Ex Parte Dobbins

Board of Patent Appeals and Interferences

Nov 12, 2008

10912753 (B.P.A.I. Nov. 12, 2008)

5

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BOB M. DOBBINS 15
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Appeal 2008-2782
Application 10/912,753
Technology Center 3600 20
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Decided: November 12, 2008
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Before: WILLIAM F. PATE, III, HUBERT C. LORIN, and
MICHAEL O’NEILL, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.
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DECISION ON APPEAL

STATEMENT OF CASE
35
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1 to 14. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
The claims are directed to an electronic drop safe having two doors
wherein a bill acceptor and a banknote canister are partitioned in first and
second compartments with access by first and second access doors, 40
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Application 10/912,753

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respectively, so that a service call can be made to service the bill acceptor or 5
other electronics without having to allow access to the banknote canister
thereby facilitating service calls and allowing the separation of the service
call function from the cash collection function (Abstract).
Claim 1 is illustrative of the claimed subject matter and reproduced
below: 10
1. An electronic drop safe comprising:
a bill acceptor for accepting bills; and
a bill canister for storing bills, with both the bill
acceptor and the bill canister contained within a housing,
whereby: 15
the bill acceptor is removable through a first access
door when the first access door is open; and
the bill canister is removable through a second access
door when the second access door is open and is not
accessible when the second access door is closed. 20

The prior art relied upon by the Examiner in rejecting the claims on
appeal is: 25
Pyle 1,241,279 Sep. 25, 1917
Cassidy 5,615,625 Apr. 01, 1997
Cooley 5,616,902 Apr. 01, 1997
Gauselmann 5,740,897 Apr. 21, 1998
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Claims 1-4, 6-10, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Cooley in view of Cassidy.
Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cooley in view of Cassidy and further in view of
Gauselmann. 35
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Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable over 5
Cooley in view of Cassidy as applied to claim 10 and further in view of
Pyle.
Appellant contends that the Examiner has failed to establish a prima
facie case of obviousness with respect to independent claims 1, 6, 9, and 10.
ISSUE 10
Has Appellant established that the Examiner erred in concluding
independent claims 1, 6, 9, and 10 were prima facie obvious under 35 U.S.C.
§ 103(a)?
FINDINGS OF FACT
1. Cooley discloses an electronic drop safe 10comprising a bill 15
acceptor 46 for accepting bills (col. 3, l. 46); and a bill canister for storing
bills (col. 3, ll. 54-56), with both the bill acceptor 46 and the bill canister
(col. 3, ll. 54-56) contained within a housing/compartment 12, whereby: the
bill acceptor is capable of being removed through a first access door 16
when the first access door is open; the bill canister is removable (col. 3, l. 20
55), and a second access door 14, 18, 20, 22.
2. Cooley does not disclose whether the bill canister is removable
through the second access door 14, 18, 20, 22 or that the bill canister is
mounted in a second/separate compartment.
3. Cassidy teaches a bill canister 20 but does not teach or disclose the 25
bill canister is removable through a second access door or that the bill
canister is mounted in a second/separate compartment.

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Application 10/912,753

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PRINCIPLES OF LAW 5
The key to supporting any prima facie conclusion of obviousness
under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the
claimed invention would have been obvious. The Supreme Court in KSR
International Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007) noted that the
analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. 10
The Federal Circuit has stated that “rejections on obviousness cannot be
sustained with mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988, 78 (Fed. Cir.
2006). See also KSR, at 82 (quoting Federal Circuit statement with 15
approval).
The express, implicit, and inherent disclosures of a prior art reference
may be relied upon in the rejection of claims under 35 U.S.C. §§ 102 or 103.
“The inherent teaching of a prior art reference, a question of fact, arises both
in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 20
613 (Fed. Cir. 1995).
The fact that a certain result or characteristic may occur or be present
in the prior art is not sufficient to establish the inherency of that result or
characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (reversed
rejection because inherency was based on what would result due to 25
optimization of conditions, not what was necessarily present in the prior art);
In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). “To establish inherency,
the extrinsic evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
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Application 10/912,753

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be so recognized by persons of ordinary skill. ‘Inherency, however, may not 5
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.’ ” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). In relying upon the theory of
inherency, the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent 10
characteristic necessarily flows from the teachings of the applied prior art.
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990).

