Ex Parte 6230930 et al

Patent Trial and Appeal Board

Jul 30, 2013

90010114 (P.T.A.B. Jul. 30, 2013)

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.
90/009,374 01/14/2009 6230930 CRAN01-00315 1519
23990 7590 07/31/2013
DOCKET CLERK
P.O. DRAWER 800889
DALLAS, TX 75380
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/31/2013 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
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.
90/010,114 02/29/2008 6230930 CRAN01-00292 9510
23990 7590 07/31/2013
DOCKET CLERK
P.O. DRAWER 800889
DALLAS, TX 75380
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/31/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CRANE MERCHANDISING SYSTEMS, INC.1
____________________

Appeal 2012-012308
Reexamination Control 90/009,374 and 90/010,114
Patent No. US 6,230,930 B12
Technology Center 3900
____________________

Before DANIEL S. SONG, WILLIAM V. SAINDON, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Crane Merchandising Systems, Inc. is the real party in interest. App. Br. 1.
2 Issued May 15, 2001 to Sorensen et al. (hereinafter “’930 patent”).
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Patent No. US 6,230,930 B1

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from the
Examiner’s rejection of claims 1-22, 24-26, 28-46, 48-50, 53-56, 58-67, 71,
72, 83-85, 87, 129, 130, 134, 136, 138-141, 143-145, 147, and 159-169. We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
This appeal stems from a merged reexamination proceeding of
Application Control Nos. 90/009,374 and 90/010,114. Further, this Board
entered a new ground of rejection, upon which much of the Examiner’s
rejection in this proceeding is based, in an appeal of the Examiner’s decision
in reexamination Application Control No. 90/010,115 of U.S. Patent No.
6,328,180 C1, which is a continuation-in-part of U.S. Application No.
08/949,366, the application that led to the issuance of the ’930 patent at issue
in this appeal.
In addition to the Appeal Brief, the Patent Owner relies upon a Reply
Brief and two declarations of Dr. Mitchell W. Pryor. The ’930 patent was
also the subject of litigation entitled Crane Co. and Dixie-Narco, Inc. v.
Sandevendo America, Inc. and Royal Vendors, Inc., 2:07-cv-42-CE (E.D.
Tex. October 15, 2009 ), which has been dismissed after settlement
agreement was reached, where numerous claim terms were construed by the
District Court.
We AFFIRM.

THE INVENTION
Appellant’s invention is directed “generally to vending machines, and
more particularly to an improved method and apparatus for vending multi-
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sized and fragile products and in particular bottled or canned beverages of
varied sizes and shapes.” Spec. col. 1, ll. 5-8. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for vending beverages packaged in sealed
containers, comprising:
a. storing a plurality of packaged beverages in upright
standing manner in selectable queues of containers of such
beverages within a vending machine;
b. visually presenting said selectable queues of such
beverage containers for viewing by a customer through a glass
wall panel of the vending machine; wherein the customer can
visually select a beverage container from one of said selectable
queues;
c. aligning a robotic assembly in the machine in
registration with a customer selected one of said beverage
container queues;
d. transferring the visually selected beverage container
from the selected container queue in said upright standing
manner to the robotic assembly;
e. carrying the transferred beverage container to a
delivery port of the vending machine; and
f. presenting the carried beverage container at the
delivery port for customer removal from the vending machine;
wherein the entire process is performed without subjecting
the container to severe impact forces and while maintaining the
selected beverage container in said upright standing manner.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Woodruff
Falk
Taylor
O’Neil
US 2,735,578
US 4,108,333
US 4,483,459
US 4,812,629
Feb. 21, 1956
Aug. 22, 1978
Nov. 20, 1984
Mar. 14, 1989
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Hieb
Trouteaud
Vogelpohl
(No Inventor Disclosed)
Kishimoto
US 4,986,615
US 5,121,854
US 5,505,332
GB 1,000,605
JP 52-38296
Jan. 22, 1991
Jun. 16, 1992
Apr. 9, 1996
Aug. 11, 1965
March 24, 1977

