Ex Parte Nireki

Patent Trial and Appeal Board

Nov 15, 2017

13883556 (P.T.A.B. Nov. 15, 2017)

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.
13/883,556 05/03/2013 Takao Nireki 112.023.PCUS01 8744
103906 7590 11/17/2017
KMF Patent Services, PLLC (UEC Applications)
1629 K Street, NW
Suite 300
Washington, DC 20006
EXAMINER
MCCLAIN, GERALD
ART UNIT PAPER NUMBER
3652
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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):
kmf@kmfpatent.com
spk @ kmfpatent .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAO NIREKI
Appeal 2017-003174
Application 13/883,556
Technology Center 3600
Before THU A. DANG, ERIC S. FRAHM, and
AARON W. MOORE, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
second rejection of claims 1—5, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-003174
Application 13/883,556
A. INVENTION
According to Appellant, the invention relates to “a paper sheet
processing device configured to process a bill, an information recording
medium in the form of a card, a piece of paper recording thereon
information such as a barcode” or the like (Spec. 111).
B. REPRESENTATIVE CLAIM
Claim 1 is exemplary:
1. A sheet processing device configured to process a
predetermined sheet having a predetermined. Standardized
length and width, comprising:
an insertion port through which a sheet is inserted;
a conveyance path along which a sheet that has been inserted into the
insertion port is conveyed;
a sheet-conveying mechanism configured to convey the sheet along
the conveyance path in a conveyance direction;
a sheet storage area located at an opposite end of the conveyance path
from the insertion port, which sheet storage area is long enough and wide
enough to accommodate therein said predetermined sheet having
standardized length and width and which sheet storage area has sufficient
volume therein to accommodate a plurality of said predetermined sheets;
presence sensors, located along the conveyance path, that detect just
the physical presence of a sheet in the vicinity thereof along the conveyance
path, wherein the presence sensors are provided along the conveyance path
with an interval therebetween that is longer than the length of the sheet in
1 We refer to the Specification filed May 3, 2013 (“Spec.”); the Non-Final
Office Action mailed Feb. 23, 2016 (“Non-Final Act.”); the Appeal Brief
filed July 14, 2016 (“App. Br.”); and the Examiner’s Answer mailed Nov. 1,
2016 (“Ans.”).
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Application 13/883,556
the conveyance direction;
at least one RFID antenna provided between the presence sensors and
capable of reading encoded data on the sheet by a magnetically responsive
mechanism or by an electromagnetic-wave-sensing antenna mechanism; and
a control unit configured to execute sheet-presence processing during
a boot-up or reboot operation of the sheet-processing device in order to
determine whether a sheet is located in the conveyance path,
wherein the presence sensors include a pair of sensors which are
provided on the conveyance path at an interval that is longer than the length
of the sheet in the conveyance direction,
wherein the RFID antenna is provided between the pair of sensors,
with the interval between the RFID antenna and each of the pair of sensors
being shorter than the length of the sheet so that the RFID antenna is able to
read a sheet that is located between the pair of sensors even in situations
where the pair of sensors cannot detect the presence of the sheet
therebetween.
wherein the control unit is able to determine whether a sheet is present
in the conveyance path during said boot-up or reboot operation based on a
detection result from the presence sensor as well as from a read result from
the RFID antenna,
wherein, if the control unit determines that a sheet is present in the
conveyance path during said boot-up or reboot operation, the control unit
causes the sheet-conveying mechanism to operate in a manner intended to
move the sheet toward the insertion port and out of the sheet-processing
device, and
wherein the control unit is programmed to control the sheet processing
device so that the sheet, which is shorter than the interval between the
presence sensors, is temporarily held within the sheet processing device
while a gaming machine to which the sheet processing device is connected
[,] is being played, or is captured and stored within the sheet storage area.
(App. Br., Claims Appendix, 18—19.)
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C. REJECTION
Claims 1—5 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the teachings of Gorgone et al. (US 4,348,656; issued Sept. 7, 1982
(“Gorgone”)), and Johnson (US 7,735,657 B2; issued Jun. 15, 2010).
