Ex Parte Yechuri

Patent Trial and Appeal Board

Dec 28, 2016

13299860 (P.T.A.B. Dec. 28, 2016)

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.
13/299,860 11/18/2011 Lakshmi Yechuri 11-591 3804
107681 7590 12/30/2016
NCR Corporation
3097 Satelite Boulevard
Building 700, 2nd Floor, Law Department
Duluth, GA 30096
EXAMINER
WAGGONER, TIMOTHY R
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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):
PTOMail.Law @ ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAKSHMIYECHURI
Appeal 2015-002732
Application 13/299,860
Technology Center 3600
Before JAMES P. CALVE, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lakshmi Yechuri (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—4 and 7—10.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant submits the real party in interest is NCR Corporation. Appeal
Br. 2.
Appeal 2015-002732
Application 13/299,860
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method for dispensing fuel and a media item from an
apparatus comprising a processor, a display, an input device, a
card reader, a fuel pumping subsystem, and a media dispensing
subsystem in a common housing, the method comprising:
a) reading a payment card of a customer at said card
reader,
b) communicating, by said processor, with a remote server
to validate said payment card,
c) receiving, by said processor, a validation signal from
said remote server,
d) sending a signal from said processor to said fuel
pumping subsystem to permit the pumping of fuel from the
housing,
e) presenting a user interface to the customer utilizing said
display,
f) receiving, by said processor, a selection of a media
product from said customer,
g) communicating, by said processor, with a remote server
to process a payment for said selection,
h) sending a signal from said processor to said media
dispensing subsystem to dispense said selection, and
i) dispensing a media product corresponding to said
selection from the housing.
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Appeal 2015-002732
Application 13/299,860
REJECTIONS
Claims 1—4 and 7—10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Phillips (US 6,193,154 Bl, iss. Feb. 27, 2001), DeLazzer
(US 7,234,609 B2, iss. June 26, 2007), and Chandonnet (US 6,401,009 Bl,
iss. June 4, 2002).
DISCUSSION
The Examiner finds that Phillips discloses the limitations of claim 1
except for “controlling a DVD rental machine via pump controls.” Final
Act. 2—3. The Examiner finds the DeLazzer discloses “locating a DVD
rental machine at a gas station” and reasons it would have been obvious to
modify Phillips “to control a DVD rental machine located at the gas station
because it promotes DVD rentals by combining the transactions and attracts
more users to the gas station providing this system.” Id. at 3. The Examiner
finds that the Phillips/DeLazzer combination does not disclose “the pumping
system and the [DVD] dispensing system” located in a single housing. Id.
The Examiner finds that Chandonnet discloses “incorporating a dispensing
system and pumping system in a single housing and controlling the
dispensing system at least in part by the pumping system.” Id. The
Examiner concludes that it would have been obvious to modify the
Phillips/DeLazzer combination “to incorporate both the pumping system and
the vending system into a single housing because it saves the customer time
by not requiring the user to travel between two machines.” Id.
Appellant contends that Phillips teaches away from the claimed
invention because it teaches remote control by one machine in a first
housing of a second machine in a second housing as opposed to a single
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Appeal 2015-002732
Application 13/299,860
housing for both machines as recited in claims 1 and 7. Appeal Br. 8—9.
Appellant also contends DeLazzer’s apparatus cannot be combined with
Chandonnet’s apparatus because “DeLazzer’s teachings are lost if the
structural and mechanical dimensions and arrangements are not deployed to
achieve its transport unit.” Id. at 9. Appellant, however, does not contend
that any of the Examiner’s findings are erroneous. Id. at 8—10.
We are not persuaded by Appellant’s contention that Phillips teaches
away from the claimed invention for the following reasons. When a prior art
reference discloses a different solution to a similar problem, it does not teach
away from the claimed subject matter unless the prior art reference also
criticizes, discredits, or otherwise discourages the solution claimed. See
Crocs, Inc. v. U.S. International Trade Commission, 598 F.3d 1294, 1308
(Fed. Cir. 2010) (Prior art taught away by specifically discouraging use of
foam straps.); In re Fulton, 391 F. 3d 1195, 1201 (Fed. Cir. 2004).
Appellant relies on Phillips’ disclosure of two housings but does not direct
us to any disclosure in Phillips that criticizes, discredits, or otherwise
discourages the use of a single housing for dispensing both fuel and a media
product. In the absence of such a disclosure, we find that Phillips does not
teach away from the claimed invention. Moreover, to the extent there may
be advantages, disadvantages, or trade-offs for single and separate housings,
a skilled artisan could weigh those factors and find motivation to combine a
pump and vending machine in a single housing. The Examiner’s reason for
doing so to save time by not requiring a user to move between two machines
is supported by a rational underpinning and the teachings of Chandonnet that
customers often do not travel from the pumps to shop for merchandise at the
nearby station/store. Chandonnet, 1:33—54,2:54—65.
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Appeal 2015-002732
Application 13/299,860
We are also not persuaded by Appellant’s contention that it would be
improper to combine DeLazzer’s apparatus with Chandonnet’s apparatus.
The Examiner relies on DeLazzer for disclosing the advantages of renting
DVDs at a gas station and does not propose incorporating DeLazzer’s
specific apparatus for dispensing DVDs into Chandonnet’s apparatus.
Ans. 4. The Examiner finds that Chandonnet discloses “incorporating a
dispensing system and pumping system in a single housing.” Final Act. 3;
Ans. 4. The Examiner’s finding is supported by the disclosure in
Chandonnet. See Chandonnet, col. 8,11. 45—50, col. 9,11. 1—5, Figs. 2, 3.
Appellant’s contention, thus, does not apprise us of error because the
rejection is not based on incorporating DeLazzer’s disclosed apparatus into
Chandonnet’s housing.
For the foregoing reasons, Appellant fails to persuasively apprise us
of error in the Examiner’s factual findings or rationale, quoted above, for the
combination of Phillips, DeLazzer, and Chandonnet, which we determine to
be reasonable and supported by rational underpinnings. See KSR Intern. Co.
v Teleflex Inc., 550 U.S. 398, 416 (2007) (“[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”). We, thus, sustain the rejection of
claims 1 and 7 under 35 U.S.C. § 103(a). Appellant does not argue
separately for the patentability of claims 2-4, which depend from claim 1,
and claims 8—10, which depend from claim 7. Appeal Br. 8—10. We also
sustain the rejection of claims 2—A and 8—10 for the same reasons stated
above for claims 1 and 7.
DECISION
The Examiner’s decision rejecting claims 1—4 and 7—10 is affirmed.
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Appeal 2015-002732
Application 13/299,860
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)(l)(iv).
AFFIRMED
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