Ex Parte Kolls

Patent Trials and Appeals Board

Feb 12, 2019

14071021 - (D) (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/071,021 11/04/2013
23122 7590
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
02/14/2019
FIRST NAMED INVENTOR
H. Brock Kolls
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
USE-679US1 3934
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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
following e-mail address(es):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte H. BROCK KOLLS 1
Appeal 2017-011174
Application 14/071,021
Technology Center 3600
Before ST. JOHN COURTENAY III, DENISE POTHIER, and
SCOTT BAIN, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 3-11, 13, 14, 16, and 17. Claims 2, 12, and 15 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is USA Technologies, Inc.
See Appeal Br. 2.
Appeal 2017-011174
Application 14/071,021
Invention
Embodiments of Appellant's claimed invention relate to a system and
method:
which effectuate[] an interactive interface and protocol for
interfacing a payment module (system 500) to and data
communicating with a computing platform ( computing
platform 802), wherein the computing platform can elect to
control by way of the interactive interface and protocol a
vending transaction cycle or alternatively elect to monitor the
payment module by way of the interactive interface and
protocol allowing the payment module to control a vending
transaction cycle.
Spec. 2.
Representative Claim
1. A payment module for effectuating a cashless vend,
said payment module comprising:
a mounting structure configured to affix the payment
module to a vending machine;
a microcontroller coupled to the mounting structure;
a memory device in communication with the
microcontroller, the microcontroller configured to store data
representing a current inventory of the vending machine in the
memory device;
a vending equipment interface configured to provide a
wired connection between the microcontroller and a bus of the
vending machine, the bus in communication with a vending
machine controller of the vending machine; and
an interactive interface configured to provide a wireless
connection between the microcontroller and a computer platform
located remotely from the vending machine,
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wherein said payment module is configured to receive data
from the vending machine controller via the bus and the vending
equipment interface and receive data from the computing
platform via the interactive interface for the purpose of
monitoring or controlling the cashless vend,
[L 1] wherein the microcontroller is configured to update
the data representing the current inventory of the vending
machine in the memory device based on the data received from
the vending machine controller via the bus,
[L2] wherein the microcontroller is further configured to
transmit the data representing the current inventory of the
vending machine to the computing platform via the interactive
interface,
[L3] wherein said payment module is configured to
receive data from the vending machine controller regarding one
or more vending errors, and
[L4] wherein the microcontroller is further configured to
transmit the data regarding one or more vending errors to the
computing platform via the interactive interface.
(Emphasis added regarding contested limitations Ll-L4).
Rejections 2
A. Claims 1 and 3-11 are rejected under pre-AIA 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description
requirement.
2 The headings of both rejections A and Bin the Final Action erroneously
include rejected claim 15, which was cancelled upon entry of the After-final
Amendment, filed July 25, 2016, that has been entered on appeal. See Final
Act. 5--6; Advisory Act., mailed Aug. 11, 2016. The entered After-final
Amendment amended claim 1 to incorporate the features of cancelled
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Application 14/071,021
B. Claims 1, 3-11, 13, 14, 16, and 17 are rejected under pre-AIA 35
U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Nelson (US 6,397,126 B 1; issued May 28, 2002) in
view of Tedesco et al. (US 5,988,346; issued Nov. 23, 1999)
("Tedesco").
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We have reviewed Appellant's arguments in the Briefs, the
Examiner's rejections, and the Examiner's responses to Appellant's
arguments. Appellant does not proffer sufficient argument or evidence to
persuade us of error regarding the Examiner's factual findings for both
rejections A and B, and the Examiner's ultimate legal conclusion of
obviousness for rejection B. See Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential). For at least the reasons discussed below, we
agree with and adopt the Examiner's findings and legal conclusions, as set
forth in the Final Action and Answer. In our analysis below, we highlight
and address specific findings and arguments for emphasis.
GROUPING OF CLAIMS
Based upon Appellant's arguments (App. Br. 5-10), and our
discretion under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of the
each rejection A and B on the basis of representative claim 1, respectively.
claim 15. Appropriate correction has been made herein regarding cancelled
claim 15. We additionally observe that the heading and the detailed
statement of rejection A also omit claims 13, 14, 16, and 17 from inclusion
in the rejection. Id.
