Ex Parte KollsDownload PDFPatent Trials and Appeals BoardFeb 12, 201914071021 - (D) (P.T.A.B. Feb. 12, 2019) Copy Citation 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, 2 Appeal 2017-011174 Application 14/071,021 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 3 Appeal 2017-011174 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. 4 Appeal 2017-011174 Application 14/071,021 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 5 Appeal 2017-011174 Application 14/071,021 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). 6 Appeal 2017-011174 Application 14/071,021 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 7 Appeal 2017-011174 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." 8 Appeal 2017-011174 Application 14/071,021 "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, 9 Appeal 2017-011174 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 10 Appeal 2017-011174 Application 14/071,021 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 11 Appeal 2017-011174 Application 14/071,021 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). 12 Appeal 2017-011174 Application 14/071,021 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). 13 Appeal 2017-011174 Application 14/071,021 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). 14 Appeal 2017-011174 Application 14/071,021 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." 15 Appeal 2017-011174 Application 14/071,021 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 16 Copy with citationCopy as parenthetical citation