Oliver Luecking

Patent Trials and Appeals Board

Dec 26, 2019

12988678 - (D) (P.T.A.B. Dec. 26, 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.
12/988,678 10/20/2010 Oliver Luecking 025018-0011 3390
115462 7590 12/26/2019
Diebold, Incorporated
c/o Black, McCuskey, Souers & Arbaugh, LPA
220 Market Avenue, South, Suite 1000
Canton, OH 44702
EXAMINER
SHAPIRO, JEFFREY ALAN
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
eofficeaction@appcoll.com
ip@bmsa.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL BUTZ, MANFRED GERDES, and
PATRICK CHRISTAIN SCHAEFER1
___________

Appeal 2018-001873
Application 12/988,678
Technology Center 3600

____________

Before CARL W. WHITEHEAD JR., JEREMY J. CURCURI and
SCOTT RAEVSKY, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1, 2, 6, 13, 15, 17,
18, 20 and 21 under 35 U.S.C. § 134(a). Appeal Brief 5. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Wincor Nixdorf International GmbH, as the
real party in interest. Appeal Brief 3.
Appeal 2018-001873
Application 12/988,678

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Introduction
According to Appellant, the invention is directed to “[D]ealing with
self-service banking machines that can detect counterfeit bank notes. When
the bank notes are deposited into the banking machine, (e.g., automatic teller
machine - ATM), the bank notes are checked for authenticity.”
Specification 7.

Representative Claim
21. A banking system for detecting counterfeit bank
notes, said system comprising:
a self-service terminal for receiving bank notes deposited
by a user;
a remote server;
said self-service terminal requesting a transaction number
from the server when bank notes are deposited by a user;
said remote server transmitting the transaction number to
the self-service terminal and storing transaction details
associated with the transaction number;
a removable cassette in the self-service terminal for
receiving bank notes, said cassette having a memory carried
thereon that is transported with the cassette along with the bank
notes;
said self-service terminal being configured to verify the
authenticity of the bank notes and to detect when counterfeit
bank notes are deposited, said self-service terminal storing a
serial number of the detected counterfeit bank notes and the
transaction number receive from the remote server in the
memory of the cassette when counterfeit bank notes are
detected;
an electronic device, remote from self-service terminal,
for reading information on the memory of the cassette after the
cassette is removed from the self-service terminal,
said electronic device accessing the transaction details
stored in the remote server by using the transaction number
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stored on the cassette memory when counterfeit notes have
been detected and stored in the cassette; and
whereby transaction details relating to the deposit of
counterfeit bank notes by a user can be obtained by the
electronic device without requiring further communication with
the self-service terminal.

References
Name Reference Date
Csulits et al. US 8,162,125 B1 April 24, 2012
Ganesh et al. US 2004/0199924 A1 October 7, 2004
Graef et al. US 2010/0288831 Al November 18, 2010

Rejection on Appeal2
Claims 1, 2, 6, 9, 13, 15, 17, 18, 20 and 21 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Csulits, Ganesh and
Graef. Final Action 2–13.

ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed May 22, 2017), the Final Action (mailed
November 28, 2016) and the Answer (mailed September 20, 2017), for the
respective details.
Appellant argues, “U.S. Patent No. 8,162,125 (Csulits ‘125) reference
was filed on April 13, 2010, which is after Appellant’s March 18, 2009
International filing date. Therefore, the Csulits ‘125 reference is not prior art
and the 35 U.S.C. § 103 rejection is not proper.” Appeal Brief 14.

