Ex Parte Ashby et alDownload PDFPatent Trial and Appeal BoardNov 13, 201713534656 (P.T.A.B. Nov. 13, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/534,656 06/27/2012 John Ashby 020305-004025 1412 34313 7590 11/15/2017 ORRICK, HERRINGTON & SUTCLIFFE, LLP IP PROSECUTION DEPARTMENT 2050 Main Street, Suite 1100 IRVINE, CA 92614 EXAMINER DORSEY, RENEE ART UNIT PAPER NUMBER 2682 NOTIFICATION DATE DELIVERY MODE 11/15/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): IPPROSECUTION @ ORRICK. COM vsantos @ orrick. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN ASHBY, ANDREW WILLIAM BARSON, MALCOLM BELL, LES HUTTON, and KEVIN MULVEY Appeal 2015-001772 Application 13/534,656 Technology Center 2600 Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and MICHAEL M. BARRY, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 3, 6—14, 16, 19-22, and 30.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is Crane Co. (App. Br. 3). 2 Claims 2, 17, and 18 have been previously canceled. Claims 23—29 have been indicated as allowable, and claims 4, 5, and 15 have been objected to being dependent from a rejected base claim, but otherwise containing allowable subject matter (Final Act. 10). Appeal 2015-001772 Application 13/534,656 STATEMENT OF THE CASE Introduction Appellants’ invention relates to “a banknote acceptor for authenticating a banknote under test” (Spec. 12). Exemplary claim 1 under appeal reads as follows: 1. A banknote acceptance apparatus for authenticating a banknote under test presented by a user, comprising: a sensing station to receive the banknote under test, including a detector to provide image signals corresponding to the banknote, a processor programmed to make a comparison of image data corresponding to at least some of the image signals from the detector, with stored reference data corresponding to an acceptable banknote, for determining the authenticity of the banknote under test, and to provide an acceptance signal for the banknote under test in dependence on the outcome of the comparison, and a display device operable to provide the user that presented the banknote with a display of a confirmatory visual image of the banknote under test, such as to allow the user to perform a visual check that the banknote detected at the sensing station corresponds to the banknote under test presented thereto by the user. The Examiner’s Rejections The Examiner rejected claims 1, 8, 12, 13, 19-22, and 30 under 35 U.S.C. § 103(a) as unpatentable over Yu (US 2004/0256196 Al; Dec. 23, 2004) and Awatsu (US 2007/0003112 Al; Jan. 4, 2007) (see Final Act. 3—7), and further added Takatoo (US 5,095,365; Mar. 10, 1992), Mastie (US 6,883,706 B2; Apr. 26, 2005), and Saltsov (US 2002/0162775 Al; Nov. 7, 2002) to reject claims 3, 6,1, 9-12, 14, and 16 (see Final Act. 7—10). 2 Appeal 2015-001772 Application 13/534,656 ANALYSIS In rejecting claim 1, the Examiner finds Yu discloses all the recited elements of claim 1 except for the “processor programmed to make a comparison . . for determining the authenticity of the banknote under test, and to provide an acceptance signal for the banknote under test in dependence on the outcome of the comparison,” for which the Examiner relies on Awatsu (Final Act. 3—4). The Examiner cites Figure 2 and paragraph 55 of Awatsu as disclosing a processor for verifying a vein pattern against the registered vein data for authenticating the individual (Final Act. 4). The Examiner finds one of ordinary skill in the art would have found it obvious “to modify the bill acceptor of Yu et al. with the ATM banknote acceptor of Awatsu et al. using a commonly known technique for personal authentication for the purpose of banknote authentication” (id.). Appellants contend: (1) Awatsu is not analogous art nor “reasonably pertinent” to the problem of the invention; (2) a person of ordinary skill in the art would not combine Awatsu and Yu because Yu is directed to enhancing the ability of a human to visually authenticate a banknote whereas Awatsu discloses a fully automated system for personal authentication; and (3) the proposed combination would not yield the claimed invention because Awatsu provides a system for authenticating the user of the ATM rather than the bills inserted into the ATM (App. Br. 9—16). The Examiner responds by pointing out the relevant classification of the applied prior art and asserts that the classification of Appellants’ application is a subcategory of those classifications (Ans. 4). With respect to the reason for combining the references, the Examiner explains modifying Yu with the “commonly known technique for personal authentication” of 3 Appeal 2015-001772 Application 13/534,656 Awatsu would have been obvious for “the purpose of banknote authentication” (id.). The Examiner further explains that modifying Yu with the automated process of comparing the image data from the detectors to an acceptable image in Awatsu would have resulted in the claimed subject matter (Ans. 5—6). Based on a review of Yu and Awatsu, we are persuaded by Appellants’ contention (Reply Br. 6—7) that one of ordinary skill in the art would not have combined Awatsu’s automatic authentication process of the user of the ATM with the manual banknote authentication system of Yu. As further pointed out by Appellants (App. Br. 14), “[although the Awatsu reference mentions an automated teller machine (ATM) as one example of an application of its invention, this use of the Awatsu system was for authenticating the user of the ATM, not bills inserted into the ATM.” In other words, the Examiner has not explained how the techniques of personal authentication relates to the process for banknote authentication (see Awatsu 113, 13; Yu 11 6, 23). Therefore, Appellants’ arguments have persuaded us of error in the Examiner’s position with respect to the rejection of independent claim 1, independent claims 12 and 19, which recite similar limitations, and claims 3, 6—11, 13, 14, 16, 20-22, and 30 dependent thereon. DECISION We reverse the Examiner’s decision to reject claims 1, 3, 6—14, 16, 19-22, and 30. REVERSED 4 Copy with citationCopy as parenthetical citation