Suttie, Robert John. et al.

Patent Trials and Appeals Board

Jan 2, 2020

14744816 - (D) (P.T.A.B. Jan. 2, 2020)

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.
14/744,816 06/19/2015 Robert John Suttie 15-0187 2012
107681 7590 01/02/2020
NCR Corporation
864 Spring Street NW
Atlanta, GA 30308
EXAMINER
SMITH, SLADE E
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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 ROBERT JOHN SUTTIE and DAVID HEIGHTON
____________

Appeal 2019-002670
Application 14/744,816
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEPHEN STAICOVICI, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–14 and 17–20. 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. Appellant identifies NCR Corporation as the real party in
interest. Appeal Br. 3.
Appeal 2019-002670
Application 14/744,816
2
THE INVENTION
Appellant’s invention relates to a method and device, such as “an
automated teller machine,” which is “subject to attack from fraudulent
individuals.” Spec. ¶ 1. Claims 1, 9, and 14 are the independent claims on
appeal. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method, comprising:
rotating a drum within a housing through at least a first
plurality of complete rotations in the same direction while a
shutterable aperture on the housing remains shuttered; and
completing the rotation of the drum so that the drum has a
first rotational positon at which a slot extending through the
drum has one end facing the aperture and has an opposing end
facing away from the aperture.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Dickinson US 4,660,833 Apr. 28, 1987
Yamada US 5,199,697 Apr. 6, 1993
Narushima US 6,048,060 Apr. 11, 2000
Allan US 2014/0061222 A1 Mar. 6, 2014
Appeal 2019-002670
Application 14/744,816
3
The following rejections are before us for review:
I. Claims 1, 8, 14, 19, and 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Allan and Dickinson.
II. Claims 2, 4–6, 9, 11–12, and 18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Allan, Dickinson, and
Yamada.
III. Claims 3, 7, 10, and 13 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Allan, Dickinson, Yamada, and
Narushima.
IV. Claim 17 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Allan, Dickinson, and Narushima.
OPINION
Appellant presents only one argument in contesting all of the
rejections before us for review. See Appeal Br. 8–12. Thus, we discuss all
of the rejections together. Appellant’s sole argument is that Dickinson is
improperly relied on by the Examiner as analogous art in the rejection of
claims 1–14 and 17–21. Appeal Br. 9–12. In support, Appellant contends
that Dickinson “shows ‘a coin-operated slot machine,’” which is “not from
the same field o[f] endeavor as the methods and device recited in the claims
(e.g., an automated teller machine).” Appeal Br. 9; Reply Br. 2. Appellant
also contends that Dickinson “is not reasonably pertinent to the problem
addressed in [Appellant’s Specification], namely [that a] ‘fraudulent
individual can insert a trap into an automated teller machine, with the intent
of capturing deposit materials, such as cash, that are deposited while the trap
is in place.’” Appeal Br. 9 (citing Spec. ¶ 1). In support, Appellant submits
that
Appeal 2019-002670
Application 14/744,816
4
[b]ecause the real mechanism of slot machine of Dickinson is
sealed, and inaccessible to everyone except the operator of the
slot machine, a fraudulent individual could not set a trap in the
slot machine of Dickinson, even if there was a motivation to do
so. Therefore, Dickinson cannot address the problem solved by
the present application, namely “a fraudulent individual can
insert a trap into an automated teller machine, with the intent of
capturing deposit materials, such as cash, that are deposited
while the trap is in place.”
Id. at 12; see also Reply Br. 2 (“the Dickinson reference, which shows ‘a
coin-operated slot machine’, is not reasonably pertinent to the problem faced
by the inventor (foiling traps set in an automated teller machine”).
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate tests
define the scope of analogous art: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The “field of
endeavor” test asks if the structure and function of the prior art is such that it
would be considered by a person of ordinary skill in the art because of
similarity to the structure and function of the claimed invention as disclosed
in the application.” Id. at 1325–26. “A reference is reasonably pertinent . . .
if it is one which, because of the matter with which it deals, logically would
have commended itself to an inventor’s attention in considering his
problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference in an
Appeal 2019-002670
Application 14/744,816
5
obviousness rejection.” Id. Whether a prior art reference is “analogous” is a
question of fact. Id. at 658.
