Ex Parte Carter

Board of Patent Appeals and Interferences

Jun 30, 2008

10401191 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH CARTER
____________

Appeal 2008-0396
Application 10/401,191
Technology Center 3600
____________

Decided: June 30, 2008
____________

Before WILLIAM F. PATE III, MURRIEL E. CRAWFORD, and
JOHN C. KERINS, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

This is an appeal from the final rejection of claims 1, 3, 4, 6, 8, 9, 11,
13, 14, 16-18, 20, 21 and 23. These are only claims remaining in the
application.
We have jurisdiction over the appeal pursuant to 35 U.S.C. §§ 6 and 134.
Appeal 2008-0396
Application 10/401,191

2
The claimed invention is directed to a method of exchanging a
plurality of loose coins using a machine located in a host establishment.
Claim 1 reproduced below, is further illustrative of the claimed
subject matter.

1. A method of exchanging a plurality of loose coins using
a machine located in a host establishment, the method
comprising the steps of:

(a) accepting the plurality of loose coins into the
machine;

(b) tallying the plurality of loose coins to determine a
total value;

(c) dispensing a substantially disposable cash-substitute
device representing at least a portion of the total value, wherein
the substantially disposable cash-substitute device can only be
used to purchase goods or services from one or more specified
parties; and

(d) using at least a portion of the plurality of loose coins
to replenish one or more coin dispensing machines located in
the host establishment.

REFERENCE
The reference of record relied upon by the examiner as evidence of
lack of novelty is Molbak (U.S. Patent 6,758,316 B2).
REJECTION
Claims 1, 3, 4, 6, 8, 9, 11, 13, 14, 16-18, 20, 21, and 23 stand rejected
under 35 U.S.C. 102(e) as being anticipated by Molbak.
Appeal 2008-0396
Application 10/401,191

3
ISSUE
The sole issue on appeal is whether Molbak teaches the method step
of using a portion of at least a plurality of loose coins to replenish one or
more of the coin dispensing machines located in the host establishment.
OPINION
Appellant is in agreement with the Examiner that Molbak discloses all
of the method steps in the independent claims on appeal, save for the method
step of using at least a portion of the plurality of loose coins to replenish
one or more coin dispensing machines located in the host establishment.
With respect to this method step, the Examiner points to the coin bag 1608
in Figure 16 and states that the coins which are placed in these bags are
“useable to replenish coin dispensing machines or cash drawers in such a
bagged form.” (Ans. p. 4). The Examiner points to col. 17, lines 33-50. This
portion of the specification of Molbak refers to printing tags and deposit
slips for the bagged coins, so that the inventory of bagged coins can be
controlled and reconciled at the bank to which the deposited coins are taken.
In fact, Molbak states that in at least one embodiment disclosed
therein, the coins in the bags are locked by a mechanical or electronic lock
which restricts access to the employees of the host establishment, and the
bags are only to accessible to armored car service personnel and not
accessible to store personnel. See col. 9, l. 64 thru col. 10, l. 6. In view of
this disclosure, it is our conclusion that Molbak does not contemplate
replenishment of coin dispensing machines located in the host establishment
from the loose coins exchanged.
Appeal 2008-0396
Application 10/401,191

4
The Examiner argues that the limitation “located at the host
establishment” and “using at least a portion of the plurality of loose coins to
replenish one or more cash drawers” are intended use language. “Intended
use” is conventionally referred to with respect to an apparatus or machine
that is being claimed. In this case we see that these limitations are not
intended use but are actual parts of the method steps of Appellant’s claimed
process. Therefore, the failure to give these limitations weight is error on
the part of the Examiner.
The Examiner also states that the central facility described in col. 17
of Molbak could be construed as part of the supermarket where the coin
sorter was located. We believe that this is an unreasonable and strained
interpretation of the disclosure of Molbak. In our view, the central facility is
an armored car depot or bank where bagged coins are taken by the armored
car personnel.
Finally, the Examiner points to language in col. 19, ll. 59-65 that
indicates that coins can be sorted into ready-to-use coin trays. Ans. p. 5.
This is the Examiner’s best argument. However, we note that the disclosure
of Molbak does not state that these coin trays are used in the original host
establishment. Without such disclosure, we are unable to affirm the
Examiner’s rejection under § 102.
CONCLUSION
The rejection of claims 1, 3, 4, 6, 8, 9, 11, 13, 14, 16-18, 20, 21, and
23 under 35 U.S.C. 102(e) is reversed.

REVERSED
vsh
Appeal 2008-0396
Application 10/401,191

5
SPENCER, FANE, BRITT & BROWNE
1000 WALNUT STREET
SUITE 1400
KANSAS CITY MO 64106-2140