Ex Parte Jones

Patent Trial and Appeal Board

Feb 27, 2017

13801085 (P.T.A.B. Feb. 27, 2017)

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.
13/801,085 03/13/2013 John E. Jones 6212.126306C2 1012
41230 7590 03/01/2017
CUMMINS-ALLISON CORP.
C/O GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
EXAMINER
HESS, DANIEL A
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
03/01/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN E. JONES
Appeal 2014-007810
Application 13/801,0851
Technology Center 2800
Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter the “Appellant”) appeals under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 62—
96.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant states that the real party in interest is “Cummins-Allison
Corporation” (Appeal Brief filed April 2, 2014, hereinafter “Appeal Br.,” 2).
2 Appeal Br. 7—19; Reply Brief filed July 1, 2014, hereinafter “Reply Br.,”
2—7; Final Office Action mailed November 14, 2013, hereinafter “Final
Act.,” 2—18; Examiner’s Answer mailed June 18, 2014, hereinafter “Ans.,”
2-21.
Appeal 2014-007810
Application 13/801,085
BACKGROUND
The subject matter on appeal relates to a deposit processing and
currency dispensing device, as represented by exemplary claim 62, which is
reproduced from the Appeal Brief (Claims App’x Al—A2; emphasis added)
as follows:
62. An employee-assisted customer-operated deposit
processing and currency dispensing device, comprising:
a housing;
a user interface configured to receive user inputs
associated with financial transactions, the financial transactions
including at least deposit transactions and withdrawal
transactions;
at least one display device configured to display
information associated with a financial transaction;
at least one input receptacle each configured to receive
from a customer both currency bills and financial institution
documents to be processed in conjunction with a deposit
transaction;
a plurality of document-containing receptacles;
at least one output receptacle configured to receive
currency bills to be dispensed to the customer in conjunction
with a withdrawal transaction, the at least one output receptacle
being distinct from the at least one input receptacle;
a transport mechanism configured to transport both
currency bills and financial institution documents, one at a time,
from the at least one input receptacle, past at least one sensor,
and to one or more of the document-containing receptacles, the
transport mechanism further configured to transport currency
bills from one or more of the document-containing receptacles
to the at least one output receptacle;
one or more of the at least one sensor being configured to
generate image data associated with at least each financial
institution document transported past the sensor, the image data
associated with a document being usable to recreate an image of
the document, one or more of the at least one sensor being
configured to generate a characteristic information output signal
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Application 13/801,085
associated with at least each currency bill transported past the
sensor; and
a processor coupled to the at least one sensor and
configured to receive therefrom the image data and the
characteristic information output signal, the processor being
configured to determine from at least the characteristic
information output signal a denomination of an associated
currency bill, the processor also being coupled to the user
interface and the transport mechanism, the processor being
further configured to control the transport mechanism to
selectively transport currency bills from the at least one input
receptacle to one or more of the document-containing
receptacles in conjunction with a deposit transaction or from
one or more of the document-containing receptacles to the at
least one output receptacle in conjunction with a withdrawal
transaction, or both, based on the user inputs received via the
user interface.
REJECTIONS ON APPEAL
The Examiner rejected the claims under pre-AIA 35 U.S.C. § 103(a)
as follows:
I. Claims 62—73, 75—77, and 81 as unpatentable over
Gustin et al.3 (hereinafter “Gustin”), Clark et al.4
(hereinafter “Clark”), and Slater et al.5 (hereinafter
“Slater”);
II. Claim 74 as unpatentable over Gustin, Clark, Slater, and
Laskowski ’271;6
III. Claims 78—80 as unpatentable over Gustin, Clark, Slater,
3 US 6,012,048, issued January 4, 2000.
4 US 3,876,864, issued April 8, 1975.
5 US 7,792,753 Bl, issued September 7, 2010.
6 US 2003/0085271 Al, published May 8, 2003.
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and Laskowski ’983;7
IV. Claims 82—87 and 91—96 as unpatentable over Laskowski
’983, Force et al.8 (hereinafter “Force”), Shane et al.9
(hereinafter “Shane”), and Slater; and
V. Claims 88—90 as unpatentable over Laskowski ’983,
Force, Shane, and Clark.