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Rejection A under pre-AJA § 112, first paragraph (written description)
The Examiner finds the last four "wherein" clause limitations (L 1-L4)
recited in sole independent claim 1 are not supported by the originally-filed
Specification, including the drawings. Final Act. 5---6; Ans. 2--4.
Regarding claims 1 and 3-11, as rejected by the Examiner for failing
to comply with the written description requirement, Appellant contends:
"Support for the claimed features, however, need not be provided in
identical language in the specification, or be described all in a single section
of the specification." (App. Br. 5 (citing the Manual of Patent Examining
Procedure (MPEP) § 2163 (I)).
Appellant proffers that sufficient written description support to
demonstrate possession of the claimed invention is found at the following
pages of the Specification:
Looking at the application itself, the entirety of the
specification sets forth various features and functions of a
payment module. In one portion, the specification describes "a
payment module (system 500)" which is capable of post
transaction processing, including "record[ing] inventory
dispensed, and payment detail in transaction record .... " See
page 2, line 3; page 1 7, line 3 3 to page 18, line 1. The
specification states that the system 500 may include a
microcontroller 502 which, in conjunction with a memory 512,
can keep a record of each transaction including "a detailed
inventory utilization record showing the date and time the
products were vended." See page 26, lines 25-28. This
transaction record may be embodied in an MDB
TRANSACTION STRING, which includes inventory
information including, e.g., a COLUMN field which tracks the
inventory in each column of the vending machine, as well as an
INVENTORY TOTAL field. See page 40, lines 7-30; pages
56-57. In addition to this inventory data, system 500 also
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maintains error information, including an ERROR RECORD, in
the MDB TRANSACTION STIRNG. See page 56.
System 500 is not limited to recording and tracking
inventory in the vending machine. The specification also
explains, in the same sections, that the system can "data
communicate transaction information upon request to external
communication platform." See page 17, line 33 to page 18, line
1. In particular, the specification explains that "any
time the MDB TRANSACTION STRING or card reader buffer
change the MDB TRANSACTION STRING and or card reader
buffer will be data communicated from the system 500 to the
computing platform 802." See page 42, lines 6-14. Thus, the
same inventory and error information tracked with the MDB
TRANSACTION STRING can be data communicated to the
computing platform.
While the above embodiment alone provides sufficient
support for the claimed features, the specification includes
additional embodiments demonstrating the same
features. The specification describes that system 500 may
initiate a DEX CAPTURE mode, in which information
regarding "inventory, price settings, vend information, vending
equipment service status including errors , failures, and alarms,
and other vending equipment related information [is] passed
between the system 500 and the VMC." See page 143, lines 10-
19. The DEX data captured during the DEX CAPTURE mode
may also be dumped to the computing platform. See page 144,
lines 1-12.
App. Br. 5---6.
Principles of Law - Written Description
Our reviewing court guides the written description "must clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed." Ariad Pharm., Inc. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane) (citation and quotations omitted).
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The test is whether the disclosure "conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Id. "[ A ]ctual 'possession' or reduction to practice outside of the
specification is not enough. Rather, . . . it is the specification itself that
must demonstrate possession." Id. at 1352; see also PowerOasis, Inc. v. T-
Mobile USA, Inc., 522 F.3d 1299, 1306--07 (Fed. Cir. 2008) (explaining that
§ 112, ,r 1 "requires that the written description actually or inherently
disclose the claim element"). "[I]t is not a question of whether one skilled in
the art might be able to construct the patentee's device from the teachings of
the disclosure ... Rather, it is a question whether the application
necessarily discloses that particular device . . . A description which renders
obvious the invention for which an earlier filing date is sought is not
sufficient." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963))
( emphasis added).
We apply this guidance from our reviewing court here.
In reviewing the record, we observe that the originally-filed version of
the Specification was filed in two parts, with both parts filed concurrently on
November 4, 2013: A first part of the Specification having 206 pages, and a
second part of Specification consisting of 42 pages of amendments to the
first part.
