Ex parte Nogami

Board of Patent Appeals and Interferences

Sep 13, 2000

08220756 (B.P.A.I. Sep. 13, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MASARU NOGAMI
__________
Appeal No. 1998-1117
Application 08/220,756
__________
ON BRIEF
__________
Before KRASS, FLEMING, and DIXON, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 and 2, all the claims pending in the application.
The invention relates to automated teller machines. In
particular, the invention relates to automated teller machines
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which include two or more customer operation stations and one
or more cash handling mechanisms, wherein the cash handling
mechanisms are capable of servicing more than one of the
customer operation stations.
The only claims present in the application are reproduced
as follows:
1. An automatic teller machine for dispensing currency in
response to customers’ requests, said automatic teller machine
comprising:
at least two customer operation stations operable
independently of one another and concurrently with one
another;
at least one cash handling mechanism, said number of cash
handling mechanisms being fewer in number than the number of
said customer operation stations, each of said cash handling
mechanisms including a currency storage portion, a currency
counting portion and a currency transport portion, said cash
counting portion withdrawing a requested amount of currency
from said currency storage portion and counting the withdrawn
currency, said cash transport portion transporting the counted
currency to a cash output port of a selected customer
operation station; and
a controller for determining which of the currency
withdrawal requests made concurrently in a competing manner by
customers to said cash handling mechanism should take priority
over the other currency withdrawal requests and for allowing
said cash handling mechanism to respond to the selected
currency withdrawal request accordingly.
2. An automated teller machine for dispensing currency in
response to customers’ requests, said automated teller machine
comprising:
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at least three customer operation stations operable
independently of one another;
at least two cash handling mechanisms wherein the number
of said cash handling mechanisms is fewer in number than said
customer operation stations and each of said cash handling
mechanisms normally handles specific customer operation
stations; and
a controller for determining if one of said cash handling
mechanism fails and for controlling each functional cash
handling mechanism to respond to said customers’ requests
normally handled by said failed cash handling mechanism.
The references relied on by the Examiner are as follows:
Granzow et al. (Granzow) 4,521,008 Jun. 4,
1985
Oota et al. (Yoshihiko)(JP) 62-010788 Jan. 19,
1987
Ito (JP) 4-75165 Mar. 10, 1992
Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Ito and Yoshihiko. Claim 2 stands rejected
under 35 U.S.C. § 103 as being unpatentable over Ito,
Yoshihiko and Granzow.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief and answer for the
details thereof.
OPINION
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After careful review of the evidence before us, we agree
with the Examiner that claim 1 is properly rejected under 35
U.S.C. § 103. However, we do not agree with the Examiner that
claim 2 is properly rejected under 35 U.S.C. § 103. Thus, we
will sustain the rejection of claim 1 but we will reverse the
rejection of claim 2 for the reasons set forth infra.
On pages 8 and 9 of the brief, Appellant argues that the
proposed combination under 35 U.S.C. § 103 of Ito and
Yoshihiko does not disclose or suggest Appellant’s invention
as recited in claim 1. In particular, Appellant argues that
Ito does not suggest a shared mechanical device mechanically
coupled to any of the ATMs to provide an output to a customer
at a selected one of ATMs. Appellant does not believe that
sending of multiple electrical signals to a remote device to
record all of the signals teaches or suggests sharing of a
mechanical device which physically provides an outlet to a
customer at a selected customer service station as Appellant’s
invention provides. Specifically, Appellant points to claim 1
language requiring “transporting the counted currency to a
cash outlet port of a selected customer operation station.”
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The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further
established that “[s]uch a suggestion may come from the nature
of the problem to be solved, leading inventors to look to
references relating to possible solutions to that problem.”
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626,1630 (Fed. Cir. 1996), citing In re
Rinehart, 531 F.2d 1048, 1054, 189 USPQ 143, 149 (CCPA 1976)
(considering the problem to be solved in a determination of
obviousness). The Federal Circuit reasons in Para-Ordnance
Mfg. Inc. v. SGS Importers Int'l Inc., 73 F.3d 1085, 1088-89,
37 USPQ2d 1237, 1239-40 (Fed. Cir. 1995), cert. denied, 519
U.S. 822 (1996), that for the determination of obviousness,
the court must answer whether one of ordinary skill in the art
who sets out to solve the problem and who had before him in
his workshop the prior art, would have been reasonably
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expected to use the solution that is claimed by the
Appellants.
However, "[o]bviousness may not be established using hindsight
or in view of the teachings or suggestions of the inventor."
Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing
W. L. Gore, 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-313.
In addition, our reviewing court requires the PTO to make
specific
findings on a suggestion to combine prior art references. In
re Dembiczak, 175 F.3d 994, 1000-01, 50 USPQ2d 1614, 1617-19
(Fed. Cir. 1999).
We agree with the Appellant that Ito does not teach a
cash handling mechanism that transports the counted currency
to a cash outlet port of a selected customer operation
station. However, the Examiner is not relying on Ito for this
limitation. The Examiner instead is relying on Yoshihiko.
The Examiner is relying on Ito’s teaching of the shared
printer has a reason for combinability of the Ito system with
the Yoshihiko teachings of a shared cash handling mechanism.
We agree with the Examiner’s reasoning on this point.
Furthermore, we wish to buttress his reasoning by pointing out
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that Yoshihiko further provides reasons to those skilled in
the art for combining the Yoshihiko shared cash handling
mechanism with Ito. Yoshihiko teaches on page 3 that there is
a need to minimize the number of motors, which are driving the
means actuating a teller machine or an automatic teller
machine, so as to save space and reduce cost. From these
findings by the Examiner of the prior art suggestions and
reasons, we find that the Examiner has made a proper prima
facie case in establishing that Appellant’s claim 1 is
properly rejected under 35 U.S.C. § 103.
Appellant further argues that Yoshihiko does not provide
means for handling requests received concurrently for both
bill ports. The Examiner agrees that Yoshihiko does not
specifically state that the operation is done concurrently and
independently. However, the Examiner points out that those
skilled in the art would recognize the need to process request
made concurrently.
We note that requests from devices to a shared controller
must be properly prioritized and handled so that these
requests are not lost was well known in the art. In
particular, we point to page 6 of Ito in which the shared
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printer must properly process requests from the two separate
automatic cash transaction machines. In particular, Ito
discloses that the requests are each stored in memory as they
are generated and then are processed in the order in which
they have been received. We find from this teaching of Ito
that those skilled in the art would recognize that the
controller for the cash handling mechanism must process
concurrent requests in a proper manner by using the Ito’s
controller to process these requests in the priority as
disclosed.
We note that Appellant has not made any further arguments
as to claim 1, therefore, we find that the Appellant has not
pointed out an error in the Examiner’s establishment of a
prima facie case. Therefore, we will sustain the Examiner’s
decision of rejecting claim 1 under 35 U.S.C. § 103.
Turning to the rejection of claim 2 under 35 U.S.C. §
103, Appellant argues on pages 10 through 12 of the brief that
the proposed combination of Ito, Yoshihiko and Granzow does
not disclose or suggest having a normal operation less than
all of the cash handling mechanisms to route cash to selected
outlet stations. Appellant further points out that Granzow
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teaches that the mechanical components for each dispenser to
operate independently is provided and no elements are shared
unless the element is inoperative.
We note that Appellant’s independent claim 2 recites an
automated teller machine comprising: at least three customer
operation stations operable independent of one another; at
least two cash handling mechanisms wherein the number of cash
handling mechanisms is fewer in number than said customer
operation stations . . . a controller for determining if one
of the cash handling mechanism fails and for controlling each
functional cash handling mechanism to respond to said
customers’ request normally handled by said failed cash
handling mechanism. We note that the scope of claim 2
requires at least three customer operation stations and at
least two cash handling mechanisms operable to serve these
cash handling mechanisms.
We fail to find that the prior art suggests using two
cash handling mechanisms and at least three customer operation
stations. We agree that the combination of Ito and Yoshihiko
teach the use of one cash handling mechanism serving multiple
customer operation stations. However, the Examiner has failed
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to show that this combination would have suggested to those
skilled in the art to have more than one cash handling
mechanism serving a greater number of customer operation
stations. Granzow does not fill this gap. Granzow teaches a
system in normal operation having at least one cash handling
mechanism for each customers’ operation station. Therefore,
we will not sustain the Examiner’s rejection of claim 2 under
35 U.S.C. § 103.
In view of the foregoing, the decision of the Examiner
rejecting claim 1 under 35 U.S.C. § 103 is affirmed; however,
the decision of the Examiner rejecting claim 2 under 35 U.S.C.
§ 103 is reversed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Michael R. Fleming ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Joseph L. Dixon )
Administrative Patent Judge )
MRF:tdl
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Application No. 08/220,756
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Charlene Stukenborg
NCR Corporation, Law Dept.
Intellectual Property Section
ECD-2, 101, West Schantz
Dayton, OH 45479-0001