ANALYSIS
The Examiner’s finding (Answer at 7) that panels 14, 16, 18, 20, and 15
22 inherently define separate compartments therebehind may not properly be
drawn from the disclosure of Cooley, because Cooley does not make clear
that the missing descriptive matter, the compartments or dividers, is
necessarily present behind the panels 14, 16, 18, 20, and 22. The fact that
doors 14, 16, 18, 20, and 22 are individually lockable (col.3 ll. 1-2) does not 20
necessarily require individual compartments therebehind. Furthermore, there
is no disclosure that the locks 15, 17, 19, 21, and 23 of respective doors 14,
16, 18, 20, and 22 are keyed separately which might indicate that Cooley
considered the issue of security between areas of the housing. The Examiner
has therefore not shown that compartments or dividers, are necessarily 25
present behind the panels. The fact that a certain result or characteristic may
occur or be present in the prior art is not sufficient to establish the inherency
of that result or characteristic.
In the Final Rejection the Examiner acknowledges Cooley fails to
disclose a bill canister for storing bills that is removable through a second 30
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access door. The Examiner then relies on Cassidy to teach a bill canister (20) 5
but fails to address the limitations requiring:
Claim 1: “the bill canister is removable through a second access
door when the second access door is open and is not accessible when
the second access door is closed”
Claim 6: “the bill canister being removable through a second 10
access door…the bill acceptor within a first compartment [which is]
isolated from the bill canister for storing bills when the second access
door is closed”
Claim 9, “[the] bill canister…removable through a second
access door” 15
Claim 10, “a bill canister for accepting bills mounted in a
second compartment”
Each of these limitations at least require a more specific location of
the bill canister than Cooley expressly, implicitly or inherently discloses.
The Examiner has not pointed to any features of Cassidy or any other 20
reference to cure this deficiency.
The Examiner, in the Answer, asserts it would have been obvious to
partition separate compartments behind panels 14, 16, 18, 20 and 22
(Answer Pg. 7) and that in addition, it would have also been obvious to
locate the bill canister near the coin canister behind panel 22. The 25
Examiner’s rejection of claims 1, 6, and 10 rely upon both assertions, while
the rejection of claim 9 relies only upon the later.
With respect to claims 1, 6 and 10, as noted above, separate
compartments are not expressly, implicitly, nor inherently disclosed by
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Cooley. The Final Rejection fails to set forth any clear articulation of the 5
reason(s) why separate compartments would have been obvious to one
having ordinary skill in the art. The Answer asserts that modifying Cooley to
include separate compartments behind the doors would have been obvious
for preventing removal or damage to individual components. The Examiner
fails to point to any factual support for this assertion. Therefore, the 10
Examiner has not met the initial burden of factually supporting a prima facie
conclusion of obviousness with respect to claims 1, 6, and 10.
With respect to claim 9, the Answer asserts that modifying Cooley to
locate the bill canister near the coin canister behind panel 22, thereby
making it removable through a second access door, would have been 15
obvious in order to allow an operator to access all canisters by opening a
single panel (i.e., 22).
With respect to the bill canister, Cooley states “[s]imilarly, a collector
bin (not shown) is provided for the paper money. That bin also is lockable
and can be removed to collect the [money].” (col. 3, ll. 54-56). The term 20
“similarly” does not necessarily imply location of the collector bin in a
manner similar to the coin box 50, but merely the presence of a paper money
bin which, like the coin box 50, is lockable and removable. The Examiner
has not pointed to any evidence in Cooley relating to the location of the bill
canister. The assertion relating to the location of the canister behind panel 22 25
and the capability of the canister to be removed through that panel amounts
to mere speculation on the part of the Examiner. Accordingly, the Examiner
has not met the initial burden of factually supporting a prima facie
conclusion of obviousness with respect to claim 9.
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CONCLUSION OF LAW 5
On the record before us, Appellant has shown that the Examiner has
failed to establish the prima facie obviousness of claims 1-14. We are
therefore constrained to reverse the rejection of claims 1-14 on the ground of
obviousness.
DECISION 10
For the above reasons, the Examiner's rejection of claims 1-14 is
reversed.

REVERSED.
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vsh
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