Ex Parte Jones et al

Board of Patent Appeals and Interferences

Feb 9, 2012

09967232 (B.P.A.I. Feb. 9, 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.
09/967,232 09/28/2001 William J. Jones 247171-000305USP1 1787
41230 7590 02/10/2012
CUMMINS-ALLISON CORP.
C/O NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
SHAPIRO, JEFFERY A
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
02/10/2012 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 WILLIAM J. JONES, FRANK M. CSULITS, ROBERT J. KLEIN,
and CURTIS W. HALLOWELL
____________________

Appeal 2010-002640
Application 09/967,232
Technology Center 3600
____________________

Before: JOHN C. KERINS, WILLIAM V. SAINDON, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2010-002640
Application 09/967,232

2
STATEMENT OF THE CASE
Appellants filed a request for rehearing, received Dec. 27, 2011
(hereinafter “Request” or “Req.”), in response to our decision mailed Oct.
24, 2011 (hereinafter “Decision” or “Dec.”). In the Decision, we reversed
the Examiner's rejection of claims 1-6 under 35 U.S.C. § 112, second
paragraph. We affirmed the Examiner's rejections of claims 1-6, 11, 12, 15,
17-20, 22-29, 33, 35, 36, 38-40, 49-56, 59, 65, 68, 79, 80, 87, and 89 under
35 U.S.C. § 103.

ISSUES RAISED ON REQUEST FOR REHEARING
1. Did the Decision misapprehend Appellants’ arguments that Munro
and Izawa do not teach or suggest an input receptacle that receives
a stack of mixed combination of both currency and documents of
another type?
2. Did the Decision misapprehend Appellants’ arguments that the
Examiner’s proposed combination of Munro and Izawa is based
on impermissible hindsight?
3. Did the Decision misapprehend Appellants’ arguments that Munro
and Izawa teach or suggest a bar code scanner that operates at the
claimed speeds?

OPINION
ISSUE 1
We are not persuaded our Decision misapprehended Appellants’
arguments. Req. 2-6. We first note that a claim requiring a receptacle
“configured to” hold pieces of paper with different markings on them merely
Appeal 2010-002640
Application 09/967,232

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needs to be capable of holding those pieces of paper. Further, we note that
Munro states the device is capable of “discriminating among a plurality of
document types” and has a receptacle that “may be employed in conjunction
with stock certificates, bonds, and postage and food stamps.” Dec. 5-6;
Munro, col. 2, ll. 30-34, col. 27, ll. 37-42. That the device can be used “in
conjunction with” these other document types indicates that the device is
capable of using them together. Appellants present no compelling
arguments or evidence to the contrary. Accordingly, the preponderance of
the evidence favors the Examiner.
ISSUE 2
Appellants’ arguments do not allege any substantive error with respect
to the reasoning in the Examiner’s obviousness rejection of the claimed
subject matter in view of Munro and Izawa. Instead, Appellants first argue
that the Examiner provides no evidence that the rationale for combining
Munro and Izawa is based on anything but hindsight. Req. 7-10. Appellants
also argue that the Examiner must provide “positive evidence” to show
predictable results. Req. 10-11. However, the Examiner need not provide
evidence explicitly suggesting the combination of the bar code reader of
Izawa with the reader of Munro1. Likewise, the Examiner’s logic and cited

1 See, e.g., KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“the
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ”), Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1328 (Fed. Cir. 2009) (“it was proper for a patent examiner to rely on
‘common knowledge and common sense of the person of ordinary skill in
the art without any specific hint or suggestion in a particular reference.’”)
(citing In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969)).

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Application 09/967,232

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art support the conclusion of obviousness and the notion that the results of
the combination would be predictable, as explained in the Decision. Dec. 6-
8. Appellants present no compelling arguments or evidence to the contrary.
Accordingly, the Board did not misapprehend Appellants’ arguments with
respect to the alleged use of impermissible hindsight.
ISSUE 3
Appellants’ arguments (Req. 13) regarding the speed of the Izawa
device are with respect to physical components (e.g., conveyor system) that
do not form a part of the Examiner’s proposed combination (see Ans. 5-6).
Further, we find no reason to believe that the speeds of these components are
representative or indicative of the speed of electronic sensors such as bar
code readers. Accordingly, the Board did not misapprehend Appellants’
arguments or the evidence of record.

DECISION
Appellants’ Request is granted to the extent that we have reconsidered
our Decision in light of the arguments in Appellants’ Request. Appellants’
Request is denied to the extent that we do not modify the outcome of the
Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
DENIED

JRG