(Final Act. 2—18; Ans. 2—21.)
DISCUSSION
Other than additional arguments for claims 68—70 and claims 88—90
under two sub-headings, respectively, in Section C of their Appeal Brief, the
Appellant does not argue Rejections I—V individually or provide any
argument in support of the separate patentability of any particular claim in
accordance with the requirements of 37 C.F.R. § 41.37(c)(l)(iv) (Appeal Br.
10—19).10 Therefore, we focus primarily on claim 62, which we select as
representative pursuant to the rule, and address the Appellant’s additional
arguments directed to claims 68—70 and claims 88—90 as appropriate.* 11 As
7 US 6,573,983 Bl, issued June 3, 2003.
8 US 6,109,522, issued August 29, 2000.
9 US 7,360,682 B2, issued April 22, 2008.
10 Statements merely pointing out what a claim recites (e.g., Appeal Br. 11—
12) or statements amounting to mere assertions that the prior art references
do not disclose or suggest a particular claim limitation (e.g., id. at 16—17) are
not arguments within the meaning of 37 C.F.R. 41.37(c)(iv) and do not
require our separate consideration. Cf. In re Lovin, 652 F.3d 1349, 1356—57
(Fed. Cir. 2011).
11 We decline to consider any new argument in the Reply Brief not
previously made in the opening Appeal Brief unless good cause has been
shown. 37 C.F.R. § 41.41(b)(2). For example, the Appellant argues for the
first time on page 4 of the Reply Brief that “the transport mechanism
illustrated in FIGS. 2A and 2B of Gustin does not transport both bills and
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provided by the above-cited rule, all other claims stand or fall with
representative claim 62.
A. Claim 62
The Examiner found that Gustin describes every limitation recited in
claim 62 except for the “employee-assisted” limitation in the preamble and
the limitations relating to the device being able to receive and process both
currency bills and financial institution documents (e.g., checks) as deposits
through the same entry port (Ans. 2—5; see also Final Act. 2—7). Regarding
the “employee-assisted” limitation, the Examiner stated that “it might be
argued that this does not bear patentable weight” because it is recited only in
the preamble and that “it would have been obvious to one of ordinary skill in
the art... to employ employee assistance in the manner shown by Clark . . .
to assist customers who have difficulty using the ATM [automated teller
machine]” (Ans. 5; see also Final Act. 7). Regarding the remaining
differences, the Examiner stated that claim 62 does not “appear to require
that the deposit storage areas and the dispensing storage areas are the same”
but that, even if it did, a person having ordinary skill in the art would have
considered the difference to have been obvious because “bill recycling is old
and conventional in the art, with the benefit that the ATM can be partially
replenished without the efforts of a human servicer” (Ans. 5; see also Final
Act. 6—7) (referring to Nao et al. (hereinafter “Nao”), US 4,625,870, iss.
documents, one at a time, from the same input receptacle to one or more
document-containing receptacles, and does not transport currency bills
from the same document-containing receptacle(s) into which the
bills/documents were deposited to at least one output receptacle” (emphasis
added). In any event, we note that the actual language of claim 62 does not
support this new argument.
