Kelly, Nigel

Patent Trials and Appeals Board

Oct 2, 2019

14600700 - (R) (P.T.A.B. Oct. 2, 2019)

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.
14/600,700 01/20/2015 Nigel Kelly 348-310 9366
1009 7590 10/02/2019
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
GARNER, WERNER G
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
laura@iplaw1.net
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NIGEL KELLY
____________________

Appeal 2018-006129
Application 14/600,700
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON REHEARING

STATEMENT OF THE CASE
Pursuant to 37 C.F.R. § 41.50(b)(2), Appellant filed a Request for
Rehearing on August 7, 2019 (“Req. Reh’g”) seeking reconsideration of our
Decision on Appeal mailed June 7, 2019 (“Dec.”), which includes new
grounds of rejection. We have jurisdiction over the Request for Rehearing
under 35 U.S.C. § 6(b).

ANALYSIS
A request for rehearing “must address any new ground of rejection
and state with particularity the points believed to have been misapprehended
Appeal 2018-006129
Application 14/600,700

2
or overlooked in entering the new ground of rejection.” 37 C.F.R.
§ 41.50(b)(2). Arguments not raised and evidence not previously relied
upon in the briefs on appeal are not permitted on rehearing, except an
appellant may present new arguments responding to a new ground of
rejection in a decision on appeal. Id. § 41.52(a)(3).
Appellant argues the Board misconstrued the term “predefined
criteria” recited in independent claims 17 and 21. Req. Reh’g 1–4. More
specifically, Appellant contends the Board mistakenly determined
“predefined criteria” means criteria independent of the data being compared
thereto, i.e., data representative of the banknote. Id. at 1–2 (citing Dec. 7).
According to Appellant, “the plain meaning of ‘predefined’ properly
includes a temporal element.” Id. at 3. Appellant argues “[the
Specification’s] illustrated embodiments (showing scanning/determining
data immediately followed by the comparison), along with the temporal
aspect inherent to the word ‘predefined’ necessitates that claims 17 and 21
require that the criteria must be defined prior to scanning the banknote.” Id.
at 4 (referencing Spec., Figs. 3–4). Appellant further argues that “once the
temporal element of the term ‘predefined’ is properly considered, the
qualification numbers of Parham cannot be considered ‘predefined’ at all, as
they occur immediately before the comparison happens (and after the
scanning has occurred).” Id. at 3.
When construing claims,
the 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.
Appeal 2018-006129
Application 14/600,700

3
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also Chef Am., Inc.
v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004) (explaining claim
terms are to be given their ordinary meaning, absent any indication that their
use in a particular context changes their meaning). The Federal Circuit also
has explained:
“Though understanding the claim language may be aided by
explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.”
Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004); see also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906
(Fed. Cir. 2004) (explaining the court has expressly rejected the contention
that if a patent describes only a single embodiment, the claims of the patent
must be construed as being limited to that embodiment).
We agree with Appellant that “predefined” includes a temporal
element. The ordinary meaning of “predefine” is to “define in advance.”
Predefine, Collins English Dictionary – Complete and Unabridged (12th ed.
2014). There is no definition of “predefined” in the Specification or any
indication that the term is used in a manner different from its ordinary
meaning.
In view of this meaning of “predefined,” the term “predefined
criteria” requires that the criteria be defined in advance. Yet, neither the
term, nor the remaining claim language, specifies in advance of what. The
Specification does not include the term “predefined criteria,” but does
include two instances of a similar term, “predetermined criteria.” Namely,
the Specification explains that “the image recognition module 20 generates
Appeal 2018-006129
Application 14/600,700

