Fig. 1; Truitt,
col. 4, ll. 48–61 & Fig. 1). Tanaka (JP H04-52284 U, publ. May 1, 1992)
describes a product detection device for a vending machine including a light
projector that projects a beam of light parallel to a bottom surface of a
receiving tray to sense the presence or absence of a vended item in the
receiving tray. (Tanaka 4–5). Kawarazuka (JP H10-11639 A, publ. Jan. 16,
1998)6 describes an optical vend-sensing system located near a product
retrieval door (“exhaust port door” 23) at the base of a product delivery
chute 17, below product dispensing spirals 15. (See Kawarazuka, paras. 13
& 15–18). Hence, one of ordinary skill in the art would have been familiar
with the use of optical vend-sensing systems in vending machines, at least
within product delivery chutes or other shaded areas; and would have had
reason to familiarize himself or herself with the design and operation of
optical sensing systems.

6 Kawarazuka appears to be prior art under pre-AIA 35 U.S.C. § 102(a),
having been published over two months prior to the earliest claimed priority
of the ʼ220 patent. Although the Examiner did not cite Kawarazuka in the
rejections on appeal, it was cited in the “Statement Pointing Out Substantial
New Questions of Patentability,” dated December 10, 2010, at 28; and is
evidence of record bearing on the knowledge of one of ordinary skill in the
art. See Randall Mfg. v. Rea, 733 F.2d 1355, 1362–63 (Fed. Cir. 2013).

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OBJECTIVE EVIDENCE OF PATENTABILITY
To this point, I have disagreed little with my colleagues’ findings. I
do disagree with their assessment of the objective evidence in this appeal,
however.

Licensing Evidence
Eight of the Patent Owner’s competitors, including the Requester,
have taken licenses under patents including the ’915 patent. (See App. Br.
11; see also Reh’g Req. 22; “Declaration of Sharon F. Shull,” executed May
17, 2011 (“Shull Decl.”), paras. 14–22).7 The Patent Owner has provided
redacted copies of these license agreements. These eight licensees appear to
include all of the Patent Owner’s substantial competitors (See Shull Decl.,
para. 19).
Unlike my colleagues, I find that there exists a substantial nexus
between the licenses and the subject matter claimed in the ʼ915 patent. This
finding is not based on the content of the license agreements alone, but also
on the content of two advertisements appended to the Appeal Brief as

7 Paragraph 19 of the Shull Decl. said that the Requester had opted
against taking a license. On the other hand, page 11 of the Appeal Brief says
that the Requester has taken a license. The statement in the Appeal Brief,
although unsupported by evidence, is credible; and the discrepancy is
explainable by the passage of time between the execution of the Shull Decl.
and the filing of the Appeal Brief.

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Attachments 2 and 3.8 In particular, the first of these advertisements,
Attachment 2 to the Appeal Brief, was for a SUREVEND product delivery
sensor. The undated advertisement stated that the SUREVEND sensor, which
was “a standard feature on all NV spiral equipment,” guaranteed the delivery
of products to the consumer. According to the advertisement, the
SUREVEND sensor provided features including “automatic self-calibration—
no adjustment is necessary” and “works in all lighting conditions” (leading
capitals omitted). In addition, the advertisement included an expanded view
of the lower portion of the product dispensers of a glass front vending
machine featuring a package of snack food items falling through a planar
array of simulated infrared beams. The expanded view was captioned
“successful vend is detected when falling product breaks infrared beams”
(leading capitals omitted).
The first advertisement, in particular, indicates that at least one
licensee, the Requester, considered the use of an optical sensing system in a
transparent front vending machine to be of commercial importance. The
advertisement placed special emphasis on the provision of “automated self-
calibration” that permitted the sensor to work in all lighting conditions. This
advertisement indicates that the Requester regarded these features as

