Ex Parte Bellucci

Board of Patent Appeals and Interferences

Mar 25, 2010

10278964 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte DENNIS J. BELLUCCI 8
____________________ 9
10
Appeal 2009-006475 11
Application 10/278,964 12
Technology Center 3600 13
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Decided: March 25, 2010 16
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. 20
MOHANTY, Administrative Patent Judges. 21
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CRAWFORD, Administrative Patent Judge. 23
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DECISION ON APPEAL26
Appeal 2009-006475
Application 10/278,964

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STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Appellant invented systems and methods related to a self-service 4
deposit method and apparatus for receiving media including bank notes 5
(Spec. 1:4-5). 6
Claim 1 under appeal is further illustrative of the claimed invention as 7
follows: 8
1. An apparatus comprising: 9
means for receiving deposited notes[;] 10
transport means for transporting the notes; 11
note validation means for determining if a deposited note 12
is counterfeit or not; 13
a purge bin for receiving counterfeit notes; and 14
automated means for marking a surface of each note 15
determined to be counterfeit to identify the note as counterfeit. 16
The prior art relied upon by the Examiner in rejecting the claims on 17
appeal is: 18
Mazur US 6,068,194 May 30, 2000 19
The Examiner rejected claims 1 and 3-19 under 35 U.S.C. § 103(a) as 20
being unpatentable over Mazur; and rejected claim 2 under 35 U.S.C. § 21
103(a) as being unpatentable over Mazur in view of Official Notice. 22
We AFFIRM and enter a NEW GROUND of rejection under 37 23
C.F.R. § 41.50(b) (2009). 24
25
ISSUES 26
Did the Examiner err in asserting that Mazur renders obvious 27
“automated means for marking a surface of each note determined to be 28
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counterfeit to identify the note as counterfeit,” as recited in independent 1
claim 1? 2
Did the Examiner err in asserting that a combination of Mazur and 3
Official Notice renders obvious “wherein the means for marking counterfeit 4
notes include means for staining the notes with ink,” as recited in dependent 5
claim 2? 6
Did the Examiner err in asserting that Mazur renders obvious a printer 7
for printing on counterfeit and other rejected notes, as recited in dependent 8
claims 3 and 4? 9
Did the Examiner err in asserting that Mazur renders obvious “means 10
for identifying a user of the ATM,” as recited in dependent claim 6? 11
12
FINDINGS OF FACT 13
Specification 14
Appellant invented systems and methods related to a self-service 15
deposit method and apparatus for receiving media including bank notes 16
(Spec. 1:4-5). 17
18
Mazur 19
Mazur discloses machines that automatically evaluate the authenticity, 20
as well as the denomination, of the cash that is deposited, whether in the 21
form of bills or coins (col. 1, ll. 18-21). 22
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The currency processing system has a slot 3 for receiving a customer's 1
identification card so that the data on the card can be automatically read by a 2
card reader. This card reader would be capable of reading from or writing to 3
various types of cards using a variety of information storage technologies 4
such as magnetic strips, magnetic cards, and smart cards (col. 7, ll. 17-24). 5
When a bill cannot be recognized by the scanning module, a diverter 6
10 is actuated to divert the unidentified bill to the return slot 2 so that it can 7
be removed from the machine by the customer. Alternatively, 8
unrecognizable bills can be diverted to a separate currency canister rather 9
than being returned to the customer. Bills that are detected to be counterfeit 10
are treated in the same manner as unrecognizable bills (col. 7, ll. 49-56). 11
A scanned bill can be identified as counterfeit based on a variety of 12
monitored parameters (col. 28, ll. 38-41). 13
The system may be designed to permit output information to be 14
displayed in a variety of formats to a variety of output devices, such as a 15
monitor, LCD display, or printer (col. 61, ll. 30-33). 16
The system may be designed so that when the authenticating and 17
discriminating unit is unable to identify a bill, the transport mechanism is 18
altered to divert the unidentified bill to a separate storage canister. Such 19
bills may be “‘flagged’” or “‘marked’” to indicate that the bill is a no call or 20
suspect bill (col. 69, ll. 60-65). 21
22
PRINCIPLES OF LAW 23
Obviousness 24
The examiner bears the initial burden, on review of the prior art or on 25
any other ground, of presenting a prima facie case of unpatentability. If that 26
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burden is met, the burden of coming forward with evidence or argument 1
shifts to the applicant. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). 2
Providing an automatic means to replace a manual activity which 3
accomplishes the same result is not sufficient to distinguish over the prior 4
art. In re Venner, 262 F.2d 91, 95 (CCPA 1958). 5
One of ordinary skill in the art would have found it obvious to update 6
the prior art device by using modern electronic components in order to gain 7
the commonly understood benefits of such adaptation, such as decreased 8
size, increased reliability, simplified operation, and reduced cost. The 9
combination is thus the adaptation of an old idea or invention using newer 10
technology that is commonly available and understood in the art. Leapfrog 11
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). 12
When there is a design need or market pressure to solve a problem 13
