Ex Parte Loffler et al

Board of Patent Appeals and Interferences

Feb 17, 2011

10363864 (B.P.A.I. Feb. 17, 2011)

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
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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
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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
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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
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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
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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
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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