8 I find these advertisements, and particularly that reproduced as
Attachment 2, more persuasive of nexus than the post hac, generalized
testimony of John Hens, a distributor of the Patent Owner’s machines, that
he “immediately perceived [at a trade show ten years previous] that the
introduction of [the Patent Owner’s] optical vend detection system as an
industry changing event, a profound step forward;” or that he “understood
that the addition of a reliable vend detection system would make a real
different to vending machine operators and the response [he] saw at the
tradeshow [ten years previous] was all positive.” (Hens Decl., para. 7).
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commercially important, thereby bolstering the Patent Owner’s argument
that the licenses are probative of the patentability of the subject matter of the
appealed claims. (See Reh’g Req. 20 & 21).
The timing of the licenses suggests that pending litigation against at
least two of the licensees might have influenced the decision of the others to
take licenses. Three of the licenses attached to the Shull Declaration were
dated within a year after consent decrees were entered against at least two of
two of the Patent Owner’s competitors, Automatic Products and USI, in
response to lawsuits involving related Patent US 6,384,402. Another license
attached to the Shull Declaration was dated nineteen months after the
consent decrees were entered against the two competitors. (See Shull Decl.,
para. 16 & Tabs A–G). Nevertheless, the timing of the licenses must be
balanced against the fact that the entire industry took licenses under the
Patent Owner’s patents.

Commercial Success
Sharon Shull, the President of the Patent Owner, declares that the
Patent Owner was a start-up company having no customer base in 1998.
(See Shull Decl., paras. 1 and 11). The Patent Owner introduced a
transparent front vending machine having an optical vend-sensing system at
a trade show in the spring of 1998. No other manufacturer of glass front
vending machines at the time offered a machine having an optical vend-
sensing system. (See Shull Decl., paras. 2 and 9; “Declaration of John
Hens,” executed March 16, 2009, para. 6). John Hens testified that his
business became a distributor for the Patent Owner and its SENSIT vending
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machines almost immediately after the product introduction. (Hens Decl.,
para. 8).
Shull further declares that the Patent Owner’s sales in 1999 increased
approximately 294% over its 1998 sales levels; and that the Patent Owner’s
sales in 2000 increased another 60% over its 1999 sales levels. (See Shull
Decl., para. 12). Testifying in 2011, Shull declares that the Patent Owner
“has sold well over 50,000 units since 1998, netting [the Patent Owner] tens
of millions of dollars in revenue.” (Shull Decl., para. 12). Apart from these
sales, Hens testifies that his business retrofits optical vend-sensing systems
manufactured by inOne Technologies, Inc., a licensee of the Patent Owner,
into refurbished machines. (Hens Decl., para. 11).
The testimony of Ms. Shull at paragraphs 2–6 of the Shull Decl.,
while not a limitation-by-limitation comparison between the appealed claims
and the machines sold by the Patent Owner, convince me by a
preponderance of the evidence that the machines embodied the subject
matter of the claims. (See Reh’g Req. 21). In particular, I note Ms. Shull’s
testimony that the machines as first introduced stored items to be vended
“such that [the products could] be viewed through the vending machine’s
transparent front” (Shull Decl., para. 2); that, “[w]hen purchased by the
customer, the selected product [was] advanced forward, over the edge of the
storage tray, to fall through the delivery passage” (id.); and that the sensing
system “reliably detect[ed] the passage of products as they [fell] through the
product delivery passage having a depth largely defined by the distance
between the transparent front glass and the front edge of the product storage
trays” (id., para. 3). Ms. Shull does not indicate that these basic features
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were changed in later versions of the machines. As such, I am persuaded
that there exists a substantial nexus between the sales and growth figures, on
the one hand, and the claimed subject matter, on the other.
Furthermore, the fact that the Patent Owner’s competitors took
licenses to the ʼ634 patent, among others, indicates that the competitors
believed that the subject matter claimed in those patents was of competitive
value. The competitors’ willingness to pay money for access to this
technology suggests that those competitors believed the Patent Owner’s
exclusive right to sell vending machines embodying the technology
threatened their sales and market shares. One may reasonably infer, on this
basis, that the technology contributed to the Patent Owner’s commercial
success. Nevertheless, the weight to be given to the sales and growth figures
must be discounted for the fact that the figures do not indicate in absolute
terms how many sales were made during the first few years after the
introduction of the machines incorporating the SENSIT systems; or how
much market share, if any, those machines took from competitive machines
not embodying the claimed subject matter.