4
an output signal 21, which is fed to a decision-making module 22 in which is
run an algorithm for comparing the data 21 received from the image
recognition module 20 against predetermined criteria.” Spec.1 5:14–16. The
Specification also explains “the criteria for whether or not a promotional
reward is to be offered is based on the face value of the note, so the
determined face value is then compared against the predetermined criteria
for offering a promotional reward.” Id. at 6:20–23. The Specification,
however, does not describe when the predetermined criteria is defined. As
neither the claim language nor the Specification explains when the
predefined criteria is defined, Appellant’s assertion that “predefined criteria”
means criteria defined in advance of scanning a banknote impermissibly
reads a limitation into the claims.
Although the term “predefined criteria” does not specify in advance of
what the criteria is defined, the criteria must be defined in advance of at least
the comparison to the criteria. See Req. Reh’g 1–2 (agreeing with the
Board’s determination that predefined criteria must be defined before the
comparison, “as in order for a comparison to take place, the two things being
compared must obviously be known prior to the comparison”). It is also
significant that the criteria is independent of the data compared thereto, i.e.,
the banknote data. Dec. 7 (“[W]hat is significant is that the data
representative of the banknote is compared to criteria independent of the
data.”). Pursuant to the broadest reasonable interpretation, “predefined
criteria” means criteria defined before the comparison and independent of
the data compared thereto. Giving “predefined criteria” its broadest
reasonable interpretation, Parham’s randomly-generated qualification

1 Specification filed Jan. 20, 2015.
Appeal 2018-006129
Application 14/600,700

5
numbers disclose the recited “predefined criteria” for the reasons in the
Decision on Appeal. Id. Accordingly, Appellant has not shown error in the
new ground of rejection of independent claims 17 and 21.

DECISION
Upon consideration of Appellant’s arguments on rehearing, we deny
the request to modify the outcome of the Decision on Appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(1)(iv).
DENIED

Notice of References Cited

Application/Control No.

