Ex Parte Loffler et alDownload PDFBoard of Patent Appeals and InterferencesFeb 17, 201110363864 (B.P.A.I. Feb. 17, 2011) Copy Citation 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. 10/363,864 10/14/2003 Lukas Loffler LOFF3002/JJC/PMB 8177 23364 7590 02/17/2011 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER RODRIGUEZ, JOSEPH C ART UNIT PAPER NUMBER 3653 MAIL DATE DELIVERY MODE 02/17/2011 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 LUKAS LOFFLER, RUDOLF OTTL, and JOSEF GEIER ____________________ Appeal 2009-009536 Application 10/363,864 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEFAN STAICOVICI, Administrative Patent Judges. BAHR, 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 2009-009536 Application 10/363,864 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-3, 5, and 7-15 under 35 U.S.C. § 103(a) as unpatentable over Urata (US 6,507,769 B2, iss. Jan. 14, 2003) and Ohshita (US 6,397,565, iss. Jun. 4, 2002). Claims 4 and 6 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A device for sorting bank notes, comprising: an input compartment adapted to hold bank notes of different denominations which are to be sorted, a plurality of output compartments adapted to receive sorted bank notes, a conveying system arranged to convey bank notes from the input compartment to one of the output compartments, the compartment being selected in response to signals from a control device, wherein the control device is configured to output the signals to the conveying system on the basis of different predefined denominations and numbers of bank notes designated for each of at least two of the plurality of the output compartments so that bank notes of a plurality of different denominations input into the input compartment are automatically sorted directly into the output compartments so that each of the at least two output compartments receive the respective different predefined denominations and numbers of bank notes designated for the respective at least two of the plurality of output compartments. SUMMARY OF DECISION We AFFIRM-IN-PART. Appeal 2009-009536 Application 10/363,864 3 OPINION Claims 1-3, 5, and 7-10 In relevant part, claim 1 requires a bill sorting device that has a conveying system and control device that designates "different predefined denominations and numbers of bank notes … for each of at least two … output compartments." The Examiner found that Urata describes a conveying system that conveys bank notes to one of the output compartments based on signals from a control device. Ans. 3. The Examiner next found that Urata "fails to discuss … receiving different numbers and denominations of bank notes." Id. However, the Examiner found that Ohshita describes a device that prepares change for cash registers by combining bank notes and change of many denominations and quantities into packages. Id. The Examiner concludes that it would have been obvious to modify the device of Urata "to include the output techniques and controls, as taught by Ohshita, for the purpose [of] expanding the capabilities of the Urata device to provide bank note stacks for use as change in cash registers at stores." Ans. 4. Appellants' arguments focus on certain perceived deficiencies of each of the cited references with respect to particular claim language, specifically, "wherein the control device is configured to output the signals … on the basis of different predefined denominations and numbers of bank notes designated for each of … the plurality of the output compartments." Appeal Br. 14-19. Appellants' arguments only address the particular devices discussed in each of the references, however, as opposed to the Examiner's proposed combination of the teachings of the references. Nonobviousness cannot be established by attacking the references individually when the Appeal 2009-009536 Application 10/363,864 4 rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Reviewing the Examiner's rejection (Ans. 3-4), we do not find any deficiencies with respect to the claim language Appellants believe the Examiner has failed to properly address. Urata teaches a device for sorting bank notes from a loading compartment (loader 11, col. 5, ll. 2-6) through a conveyor system (col. 6, ll. 40-43) to output compartments (stackers 69-71, rejecter 72, col. 8, ll. 53-60). See also Fig. 3. A controller 17 receives data regarding the bills that pass through the discriminating device 13 (col. 7, ll. 61-65) and sorts the bills into the appropriate output compartment based upon various settings (col. 25, l. 14 et seq.). In particular, the user sets the number of bills allowed in a stacker (col. 25, ll. 45-56, "batch number"), as well as the denomination to be loaded in each stacker (col. 25, ll. 66-67). Thus, we find that Urata teaches a bill sorting machine that allows a user to predefine different denominations designated for each of a plurality of output compartments. Further, we find that Urata teaches that the user can predefine a number of bank notes destined for the stacker output compartments, but the same number applies to each output compartment. As pointed out by the Examiner, Ohshita describes an apparatus that prepares bank notes and change of many denominations and quantities into different output compartments (packages) for deliveries. Col. 1, ll. 8-9, col. 14, ll. 39-44, col. 16, ll. 42-52. The Examiner's proposed combination is to modify the device of Urata to include the output techniques and controls of Ohshita. Ans. 4. Logically, this means modifying the controller 17 to include the capability of allowing different batch sizes for each output compartment (stacker). The Examiner reasons that this modification will predictably expand the capabilities of Urata's device to include making Appeal 2009-009536 Application 10/363,864 5 change for cash registers. Ans. 4. Naturally, cash registers require different amounts of different denominations of money. Given that the controller in Urata already knows how many bills are in any given stack (col. 20, ll. 51- 54, fig. 16) it seems trivial to specify a batch number for each stack. Both