ANALYSIS
I also disagree with my colleagues’ balancing of the evidence and
ultimate conclusion. As mentioned earlier, Schuller describes a transparent
front vending machine. Schuller’s vending machine uses an
electromechanical vend-sensing mechanism that renders the machine
unsuited for the sale of relatively small or relatively light items. (See
McAlexander Decl. 8). The Examiner concludes that it would have been
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obvious “to associate electromagnetic radiation operation with the Schuller
sensing system in order to replace the wear and failure prone mechanical
system with an accurate electronic system.” (See Ans. 6; see also id. at 30).
By “accurate,” the Examiner refers to the problem of providing a vend
sensor capable of spanning a vend space large enough to accommodate
relatively large products, yet capable of sensing whether relatively small or
relatively light products have been dispensed into that space. (See Ans. 22,
citing Dragne, col. 6, ll. 2–6). This is a problem with which the named
inventor was involved. (See ʼ220 patent, col. 2, ll. 44–50; Reh’g Req. 15).
Neither Dragne nor Friend is non-analogous, as both are reasonably
pertinent to this problem. Dragne addresses the problem of "dark sections
(or blind spots" that might permit seeds to pass through the detection zone
undetected. (See, e.g., Dragne, col. 1, ll. 56–59 & col 5, l. 62 – col. 6, l. 6;
Ans. 17 (Dragne teaches a detection method using an optical sensor
generating infrared radiation in planar or curtain form creating a detection
region through which a falling object passes.”)). Friend likewise addresses
the problem of “spatial non-uniformity of the light source and/or of the light
detectors so that the signals generated by the light detectors vary, depending
upon what portion of the light beam is interrupted.” (Friend, col. 1, ll. 16–
19).
Optical sensing is one of a very limited set of mechanisms known for
use in detecting the movement of items in a vending machine. (See, e.g.,
Levasseur, col. 7, ll. 51–58). Nevertheless, the record indicates that vending
machine designers prior to the named inventor used optical sensing systems
only in shaded areas of the vending machine, such as product delivery chutes
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(see Levasseur, Percy & Truitt) or at the bottom of a retrieval bin (see
Tanaka & Kawarazuka). (See Reh’g Req. 5 & 6).9 This is consistent with
Endl’s teaching in the field of optical sensing systems that changes in
ambient light can cause such systems to output false detection signals. (See
Endl, col. 1, ll. 13–15). Common sense dictates that the presence of ambient
light would have been a significant problem for one of ordinary skill in the
art seeking to install an optical sensing system near a transparent front
window or panel of a vending machine. (Cf. Reh’g Req. 15 (identifying the
problem with which the inventor was involved as “how to detect a single,
freely-falling dispensed product of varying sizes that has been dispensed
from one of a plurality of spaced-apart (horizontally and vertically) product
holding trays in a transparent front vending machine where ambient light
enters that vend space through the transparent front in order to determine if
a vend has occurred.”)).
The fact that Dragne and Friend are not non-analogous art does not
imply that one of ordinary skill in the art would have recognized their optical
sensing systems to be solutions to the problem of providing a vend sensor
capable of spanning a vend space large enough to accommodate relatively
large products, yet capable of sensing whether relatively small or relatively
light products have been dispensed into that space; or that one of ordinary
skill in the art would have had a reasonable expectation that optical sensing