II. ISSUES
The principal issues before us are whether the Examiner erred in
finding that the combination of Gorgone and Johnson teaches or would have
suggested an “RFID antenna . . . provided between the pair of sensors” with
“the interval between the REID antenna and each of the pair of sensors being
shorter than the length of the sheet” so that “the REID antenna is able to read
a sheet that is located between the pair of sensors even in situations where
the pair of sensors cannot detect the presence of the sheet therebetween,”
wherein the sheet that is shorter than the interval between the presence
sensors is “temporarily held within the sheet processing device while the
gaming machine ... is being played, or is captured and stored within the
sheet storage area” (claim 1).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Gorgone
1. Gorgone discloses a slot acceptor for transporting paper past a testing
station, the acceptor having a plurality of sensors positioned along the note
path which are controlled to take multitudes of data samples from the paper
as it passes along the path (Abst.). The system includes an anti-jamming
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Application 13/883,556
technique, and includes a receptacle for receipt and return of paper offered to
the acceptor. Id. Figures 11—12 are reproduced below:
20^ FIG.-
Figure 11 shows an acceptor assembly comprising a protruding
receptacle 134 attached to the housing 132 of the acceptor assembly,
wherein the receptacle 134 communicates with a horizontal receiving slot 20
to allow a user to place a note upon the escutcheon plate 136 of the
receptacle and direct the note toward the slot (col. 9,1. 66 to col. 10,1. 9).
Figure 12 shows a sensing and testing apparatus with a note path 18 from the
receiving slot 20 to the rear gate 98 (col. 11,11. 3—6). As shown in Fig. 12,
two photodetectors 144, 146 are positioned at the front edge of the receiving
slot 20 for determining if a paper is being offered at the slot (col. 11,11. 14—
17). Photodetector 154 is provided for determining whether or not the paper
offered is too short to comprise a valid note, while detector 156 is provided
to determine if the paper is too long, wherein if the sensor 154 is covered
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while the sensors 144, 146 are uncovered, the paper is too short to be a valid
note (col. 11,11. 56—63).
2. A JOG subroutine is provided for controlling the acceptor, the
subroutine comprising a step of scanning the various sensors 144—156,
wherein if only the front sensors 144, 146 are covered, the note is returned,
but if sensors other than the front sensors 144, 146 are covered, the motor is
driven in reverse and forward directions in respective attempts to return or
collect the paper jamming the acceptor/conveyor assembly (col. 22,11. 41—
52). A delay is provided at each reversal of motor direction which allows
the system to stabilize (col. 22,11. 52—55).
Johnson
3. Johnson relates to collating and/or sorting groups of articles
(cards/notes) in the gaming industry (col. 1,11. 19—36), wherein a feed means
is provided for feeding the articles sequentially past a sensor means (col. 1,
11. 42-52).
IV. ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments that
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant contends the claimed invention “enables the device to
determine that a sheet is present in the conveyance pathway even if the sheet
is shorter than the distance between the presence sensors and is ‘left over’
from prior processing at a position between the sensors” (App. Br. 5).
Appellant contends Gorgone in contrast states that photodetector 154 is
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provided “for the principle purpose of determining whether or not the paper
offered is too short to comprise a valid note” {id. at 9, citing Gorgone).
According to Appellant, “the preamble of claim 1 specifically casts the
claimed invention in terms of ‘ [a] sheet processing device configured to
process a predetermined sheet,’” and, thus, “it ‘breathes life and meaning
into the claim’” wherein “the sheet — along with its known length and width
— must be considered for purposes of assessing patentability” {id. at 5, citing
Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257
(Fed. Cir. 1989)).
Appellant further contends that, although “Gorgone discloses an
algorithm for clearing a jam in the conveyance path,” Gorgone does not
disclose a gaming machine being played, as claimed (App. Br. 10).
According to Appellant, although the Examiner concludes that “the present
specification implies that a game is being played any time a sheet of paper is
in the conveyance path” {id.), “there is no such clear, unordinary and non­
customary definition of the term ‘being played’ set forth in the specification
as to justify the Examiner’s position” {id. at 15).
Appellant similarly contends the Examiner’s conclusion that “the
location of a ‘delay’ implies a storage area” is “unreasonable on its face” {id.
at 15—16). That is, “[t]he claim uses ‘ordinary, simple English words,’
which should be understood by anyone.” {Id. at 16).
We have reviewed Appellant’s contentions regarding the Examiner’s
rejections of the claims and the evidence presented. Based on the record
before us, we find no error with the Examiner’s conclusion that the claims
would have been obvious over the combined teachings and suggestions of
the cited references.