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December 2, 1986). Furthermore, relying on Slater’s teachings, the
Examiner concluded that it would have been obvious to one of ordinary skill
in the art to process both currency bills and checks using the same entry
point and scanning/validation hardware in order to reduce cost and size
(Ans. 5—6; see also Final Act. 7—8)12 and that other modifications to the
handling, processing, and transporting of the deposited item to accommodate
the single point entry would have been obvious to a person having ordinary
skill in the art as “basic and essential to a check and cash depositing ATM”
(Ans. 19; see also Final Act. 2—3). The Examiner explained the obviousness
analysis as follows {id. at 17):
While the Examiner did not apply a single reference which
contains all of the limitations, each of the claimed elements is
either directly shown or is implicit in one or more of the
references. Within the art of ATMs, components from different
references are usually easily combinable. That is to say, one can
usually add elements from the banking machine of a secondary
reference into the banking machine of a primary reference
without harming the function of other existing elements
because they function discretely. (This contrasts with for
example a circuit diagram or a molecule where the changing
of one element may dramatically alter the behavior of the
whole).
The Appellant does not dispute (Appeal Br. 12) the Examiner’s
finding (Ans. 5) that Clark teaches (e.g., col. 4,11. 17—20) an employee-
assisted ATM machine. The Appellant also does not dispute (Appeal Br.
13) the Examiner’s finding (Ans. 5—6) that Slater teaches (col. 4,11. 47—52)
an ATM machine with a single entry point check scanner/validator as an
12 The Examiner also referred to Fukatsu (US 4,743,743, iss. May 10, 1988)
as additional evidence but considered it as being cumulative to Slater (Ans.
18; Final Act. 2).
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alternative to two separate cash and check entry points. Nor does the
Appellant contest the Examiner’s Official Notice that “bill recycling is old
and conventional in the art, with the benefit that the ATM can be partially
replenished without the efforts of a human servicer” (Ans. 5).
Rather, the Appellant argues that “the record is absent [of] evidentiary
support for the proposition that the combinations of references teach a
singular input receptacle that is ‘configured to receive from a customer both
currency bills and financial institution documents to be processed in
conjunction with a deposit transaction, ’ as required by independent claims
62, 81 and 82” (Appeal Br. 15). According to the Appellant (id. at 16):
(1) the Examiner failed to articulate a reason or motivation to modify
the combination of Gustin and Clark in view of Slater;
(2) “there is no indication in the Final Office Action of how exactly
one would in fact modify Gustin’s automated banking system to include the
teachings of. . . Slater”; and
(3) the proposed modification “would require a complete redesign of
the apparatus shown in FIGS. 1-7 of Gustin.”
The Appellant’s arguments fail to identify a reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
The Supreme Court of the United States has explained that “[t]he
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content of issued patents.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Consistent with
this guidance, our reviewing court has stated that the analysis “may include
recourse to logic, judgment, and common sense available to the person of
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ordinary skill that do not necessarily require explication in any reference or
expert opinion.” PerfectWeb Techs., Inc. v. InfoUSA, Inc. 587 F.3d 1324,
1329 (Fed. Cir. 2009).
We apply these well-settled principles to the current facts. As the
Appellant acknowledges (Appeal Br. 13), Slater teaches that it was known to
provide a single entry point for depositing both cash and checks into an
ATM machine (col. 4,11. 38—52). Slater teaches further that “[s]uch a device
would combine conventional image scanning, magnetic and optical character
recognition, and bank note validation hardware and software into a single
device” (col. 4,11. 52—55). Slater teaches that after the check is accepted, it
“is then transported to a storage bin in the automatic teller machine” and that
“[similarly, [the machine] is also capable of accepting cash” (col. 10,11. 24—
27). Slater indicates that “this type of technology is readily available such as
with change machines currently in use which can be improved in a routine
and conventional manner” (col. 10,11. 29—32).
A person having ordinary skill in the art would have drawn a
reasonable inference from these disclosures that: (1) combining two
separate entry points for cash and checks into a single entry point would also
require the consolidation of other ATM components, such as receiving bins
(i.e., “input receptacles” as recited in claim 62) and associated transport
means; and (2) the required modifications would have been within the
ordinary skill. Cf. KSR, 550 U.S. at 424 (“In automotive design, as in many
other fields, the interaction of multiple components means that changing one
component often requires the others to be modified as well.”).