At the outset, we note that both the Appeal Brief and Reply Brief
reference particular features at page numbers which correspond to pages of
the Substitute Specification ( clean version) that was filed in amended form
on three dates: January 16, 2014, January 29, 2014, and May 14, 2015.
However, in reviewing the record, we observe that the page numbers of the
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Application 14/071,021
Substitute Specification do not correspond to the same page numbers of the
originally-filed Specification.
We note the Examiner found the subject claim 1 limitations (Ll-L4)
"do not appear to be supported by the original disclosure and therefore are
deemed new matter." Final Act. 6. 3
To determine possession of the claimed invention at the time the
application was filed (Nov. 4, 2013), we confine our inquiry solely to
Appellant's originally-filed Specification. Appellant has the burden on
appeal to the Board to demonstrate error in the Examiner's position. See In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). Appellant has made
determining whether Appellant has met this burden difficult by referring to
pages of a Substitute Specification.
Even assuming arguendo that Appellant's proffered features in the
Substitute Specification correspond to features found on different pages in
the originally-filed Specification, we find Appellant has not fully explained
or shown how the COLUMN field (which tracks the inventory in each
vending machine column) is used to track "data representing the current
inventory of the vending machine" as recited in claim 1. ( emphasis added).
See Appeal Br. 5---6 (discussing the COLUMN field). Nor do we find
Appellant has sufficiently shown that the "MDB TRANSACTION
STRING" that "can be data communicated to the computing platform" is
data from the vending machine that is received by the payment module
3 See 35 U.S.C. § 132(a), which provides that "[n]o amendment shall
introduce new matter into the disclosure of the invention." See also MPEP
§2163.06: "Relationship of Written Description Requirement to New
Matter."
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"from the vending machine controller regarding one or more errors" Claim
1. See App. Br. 6.
Also, as cited above, a description which merely "renders obvious the
invention for which an earlier filing date is sought is not sufficient."
Lockwood, 107 F.3d at 1572. Therefore, on this record, and based upon a
preponderance of the evidence, Appellant has not persuaded us that the
Examiner erred in rejecting claims 1 and 3-11 under pre-AIA 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Accordingly, we sustain the Examiner's rejection A under 35 U.S.C.
§ 112, first paragraph, of representative independent claim 1, and associated
dependent claims 3-11 (not separately argued), that fall with claim 1. See
supra, "GROUPING OF CLAIMS."
Rejection of B Representative Claim 1 under 35 US.C. § 103(a)
Regarding rejection B, Appellant contests the Examiner's findings
regarding the following "wherein" clause limitations (L 1-L4 ), as recited in
independent claim 1 :
[L 1] wherein the microcontroller is configured to update
the data representing the current inventory of the vending
machine in the memory device based on the data received from
the vending machine controller via the bus,
[L2] wherein the microcontroller is further configured to
transmit the data representing the current inventory of the
vending machine to the computing platform via the interactive
interface,
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Application 14/071,021
[L3] wherein said payment module is configured to
receive data from the vending machine controller regarding one
or more vending errors, and
[L4] wherein the microcontroller is further configured to
transmit the data regarding one or more vending errors to the
computing plaiform via the interactive interface.
Claim 1 (emphasis added). See App. Br. 7-10.
Regarding the Examiner's findings pertaining to contested limitations
Ll-L4, Appellant contends:
Nelson discloses an automated payment system 100
which may communicate with a vending machine 170 during a
vending transaction. Nelson discloses that vending machine 170
may include an inventory sensor 530. Inventory sensor 530
utilizes a transmitting device 255 that sends a signal when
inventory falls below a predetermined number. See Nelson at
column 8, lines 24-30.
Preliminarily, Nelson does not disclose, teach, or suggest
that inventory sensor 530 is part of automated payment system
100. To the contrary, Nelson shows inventory sensor 530 as
being a component of the vending machine separated from
automated payment system 100. See, for example, FIG. 5 of
Nelson. Thus, the Examiner errs by attributing any of the
functions of inventory sensor 530 to a payment module.