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 1-3, 5-7, 9-14, 17-21, 24, 25, 28-30, 32-45, 53, 54, 58-
60, 62-66, 71, 72, 83, 84, 129, 130, 134, 138-140, 143, 144, 147, 160, and
163 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over GB
’605. Final Rejection mailed Dec. 20, 2011 (hereafter “Fin. Rej.”) at 3.
2. Claim 161 stands rejected under 35 U.S.C §103(a) as being
unpatentable over GB ’605 and Admitted Prior Art or Kishimoto. Fin. Rej.
17.
3. Claims 26, 46, and 136 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over GB ’605 in view of Taylor. Fin. Rej. 18.
4. Claims 31, 61, and 141 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over GB ’605 and O’Neil. Fin. Rej. 19.
5. Claims 61 and 67 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over GB ’605 and Falk. Fin. Rej. 20.
6. Claim 61 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over GB ’605 and Trouteaud. Fin. Rej. 21.
7. Claims 1-3, 5-7, 9, 10, 12, 13, 18-21, 24, 25, 28, 31-35, 37, 41-
43, 53-55, 58, 60, 62-65, 71, 72, 83, 84, 129, 130, 134, 138-141, 143, 145,
and 160-168 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kishimoto and GB ’605. Fin. Rej. 22.
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8. Claims 4, 8, 14-17, 22, 26, 44-46, 48, 55-57, and 136 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Kishimoto, GB
’605, and Taylor. Fin. Rej. 30.
9. Claims 4, 8, 14, 44, 48-50, 55, and 85 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Kishimoto, GB ’605, and
Vogelpohl. Fin. Rej. 32.
10. Claims 4, 8, 48, and 85 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kishimoto, GB ’605, and Woodruff. Fin. Rej.
33.
11. Claims 29, 30, 59, 61, 66, 67, 144, and 147 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Kishimoto, GB ’605, and
Falk. Fin. Rej. 35.
12. Claims 29, 30, 59, 61, and 144 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kishimoto, GB ’605, and O’Neil. Fin.
Rej. 37.
13. Claim 61 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kishimoto, GB ’605, and Trouteaud. Fin. Rej. 39.
14. Claim 87 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kishimoto, GB ’605, Vogelpohl or Woodruff, and Hieb.
Fin. Rej. 40.
15. Claims 159 and 169 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kishimoto, GB ’605, and Hieb. Fin. Rej. 41.

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Patent No. US 6,230,930 B1

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ANALYSIS
Rejection 1
Appellant argues the claims subject to this rejection over a lengthy
argument section spanning over eighty pages of the opening brief. See App.
Br. 30-113. Although Appellant initially, and correctly, identifies that the
claims are subject to a single-reference obviousness rejection, at the end of
each subsection of argument as to how the rejection is allegedly improper in
relation to specific claims, Appellant concludes by stating, e.g., that the
rejection of the claims “as being anticipated by GB ’605 is improper.” App.
Br. 89 (emphasis added); see also App. Br. 92, 97, 100, 110, 112, 113.
While an erroneous concluding statement such as this alone could be
considered an oversight, Appellant’s arguments throughout this section
relating to the first ground of rejection deal mainly with how features are
allegedly either not recited in or not inherent to GB ‘605. Such arguments
are essentially irrelevant because the nature of an obviousness rejection
concedes that a reference fails to teach certain subject matter and the
Examiner has not taken the position that the subject matter at issue was
inherently disclosed. In particular, the Examiner’s rejection does not rely on
what GB ’605 teaches alone, but what the teachings of GB ‘605, along with
what one of ordinary skill in the art would have known at the time of the
invention, to conclude that the claimed subject matter would have been
obvious to a person of ordinary skill in the art.
The erroneous nature of Appellant’s arguments is best summed up in
one of Appellant’s own statements attempting to explain why the
Examiner’s obviousness rejection is incorrect due to certain beverage
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containers having a high center of gravity (App. Br. 44) allegedly not being
disclosed in GB ‘605: “As such, reliance on the purported existence of such
containers is improper in a rejection for anticipation (as opposed to
obviousness) since the cited reference does not describe or suggest use of the
system disclosed to dispense such containers.” App. Br. 44-45. As the
Examiner points out, Appellant’s “arguments are moot” because the
rejection at issue is neither an obviousness rejection relying on explicit or
inherent disclosure in GB ’605, nor an anticipation rejection. Ans. 2.
Rather, the rejection is based on obviousness of modifying the device of GB
’605 so as to dispense beverage containers in the manner recited by the
claims.
Further to the point regarding the alleged lack of disclosure of
beverage containers, Appellant challenges the Examiner’s finding that GB
’605 discloses the vending of beverage containers and goes so far as to say
that
[t]he sole support for the inference that the structure of GB ’605
may be used to dispense beverage containers is found in []: (a)
the presence of bottle-shaped silhouettes on carriers 90 within
the dispensing levels in Figures 1-3, and (b) the presence of a
bottle-shaped silhouette on a carrier 90 on the elevator 107
within the open-front delivery housing 70 in Figure[] 7.