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Claim 1 is directed to a “device” configured to process a sheet, which
comprises an “insertion port,” a “conveyance path,” a “sheet-conveying
mechanism,” a “sheet storage area,” “presence sensors,” at least one “RFID
antenna,” and a “control unit” configured to execute sheet-presence
processing, “wherein” the RFID antenna is provided between the presence
sensors “so that” the RFID antenna “is able to read” a sheet that is located
between the pair of sensors (claim 1, emphasis added). That is, claim 1
recites an apparatus/device comprising, among other things, an RFID
antenna provided between a pair of presence sensors with the intended
purpose of (i.e., “so that”) the RFID antenna being “able to read” a sheet
where the presence sensors cannot.
Although, as Appellant concedes, the intended purpose of the claimed
device is that it “enables the device to determine that a sheet is present in the
conveyance pathway even if the sheet is shorter than the distance between
the presence sensors and is ‘left over’ from prior processing at a position
between the sensors” (App. Br. 5), we are unpersuaded by Appellant’s
contention that Gorgone’s device is different from the claimed device
because its intended purpose is for “determining whether or not the paper
offered is too short to comprise a valid note” {id. at 9, citing Gorgone).
Here, Appellant does not argue that the claimed structure differs from
the structure taught or suggested by the combination of Gorgone and
Johnson (App. Br. 5—16). Although we agree with Appellant that “the
preamble of claim 1 specifically casts the claimed invention in terms of ‘ [a]
sheet processing device configured to process a predetermined sheet’” {id. at
5) and, in addition, claim 1 recites an apparatus/device comprising, among
other things, an RFID antenna provided between a pair of presence sensors,
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the claims do not recite that the device determines that a sheet is present in
the conveyance pathway “even if the sheet is shorter than the distance
between the presence sensors and is ‘left over ’ from prior processing at a
position between the sensors” {id. at 5, emphasis added). That is, nothing in
the claims precludes a structure which is “for the principle purpose of
determining whether or not the paper offered is too short to comprise a valid
note” {id. at 9, citing Gorgone), as long as the structure is also a sheet
processing device which comprises a sensor/antenna located between
presence sensors for detecting the sheet therebetween, even in situations
where the presence sensors cannot detect the sheet. Thus, while we give the
claims their broadest reasonable interpretation consistent with the
Specification {see In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997)), we
nonetheless must not import limitations from the Specification into the
claims {see Phillips v. AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005),
{en banc)).
Furthermore, Appellant seems to focus on the intended purpose of the
device, i.e., “so that” the RFID antenna is “able to read” a sheet where the
presence sensors cannot (App. Br. 5—16, citing claim 1). Appellant is
reminded that an intended purpose will not narrow the scope of the claim
because it merely defines a context in which the invention operates. See
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). That is, the patentability of an
apparatus/system claim “depends on the claimed structure, not on the use or
purpose of that structure.” Catalina Marketing Int 1, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also
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Application 13/883,556
Superior Industries, Inc. v. Masaba, Inc., 553 Fed. Appx. 986, 991 (Fed. Cir.
2014) (Rader, C.J., concurring):
[A] system claim generally covers what the system is, not what
the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer,
91 U.S. 150, 157 [] (1875) (“The inventor of a machine is
entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.”).
Thus, it is usually improper to construe non-functional claim
terms in system claims in a way that makes infringement or
validity turn on their function. Paragon Solutions, LLC v.
Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).
We find this reasoning applicable here, as Appellant urges the claimed
sheet processing device is patentably distinguished over the prior art sheet
processing device based solely on their respective intended purposes,
without indicating any differences between the structures (App. Br. 5—16).
Nevertheless, we find no error with the Examiner’s broad but
reasonable claim interpretation, underlying factual findings, and ultimate
legal conclusion of obviousness. That is, we find no error with the
Examiner’s finding that the combination of Gorgone and Johnson teaches or
at least suggests a sensor (i.e., RFID antenna) located between presence
sensors with the interval between the sensor/antenna and presence sensors
“being shorter than the length of the sheet” so that “the RFID antenna is able
to read a sheet that is located between the pair of sensors even in situations
where the pair of sensors cannot detect the presence of the sheet
therebetween,” as recited in claim 1.