App. Br. 8 ( emphasis added).
In response to Appellant's initial structural argument that Nelson's
inventory sensor 530 is a component of the vending machine, and thus is not
part of automated payment system 100 (see Nelson's Figure 5, element 530,
and Figure 4, "automated payment system 100"), we emphasize that Nelson
expressly contemplates an alternative separate structural embodiment: "It
can be recognized that the automated payment system 100 may be mounted
in conjunction with or external to the automated fuel dispenser 210 and
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control one or multiple fuel dispensers 212." Col. 6, 11. 63-66 (emphasis
added). Given this evidence (id.), we find Appellant's argued structural
distinction unavailing.
Contested Limitations LI and L2 of Claim 1
Appellant further contends: "Even were the functions of inventory
sensor 530 attributable to a payment module, however, these functions still
would not meet the limitations of claim 1." App. Br. 8.
In support, Appellant avers:
With respect to the inventory data, Nelson fails to disclose,
teach, or suggest a payment module that updates a current
inventory of the vending machine, and sends that current
inventory data to a remote computing platform. To the contrary,
inventory sensor 530 of Nelson merely provides a low inventory
warning. With the low inventory warning of Nelson, it would
be impossible to determine at the remote computing platform
whether the vending machine inventory is full, or will soon need
to be restocked. Merely sending a signal when inventory is low,
as taught by Nelson, does not provide the same functionality · as
sending data representing the current inventory of the vending
machine, as required by claim 1.
App. Br. 8 ( emphasis added).
Claim Construction- Claim 1, Limitations LI and L2
Given that we have found the claim term "current inventory" has
insufficient written description support (see our discussion of Rejection A
above), a question arises as to whether this claim term is entitled to any
patentable weight in our consideration of Rejection B under§ 103(a).
Assuming arguendo that our reviewing court would accord patentable
weight to the temporal claim term, we conclude a broad but reasonable
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interpretation of the claim term "current inventory" at least encompasses an
inventory count made at a particular time, i.e., a current time. 4
Turning to the evidence relied upon by the Examiner, we note Nelson
describes in pertinent part: "an inventory sensor 530 may be included in the
newspaper vending machine to sense either a low inventory or depleted
inventory of newspapers 310. The inventory sensor can interface with a
transmitting device 255 which can transmit a signal to a receiver when the
inventory reaches a predetermined count." Nelson, col. 8, 11. 24--29.
( emphasis added).
Given this evidence (id.), we find the particular time when the
inventory reaches the "predetermined count" in Nelson is the current
inventory count at the time the low or depleted inventory signal is
transmitted to the receiver. Id. Therefore, on this record, we are not
persuaded the Examiner erred in concluding that contested "wherein" clause
limitations L 1 and L2 are obvious over the cited combination of prior art.
Moreover, the Examiner cumulatively finds Tedesco teaches "a
method for managing vending machines including tracking inventory in
memory and updating inventory data by the CPU to reflect purchases ( see at
least column 9, lines 15-61, fig 11)." Final Act. 7. (Emphasis added).
4 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); see, e.g., Spec. 206, 11. 14--18: "While
this invention has been described with reference to specific embodiments,
it is not necessarily limited thereto. Accordingly, the appended claims
should be construed to encompass not only those forms and embodiments of
the invention specifically described above, but to such other forms and
embodiments, as may be devised by those skilled in the art without departing
from its true spirit and scope.") (emphasis added).
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Tedesco expressly describes, in pertinent part:
If vending machine 100 does not hold sufficient inventory to
complete the requested nonsubscription purchase, CPU 126
causes display 126 to output a message indicating "insufficient
inventory." (step 1120) In the preferred embodiment, the
customer would then be prompted for an alternate product
selection.
At step 1122, CPU 126 updates the inventory data
associated with the requested product infield 614 of inventory
table 600 to reflect the purchase and stores the updated data
in storage device 134. At step 1124, the product is dispensed
via dispenser 122, and the process is terminated.
Tedesco, col. 9, 11. 50-61 (emphasis added).