App. Br. 34. As this Board stated in our decision on rehearing in
Application Control No. 90/010,115, and which the Examiner quotes in the
Answer (Ans. 5):
We are not persuaded by Appellant’s arguments and
while we agree with Appellant that GB ’605 may not explicitly
refer to vending beverage containers, we cannot agree with
Appellant that figures 1-3, 5, 7, and 10 do not reasonably
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disclose beverage containers as presently claimed. (FF 2, 3;
See Figs, 1, 3.) Drawings can be relied upon for what they
reasonably disclose and suggest to one of ordinary skill in the
art. See In re Mraz, 455 F.2d at 1072. Further, “a drawing in a
utility patent can be cited against the claims of a utility patent
application even though the feature shown in the drawing was
unintended or unexplained in the specification of the reference
patent.” In re Aslanian, 590 F.2d. 911,914 (CCPA 1979).

Appellant’s arguments in the Reply Brief, which focus only on the
first ground of rejection, fare no better. After the Examiner notes the
deficient nature of the arguments in the Appeal Brief (see Ans. 2-16),
Appellant makes what are essentially enablement arguments and variants
thereof. See Reply Br. 2-9. As with Appellant’s Appeal Brief arguments,
enablement arguments in relation to an obviousness rejection are essentially
moot. Furthermore, arguendo, “a non-enabling reference may qualify as
prior art for the purpose of determining obviousness under 35 U.S.C. 103.”
Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991)
(citations omitted).
Appellant’s arguments that certain aspects of the claims are not
enabled are essentially irrelevant because the Examiner is not using GB ’605
as allegedly teaching every aspect of the claims, but concludes that in light
of the teachings of the reference and the knowledge of one of ordinary skill
in the art at the time of the invention, the subject matter of the claims would
be obvious. See Ans. 2-9. As noted above, the very nature of an
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obviousness rejection concedes that certain aspects are absent from a
reference.3
Overall, nothing in Appellant’s arguments as to the first ground of
rejection points to an error in the Examiner’s actual obviousness rejection
(as opposed to the arguments made that the rejection is an improper
anticipation rejection). Accordingly, we sustain the first ground of rejection.
Rejection 2
Appellant argues that “GB ’605 uses individual carriers to support and
move products, one product per carrier” and that “[t]he use of partitioned
shelves having regions each holding a plurality of products is precluded by
the necessity of moving the carriers supporting individual products.” App.
Br. 114. As the Examiner points out, “Appellant admitted in the subject
patent that partitioned shelving regions were known and conventional for
beverage vending machines.” Ans. 16 (citing col. 9, l. 57 et seq.). We agree
with the Examiner’s conclusion that “[t]hose having ordinary skill in the art
at the time of the invention would have recognized this statement as relating
the two options as functional equivalents.” Id. As such, we do not find
Appellant’s argument persuasive and sustain the Examiner’s decision to
reject claim 161 as unpatentable over GB ’605 and Admitted Prior Art or
Kishimoto.

