Ex Parte Garg et alDownload PDFBoard of Patent Appeals and InterferencesSep 6, 201111555038 (B.P.A.I. Sep. 6, 2011) 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. 11/555,038 10/31/2006 Atul Garg 007131.00008 6331 71733 7590 09/07/2011 BANNER & WITCOFF, LTD ATTORNEYS FOR CLIENT NUMBER 007131 10 SOUTH WACKER DR. SUITE 3000 CHICAGO, IL 60606 EXAMINER KANG, IRENE S ART UNIT PAPER NUMBER 3695 MAIL DATE DELIVERY MODE 09/07/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ATUL GARG, CONNIE RIVENBARK, and ETTRE VEE HOWARD ___________ Appeal 2010-011260 Application 11/555,038 Technology Center 3600 ____________ Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and MICHAEL W. KIM, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011260 Application 11/555,038 STATEMENT OF THE CASE Atul Garg et al. (Appellants) seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-12 and 16-31. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE. 1 THE INVENTION This invention is a method, article, and apparatus for verifying that the total monetary amount being requested for a deposit is equal to an inputted amount. Spec. para. [08]. Claim 1, reproduced below, is illustrative of the subject matter on appeal. Claim 1: A method for automated processing of deposit items by a computing device, comprising: [A] receiving a deposit item, the deposit item representing a request to deposit funds of at least one monetary item into a user account; [B] determining, by the computing device, a total monetary amount of the at least one monetary item; [C] receiving by the computing device, an input associated with the request, the input identifying a total amount of funds to deposit; 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Jan. 28, 2010) and Reply Brief (“Reply Br.,” filed Jun. 17, 2010), and the Examiner’s Answer (“Answer,” mailed Apr. 27, 2010). Appeal 2010-011260 Application 11/555,038 3 [D] determining, by a computing device, whether the received input equals the determined total monetary amount of the at least one monetary item; [E] upon determining that the received input does not equal the determined total monetary amount of the at least one monetary item, displaying a request for correction on a display associated with an automated teller machine; and [F] determining, by a computing device, whether to hold the funds of the at least one monetary item from deposit into the user account. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: JONES US 2003/0059098 A1 Mar. 27, 2003 The Examiner took official notice that “it would have been obvious to one of ordinary skill in the art at the time of the invention that the time period for which the computer determines to hold a determined amount of funds would be measured in a specific number of days.” Answer 10. [Hereinafter “Official Notice.”] The following rejections are before us for review: 1. Claims 1-4, 6-12, and 16-31 are rejected under 35 U.S.C. §102(b) as being anticipated by Jones. 2. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones and Official Notice. Appeal 2010-011260 Application 11/555,038 4 ISSUE The issue is whether claims 1-4, 6-12, and 16-31 are anticipated by Jones under 35 U.S.C. 102(b). Specifically, the issue is whether the Examiner erred in finding that Jones described a method that includes steps marked D and E above. The rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Jones and Official Notice also turns on this issue. FINDINGS OF FACT We find that the findings of fact which appear in the Analysis below are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). ANALYSIS The rejection of claims 1-4, 6-12, and 16-31 under §102(b) as being anticipated by Jones. The Examiner and the Appellants dispute whether Jones anticipates the method of claim 1, specifically, the steps marked D and E above. See Answer 10, App. Br. 5-6, and Reply Br. 2-5. We agree with the Appellants. See Reply Br. 2-5. In the rejection, the Examiner cites Figures 3a and 3b, and paragraphs [0057] and [0063] of Jones to describe step D (Answer 4), and, in response to the Appellants’ argument, the Examiner cites paragraphs [0081], [0131], and [0084] of Jones as describing step D (Answer 10). However, none of these cited passages or the remainder of Jones describe step D. While Jones describes a device scanning checks and currency to obtain information (for example, see Jones Appeal 2010-011260 Application 11/555,038 5 [0063]) to match with other information in a database to detect counterfeits (for example, see Jones [0066]), Jones does not describe the step D. Also, while Jones describes that a benefit of the scanning device is that if a customer disputes the amount of the deposit, the bank can obtain the scanned images to verify the amount (Jones [0084]), Jones does not describe that this is done by the computer, and more particularly, that it is done as part of a process of entering a deposit, as is required by claim 1. This leads in turn to the failure of Jones to describe step E – the relevant portions of Jones cited by the Examiner at Jones [0057] and [0063] in the rejection (Answer 4) only display a request for identification and authentication, not correction of the deposit amount. Apparently recognizing this, the Examiner then cites Jones [0059] and [0070-71] in the Response (Answer 11), but these portions merely display suspected fraudulent bills or checks and display a request to accept or reject the deposit item, not a request to correct an input identifying a total amount of funds. In as much as the Examiner may be arguing that the cited passages of Jones “teach” the steps at issue ( Answer 10), a rejection under 35 U.S.C. § 102(b) requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “If it is necessary to reach beyond the boundaries of a single reference to provide missing disclosure of the claimed invention, the proper ground is not § 102 anticipation, but § 103 obviousness.” Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1577 (Fed. Cir. 1991). Therefore, we find that claim 1 is not anticipated by Jones. Appeal 2010-011260 Application 11/555,038 6 Independent claims 27 and 28, while directed to an article and an apparatus instead of a method, include corresponding limitations to the steps at issue, and the Examiner rejected these claims using the same reasoning (see Answer 8). Accordingly, we reverse the rejection of claims 1, 27, and 28, and claims 2-4, 6-12, and 16-31, dependent thereon, under 35 U.S.C. § 102(b) as being anticipated by Jones. The rejection of claim 5 under §103(a) as being unpatentable over Jones and Official Notice. This rejection is directed to a claim dependent on claim 1, whose rejection we have reversed above. For the same reasons, we will not sustain the rejection of claim 5 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious."). Further, we note that the Official Notice does not cure the deficiency discussed above with regard to claim 1. DECISION The decision of the Examiner to reject claims 1-12 and 16-31 is reversed. REVERSED mls Copy with citationCopy as parenthetical citation