Applicant(s)/Patent Under Patent
Appeal No.
Examiner

Art Unit

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U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
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p
precurrer - predicate 11564
precurrer (pri:'ka:ra) n archaic a precursor, forerunner
precurse (pn'ka:s) n 1 archaic a foreshadowing or precursing � vb (tr)
2 literary to foreshadow or be a precursor of, to herald • precursor(pn'ka:sa)
n 1 a person or thing that precedes and shows or announces someone or
something to come; harbinger 2 a predecessor or forerunner 3 a chemical
substance that gives rise to another more important substance [C16: from
Latin praecursor one who runs in front, from praecurrere, from prae in front +
currere to run] • precursory (pn'ka:san) or precursive adj 1 serving as a
precursor 2 preliminary or introductory
precut (pri:'k11.t) n 1 any precut item 2 an initial cut made in a coalface prior
to the main mining process � adj 3 cut in advance 4 ( of a building) made of
precut materials � vb (tr) s to cut (esp building materials) to the desired
shape and size in advance 6 to make an initial cut into (a coalface) before
mining the coal
pred. abbreviation for predicate
predacious or predaceous (pn'de1fas) adj 1 (of animals) habitually
hunting and killing other animals for food 2 preying on others [ C18:
from Latin praeda plunder; compare PREDATORY] > pre'daciousness,
pre'daceousness orpredacity (pn'd;es1t1) n
predate (pri:'de1t) vb (tr) 1 to affix a date to (a document, paper, etc) that is
earlier than the actual date 2 to assign a date to (an event, period, etc) that
is earlier than the actual or previously assigned date of occurrence 3 to be
or occur at an earlier date than; precede in time
predation (pn'de1fan) n a relationship between two species of animal in a
co
i
munity, in which one (the predator) hunts, kills, and eats the other
(th prey)
pred tism ('prEdat1zam) n the state of preying on other animals; the
behaviour of a predator
predative ('prEdativ) adj another word for predatory
predator ('prEdata) n 1 any carnivorous animal 2 a predatory person or
thing• predatory('prEdatan,-tn) adj 1 zoo109yanotherword forpredacious
(1) 2 of, involving, or characterized by plundering, robbing, etc [C16: from
Latin praediitiirius rapacious, from praediiri to pillage, from praeda booty]
> 'predatorily adv > 'predatoriness n • predatory pricing n commerce
offering goods or services at such a low price that competitors are forced
out of the market
predawn (pri:'d:,:n) n 1 the period before dawn � adj 2 before dawn � adv
3 before dawn
predeath (pri:'dE0) adj occurring before or in the lead-up to death; of or
pertaining to the period immediately prior to death
predebate (,pri:d1'be1t) adj occurring or produced before a given debate; of
or pertaining to the period leading up to a given debate
predecease (,pri:d1'si:s) vb 1 to die before (some other person) � n 2 rare
earlier death
predecessor ('pri:d1,s£sa) n 1 a person who precedes another, as in an
office 2 something that precedes something else 3 an ancestor; forefather
[ C14: via Old French from Late Latin praedecessor, from prae before + decedere
to go away, from de away+ cedere to go)
prededuct (,pri:dr'dAkt) adj 1 US preceding deduction, done or carried out
prior to a deduction being made � vb (tr) 2 to deduct beforehand
predefine (,pri:d1'fam) vb (tr) to define in advance • predefinition
(,pri:d£f1'mf'n) n the process or action of defining in advance; an advance
definition
predelivery (,pri:d1'1Ivan) n 1 the act of delivering in advance of need, use
or expectation of the thing delivered � adj 2 of, pertaining to or occurring
in the period prior to a delivery being made
predella (pn'dEla; Italian pre'dEila) n, pl -le (-li:; Italian -le) 1 a painting or
sculpture or a series of small paintings or sculptures in a long narrow strip
forming the lower edge of an altarpiece or the face of an altar step or
platform 2a platform in a church upon which the altar stands [C19: from
Italian: stool, step, probably from Old High German bret board]
predentate (pri:'drnte1t) adj 1 of an infant whose teeth have not yet
developed; occurring during or pertaining to this period of development
2 of or pertaining to the Predentata (also called Ornithischia), an order of
dinosaur possessing a predentary bone
predeparture (,pri:dr'pa:t(a) adj of, pertaining to or implemented during
the stage prior to departure
predeposit (,pri:d1'puz1t) vb (tr) to deposit beforehand or for future use
predesign (,pri:d1'zam) vb (tr) to design beforehand or in advance
predesignate (pri:'dEZignat) adj 1 lo9ic .in the terminology of Sir William
Hamilton, of a proposition or term that has been explicitly quantified � vb
(tr) 2 to designate in advance 3 logic in the terminology of Sir William
Hamilton, explicitly to assign a quantity to (a proposition or term)
• predesignation (,pri:d£z1g'ne1f'n) n 1 the action of designating in
advance; an instance thereof, an advance designation 2 logic in the
terminology of Sir William Hamilton, an indication or sign of quantity
affixed to a proposition or term • predesignatory (,pri:dEZig'ne1tan) adj
logic in the terminology of Sir William Hamilton, ( of a sign) affixed to a
proposition or term to indicate quantity
predestine (pri:'dEstm) or predestinate vb (tr) 1 to foreordain; determine
beforehand 2 theol ( of God) to decree from eternity (any event, esp the final
salvation of individuals) [C14: from Latin praedestiniire to resolve
beforehand, from destiniire to determine, DESTINE] > pre'destinable adj
• predestinarian (,pri:dEst1'nEanan) theol n 1 a person who believes in
divine predestination � adj 2 of or relating to predestination or