3 We note that Appellant has submitted a pair of declarations by a Dr. Pryor.
We find these declarations unpersuasive due to the fact that, as with
Appellant’s arguments in general, they discuss what is missing from the GB
’605 reference, e.g., “the mechanism taught in the ’605 Patent does not
describe or otherwise disclose several of the operational capabilities claimed
in the ’930 patent.” Pryor Dec. ¶ 4. Such evidence of missing aspects is
unpersuasive in the context of an obviousness rejection.
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Rejection 3
Appellant argues that the Examiner fails to make a prima facie case of
obviousness in relation to the combination of GB ’605 and Taylor. See App.
Br. 116-119. Appellant asserts that the system of Taylor “would not work
with the mechanism of GB ’605, which uses – and moves – individual
rectangular carriers to deliver articles, rather than merely allowing
cylindrical beverage containers to roll off a shelf.” App. Br. 118. As the
Examiner responds, and we agree, “[t]hose seeking [to] incorporate such a
safety mechanism into the GB ’605 device would have recognized that the
stop would need to be oriented in the same way relative to the beverage
container” and that “to include a known safety feature for its known
intended purpose would have been obvious at the time of the invention.”
Ans. 17.
Appellant further provides no evidentiary support for the assertion
that Taylor would not work with GB ’605 and appears merely to make an
argument that the mechanism of Taylor cannot be bodily incorporated into
the device of GB ’605. “[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant
inquiry is whether the claimed subject matter would have been obvious to
those of ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining
the teachings of references does not involve an ability to combine their
specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).
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Here, the Examiner has adequately explained how the teachings of
Taylor and GB ’605 may be combined to result in the claimed invention, and
we do not find Appellant’s argument to the contrary persuasive. As such we
sustain the Examiner’s decision to reject claims 26, 46, and 136 as
unpatentable over GB ’605 and Taylor.
Rejection 4
As with Rejection 3, Appellant bases the argument against the
Examiner’s rejection upon a theory that GB ’605 is not combinable with the
mechanism of O’Neil. See App. Br. 120-121. To wit, “it is not apparent
how [O’Neil’s] mechanism could be incorporated into the elevator of GB
’605.” App. Br. 121. The test for obviousness is not whether the features of
one reference may be bodily incorporated into another reference. In re
Bozek, 416 F.2d 1385, 1390 (CCPA 1969); In re Maplesden, 329 F.2d 321,
322 (CCPA 1964). Rather, we look to see whether combined teachings
render the claimed subject matter obvious. In re Wood, 599 F. 2d 1032,
1037 (CCPA 1979). As the Examiner states, and we agree, “one having
ordinary skill in the art would have known and understood from the O’Neil
teachings how to utilize rank [sic, rack] and pinion members to direct
elevator movement in a vending machine for moving the elevator to the
appropriate product.” Ans. 18. Appellant does not persuasively challenge
this conclusion. Accordingly, for the reasons stated above, we sustain the
Examiner’s decision to reject claims 31, 61, and 141 as unpatentable over
GB ’605 and O’Neil.
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Rejection 5
Appellant argues that the Examiner’s combination of GB ’605 and
Falk is improper because by relying on Falk for the disclosure of the recited
detection means for detecting the presence or absence of a container, the
Examiner has conceded “that articles on the carriers 90 in GB ’605 may fall
off those carriers prior to or during movement from the dispensing levels to
the delivery station, such that the ‘without dropping’ limitation” of claims 61
and 67 is not met. App. Br. 123. As the Examiner notes, however, “[a] non-
detection event need[] not be the result of product dropping, but may result
in the instance where the queue is empty and a vend cycle results in no
product in the elevator.” Ans. 18. Accordingly, contrary to Appellant’s
assertion, the Examiner has provided proper and rational reasoning for
combining the references, and we sustain the decision to reject claims 61 and
67 as unpatentable over GB ’605 and Falk.
Rejection 6
Appellant repeats the argument above, which we have already found
unpersuasive, that the Examiner has conceded that the “without dropping”
limitation is not met. App. Br. 123-124. Again, the Examiner points out
that non-detection need not be the result of a product dropping. Ans. 19. As
to Appellant’s point, without any supporting evidence, that “[i]t is unclear
that the switch in Trouteaud could work as intended in the system of GB
’605,” we agree with the Examiner that one of skill in the art “would have
understood how to implement the simple switch of Trouteaud in the GB
’605 device regardless of the article shape as a matter of routine engineering
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design.” Ans. 19. Accordingly, we sustain the Examiner’s decision to reject
claim 61 as unpatentable over GB ’605 and Trouteaud.
Rejection 7
Appellant presents arguments with respect to this rejection in a similar
fashion as to that of the first ground of rejection addressed supra. See App.
Br. 126-155. The Examiner adequately addresses Appellant’s arguments in
the Response to Arguments section of the Examiner’s Answer and we adopt
the Examiner’s response as our own. See Ans. 19-23. We further point out
that, as with Appellant’s prior argument, Appellant argues: “conclusive
determination is not possible as whether upright standing beverage
containers will inherently remain standing upright within the system of
Kishimoto during transfer.” App. Br. 135. Such argument is unpersuasive
for the reasons already discussed.
Accordingly, having considered all of Appellant’s arguments and for
the reasons stated herein, we do not find Appellant’s arguments persuasive
and sustain the Examiner’s rejection of claims 1-3, 5-7, 9, 10, 12, 13, 18-21,
24, 25, 28, 31-35, 37, 41-43, 53-55, 58, 60, 62-65, 71, 72, 83, 84, 129, 130,
134, 138-141, 143, 145, and 160-168.
Rejections 8-15
Regarding the remaining rejections, the issues and arguments
presented thereby are generally similar to those already addressed above.
We consider the Examiner’s response to address sufficiently each of
Appellant’s arguments regarding these rejections and agree with them for
reasons similar to those already discussed. See App. Br. 156-174 and Ans.
23-27. As such we sustain each of rejections 8-15 as stated above.
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DECISION
For the above reasons, and after considering all of Appellant’s
arguments, we AFFIRM the Examiner’s decision to reject claims 1-22, 24-
26, 28-46, 48-50, 53-56, 58-67, 71, 72, 83-85, 87, 129, 130, 134, 136, 138-
141, 143-145, 147, and 159-169.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

peb
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FOR PATENT OWNER:
Docket Clerk
Munck Wilson Mandala, LLP
P.O. Box 802432
Dallas, TX 75380

FOR THIRD-PARTY REQUESTERS:
Paul Morico on behalf of SandenVendo America, Inc.
Baker Botts LLP
910 Louisiana St.
Houston, TX 77002

K. Lee Marshall on behalf of Royal Vendors, Inc.
Bryan Cave LLP
211 N. Broadway, Ste. 3600
St. Louis, MO 63102