Ex Parte SchwitzkyDownload PDFPatent Trial and Appeal BoardApr 11, 201411720148 (P.T.A.B. Apr. 11, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte VOLKMAR ROLF SCHWITZKY ______________ Appeal 2011-012564 Application 11/720,148 Technology Center 2800 _______________ Before CHARLES F. WARREN, PETER F. KRATZ and GEORGE C. BEST, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Applicant appeals to the Board under 35 U.S.C. § 134(a) from the decision of the Primary Examiner finally rejecting claims 1, 3-6 and 8-16: under 35 U.S.C. § 102(b), claims 1, 3, 4, 9, 12 and 13 over “Check Orientation Detection for Automatic Teller Machine” (NPL),1 and under 35 U.S.C. § 103(a), claims 5, 6, 14 and 15 over NPL and Howland (GB 2 400 076 A), claims 8 and 16 over NPL and Shenton (US 5,199,744), and claims 10 and 11 over NPL and Germann (US 5,062,360). App. Br. 5; Ans. 3, 5, 6. We have jurisdiction. 35 U.S.C. § 6(b). We reverse the decision of the Primary Examiner. 1 IBM® Technical Disclosure Bulletin, Vol. 30, No. 1, pp. 16-17 (June 1987). Appeal 2011-012564 Application 11/720,148 2 Claim 1 illustrates Appellant’s invention of a method of processing sheets suitable for use in the production of banknotes or security documents on printing machines, and is representative of the claims on appeal: 1. A method of processing sheets on printing machines, the method comprising the steps of: providing a printing machine having a detector for controlling orientation and/or position of the sheets; providing a sheets suitable for use in the production of banknotes or security documents, said sheet being provided with at least one marking embedded in the sheet, which marking is embedded in the sheet during manufacturing thereof, prior to processing of the sheet on the printing machine, the marking being disposed in a selected location of the sheet and defining a unique orientation and/or position of the sheet; feeding the sheet into the printing machine; using the detector to check for the presence or absence of the marking at the selected location on the sheet and/or of characteristic features of the marking; issuing a warning signal if the marking is not detected at the selected location or if the characteristic features of the marking are not detected at the selected location; and printing the sheet using the printing machine if no warning signal is issued. App. Br. 13 (Claims App’x). Spec., e.g., 4:20 to 6:13. OPINION We agree with Appellant that the Examiner erred in finding that as a matter of fact one skilled in the art would have known that a bank “check” which has payer inscribed information thereon before a payee presents it to an automatic teller machine (ATM) for “validation” to facilitate crediting the payee’s account by the bank in NPL is “a sheet suitable for use in the production of banknotes or security documents” as specified in claim 1 and Appeal 2011-012564 Application 11/720,148 3 as similarly specified in claim 12. Ans. 4, 8-9; App. Br. 6-8; Reply Br. 8-9. We determine that, as Appellant contends and contrary to the Examiner’s position, the plain language of the subject limitations of claims 1 and 12 specifies any sheet which can be used to produce banknotes or securities documents, and does not encompass a bank “check” that has been printed and has further information inscribed thereon by a payer prior to presentation for payment at an ATM. See Spec., e.g., 4:20-25, 5:31 to 6:3, Figs. 1, 2. We find no disclosure in the Specification which establishes that the subject limitations can be interpreted to have a greater scope than established by the plain language thereof, and the Examiner has not directed our attention to such disclosure. See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010) (“claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art”); In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (“[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.”); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997) (“[T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.”); In re Zletz, 893 F.2d 319, 321- 22 (Fed. Cir. 1989) (“During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow. When the applicant states the meaning that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a complete exploration of Appeal 2011-012564 Application 11/720,148 4 the applicant’s invention and its relation to the prior art. See In re Prater, 415 F.2d 1393, 1404-05 [] ([CCPA] 1969) (before the application is granted, there is no reason to read into the claim the limitations of the specification.).”). We find that one skilled in the art would have known that a check presented to an ATM has payer inscribed information thereon and that the ATM prints “validation” information on the presented check to facilitate crediting the payee’s account by the bank. We further find, in this respect, that one skilled in the art would recognize that NPL illustrates the described method using a blank check as it is customary to use a blank check without payer information in such illustrations. See, e.g., In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” (citation omitted)). On this record, we cannot agree with the Examiner’s finding that the ATM “validation” of the presented check in NPL involves a method of printing information on a sheet which is suitable for use in production of “security documents” because “checks . . . are not to be forged or falsified.” Ans. 4, 8-9. Indeed, we find that NPL does not describe to one skilled in the art a method in which the ATM prints payer information on a blank check, and thus, we agree with Appellant that “[a] check, because it is a complete security document, is not a sheet suitable for use in the production of same.” Reply Br. 8-9. Accordingly, we are of the opinion that the Examiner’s error in interpreting the subject limitations of claims 1 and 12 led to the further error Appeal 2011-012564 Application 11/720,148 5 in finding that NPL would have described to one skilled in the art embodiments of a method for processing sheets on printing machines which fall within claims 1 and 12. See, e.g., Am. Calcar, Inc. v. Am. Honda Motor Co., Inc., 651 F.3d 1318, 1341 (Fed. Cir. 2011); Therasense, Inc. v. Becton, Dickinson and Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Sanofi-Synthelabo v. Apotex Inc., 550 F.3d 1075, 1083 (Fed, Cir. 2008); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990). Thus, in absence of a prima facie case of anticipation, we reverse the rejection of claims 1, 3, 4, 9, 12 and 13 over NPL under 35 U.S.C. § 102(b). The Examiner further relies on the same disclosure in NPL in the same manner with respect to the same limitations in independent claims 1 and 12 in the grounds of rejection of dependent claims 5, 6, 8, 10, 11 and 14-16 under 35 U.S.C. § 103(a) over NPL combined with each of Howland, Shenton and Germann, and thus we reverse these grounds for lack of a prima facie case of obviousness. Ans. 5, 6, 10. The Primary Examiner’s decision is reversed. REVERSED cam Copy with citationCopy as parenthetical citation