Ex Parte Smith

Board of Patent Appeals and Interferences

Aug 30, 2012

10903119 (B.P.A.I. Aug. 30, 2012)

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.
10/903,119 07/30/2004 Mike Smith FIRE 0121 PUS 5010
22045 7590 08/31/2012
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
BEAUCHAINE, MARK J
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
08/31/2012 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 MIKE SMITH
____________

Appeal 2010-008251
Application 10/903,119
Technology Center 3600
____________

Before LINDA E. HORNER, MICHAEL C. ASTORINO, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mike Smith (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1, 6-21, and 23-26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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THE INVENTION
Appellant’s claimed invention “relates to apparatuses having bill
validators, such as safes, vending machines, and video game machines.”
Spec. 1, ll. 5-6. Claims 1, 16, 20, 21, and 24 are independent. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. An apparatus, the apparatus comprising:
a housing having a storage area wherein
items are stored for safekeeping;
a primary lock for controlling access to the
storage area, the primary lock being operable to an
unlocked position to permit access to the storage
area;
an exposed bill validator that is accessible
for removal from outside the housing without
unlocking a security lock, the bill validator being
configured for receiving bills and delivering the
received bills to the storage area, wherein the
housing is configured to permit the validator to be
removed without unlocking the primary lock and
without providing access to items stored in the
storage area.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claim 16 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
2. Claims 1, 6, 7, and 10-15 are rejected under 35 U.S.C. § 102(e) as
anticipated by Dobbins (US 2005/0040005 A1; iss. Feb. 24, 2005).
3. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Dobbins.
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4. Claims 16-21 and 23-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dobbins and Fujita (US 5,836,435; iss. Nov. 17,
1998).
ISSUES
The issues presented by this appeal are:
Does Appellant’s original disclosure adequately support the claim
language “wherein the door lock is the only security lock” as recited in
claim 16?
Does Dobbins disclose “an exposed bill validator that is accessible for
removal from outside the housing without unlocking a security lock” as
called for in independent claim 1?
Did the Examiner articulate adequate reasoning based on rational
underpinnings to support the determination that it would have been obvious
to one of ordinary skill in the art, in light of Fujita, to eliminate the door and
lock configuration to expose the bill validator in Dobbins?
ANALYSIS
Rejection of claim 16 under 35 U.S.C. § 112, first paragraph
Claim 16 calls for an apparatus comprising a housing having first and
second openings and a door covering the second opening with a door lock
for securing the door “wherein the door lock is the only security lock.”
The Examiner determined that the original disclosure fails to
adequately describe the “door lock” being the “only security lock” of the
apparatus as called for in claim 16. Ans. 4. The Examiner states that the
original disclosure depicts and describes “configurations of three separate
and distinct doors 18, 20 and 22 that are described as being locked and
unlocked.” Ans. 8. Appellant argues that “[w]hile the use of multiple locks
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is shown and described within the specification, the originally filed
specification sufficiently conveys possession of other aspects of the
invention, including one of aspect having to do with the ‘door lock being the
only security lock.’” Reply Br. 3.
To satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citations omitted). “[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Id. (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)). The
claimed invention need not be recited in haec verba in the original
specification to satisfy the written description requirement. Id. at 1352.
“[T]he written description requirement is satisfied by the patentee’s
disclosure of ‘such descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention.’” Enzo Biochem,
Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
The Specification describes a safe 10 having a housing 16 including a
first door 18, a second door 20, and a third door 22, wherein valuable items
can be stored within a respective storage area 38, 40, and 42 behind each
door for safekeeping. Spec. 4, ll. 10-12; Spec. 5, ll. 14-15; figs. 1, 2. The
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Specification describes that a controller 30 electrically controls the
unlocking and locking of the doors 18, 20, and 22 based on combination
codes inputted into the controller 30. Spec. 4, ll. 22-24. The Specification
further describes that “[a] key-lock 52 can be included to secure the bill
validator 14 within the safe 10 as a minimum security precaution.” Spec. 5,
ll. 24-25. The Specification offers as an alternative, however, that the safe
can be constructed without the key-lock 52, wherein a release mechanism
comprising a pair of tabs 56 and a pair of detents 58 can be used to secure
the bill validator 14 within the safe 10. Spec. 6, ll. 3-6. The Specification
also describes that a cassette 62, which is stored within the storage area 40
behind second door 20, preferably includes a key-lock 70 that locks a cover
74 of the cassette 62. Spec. 6, ll. 14-15, 18-20; fig. 3.
Thus, the Specification describes a safe 10 having three security locks,
one on each door 18, 20, and 22, another optional security lock 52 to secure
the bill validator 14, and another security lock 70 that locks a cover 74 of the
cassette 62. Even assuming that optional security lock 52 is omitted from
the safe and that preferred security lock 70 is omitted from the cassette, the
safe still includes the two security locks on doors 18 and 22, in addition to
the security lock 64 on door 20. The Specification does not describe the
doors 18 and 22 or their respective locks as being optional, and does not
describe an embodiment of a safe that contains only a single security lock in
a manner sufficient to convey to those skilled in the art that Appellant has