2 Appellant argues the merits of claim 21. See Appeal Brief 16–17.
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Appellant contends, “The Examiner primarily relies upon Csulits ‘125 to
base all of his rejections. All of Appellant’s claims call for, among other
things, a removable cassette having a memory (‘smart cassette’)” while “The
Examiner relies upon Csulits ‘125 as allegedly disclosing a ‘smart cassette’
stating at the end of page 6 of the Final Office Action.” Appeal Brief 14.
Appellant further contend, “None of the other references disclose a ‘smart
cassette.’ However, the ‘smart cassette’ disclosure in Csulits ‘125 only first
appeared as of the April 13, 2010 filing date of Csulits ‘125.” Appeal Brief
15. Appellant argues, “The previous applications in the ‘Related U.S.
Application Data’ of Csulits ‘125 did not disclose the ‘smart cassette’ idea.”
Appeal Brief 15.
The Examiner finds, “Csulits provides priority for a cassette in any
number of the priority documents” for example Csulits is a continuation of
Application 10/981,315, published as Hallowell et al. (U.S. 2005/0150738
A1) filed on November 2, 2004 wherein Hallowell ‘7383 includes cassettes
(118a-118f) as mentioned at paragraph 91 and illustrated in figures 1a and
1b. Answer 3.
Appellant contends, “The Graef reference was filed on June 30, 2010,
which is also after Appellant’s March 18, 2009 international filing date.
Admittedly, the parent application No. 11/522,747 may be prior art but it
was not relied upon by the Examiner.” Appeal Brief 15. Appellant

