10840129 (B.P.A.I. May. 28, 2009)

Ex Parte Heidel

Board of Patent Appeals and InterferencesMay 28, 2009

10840129 (B.P.A.I. May. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RAYMOND HEIDEL ____________ Appeal 2009-001546 Application 10/840,129 Technology Center 3600 ____________ Decided:1 May 28, 2009 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-001546 Application 10/840,129 STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 26-30 which are all the pending claims in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Oral arguments were presented by video on May 21, 2009. SUMMARY OF THE DECISION We AFFIRM. THE INVENTION The Appellant’s claimed invention is directed to a currency or note acceptor-dispenser validator for accepting bills, vouchers, script and/or currency and for distributing currency or a currency equivalent from an electronic gaming machine or alternative type of customer service device (Spec., 4:9-16). Claim 26, reproduced below, is representative of the subject matter of appeal. 26. A customer service device comprising: a host machine for the vending of commercial products, said host machine including a host processor, and a housing; a note acceptor-dispenser validator system for accepting currency notes and issuing credits to the host processor to cause the dispensing of the commercial products; said note acceptor-dispenser validator system being further configured to accept a dispense change instruction from said host processor to cause the processing, and dispensing of notes and coins as change based on the communication with said host processor, wherein said 2 Appeal 2009-001546 Application 10/840,129 acceptor-dispenser validator system is mounted in said housing, said note acceptor-dispenser validator system including; a note validator for receiving notes and sensing data relating to the authenticity, denomination, type and condition of notes received by said note validator, said note validator generating signals corresponding to the sensed data for each received note; a validator processor for receiving and comparing said sensed data signals with stored data to validate said notes; a note box configured to receive and hold notes received by said note validator; a note hopper for receiving and storing up to a selected number of notes of a pre-selected denomination which are received by said note validator; and a transportation unit for directing said notes determined to be authentic to one of said note box and said note hopper and for dispensing notes from said note hopper in response to an instruction from said validator processor. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Graef US 6,315,194 B1 Nov. 13, 2001 Katou US 2004/0182677 A1 Sep. 23, 2004 Ramachandran US 6,941,274 B1 Sep. 6, 2005 The following rejections are before us for review: 1. Claims 26-30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ramachandran in view of Katou. 3 Appeal 2009-001546 Application 10/840,129 2. Claims 26-30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ramachandran in view of Graef. THE ISSUE At issue is whether the Appellant has shown that the Examiner erred in making the aforementioned rejections. With regards to the rejection of claims 26-30 under 35 U.S.C. § 103(a) as unpatentable over Ramachandran in view of Katou this issue turns on whether Ramachandran discloses an ATM machine that can be used in a vending machine and Katou discloses a note hopper. With regards to the rejection of claims 26-30 under 35 U.S.C. § 103(a) as unpatentable over Ramachandran in view of Graef this issue turns on whether Ramachandran discloses an ATM machine that can be used in a vending machine and Graef discloses a note hopper. FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence2: FF1. Ramachandran discloses an ATM machine which recycles currency (Abstract). FF2. Ramachandran discloses that ATM’s can be used to dispense items such as tickers, vouchers or gaming materials (Col. 1:28-30). 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 4 Appeal 2009-001546 Application 10/840,129 Ramachandran also discloses that the ATM’s can be used in vending machines (Col. 2:60-Col. 3:13). FF3. Ramachandran discloses that the ATM machine may be used in a vending machine (Col. 8:27-41). FF4. Ramachandran discloses that the ATM machine includes a note validator 58 to accept bills (Col. 15:41-44). FF5. Ramachandran discloses that the ATM machine can be used to make change (Col. 41:29-32). FF6. Katou discloses an ATM machine [0061] used to perform the deposit or withdrawal of bills (Abstract). FF7. Katou discloses that the device includes a bill discriminating unit (30), a temporary storage box (40), a deposit box (60), and a recycle box (80) for the storage of bills. FF8. Graef discloses an ATM machine (Abstract) with sheet receiving and delivering devices 34, 36, and 38 (Fig. 3, Col. 5:59-62). PRINCIPLES OF LAW “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary 5 Appeal 2009-001546 Application 10/840,129 considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”) In KSR, the Supreme Court emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” id. at 415-16. ANALYSIS Rejection of Claims 26-30 under 35 U.S.C. § 103(a) under Ramachandran in view of Katou The Appellant argues that the rejection of claim 26 under 35 U.S.C. § 103(a) as unpatentable over Ramachandran in view of Katou is improper because the references do not teach or suggest each element of the claim (Br. 18). In particular, the Appellant argues that Ramachandran is not directed to a vending machine (Br. 18-20). The Appellant also