Ex Parte Garg et al

Board of Patent Appeals and Interferences

Sep 6, 2011

11555038 (B.P.A.I. Sep. 6, 2011)

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