characterizing those who believe in it > ,predesti'narianism n
• predestinate vb (pri:'dEst1,ne1t) 1 (tr) another word for predestine � adj
(pri:'dEstmit, -,ne1t) 2 predestined or foreordained 3 theol subject to
predestination; decided by God from all eternity • predestinatiOt'I
(pri:,d£st1'ne1fan) n 1 theol a the act of God foreordaining every event from
eternity b the doctrine or belief, esp associated with Calvin, that the final
salvation of some of mankind is foreordained from eternity by God 2 the
act of predestining or the state of being predestined • predestinative
(pri:'dEstmat1v) adj predestinating; of the nature of or concerned with
predestination • predestinator (pri:'dEst1,ne1ta) n 1 theol God, regarded as
the entity that predestines or foreordains 2 a person who predestines or
foreordains 3 anotherwordforpredestinarian • predestined (,pri:'dEStmd)
adj foreordained or determined beforehand • predestiny (pri:'dEst1m) n
predestination; pre-determined destiny
predetermine (,pri:d1'tJ:mm) vb (tr) 1 to determine beforehand 2 to influence
or incline towards an opinion beforehand; bias > ,prede,termi'nation �
> ,prede'terminative adj > ,prede'terminer n • predeterminable
(,pri:d1'ts:mmab'l) adj able to be predetermined; able to be determined in
advance • predeterminate (,pri:d1'ta:mm1t, -,ne1t) adj determined
beforehand; predetermined > ,prede'terminately adv • predetermined
(,pri:d1'tJ:mmd) adj 1 determined beforehand 2 influenced or inclined
towards an opm10n beforehand; biased • predeterminism
(,pri:d1'ts:mm1zam) n the belief that everything is predetermined
predevaluation (,pri:di:,v;elju'e1f'n) adj of or pertaining to the period prior
to devaluation of a given thing
predevelop (,pri:d1'vElap) vb (tr) to develop in advance • predevelopment
(,pri:d1'v£lapmant) n 1 advance development; the action of developing in
advance � adj 2 of or pertaining to the period prior to the development of a
given thing; occurring or implemented during this period
predevote (,pri:d1'vaut) adj 1 archaic predestined, predetermined � vb (tr)
2 to devote or dedicate beforehand
prediabetes (,pri:da1a'bi:t1s, ,pri:da1a'bi:ti:z) n the early stages of diabetes;
preclinical diabetes • prediabetic (,pri:da1a'bmk) med n 1 a person
suffering from prediabetes � adj 2 of or pertaining to prediabetes; (of a
person) suffering from prediabetes, liable to develop diabetes
predial ('pri:d1al) adj a variant spelling of praedial
predicament (pn'd1kamant) n 1 a perplexing, embarrassing, or difficult
situation 2 ('prrd1kamant) logic obsolete one of Aristotle's ten categories of
being 3 archaic a specific condition, circumstance, state, position, etc [C14:
from Late Latin praediciimentum what is predicated, from praediciire to
announce, assert; see PREDICATE] • predicamental (pn,d1ka'mmtal) adj
1 of or relating to a predicament or situation 2 ( esp in Aristotelian
philosophy) of or relating to a category or predicament
predicant ('pr£d1kant) adj 1 of or relating to preaching � n 2 a member of a
religious order founded for preaching, esp a Dominican 3 (,pr£d1'k;ent) a
variant spelling of predikant [ C17: from Latin praediciins preaching, from
praediciire to say publicly; see PREDICATE)
predicate vb ('pr£d1,ke1t) (mainly tr) 1 (also intr; when tr, may take a clause as object)
to proclaim, declare, or affirm 2 to imply or connote 3 (foll by on orupon) to
base or found (a proposition, argument, etc) 4 logic a to assert or affirm (a
property, characteristic, or condition) of the subject of a proposition b to
make (a term, expression, etc) the predicate of a proposition � n ('prEdrkit)
sgrammar a the part of a sentence in which something is asserted or
denied of the subject of a sentence; one of the two major components of a
sentence, the other being the subject b (as modifier): a predicate adjective 6 logic
a an expression that is derived from a sentence by the deletion of a name
b a property, characteristic, or attribute that may be affirmed or denied of
something. The categorial statement all men are mortal relates two
predicates, is a man and is mortal c the term of a categorial proposition that
is affirmed or denied of its subject. In this example all men is the subject,
and mortal is the predicate d a function from individuals to truth values;
the truth set of the function being the extension of the predicate � adj
('prEdtkrt) 7 of orrelating to something that has been predicated [ C16: from
Latin praediciire to assert publicly, from prae in front, in public+ dicere to say]
> ,predi' cation n • predicable ('prrd1kab'l) adj 1 capable of being predicated
or asserted � n 2 a quality, attribute, etc, that can be predicated 3 logic
obsolete one of the five Aristotelian classes of predicates (the five heads of
predicables), namely genus, species, difference, property, and relation
[ C16: from Latin praediciibilis, from praediciire to assert publicly; see
PREDICATE, PREACH] > ,predica'bility or 'predicableness n • predicate
calculus n the system of symbolic logic concerned not only with relations
between propositions as wholes but also with the representation b)!
symbols of individuals and predicates in propositions and with
quantification over individuals. Also called: functional calculus. See also
propositional calculus • predicative (pn'd1kat1v) adj 1 grammar relating to
or occurring within the predicate of a sentence: a predicative adjective,
Compare attributive 2 logic (of a definition) given in terms that do not
require quantification over entities of the same type as that which is
thereby defined. Compare impredicative > pre'dicatively adv • predicator
('prEdt,kerta) n (in systemic grammar) the part of a sentence or clause
containing the verbal group; one of the four or five major components