and there are a finite number of identified, predictable solutions, a person of 14
ordinary skill in the art has good reason to pursue the known options within 15
his or her technical grasp. If this leads to the anticipated success, it is likely 16
the product not of innovation but of ordinary skill and common sense. KSR 17
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402-03 (2007). 18
19
Claim Construction 20
During examination of a patent application, a pending claim is given 21
the broadest reasonable construction consistent with the specification and 22
should be read in light of the specification as it would be interpreted by one 23
of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 24
1359, 1364 (Fed. Cir. 2004). 25
26
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ANALYSIS 1
Independent Claim 12 2
The Examiner has not erred in asserting that Mazur renders obvious 3
“automated means for marking a surface of each note determined to be 4
counterfeit to identify the note as counterfeit,” as recited in independent 5
claim 1 (App. Br. 11-13). Appellant asserts that Mazur does not disclose 6
actually marking of individual bills; that instead categories of bills are sorted 7
using divider-like “markers.” However, the Examiner concedes that “Mazur 8
does not explicitly teach the marking of the surface of the note,” but then 9
establishes a proper case of obviousness by asserting that 10
one of ordinary skill in the art at the time of the 11
invention would have been motivated to mark the 12
surface of counterfeit notes for the useful purpose 13
of marking each bill, as opposed to marking a 14
bundle, in case a bill gets separated from the 15
bundle. This is [sic]would be obvious to one of 16
ordinary skill in the art because it has been done 17
for years and years by retailers. For instance, 18
when a cashier at a retail store notices a counterfeit 19
bill, the bill is marked and most likely given to the 20
police who further mark it. Another advantage of 21
marking the bill would be to void the bill for future 22
purchases. 23
(Exam’r’s Ans. 4-5). As Appellant has not rebutted the Examiner’s reasons 24
for modifying Mazur, and instead focuses solely on the alleged deficiencies 25
of Mazur, we will sustain this rejection. See In re Oetiker, 977 F.2d at 1445. 26
As Appellant asserts that independent claims 5, 9, 12, 13, and 15 are 27
patentable for the same reasons independent claim 1 is patentable, we also 28
sustain the rejections of those claims. 29
30
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Staining Notes with Ink 1
The Examiner has not erred in asserting that a combination of Mazur 2
and Official Notice renders obvious “wherein the means for marking 3
counterfeit notes include means for staining the notes with ink,” as recited in 4
dependent claim 2 (App. Br. 13). Appellant asserts that “marking of notes 5
by hand in stores and banks . . . is admittedly old,” but that dependent claim 6
2 recites an automation of that process. However, automation of a manual 7
activity is obvious. See In re Venner, 262 F.2d at 95. See also Leapfrog 8
Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d at 1162. Insofar as our 9
rationale differs from that set forth by the Examiner, we denominate it a new 10
ground under 37 C.F.R. § 41.50(b). 11
12
Printer 13
The Examiner has not erred in asserting that Mazur renders obvious a 14
printer for printing on counterfeit and other rejected notes, as recited in 15
dependent claims 3 and 4 (App. Br. 13-14). Column 61, lines 30-33 of 16
Mazur discloses a printer to display output information. A mark on a 17
counterfeit bill is “output information.” Moreover, there are a number of 18
ways of placing a mark on a counterfeit bill, one of which would be a 19
conventional printer. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 402-03. 20
Insofar as our rationale differs from that set forth by the Examiner, we 21
denominate it a new ground under 37 C.F.R. § 41.50(b). 22
23
Identifying Use of ATM 24
The Examiner has not erred in asserting that Mazur renders obvious 25
“means for identifying a user of the ATM,” as recited in dependent claim 6 26
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(App. Br. 14-15). Appellant admits that card reader 16 in the Specification 1
corresponds to the recited “means.” Column 7, lines 17-24 of Mazur 2
discloses such a card reader. 3
4
CONCLUSION OF LAW 5
On the record before us, the Examiner has not erred in rejecting 6
claims 1-19. 7
8
DECISION 9
The decision of the Examiner to reject claims 1-19 is affirmed. 10
This decision contains new rationales of rejection pursuant to 37 11
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 12
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 13
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this 14
paragraph shall not be considered final for judicial review.” 15
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO 16
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 17
the following two options with respect to the new grounds of rejection to 18
avoid termination of the appeal as to the rejected claims: 19
• (1) Reopen prosecution. Submit an appropriate 20
amendment of the claims so rejected or new 21
evidence relating to the claims so rejected, or both, 22
and have the matter reconsidered by the examiner, 23
in which event the proceeding will be remanded to 24
the examiner . . . . 25
• (2) Request rehearing. Request that the 26
proceeding be reheard under § 41.52 by the Board 27
upon the same record . . . . 28
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 2
3
AFFIRMED; 37 C.F.R. § 41.50(b) 4
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hh 13
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Michael Chan 16
NCR Corporation 17
1700 South Patterson Blvd. 18
Dayton, OH 45479-0001 19