3 “In FIGS. 1a and 1b each of the lower output receptacles 106c-106h
includes a first portion designated as an escrow compartment 116a-116f and
a second portion designated as a storage cassette 118a-118f (described in
more detail below).” Hallowell ¶ 91.
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concludes, “Therefore, Csulits ‘125, as well as Graef, are not prior art to the
present application.” Appeal Brief 16.
We do not find Appellant’s arguments persuasive. The Examiner’s
position that Csulits qualifies as prior art because of Hallowell’s lineage has
not been challenged by Appellant and no Reply Brief has been filed.
Further, with respect to Graef, the Examiner is not required to use Graef’s
parent application 11/522,747 in order to rely upon the parent application’s
filing date of September 18, 2006. Appellant does not challenge the validity
of Graef’s subject matter being entitled to the parent application’s filing
date. See Appeal Brief 15–15; Answer 3–4.
Appellant contends, “the alleged combination fails to disclose the
use of the cassette memory to store sufficient information, when a
counterfeit bank note is detected, that a remote banking system can
gather information about the counterfeit transaction from the cassette
memory without returning to the self-service terminal (ATM).” Appeal
Brief 16.
Appellant argues, “Csulits ‘125 does not disclose a self-service
terminal. Instead, it is directed to terminals for tellers which are not
configured to be used by everybody. The complete system is restricted to
special users.” Appeal Brief 17. The Examiner finds that Csulits discloses,
“According to some embodiments, teller systems and associated teller
terminals can include a teller window, a vault system, an automatic teller
machine (ATM) system, a home banking system, a depositor cash
management system, a night teller, and/or a lock box.” See Answer 5–6
(citing Csulits column 166, lines 26–30). The Examiner also finds,
“According to some embodiments, the cash management feature can be
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used to track currency at an ATM, sometimes called a virtual teller, at a
bank vault, at a bank branch, at the Federal Reserve, etc. According to some
embodiments, a virtual teller is an ATM that includes imaging capabilities.”
See Answer 6 (citing Csulits column 166, lines 58–63). On its face, we do
not find Appellant’s argument persuasive. The term self-service does not
mean accessibility for everybody as Appellant contends because one would
have to be authorized in some form to utilize the terminal and therefore self-
service does not preclude tellers nor does it preclude special users.
Accordingly, we find Applicant’s self-service terminals read upon terminals
accessible to authorized users including tellers, special users, etc. as
disclosed by Csulits.
Claim 21 recites, “a removable cassette in the self-service terminal for
receiving bank notes, said cassette having a memory carried thereon that is
transported with the cassette along with the bank notes.” Appellant argues
that Csulits’ cassettes are provided with bar codes wherein:
The bar code just contains a general identification of the cassette.
The bar code is used to access a database in which information
is stored about the banknotes when filling the cassette. There is
no teaching that the ATM writes information about detected
counterfeit bank notes in a cassette memory, as claimed. Csulits’
bar code is static; the ATM is Csulits cannot alter the contents of
its bar code or change the content within the database.
Appeal Brief 20.
Csulits discloses that “the intelligent cassettes include respective
barcodes instead of or in addition to memory devices.” Csulits, column 184,
lines 24–26. Csulits further discloses, “[T]he barcodes on intelligent
cassettes are inputted into a document processing system such as the
imaging MPS via, for example, a barcode reader.” Csulits, column 184,
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lines 27–29. Csulits discloses that in “response to a document being
transported to a specific cassette, the imaging MPS is configured to
tag the corresponding barcode (decoded barcode indicia) to a record
associated with the document stored in a database.” Csulits, column 184,
lines 30–34.
The Examiner further determines Csulits discloses:
[I]n response to a customer withdrawing currency bills, the ATM
images each currency bill and creates a record for each currency
bill and/or updates a record in memory associated with the
currency bills being withdrawn to indicate a new expected
location of the currency bill(s). The records can include an
extracted serial number, image data, or a variety of other
information, such as the information described in the Document
Records and Data Files.
Answer 6–7 (citing Csulits, column 206, lines 16–24) (emphasis added).
The Examiner finds that Csulits discloses that a bank can determine if
an alleged counterfeit bill was dispensed by the bank’s ATM by searching
the database of the created records of ATM transactions. Answer 6–7 (citing
Csulits, column 206, lines 35–50). We do not find Appellant’s arguments
persuasive because it does not matter if Csulits’ barcode is static because the
barcode is used to identify an intelligent cassette memory or record wherein
the intelligent cassette memory or record is not static.
The Examiner further determines, “Csulits does not need to teach a
cassette with memory [although it does], because Graef (US 2010/0288831
A1) teaches a cassette (360, 362, 374, 376, 388, 394) with memory, i.e., in
the form of a radio frequency device (rfid), as mentioned at paragraphs 228–
237, 241– 248, i.e., an intelligent/smart cassette, as mentioned at paragraphs
264–267, 307, 317.” Answer 3.
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Appellant contends that Ganesh “does not disclose that the transaction
number is downloaded to a self-service terminal and also access to the
transaction based on the identification stored on the cassette by the further
system is not disclosed.” Appeal Brief 21. Appellant also argues that,
“Graef’s RFID tag does not store any transaction id’s which are in relation to
counterfeit bank notes and which allow a remote system to access
transaction data.” Appeal Brief 21. The Examiner determines that, “Ganesh
teaches the transaction number generation process used generally in
commerce. Ganesh does not have to include the details of an ATM or ATM
system network or a cassette with on-board memory. Those features are all
taught by Csulits and Graef.” Answer 8–9. The Examiner finds, “Ganesh is
generally concerned with transaction processing.” Answer 9 (citing Ganesh
¶ 1); see Ganesh Abstract (“A client process executing on a client may
initiate a transaction request with a server. The server processes the
transaction, commits the transaction, and writes transaction information
associated with the transaction to memory without durably storing the
transaction information.”). The Examiner finds, “[R]egardless of what
Graef’s rfid tag stores, the fact that it is a memory which can store data is the
main issue, of which said memory has predictable structure capable of and
which functions to store data such as that taught by Csulits.” Answer 11–12;
see Graef ¶ 230 (“RFID tags are operative to store information therein
representative of the canister and its content, such as cassette ownership,
cassette serial number, and currency denomination.”).
Appellant contends, “The Examiner’s brief explanation for combining
the references falls far short of the type of explicit analysis that is required
by the Supreme Court in KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727 (2007).”
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Appeal Brief 21. The test for obviousness is what the combined teachings of
the references would have suggested to one of ordinary skill in the art. See
In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006), In re Young, 927 F.2d
588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The Examiner can satisfy this test by showing some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In
re Kahn, 441 F.3d at 988). We find the Examiner satisfied the test by
supporting the legal conclusion of obviousness with rational underpinning.
See Final Action 8–9. Subsequently, we do not find Appellant’s arguments
persuasive and we agree with the Examiner’s findings. We sustain the
Examiner’s obviousness rejection of claims 1, 2, 6, 9, 13, 15, 17, 18, 20 and
21 not argued separately. See Appeal Brief 13.

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6, 9,
13, 15, 17,
18, 20, 21
103 Csulits, Ganesh,
Graef
1, 2, 6, 9,
13, 15,
17, 18,
20, 21

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). See 37 C.F.R.
§ 1.136(a)(1)(v).
AFFIRMED