We emphasize that the Examiner's ultimate legal conclusion of
obviousness is based upon the combined teachings and suggestions of the
cited references.
Contested Limitations L3 and L4 of Claim 1
The Examiner finds the contested vending error information would
have been taught or suggested by Nelson, at column 8, lines 24--30, with
respect to now-cancelled dependent claim 15, that was added by the after-
final amendment ( entered on appeal) to narrow independent claim 1.
Therefore, the Examiner's findings for claim 15 are now applicable to
amended independent claim 1. Specifically, the Examiner finds:
As per claim 15, Nelson teaches wherein said payment module
is configured to receive data from the vending machine
controller regarding one or more vending errors, and wherein
the microcontroller is further configured to transmit the data
regarding one or more vending errors to the computing platform
via the interactive interface (see column 8, lines 24-30).
Final Act. 9 ( emphasis added).
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Appellant contests the Examiner's findings regarding "wherein"
clause limitations L3 and L4:
With respect to errors, Nelson fails to disclose, teach, or
suggest sending any vending error data to a remote computing
platform. Without providing error information, it may be
impossible to determine whether the low inventory signal of
Nelson is accurate, or is instead the result of one or more
vending errors. Thus, Nelson is different from claim 1, which
requires the transmission of both current inventory information
and error data to the remote computing platform.
App. Br.8-9 (emphasis added).
In response, the Examiner further explains the basis for the rejection,
and finds that Nelson's inventory sensor:
interfaces with a transmitting device which can transmit a
signal to a receiver when the inventory reaches a predetermined
count. This signal notifies a party that the vending machine
requires servicing (see at least column 8, lines 24-34). Since
the Appellant's disclosure fails to provide adequate support for
this claimed limitation ( see 112 1st rejection) and does [not]
define or limit what a vending error is, one of ordinary skill in
the art would understand that a signal sent from a vending
machine that notifies a party of a need of service based on low
or depleted inventory would be interpreted as a vending error
message. Nelson therefore teaches the claimed limitation.
Ans. 6.
Turning to the evidence cited by the Examiner, Nelson describes, in
pertinent part: "FIG. 6 is a flow chart diagram which illustrates one
method in which a transmitter can notify a party that a particular newspaper
vending machine 300 requires servicing." Nelson, col. 8, 11. 31-34; Fig. 6
( emphasis added).
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Claim Construction- Claim 1, Limitations L3 and L4
Given that we have found the claim 1 term "one or more vending
errors" has insufficient written description support ( see our discussion of
Rejection A above), a question arises as to whether this claim term is
entitled to any patentable weight in our consideration of Rejection B under
§ 103(a). (emphasis added).
Assuming arguendo that our reviewing court would accord patentable
weight to this claim term, we conclude a broad but reasonable interpretation
of the claim term "vending error" at least encompasses a particular
newspaper vending machine that requires servicing for at least some of the
reasons taught by Nelson, at column 8 and Figure 6. See supra, n.4.
Our reviewing court provides guidance applicable here: "'the question
under 35 USC 103 is not merely what the references expressly teach but
what they would have suggested to one of ordinary skill in the art at the time
the invention was made."' Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750
(CCPA 1976)). (Emphasis added); see also MPEP § 2123.
We again emphasize that the Examiner's ultimate legal conclusion of
obviousness is based upon the combined teachings and suggestions of the
cited references. Therefore, given the strength of the evidence cited in
support of Rejection B, as discussed above, we are not persuaded the
Examiner erred. On this record, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness for representative independent claim 1. Claims
3-11, 13, 14, 16, and 17 (not argued separately) fall with claim 1. See
supra, "GROUPING OF CLAIMS."
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Accordingly, we sustain the Examiner's rejection B under pre-AIA 35
U.S.C. § 103(a) of claims 1, 3-11, 13, 14, 16, and 17.
CONCLUSIONS
The Examiner did not err in rejecting claims 1 and 3-11 under
pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
The Examiner did not err in rejecting claims 1, 3-11, 13, 14, 16, and
17 under pre-AIA 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 1, 3-11, 13, 14,
16, and 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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