Ohshita and Appellants' Specification indicate that bundling particular numbers of bank notes is already a common practice. See, e.g., Spec. pp. 1:19 to 2:6, 2:35 to 3:8, especially: "[i]ndividualized processing is to be understood here as meaning that … a desired number of banknotes … are collected …. This individualized processing was previously largely carried out manually." Consequently, in contrast to Appellants' argument (Appeal Br. 20), one of ordinary skill in the art would not require the disclosure of the Specification to consider the subject matter of claim 1 obvious. Thus, we do not find error in the Examiner's conclusion that the subject matter of claim 1 is rendered obvious in view of the teachings of Urata and Ohshita. Appellants argue dependent claims 2, 3, 5, and 7-10 as a group with claim 1. Appeal Br. 20. Thus, claims 2, 3, 5, and 7-10 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Claim 11 Claim 11 recites a "method for retrofitting an existing banknote processing device" with steps of "providing" various hardware components and "configuring the control device." Notably, claim 11 essentially "provid[es]" the various structural components of claim 1 and "configur[es]" the control device to be configured as recited in claim 1. The Examiner concludes that the subject matter of claim 11 would have been obvious for the same reasons as claim 1. Ans. 5. The Examiner additionally finds that the construction of the Urata device constitutes the "providing" step of claim Appeal 2009-009536 Application 10/363,864 6 11, and the modification of the Urata device to include the additional obvious control techniques (multiple batch sizes) constitutes "configuring" the control device to have the necessary features recited in claim 11. Ans. 11. Thus, the Examiner reasons, the combination renders obvious the method of retrofitting. Id Appellants argue that neither Urata nor Ohshita discusses retrofitting banknote processing devices. Appeal Br. 22. However, the relevant inquiry is not whether Urata and/or Ohshita recite the word "retrofitting" but whether the combined teachings of Urata and Ohshita render obvious the claimed process for retrofitting. Claim 11's "retrofitting" is nothing more than providing a device similar to that of claim 1 and "configuring" the device to operate similarly to the device of claim 1. The Examiner articulated cogent reasoning explaining why Urata and Ohshita render obvious the device of claim 1. In particular, the Examiner's proposed combination provides the bill sorter of Urata, having the various structural components recited in claim 11, and configures the software to operate as suggested in Ohshita to have the functionality recited in claim 11. Claim 11 recites no further steps to distinguish it over the prior art identified by the Examiner. It seems highly logical to upgrade (or retrofit, as Appellants use the term) a machine with obvious improvements. Thus, the Examiner's conclusion that it would have been obvious to modify the device of Urata to have certain features of Ohshita, as recited in claim 1, is also a conclusion that it would have been obvious to upgrade, or retrofit, the device of Urata to have certain features of Ohshita. Other than mentioning that neither Urata nor Ohshita discusses retrofitting banknote processing devices, Appellants do not discuss any particular deficiencies of the Examiner's rejection of claim 11. Consequently, we do not find error in the Examiner's rejection of Appeal 2009-009536 Application 10/363,864 7 claim 11. Dependent claims 12 and 13 fall with claim 11. 37 C.F.R. § 41.37(c)(1)(vii); Appeal Br. 21. Claims 14 and 15 Claim 14 is similar in scope to claim 1, but includes limitations that the control device generates "proposals for an identifier of an individualized processing operation" "on the basis of … at least one previous individualized processing operation" and that "a selected one of the proposed identifiers is utilized by the control device to determine into which output compartment the bank notes are to be output." Claim 15 is similarly related to claim 11. Appellants argue in part that both Urata and Ohshita do not disclose that the proposals are generated "on the basis of … at least one previous individualized processing operation." Appeal Br. 23-25. The Examiner's rejection does not explain, nor is it apparent, how Ohshita describes proposals that are generated "on the basis of … at least one previous individualized processing operation." It appears the Examiner relies upon the teachings of Ohshita regarding calculating production dates to satisfy this limitation. See Ans. 12. However, the disclosure of Ohshita is not clear as to how the processing date is calculated from the delivery date. Ohshita merely states: "[b]y presetting the relationship data … the production date can be automatically determined." Ohshita, col. 25, ll. 34- 36, see also col. 36, ll. 50-55. Consequently, to the extent the Examiner relies on the calculation of a processing date in Ohshita to teach a proposal generated on the basis of at least one previous individualized processing operation, the Examiner's rejection is founded on speculation. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts Appeal 2009-009536 Application 10/363,864 8 that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis). Thus, the Examiner has not made the requisite factual findings to support the conclusion that the combined teachings of Urata and Ohshita render obvious a sorting device wherein the controller is "configured to generate, on the basis of … at least one previous individualized processing operation, proposals for an identifier." Claims 14 and 15 both require these limitations. Accordingly, we do not sustain the Examiner's rejections of claims 14 and 15. DECISION For the above reasons, we affirm the Examiner's decision regarding claims 1-3, 5, and 7-13. We reverse the Examiner's decision regarding claims 14 and 15. 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). AFFIRMED-IN-PART mls BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 Copy with citationCopy as parenthetical citation