Ex Parte Kusters

Board of Patent Appeals and Interferences

Dec 17, 2010

10873745 (B.P.A.I. Dec. 17, 2010)

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.
10/873,745 06/22/2004 Gerardus Jacobus Kusters AOM-104 4806
54630 7590 12/17/2010
ROBERTS & ROBERTS, LLP
ATTORNEYS AT LAW
P.O. BOX 484
PRINCETON, NJ 08542-0484
EXAMINER
BEAUCHAINE, MARK J
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
12/17/2010 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 GERARDUS JACOBUS KUSTERS
____________

Appeal 2009-012776
Application 10/873,745
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL and
KEN B. BARRETT, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012776
Application 10/873,745

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The Appellant appeals, under 35 U.S.C. § 134, the Examiner’s final
decision rejecting claim 1. More specifically, the Examiner rejects claim 1
under 35 U.S.C. § 103(a) as being unpatentable over Takesako (US
4,830,742, issued May 16, 1989) and Larkin (US 4,674,060, issued Jun. 16,
1987). The Examiner has indicated that the subject matter of claims 2-5 is
allowable.
We REVERSE.
Claim 1 recites:
1. A method for controlling the flow of banknotes
between at least two locations, a Central Bank
and/or Monetary Authority and a local financial
institution, wherein the method comprises the
following steps:
i) collecting a stack comprising a plurality of
banknotes at the local financial institution,
ii) subjecting the entire stack of banknotes in step
i) to a fitness measurement so as to determine the
fitness of the stack of banknotes and to obtain a
flow of stacks of fit banknotes and a flow of stacks
of unfit banknotes,
iii) returning the stacks of unfit banknotes to the
Central Bank and/or Monetary Authority, and
iv) bringing the stacks of fit banknotes into
circulation.
(italics added).
A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification. In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In step ii), the term
“entire stack” refers back to the “stack” collected in step i). In steps iii) and
iv), “the stacks” refer back to the “flow of stacks of fit banknotes” and the
“flow of stacks of unfit banknotes” obtained in step ii). These flows of
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stacks are obtained in step ii) by means of the fitness measurement to which
the “entire stack of banknotes in step i)” is subjected. This fitness
measurement determines the fitness of “the stack of banknotes.”
Each step of claim 1 is performed on or using a “stack of banknotes.”
The Examiner points to nothing in the claim language or the Specification
suggesting that any recited step might be performed on or using individual
banknotes taken from a stack. As such, the broadest reasonable
interpretation consistent with the underlying Specification is that the stacks
of banknotes that are subject to the fitness measurement in step ii) are the
same stacks that are either returned to the Central Bank and/or Monetary
Authority or brought into circulation.
In regards to the applied prior art of Takesako and Larkin, the
Appellant correctly contends that “neither reference relates to the returning
of stacks of unfit banknotes to the Central Bank and/or Monetary Authority,
and bringing stacks of
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fit banknotes into circulation.” (App. Br. 7) (italics
added).
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Takesako describes an apparatus for sorting sheets (bills) where a
stack of bills can be stacked in a feeder 12 and fed one by one into the
apparatus body 10. (Takesako, col. 2, ll. 21-28). During transport of a bill
through the sorting apparatus the bill judging section 32 judges the bill for
fitness. If the bill is unfit, as determined by light permeability, the bill is
placed in reject stacker 22. Alternatively if the bill is fit, the bill will be
sorted into an upper stacker 18 or lower stacker 20. (Takesako, col. 2, l. 62
– col. 3, l. 11; col. 3, ll. 22-27). Takesako describes an unfit bill is a non-
reusable bill that should be returned to a central bank, whereas a fit bill is a
reusable bill. (Takesako, col. 7, ll. 36-45).
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The Examiner accurately finds that Takesako describes “returning
unfit banknotes [to] a central bank, and bringing said fit banknotes into
circulation.” (Ans. 4) (citation deleted). This finding does not adequately
support a finding that Takesako describes steps iii) and iv), however.
Takesako describes that individual bills from a first stack of bills are
determined as fit or unfit and sorted and restacked into multiple distinct
stacks, one for unfit bills 22 and two others 18 and 20 for fit bills. The
Examiner has not provided a finding, nor can it be said, that Takesako
describes the stack of bills measured for fitness as the same stack of bills
that would be returned to a Central Bank and/or Monetary Authority or
brought into circulation.
Larkin describes weighing strapped and unstrapped bundles of bills to
confirm the count of the currency in the bundles. Measured bundle weights
are compared against high and low acceptable weights for strapped and
unstrapped bundles. (Larkin, col. 1, ll. 40-44; col. 2, ll. 5-13 and 35-39).
Larkin describes in column 1, lines 13-18 that wrapped bundles are
presented to the Federal Reserve branches and larger banks. Yet, despite the
Examiner’s reasoning to the contrary (see Ans. 4), Larkin does not teach a
fitness operation. Larkin teaches a currency count verification operation.
(See, e.g., Larkin, col. 2, ll. 47-49).
Takesako would have required significant redesign and reconstruction
to perform fitness measurements on stacks of bills as opposed to individual
bills. The teachings of Larkin are too remote to have provided one of
ordinary skill in the art reason to modify Takesako’s apparatus in the fashion
claimed. For example, the Examiner has not articulated sufficient reason
why one of ordinary skill in the art might have modified Takesako’s
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apparatus to enable the apparatus to subject an entire stack of banknotes to a
fitness measurement so as to determine the fitness of the stack of banknotes
as opposed to the fitness of individual banknotes within the stack.
Consequently, the Examiner has not articulated sufficient reason why one of
ordinary skill in the art might have modified Takesako’s apparatus to enable
the apparatus either to return the same stacks collected in step i) to the
Central Bank and/or Monetary Authority or to bring the same stacks into
circulation. We do not sustain the rejection of claim 1 under § 103(a) as
being unpatentable over Takesako and Larkin because the Examiner’s
conclusion of obviousness lacks rational underpinning.

DECISION
We REVERSE the Examiner’s decision rejecting claim 1.

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REVERSED

Klh

ROBERTS & ROBERTS, LLP
ATTORNEYS AT LAW
P.O. BOX 484
PRINCETON, NJ 08542-0484
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