possession of the claimed subject matter as of the filing date. As such, we
sustain the rejection of claim 16 under 35 U.S.C. § 112, first paragraph.
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Rejection of claims 1, 6, 7, and 10-15 under 35 U.S.C. § 102(e) as
anticipated by Dobbins
Claim 1 calls for an apparatus comprising “an exposed bill validator
that is accessible for removal from outside the housing without unlocking a
security lock.” The Examiner determined that Dobbins discloses a bill
validator 201 that is removable without unlocking a security lock because
although bill validator 201 is disposed in a storage area behind a lockable
door 101, “the front bezel portion of the validator of Dobbins is exposed
when [door] 101 is in either the open or closed positions, and Dobbins does
not disclose or imply that [the door 101] must be in the closed position for
the validator to operate,” and “Dobbins does not disclose or imply that lock
210 [on door 101] . . . must be activated when said door is in the closed
position.” Ans. 9. We disagree with the Examiner’s reading of Dobbins.
First, as noted by Appellant, the fact that the front bezel portion of the
bill validator of Dobbins is exposed when the door is closed does not render
the validator “accessible for removal” when the door is closed as it appears
that the opening 280 in door 101 is not sized sufficiently to allow for
removal of the validator 201 through the opening 280. App. Br. 8. As to the
remaining two positions taken by the Examiner, Dobbins explicitly discloses
that access to the bill acceptor module and safe electronics behind access
door 101 is “controlled by a lock 110” and that access door 101 is “secured
to the safe 100 with the use of hinges 130” and “[c]are must be taken to
insure the integrity of these hinges so that they do not allow easy forced
entry into the safe.” Dobbins, paras. [0027], [0032]. As such, Dobbins does
not disclose a use of its safe that would include either leaving door 101 open
or closed and unlocked. The structure of the safe disclosed in Dobbins is
such that the bill acceptor module is disposed in a storage area behind a
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locked access door 101 and can be removed only by unlocking this door.
Thus, we disagree with the Examiner’s determination that Dobbins discloses
“an exposed bill validator that is accessible for removal from outside the
housing without unlocking a security lock” as called for in claim 1.
Accordingly, we cannot sustain the rejection of claim 1, or its dependent
claims 6, 7, and 10-15, as anticipated by Dobbins.
Rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over
Dobbins
Claims 8 and 9 depend from claim 1. The rejection of claims 8 and 9
relies on the same erroneous determination as to Dobbins as discussed supra
for claim 1. Accordingly, we cannot sustain the rejection of claims 8 and 9
as unpatentable over Dobbins.
Rejection of claims 16-21 and 23-26 under 35 U.S.C. § 103(a) as
unpatentable over Dobbins and Fujita
Appellant argues:
Modifying the Dobbins application to include the Fujita bill
validator would allow the sensing portion of the bill validator
200 to be removed through the opening 280. This would render
the Dobbins application unsatisfactory for its intended purpose
since it is particularly concerned with securing the bill validator
200 from removal by protecting it behind the locked door 101
and not allowing it to be removed through the opening 280.
App. Br. 11 (arguments directed to independent claim 16). See also App.
Br. 12 (claim 20), 14 (claim 21), and 15 (claim 24).
The Examiner determined that while “Dobbins fails to disclose said
bill validator being secured without a lock,” “Fujita teaches [a] bill validator
2 (see Figure 1) that is removable from said housing without the use of a
security lock and without moving an outside wall for the purpose of
permitting an operator to easily replace a defective validator.” Ans. 6. The
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Examiner determined it would have been obvious “to incorporate the
removable validator configuration of Fujita into the apparatus of Dobbins for
the purpose of permitting an operator to easily remove a defective
validator.” Id. The Examiner further stated, in response to Appellant’s
arguments, that one of ordinary skill “would consider the elimination of [the
door 101/lock 210] of Dobbins to reduce manufacturing costs.” Ans. 11.
While Fujita discloses a validator means 2 that is removable from a
bill handling apparatus 1, Fujita does not teach or suggest that were Fujita’s
bill handling apparatus 1 incorporated into a safe, such as Dobbins, that the
validator means 2 would be accessible without opening a security lock.
Rather, Fujita is directed to a coupling means 10 for detachably supporting
the validator means 2, so that the bill handling apparatus itself does not have
to be exchanged when different kind of bills should be validated or when the
validator is broken. Fujita, col. 1, ll. 28-32 and col. 2, ll. 54-55. In light of
Dobbins’s disclosure of a desire to maintain the bill validator behind a
locked door, we find that the Examiner’s reasoning for modifying Dobbins
to remove the door 101 and lock 210 is inadequate to explain why one of
ordinary skill in the art would be led by Fujita to remove the door 101 and
lock 210 on Dobbins’s safe. Accordingly, we cannot sustain the rejection of
claims 16-21 and 23-26 under 35 U.S.C. § 103 as unpatentable over Dobbins
and Fujita.
CONCLUSIONS
Appellant’s original disclosure fails to adequately support the claim
language “wherein the door lock is the only security lock” as recited in
claim 16.
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Dobbins does not disclose “an exposed bill validator that is accessible
for removal from outside the housing without unlocking a security lock” as
called for in independent claim 1.
The Examiner did not articulate adequate reasoning based on rational
underpinnings to support the determination that it would have been obvious
to one of ordinary skill in the art to eliminate the door and lock configuration
to expose the bill validator in Dobbins.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 6-15,
17-21, and 23-26. We AFFIRM the decision of the Examiner to reject
claim 16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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