argues that Katou fails to teach the limitation for “a note hopper for receiving and storing up to a selected number of notes of a pre-selected denomination which are received by the note validator” (Br. 20-21). In contrast, the Examiner has determined that Ramachandran discloses the use of an ATM machine with a vending device (Ans. 9-12). The Examiner has also determined that Katou discloses a note hopper as claimed because the claim limitations argued for by the Appellant in reference to the note hopper are only directed to an intended use (Ans. 13). The Examiner has further determined that Katou discloses boxes 40, 60, 80, and 81 which store pre-selected denominations of notes regardless (Ans. 13). The Examiner also takes the position that since Katou’s box 40 holds notes 6 Appeal 2009-001546 Application 10/840,129 of all denominations that it includes “a selection of notes of a preselected denomination.” We agree with the Examiner. Ramachandran discloses that the ATM machine may be used in a vending machine (FF3). Ramachandran also discloses that the ATM machine includes a note validator to accept bills (FF4) and that the ATM machine may be used to make change (FF5). Katou discloses that the ATM machine includes a bill discriminating unit (30), a temporary storage box (40), a deposit box (60), and a recycle box (80) for the storage of bills (FF7). In Katou the temporary storage box (40), deposit box (60), and recycle box (80) may all be considered a “note hopper” as required by the claims since each box receives and stores notes or bills. The claim language drawn to a note hopper “for receiving and storing up to a selected number of notes of a preselected denomination” is considered an intended use for the note hopper and not considered a limitation to the claim. Regardless of whether the cited language is a recitation of intended use, the boxes 40, 60, 80 in Katou store bills and are considered to store notes of any pre-selected denomination that is received in them. Accordingly for the reasons given above we affirm the rejection of claim 26 under 35 U.S.C. § 103(a) as unpatentable over Ramachandran in view of Katou since the references do show the disputed elements of the claim. The Appellant’s arguments for claims 27-30 are the same as those presented for claim 26 and the rejection of these claims under 35 U.S.C. § 103(a) as unpatentable over Ramachandran in view of Katou is sustained for these same reasons. 7 Appeal 2009-001546 Application 10/840,129 Rejection of Claims 26-30 under 35 U.S.C. § 103(a) under Ramachandran in view of Graef The Appellant argues that the rejection of claim 26 under 35 U.S.C. § 103(a) as unpatentable over Ramachandran in view of Graef is improper because the references do not teach or suggest each element of the claim (Br. 33). In particular the Appellant argues that Ramachandran is not directed to a vending machine (Br. 33-35). The Appellant also argues that Graef fails to teach the limitation for “a note hopper for receiving and storing up to a selected number of notes of a pre-selected denomination which are received by the note validator” (Br. 35-36). In contrast, the Examiner has determined that the Ramachandran discloses the use of an ATM machine with a vending device (Ans. 16). The Examiner has also determined that Graef discloses a note hopper as claimed in note boxes 30, 32, 34, 36, 38, and 40 (Ans. 17). We agree with the Examiner. As discussed above Ramachandran discloses that the ATM machine may be used in a vending machine (FF3). Ramachandran also discloses that the ATM machine includes a note validator to accept bills (FF4) and that the ATM machine may be used to make change (FF5). Graef discloses an ATM machine (Abstract) with sheet receiving and delivering devices 34, 36, and 38 (Fig. 3, Col. 5:59-62). In Graef the sheet receiving and delivering devices 34, 36, and 38 may each be considered a “note hopper” as required by the claims since each box receives and stores notes or bills. The claim language of a note hopper “for receiving and storing up to a selected number of notes of a preselected denomination” is considered an intended use for the note hopper and not considered a limitation to the claim. Regardless of whether the cited language is a 8 Appeal 2009-001546 Application 10/840,129 recitation of intended use, the sheet receiving and delivering devices 34, 36, and 38 of Graef store bills and is considered capable of storing notes of any pre-selected denomination that is received in them. Accordingly for the reasons given above we affirm the rejection of claim 26 under 35 U.S.C. § 103(a) as unpatentable over Ramachandran in view of Graef since the references do show the disputed elements of the claim. The Appellant’s arguments for claims 27-30 are the same as those presented for claim 26 and the rejection of these claims under 35 U.S.C. § 103(a) as unpatentable over Ramachandran in view of Graef is sustained for these same reasons. CONCLUSIONS OF LAW We conclude that Appellant has failed to show that the Examiner erred in rejecting claims 26-30 under 35 U.S.C. § 103(a) as unpatentable over Ramachandran in view of Katou. We conclude that Appellant has failed to show that the Examiner erred in rejecting claims 26-30 under 35 U.S.C. § 103(a) as unpatentable over Ramachandran in view of Graef. DECISON The Examiner’s rejection of claims 26-30 is sustained. 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) (2007). 9 Appeal 2009-001546 Application 10/840,129 AFFIRMED JRG David B. Abel DLA Piper Rudnick Gray Cary US LLP Fourth Floor 1999 Avenue of the Stars Los Angeles, CA 90067 10