Ex Parte Connell et al

Patent Trial and Appeal Board

Feb 6, 2013

12220149 (P.T.A.B. Feb. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRIAN P. CONNELL and GARY R. MARSHALL
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Appeal 2011-006702
Application 12/220,149
Technology Center 3600
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Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006702
Application 12/220,149

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 8-12. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates to “self-service check depositing
transactions, and is particularly directed to methods of processing a last
check of a bunch of checks deposited at a self-service terminal, such as a
check depositing automated teller machine (ATM), during a bunch-check
deposit transaction” (Spec. 1, ll. 6-9).
Claim 8, reproduced below, is representative of the subject matter on
appeal:
8. A method of operating a check processing module (CPM)
for a self-service check depositing terminal to process checks
deposited at the self-service terminal during a bunch-check
deposit transaction, the method comprising:
receiving a first check of a bunch of checks along a check
transport path by the check processing module;
processing the first check as the first check is being
transported along the check transport path;
transporting the processed first check to a physical
escrow by the check processing module;
receiving a second check of the bunch of checks along
the check transport path by the check processing module;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 6, 2010) and Reply Brief (“Reply Br.,” filed March 2,
2011) and the Examiner’s Answer (“Ans.,” mailed January 5, 2011).
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processing the second check as the second check is being
transported along the check transport path;
determining that the second check is a last check of the
bunch of checks;
transporting the processed second check to a virtual
escrow which is other than the physical escrow by the check
processing module; and
approving the bunch-check deposit transaction as the first
processed check is being held in the physical escrow and the
second processed check is being held in the virtual escrow
which is other than the physical escrow.

THE REJECTION
The following rejection is before us for review:
Claims 8-12 stand rejected under 35 U.S.C. § 102(e) as anticipated by
VanKirk (US 2007/0215692 A1, pub. Sep. 20, 2007).

ANALYSIS
Independent claim 8
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that VanKirk does not teach “approving the bunch-
check deposit transaction as the first processed check is being held in the
physical escrow and the second processed check is being held in the virtual
escrow which is other than the physical escrow,” as recited in claim 8
(App. Br. 6 and Reply Br. 1-4). Appellants acknowledge that VanKirk
discloses an arrangement in Figure 83 in which a check is held “in escrow
position 428 from which it goes either to storage area 430 upon approval or
for return to the user as described by VanKirk paragraph [0278]”
(App. Br. 6). But Appellants maintain that “[w]hile this operation is
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described as exemplary, operation in accordance with the present claims is
not described” (App. Br. 6).
The Examiner maintains that the rejection is proper and that VanKirk
discloses the claimed feature at paragraphs [0056], [0057], and [0303]
(Ans. 5-6). We agree with the Examiner.
VanKirk discloses an automated teller machine (“ATM”) adapted to
receive deposits of individual sheets, such as checks and/or other
instruments (VanKirk, para. [0002]). VanKirk describes at paragraph [0055]
that, in an exemplary embodiment, when a check is received through an
opening in the ATM, the check is moved past scanning sensors that read
optical indicia on each side of the check and produce data corresponding to
the optical indicia that is processed and stored in one or more data stores of
the ATM. VanKirk further describes in paragraph [0056], on which the
Examiner relies, that once the check has moved past the sensors, the check is
moved into an escrow area, where the check is maintained, i.e., stored, while
one or more processors in the ATM determine whether the check can be
accepted.
If the check cannot be accepted, the check is moved out of the ATM
and returned to the customer (VanKirk, para. [0056]). Alternatively, if the
check is suitable for acceptance, VanKirk describes that the check is moved
from the escrow area past one or more stamper printers where the check is
cancelled (VanKirk, para. [0057]).
VanKirk describes in paragraph [0056] that in some embodiments, the
escrow area may be of sufficient length so that multiple checks may be
temporarily stored therein. “Alternatively, or in addition, storage devices
such as belt storage mechanisms, transports or other escrow devices may be
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incorporated into the transport path . . . so that more numerous documents
may be stored therein and returned to the user in the event that a transaction
is not authorized to proceed” (VanKirk, para. [0303]).
Appellants scoff at paragraph [0303] of VanKirk as a “scant
disclosure of . . . additional or alternative approaches,” and charge that “the
cooperation of any ‘virtual’ and ‘physical’ escrows are not disclosed by
[VanKirk] in a manner which meets the terms of the present claims” (App.
Br. 6 and Reply Br. 3-4). However, we agree with the Examiner that it is
clear from a fair reading of paragraphs [0056], [0057], and [0303] of
VanKirk that “the belt storage mechanisms and transport storage location[s]
[described in paragraph [0303]] are used to temporarily hold
checks/documents pending approval or rejection of the transaction,” and that
“[t]hese additional locations/storage works cooperatively with the escrow
storage to hold checks during a multiple check transaction, similar to the
‘virtual escrow’ [recited in claim 8]” (Ans. 11).2
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 8 under 35 U.S.C. § 102(e).

Dependent claims 9-12
Appellants argue that “[c]laims 9-12 address further combinations of
features not taught by [VanKirk],” and Appellants generally describe the

2 Appellants attempt in the Reply Brief to make much of the fact that
paragraphs [0056] and [0057] of VanKirk include multiple references to the
processing of a single check and its return to the customer if not accepted
(Reply Br. 1-3). However significantly, paragraph [278], which Appellants
cite in their Appeal Brief, explicitly describes the receipt and storage of
multiple documents in the escrow area pending a determination whether to
accept or return the documents to the user.
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limitations recited in each of those claims (App. Br. 6). However,
Appellants present no arguments for the separate patentability of claims
9-12. Instead, Appellants merely make the general assertion that
“[VanKirk’s] peripheral disclosure of additional escrow storage does not
meet the terms of these claims when considered in their entirety” (App. Br.
6-7).
A mere restatement of what each of claims 9-12 recites, and a general
allegation that these limitations are not taught by the cited art are not an
argument on the merits, against the rejection of the claims. See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably
interpreted 37 C.F.R. § 41.37 (c)(1)(vii) as requiring “more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”). Therefore, we will sustain the Examiner’s rejection of
claims 9-12 under 35 U.S.C. § 102(e).3

3 Appellants present arguments for the first time in the Reply Brief that
allegedly distinguish the claimed methods of claims 9-12 from VanKirk
(Reply Br. 4-6). Because the Examiner has not been afforded an opportunity
to respond, and in the absence of a showing of good cause by Appellants,
these arguments are deemed waived. See 37 C.F.R. § 41.37(c)(1)(iv); In re
Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not
first raised in the brief to the Board is waived on appeal); Ex parte
Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining
that arguments and evidence not timely presented in the principal Brief, will
not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
Principal Brief).
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DECISION
The Examiner’s rejection of claims 8-12 under 35 U.S.C. § 102(e) is
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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