Here, the Examiner finds, and Appellant does not contest, that
Gorgone discloses a sheet processing device with first sensors provided
along a conveyance path at an interval therebetween that is longer than the
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length of the sheet in the conveyance direction and second sensors provided
between the first sensors (Non-Final Act. 3; FF 1). In particular, Gorgone
discloses sensors 148 and 156 located along the conveyance path 18 of a
note/sheet, and sensor 154 provided therebetween with the interval between
sensor 154 and each of sensors 148 and 156 being shorter than the length of
the note/sheet (FF 1). Even Appellant does not contest that Gorgone’s
sensor 154 is provided at such interval between the sensors, but rather
merely contends that such location of sensor 154 is “for the principle
purpose of determining whether or not the paper offered is too short to
comprise a valid note” {id. at 9, citing Gorgone). However, even if
Gorgone’s sensor 154 is provided for determining whether or not the paper
offered is too short for such principle purpose {id.), Gorgone does determine
if the sensor 154 is covered while the other sensors are uncovered (FF 1).
That is, sensor 154 is “able to read a sheet” (i.e., sensor 154 is covered by
the sheet) that is located between the other sensors even in situations where
the other sensors “cannot detect the presence of the sheet therebetween”
(i.e., when the other sensors are uncovered) {id.), as claimed in claim 1.
We are also unpersuaded by Appellant’s contention that Gorgone does
not disclose a gaming machine being played, as claimed (App. Br. 10). As
Appellant concedes, there is no “clear, unordinary and non-customary
definition of the term ‘being played’ set forth in the specification” (App. Br.
15). In the Appeal Brief, Appellant refers to, “for example,” paragraphs
“[0017]; [0019]; [0020]; [0025]; [0028]; [0055]; [0069]; [0070]; [0076]; and
[0081]” of the Specification for support for the term “being played,” wherein
these paragraphs merely set forth exemplary embodiments where the IC card
is inserted. As the Examiner points out, the Specification states that “[f]or
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example, when the above described process is ended, the user is playing the
game at the gaming machine while the IC card is inserted” (Non-Final Act.
5—6). In view of the lack of clear definition for the term in the Specification,
we are unpersuaded that the Examiner errs in giving the term its broadest,
reasonable interpretation consistent with the Specification, that “being
played” comprises a state in which “the IC card is inserted” in the gaming
machine. Id.
Here, in Gorgone, to clear a potential jamming, a motor is driven in
reverse and forward directions in attempts to return or collect the note/sheet,
wherein a delay is provided at each reversal to allow the system to stabilize
(FF 2). That is, the note/sheet is returned or collected with a provided delay
while the note/sheet is still inserted and the motor is still driven (id.). Given
the broadest, reasonable interpretation of the claims consistent with the
Specification, we are unpersuaded that the Examiner erred in finding
Gorgone’s system is “being played” (Ans. 5—6).
Furthermore, the test for obviousness is what the combined teachings
would have suggested to one of ordinary skill in the art. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus, although Appellants
contend that Gorgone does not disclose a gaming machine being played, as
claimed (App. Br. 10), we note that Appellant does not address the
Examiner’s reliance on Johnson. In particular, Johnson discloses a gaming
machine being played (FF 3). In view of Gorgone’s teaching of providing a
delay while the note/sheet is still inserted and the motor is still driven (FF 2),
we find no error with the Examiner’s finding that the combination of
Gorgone and Johnson at least would have suggested “temporarily” holding a
note/sheet within the sheet processing device “while the gaming machine . . .
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is being played” (claim 1). The skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
421 (2007).
We are also unpersuaded by Appellant’s contention that the
Examiner’s conclusion that “the location of a ‘delay’ implies a storage area”
is “unreasonable on its face” (App. Br. 15—16). In particular, we agree with
the Examiner that during a delay, the sheet is held or “stor[ed]” at a location
or “area” until after the delay (Ans. 6). In view of Gorgone’s teaching of
collecting the note/sheet with a provided delay (FF 2), we agree with the
Examiner’s finding that the combination of Gorgone and Johnson at
suggests that the sheet is also “captured [or] stored” within a “sheet storage
area” (claim 1).
Based on this record, we find no error in the Examiner’s rejection of
independent claim 1 over Gorgone and Johnson. Appellant does not provide
substantive arguments with respect to claim 2—5. Thus, claims 2—5 fall with
claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv) (2015).
V. CONCLUSION AND DECISION
We affirm the Examiner’s rejections of claims 1—5 under 35 U.S.C.
§ 103(a).
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).
AFFIRMED
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