9 These vending machines are excluded from the scope of the claims on
appeal by the “freely falling” and “vend space” language of claims 1–33;
and the step of “creating a generally horizontal light detection plane cross
the substantially unreduced cross-section of said product delivery path above
said customer accessible product delivery bin” in claims 34–37.
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systems like those described by Dragne and Friend could be adapted to
successfully solve the problem. One of ordinary skill in the pertinent art was
a designer or manufacturer of vending machines. The prior art taught the
use of optical sensing systems in vending machines to detect product
delivery through chutes or to detect the arrival of a product in a retrieval bin.
These teachings imply that one of ordinary skill in the art would have had
reason to familiarize himself or herself with optical sensing systems. That
fact does not imply that one of ordinary skill in the art of designing and
manufacturing vending machines was an expert in optical sensing systems.
As the Patent Owner points out, Dragne and Friend described devices
intended for use in the field of agricultural equipment, not vending
machines. (See Reh’g Req. 16). The optical sensing systems described by
Dragne and Friend were designed to count seeds moving through seed
transport ducts or conduits. They were not designed to sense the dispensing
of products, one-at-a-time, from dispensing mechanisms in vending
machines. (See App. Br. 20). Dragne and Friend described optical sensing
systems including various measures capable of addressing the problem of
ambient light, including external ambient light. That said, the Examiner has
not proven that the optical systems described by Dragne and Friend were
subject to external ambient light when resident in their seed transport ducts
or conduits. The fact that the optical sensing systems described by Dragne
and Friend included various measures capable of addressing the problem of
ambient light, including external ambient light, does not imply that one of
ordinary skill in the art would have recognized those measures as capable of
successfully filtering out the ambient light entering through the transparent
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front window or panel of a vending machine. Although the optical sensing
systems described by Dragne and Friend, which used arrays of LEDs to
generate excitation light (see Dragne, col. 5, ll. 39–48 & Figs. 3 & 4; Friend,
col. 2, ll. 46–55 & Fig. 2) and, at least in the case of Friend, a plurality of
photo diodes to detect that light (see Friend, col. 2, l. 67 – col. 3, l. 3 & Fig.
2), might be scaled up from the size of the seed transport ducts or conduits
of Dragne and Friend to the vend space of a transparent front vending
machine, it is not clear that one of ordinary skill in the art had sufficient
expertise with optical sensing systems to recognize the possibility.
This uncertainty must be considered in the context of the objective
evidence presented by the Patent Owner. The only prior art of record
describing the use of optical sensing systems in vending machines used
those sensing systems either in retrieval bins below the front panels of
vending machines or in closed chutes within the machines, where ambient
light was not as substantial an issue. After the effective filing date of the
ʼ220 patent, the Patent Owner experienced growing sales and succeeded in
licensing the entire industry. The Requester’s advertising, or at least those
advertisements appearing in Attachments 2 and 3 to the Appeal Brief,
indicate that the claimed subject matter was valuable precisely because of
the ability of the claimed subject matter to address the problem of
conducting optical vend-sensing notwithstanding the ambient light admitted
through a transparent front window or panel of a vending machine. In
particular, the Requester’s advertisement reproduced in Attachment 2 touted
the ability of the Requester’s optical vend-sensing system to work “in All
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Lighting Conditions and Temperatures;” and the ability of that sensing
system to perform “Automatic Self-calibration.”
This commercial success and licensing evidence indicates that one of
ordinary skill in the art lacked the skill necessary to recognize the capacity
of optical sensing systems such as those described by Dragne and Friend to
address the problem of providing a vend sensor in a transparent front
vending machine capable of spanning a vend space large enough to
accommodate relatively large products, yet capable of sensing whether
relatively small or relatively light products have been dispensed into that
space. Conversely, the objective evidence demonstrates industry recognition
of the inventive nature of the subject matter after the fact. Based on my
review of the record as a whole, I am not persuaded that the combination
proposed by the Examiner would have been obvious; or that claims 1–37
were properly rejected. Therefore, I dissent.

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47

Patent Owner:

Peter W. Gowdey
DAVIDSON BERQUIST JACKSON & GOWDEY LLP
8300 Greensboro Dr, Suite 500
McLean VA 22102

Third Party Requester:

Daniel E. Venglarik
Munck Carter LLP
600 Banner Place Tower
Dallas, Texas 75251