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Taking Slater’s teachings and the level of ordinary skill (as reflected
in the prior art references13) into account, we conclude that a person having
ordinary skill in the art would have been prompted to modify Gustin’s ATM
machine with two separate entry points for cash and checks with a single
entry point system, as suggested by Slater, in order to consolidate or reduce
redundant multiple mechanisms (e.g., scanner/optical readers, transport
mechanisms, and input receptacles). A person skilled in the art would have
appreciated from common sense and logic that such a consolidation would
provide advantages in terms of reduced cost and machine footprint and,
therefore, would have been motivated to modify Gustin’s ATM machine in
the manner claimed by the Appellant.
The Appellant argues that the Examiner has “glossed over” the
“processor” limitations. But given that ATM machines typically include a
processor, as found by the Examiner (Final Act. 2), it would have been well
within the level of the ordinary skill in the art to reconfigure and/or
reprogram Gustin’s processor to accommodate the single point entry (i.e.,
“one input receptacle” for “both currency bills and financial institute
documents” as required by claim 62). KSR, 550 U.S. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
For these reasons, we uphold the Examiner’s rejection of claim 62.
B. Claims 68—70
Claim 69 recites (Claims App’x A3):
The device of claim 62, wherein the processor, using
information received from the at least one sensor, is further
13 In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (approving the
Board’s approach that the level of ordinary skill in the art may be
determined from the prior art references).
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configured to verily that a total value of currency bills
transported from the document-containing receptacles to the at
least one output receptacle equals a total withdrawal value
specified by the customer via the user interface.
The Appellant argues (Appeal Br. 18):
While Gustin may disclose dispensing a user-selected
amount of cash to a customer, and may disclose sensing devices
for analyzing checks and currency bills, the Examiner has not
shown where Gustin teaches a sensor for generating image data
usable to recreate an image of each financial institution
document, a sensor for generating characteristic information
associated with each currency bill, and a processor which uses
this sensor-generated data to verify that the total value of
currency bills transported to the output receptacle is equal to a
total withdrawal value specified by the customer.
The Appellant’s argument lacks merit. The Examiner specifically
found that Gustin teaches an imaging scanner that captures the check’s
image (Ans. 3—4, 19) (citing Gustin col. 12,11. 27—29 (“The check feeds
directly into and stops at an imaging station 55 where the check is scanned
or images of the front and the back sides of the check are captured.”)). That
captured image data would be “usable to recreate an image of the
document” (emphasis added) as recited in claim 62. In addition, the
Examiner specifically found that Gustin’s acceptor module 62 (Fig. 24)
counts the deposited bills (Ans. 3) (citing Gustin col. 15,11. 44-46).
Furthermore, the Examiner reasoned that “[t]he cash dispenser will certainly
have sensors to confirm that the amount dispensed is equal to the intended
amount (amount requested)” (Ans. 7). We find that reasoning to be more
than adequate to rebut the Appellant’s spurious argument that the prior art
would not have contemplated dispensing cash in the amount requested by
the user. See, e.g., Gustin’s column 16,11. 19-24 (“The user then enters an
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amount in a step 530 to be received in cash ... in a step 534 the cash
dispenser dispenses cash in the cash amount”).
For these reasons, we sustain the rejection of claims 68—70.
C. Claims 88—90
The Appellant argues that the rejection of claims 88—90 is “facially
erroneous for failing to cite and apply Slater” because Slater was applied
against independent claim 82 from which claims 88—90 depend (Appeal Br.
18). Although the Appellant is correct that the Examiner erred by not
including Slater in the statement of the rejection (Ans. 16), that error could
not have been prejudicial to the Appellant as the Appellant already
understood that Slater was applied against independent claim 82 and
responded to the rejection of claim 82 (Appeal Br. 10—17). Therefore, the
Examiner’s error was harmless.
SUMMARY
Rejections I—IV and Rejection V (as restated to include Slater as part
of the evidence) are affirmed. The Examiner’s final decision to reject claims
62—96 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).
AFFIRMED
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