Ex Parte M¿tzig et al

Board of Patent Appeals and Interferences

Apr 28, 2011

10450526 (B.P.A.I. Apr. 28, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/450,526 11/17/2003 Christoph Mätzig MATZ3003/JJC/LCD 5303
23364 7590 04/28/2011
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
04/28/2011 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 CHRIS MATZIG and DIRK SCHELLING
____________

Appeal 2010-000404
Application 10/450,526
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000404
Application 10/450,526

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-2, 4-11, and 13-19 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed to a cash handling
apparatus and method in which during a transaction, banknotes are both paid
in and output again (Spec. 1:3-5). Claim 1, reproduced below with the
numbering in brackets added, is representative of the subject matter of
appeal.

1. Method for performing a transaction, in which both banknotes
are paid into a cash handling apparatus and the banknotes are
outputted by the cash handling apparatus, the method comprising the
following steps:
[1] reading data with respect to banknotes to be outputted by the
cash handling apparatus, the data representing a total value of the
banknotes and/or the quantity of banknotes per denomination and/or
the types of denomination of banknotes which are at least to be
outputted;
[2] after reading the data, receiving banknotes by the cash
handling apparatus and depositing at least some of the received
banknotes in a storage device comprising the cash handling apparatus;
Appeal 2010-000404
Application 10/450,526

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[3] outputting banknotes into an output device of the cash
handling apparatus as a function of the denomination of banknotes to
be outputted and of the read data regarding the banknotes to be
outputted again, at least some of the outputted banknotes being
banknotes received during the transaction.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Jones US 6,128,402 Oct. 3, 2000
Ito US 6,543,763 B2 Apr. 8, 2003

The following rejections are before us for review:
1. Claims 1-2, 4, 6-11, 13, and 15-19 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Jones.
2. Claims 5 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jones and Ito.

THE ISSUES
The issue with regards to claims 1 and 10, and their dependent claims,
turns on whether Jones discloses the claim limitations which have been
argued by the Appellants.

Appeal 2010-000404
Application 10/450,526

4
FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Jones discloses an automatic currency processing system (Title) which
includes an ATM or currency redemption machine that is capable of
processing cash deposits as well as withdrawals (Col. 2:54-63). The
machines evaluate the authenticity and denomination of cash bills deposited.
The machine receives and dispenses cash and furnishes a cash accounting
system with data. A scanner generates data representing the denomination
and number of the bills passed, a memory stores this data, and an accounting
system enters the data for deposits and withdrawals (Col. 2:65-Col. 3:8-35).
FF2. Jones discloses that the ATM has a conventional slot for receiving the
customer’s identification card to read the data on the card (Col. 8:22-24).
FF3. Jones discloses that the customer places the bills in a receptacle 1 and
that the counting module 8 feeds, counts, scans and authenticates the bills
one at a high time at high speed. The bills that are recognized are delivered
to a conventional currency canister 9. A bill that is not recognized can be
returned to the customer in a return slot 2 (Col. 8:36-49).
FF4. Jones discloses that the ATM or redemption machine also has a
“verify mode” in which it simply denominates and totals all the currency
bills deposited by the customer and returns it all to the customer. If the
customer agrees with the amount they can re-deposit the same batch of
currency in the machine for deposit (Col. 11:21-31).

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2010-000404
Application 10/450,526

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ANALYSIS
The Appellants argue that the rejection of claim 1 under 35 U.S.C.
§ 102(b) is improper because Jones fails to disclose 3 claim limitations
outlined at page 10 of the Appeal Brief.
In contrast, the Examiner has determined that Jones discloses the 3
cited claim limitations and that the rejection of claim 1 is proper (Ans. 3, 6-
10).
We agree with the Examiner. The Appellants first argue that Jones
fails to disclose “a step of reading data with respect banknotes to be
outputted (as in claim 1)” (Br. 10). The Appellants argue that the output of
cash is not arbitrary as in Jones (Br. 11). Claim limitation [1] requires:
[1] reading data with respect to banknotes to be outputted by the cash
handling apparatus, the data representing a total value of the
banknotes and/or the quantity of banknotes per denomination and/or
the types of denomination of banknotes which are at least to be
outputted; (claim 1, emphasis added).
Thus the claim requires “reading data” which has been disclosed by
Jones simply reading the data from the ATM card (FF2) which relate to the
banknotes in some manner (withdrawals) or simply by reading the data
associated with the scanned bills (FF3). The recitation of the data contents
is considered to be non-functional descriptive material. The PTO need not
give patentable weight to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate.
See In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983). See also In re Ngai,
367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583-84
(Fed. Cir. 1994).

Appeal 2010-000404
Application 10/450,526

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The Appellants argue secondly that Jones fails to disclose the step of
“receiving banknotes after the data is entered” (Br. 12-14). Claim 1 requires
“after receiving the data, receiving the banknotes” (claim 1). Jones
disclosed that an ATM card can be entered (FF2) which would occur first,
and that banknotes can be received (FF3, FF4) as well so this claim
limitation is met by Jones since the ATM card would furnish some data first.
Jones also discloses that the machine can be used in a “verify mode” where
that money is first scanned (FF4) which servers as “entering data” and then
stored in a conventional currency canister (FF3) which serves as “receiving
banknotes” after the data is entered so the claim limitation is met in this way
by Jones as well. While the Appellants argue the specific data contents are
claimed, the specific data content referred to is considered non-functional
descriptive material as noted above.
The Appellants argue thirdly that Jones fails to disclose “outputting
banknotes or an output device for storing banknotes processed by the
apparatus as a function of the read data” (Br. 14-15). Jones has disclosed
that the ATM or redemption machine has the “verify mode” in which it
simply denominates and totals all the currency bills deposited by the
customer and returns it all to the customer (FF4) which serves as this
claimed “outputting banknotes as “a function of the read data” as argued.
Jones disclosed currency canister (FF3) also serves to “store banknotes” as
argued.
For these above reasons Jones has disclosed the claimed limitations
argued by the Appellants and the rejection of claim 1 is sustained. The
Appellants provide the same arguments or similar arguments for claim 10
Appeal 2010-000404
Application 10/450,526

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and the dependent claims so the rejections of these claims is sustained as
well.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-2, 4, 6-11, 13, and 15-19 under 35 U.S.C. § 102(b) as
anticipated by Jones.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 5 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Jones and Ito.

DECISION
The Examiner’s rejection of claims 1-2, 4-11, and 13-19 is sustained.

AFFIRMED

MP