Regarding the first prong of the analogous art test, we determine that
Appellant’s field of endeavor is devices with slotted, rotatable drums, for
example, automated teller machines. See, e.g., Spec., Title (“Slotted
Rotatable Drum and Method of Using Same”), ¶ 1 (“[a] device, such as an
automated teller machine”); claim 1 supra (“a method comprising rotating a
drum [having] a slot extending through the drum”). We also determine that
Dickinson is in the field of endeavor of monitoring and diagnostics for
rotating wheels, for example, amusement machines having reels. See, e.g.,
Dickinson, Title (“Reel Monitoring and Diagnostic Device for an
Amusement Machine”), 1:18–21 (“The invention particularly relates to the
application of . . . diagnostic systems to amusement machines having
rotating reel assemblies”). In other words, although both Appellant’s
invention and Dickinson’s invention involve machines with similar
structures (i.e., rotating wheels or drums), the functions of the machines are
different: the invention’s drums are slotted and accessible to a user,
functioning to dispense and collect currency, etc., while Dickinson’s wheels
are not slotted or accessible to a player, but rather, function to determine and
display the outcome of a wagering game. See Appeal Br. 11–12
(distinguishing the claimed invention from Dickinson’s invention based on
collection ability and user accessibility). Thus, Dickinson would not be
considered by a person of ordinary skill in the art because of similarity to the
structure and function of the claimed invention as disclosed in Appellant’s
Specification pursuant to prong one of the analogous art test.
Appeal 2019-002670
Application 14/744,816
6
However, regarding the second prong of the analogous art test, the
problem addressed by Appellant is that “a fraudulent individual can insert a
trap into an automated teller machine, with the intent of capturing deposit
materials, such as cash, that are deposited while the trap is in place” or
“attempt to gain access to the cash [within the machine] by inserting a trap
that can prevent the cash from being presented to the customer and further
preventing the cash from being withdrawn [from] the machine.” Spec. ¶ 1.
Put another way, Appellant’s problem is that the rotating wheel or drum of a
device is subject to tampering or interference by a person. Appellant’s
solution is to provide a drum that “can detect and/or ensnare potential traps
formed with hard and/or soft materials,” because “[i]f a trap prevents the
drum from rotating, circuitry in the device can trigger an alert and take the
device out of service.” Id. ¶ 10.
Dickinson addresses the similar problem of “unauthorized personnel
. . . interrupt[ing] the randomness of a reel spinning operation or chang[ing]
the stopping positions of the reels in between rounds of game play.”
Dickinson 4:54–58; see Ans. 8, 9 (finding that Dickinson discusses the
tampering of a device having wheels by a person). Dickinson proposes
“constant[] monitor[ing] to assure” that such interference does not occur.
Dickinson 4:54–58. Although Dickinson proposes a different solution, we
determine that Dickinson is reasonably pertinent to Appellant’s problem of
interference with the proper rotation of a drum, and would have commended
itself logically to an inventor’s attention in considering Appellant’s problem.
Thus, we find that Dickinson is properly relied on by the Examiner as
analogous art.
Appeal 2019-002670
Application 14/744,816
7
Appellant presents, for the first time in the Reply Brief, the additional
argument that, in the event Dickinson is analogous art, “the Examiner failed
to show a motivation to combine the references.” Reply Br. 2 (emphasis
omitted); cf. Final Act. 4 (stating that the motivation for combining Allan
and Dickinson is to diagnose whether Allan’s drum is in need of servicing or
repair, in view of the teachings in Dickinson). Appellant’s argument,
however, is untimely and Appellant does not present any persuasive
evidence or explanation to show good cause why it should be considered by
the Board at this time. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised
in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner’s answer . . . will not be
considered by the Board for purposes of the present appeal, unless good
cause is shown.”); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not.”).
Accordingly, we sustain the Examiner’s rejections of claims 1–14 and
17–20.

Appeal 2019-002670
Application 14/744,816
8
CONCLUSION
In summary:
Claims
Rejected
§ Reference(s) Affirmed Reversed
1, 8, 14, 19,
20
103 Allan, Dickinson 1, 8, 14, 19,
20

2, 4–6, 9,
11, 12, 18
103 Allan, Dickinson, Yamada 2, 4–6, 9,
11, 12, 18

3, 7, 10, 13 103 Allan, Dickinson, Yamada,
Narushima
3, 7, 10, 13
17 103 Allan, Dickinson,
Narushima
17
Overall
Outcome
1–14, 17–
20

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).
AFFIRMED