Ex Parte Automated Merchandising Systems, Inc.

Board of Patent Appeals and Interferences

Jun 25, 2009

90007450 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte AUTOMATED MERCHANDISING SYSTEMS, INC.1 ____________________ Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,4612 Patent US 6,384,402 B13 Technology Center 3900 ____________________ Decided4: June 26, 2009 ____________________ Before LINDA E. HORNER, SCOTT R. BOALICK and DANIEL S. SONG, Administrative Patent Judges. SONG, Administrative Patent Judge. 1 Automated Merchandising Systems is the real party in interest (App. Br. 2). 2 These proceedings were merged in Decision Merging Reexamination Proceedings mailed April 14, 2006. 3 Issued May 7, 2002 to Hair, III et al. 4 The two month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date. Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,461 Patent US 6,384,402 B1 2 DECISION ON APPEAL STATEMENT OF THE CASE The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C. §§ 134(b) and 306 (2002) from a Final Rejection of claims 1, 2, 5, 6, 23, 25, 37 and 41. Claims 3, 4, 7-22, 24, 26-36, 38-40 and 42-51 have been found patentable and/or confirmed (App. Br. 3). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306 (2002). The ‘402 patent is presently involved in an infringement litigation5 which has been STAYED pending final resolution of the reexamination proceedings (App. Br. 2; Related Proceedings App’x). Also pending is an appeal in the reexamination of Patent US 6,794,634 B2 (Appeal No. 2008- 005966) that issued from a divisional application (App. Br. 2; Related Proceedings App’x). An oral hearing with the Appellant’s representative was held before the Board of Patent Appeals and Interferences on March 4, 2009. In addition to the Appeal Brief filed May 29, 2007, the Appellant relies on the following in support of patentability (Evidence App’x): 1. Declaration of Shull filed August 11, 2006; 2. Supplemental Declaration of Shull filed November 20, 2006; 3. Hand-drawn sketch entitled “VENDO SENSOR SYSTEM”, submitted in an IDS filed December 8, 2000 during the original prosecution of the ‘402 patent; and 5 Automated Merchandising Systems Inc. v. Crane Co., Consolidated Case No. 3:03-CV-88 (N.D. W.Va.). Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,461 Patent US 6,384,402 B1 3 4. Declaration of Mason submitted as part of an IDS filed July 3, 2003, during the original prosecution of the ‘634 patent. The Patentee claims an optical vend-sensing system that detects proper vending of an article in a vending machine. Representative independent claim 1 reads as follows (Claims App’x; emphasis added): 1. An optical vend-sensing system for control of a vending machine which has at least one mechanism arranged for initiating operation upon selection by a customer for vending an article into a vend space through which the article falls into a customer-accessible hopper, the vend space having a defined lateral width and a defined front-to-rear depth, said sensing system comprising: an article sensing subsystem arranged athwart said vend space, said article sensing subsystem comprising: at least one emitter of electromagnetic radiation, and associated emitting structure, arranged to emit electromagnetic radiation in a broad plane which substantially completely covers the transverse cross section of the vend space, the transverse cross section extending across the lateral width and across the front-to- rear depth of the vend space and being below said at least one mechanism but above where said article, upon being vended, comes to rest in said customer-accessible hopper, and comprising at least one electromagnetic radiation detector and associated detection structure; a machine control unit arranged to terminate operation of the respective at least one mechanism; and Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,461 Patent US 6,384,402 B1 4 control circuitry operatively connecting said article sensing subsystem with said machine control unit, and arranged to cause the machine control unit to complete a vend operation procedure of said at least one mechanism upon said article sensing subsystem sensing that electromagnetic radiation, reaching said at least one detector and associated detection structure as a result of electromagnetic radiation emission by said at least one emitter and associated emitting structure, has temporarily diminished by predetermined amount. Independent claim 37 similarly recites an optical vend-sensing system with an emitter that is “below said at least one mechanism but above where said article, upon being vended, comes to rest in said customer-accessible hopper . . . .” The prior art relied upon by the Examiner in rejecting the claims is: Schuller US 3,178,055 Apr. 13, 1965 Falk US 4,108,333 Aug. 22, 1978 Toth US 4,252,250 Feb. 24, 1981 Admitted Prior Art (hereinafter “APA”), columns 1 and 2 of U.S. Patent 6,384,402 The Examiner rejected claims 1, 5, 6, 23, 25, 37 and 41 under 35 U.S.C. § 103(a) as unpatentable over Schuller, the APA, and Toth. The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as unpatentable over Schuller, APA, Toth and Falk. We REVERSE. Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,461 Patent US 6,384,402 B1 5 ISSUE The dispositive issue in the present appeal is whether the Examiner’s suggested combination of Schuller, APA and Toth results in an emitter that is positioned “above where said article, upon being vended, comes to rest” as recited in the rejected claims. FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. 1. The Examiner found that: Schuller discloses a vending machine comprising: a plurality of spirals 43 carrying items A to be vended; electric motors 47 for rotating the spirals 43; a vend space 25 through which the items A fall when discharged from the spirals 43; and a hopper 73 where the falling items come to rest, the hopper being accessible to the customer via opening 71. Based on a selection made by a customer, control circuitry causes a respective motor 47 to rotate its associated spiral 43 a single revolution to cause an item A to be discharged from the front of the spiral 43, the item falling through the vend space 25 into the hopper 73 where it is retrieved by the customer (see column 3, lines 1-27 and 47-56). (Ans. 4). 2. The Appellant does not contest the Examiner’s factual findings set forth above (FF 1) with respect to Schuller. Thus, we adopt the Examiner’s factual findings with respect to Schuller as the findings of the Board for the purposes of this appeal. Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,461 Patent US 6,384,402 B1 6 3. Toth describes a vendor 11 having a plurality of tiers of article dispensers 19, a delivery station 21 (i.e., customer accessible hopper) and an elevator 23 for conveying the selected article to the delivery station 21 (col. 3, ll. 23-30; fig. 2). In describing its operation, Toth states: Briefly, upon selection of an article by the customer, that article is conveyed off its respective tier onto the elevator, which is at that time adjacent said tier. The elevator thereupon descends to the delivery station and remains there until the vended article is removed. That is, elevator 23 delivers the selected article to the delivery station during the vend. (Col. 3, ll. 31-38). 4. Toth also describes that the vendor 11 includes an optical vend- sensing system having optoelectronic emitters 27, 35 and optoelectronic detectors 29, 39 that are opposingly mounted to the inside walls of the vendor 11 (col. 3, ll. 39-59; figs. 2-4). 5. In describing the operation of the optical vend-sensing system, the Specification of Toth states: A. The radiation takes the form of a beam at least part of which falls upon detector 29 after crossing the delivery station. When an article on the elevator at the delivery station at least partially obstructs this beam, detector 29 senses this fact and thereby detects the presence of the article. (Col. 3, ll. 53-55). B. Detector 39a, therefore, detects the presence of article 25 at the delivery station. (Col. 4, ll. 45-46). C. But when an article is present at the delivery station, the pulses from at least one of timers 59 and 61 ceases because of the obstruction of the beam to its respective detector. Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,461 Patent US 6,384,402 B1 7 (Col. 7, ll. 27-30). D. Similarly, when detector 39 detects the presence of an article at the delivery station, timer 61 is not triggered and its output remains Low. (Col. 9, ll. 1-3). E. As a result of this changing of the triggering voltage, a very strong pulse, clearly indicating the absence of an article at the delivery station must be received by one of the timers before it will supply any positive pulses to the rest of logic circuit 55. (Col. 9, ll. 31-35). 6. Thus, the emitters of Toth are positioned to detect the presence of an article on the elevator 23 at the delivery station 21 (i.e., customer- accessible hopper) where the vended article comes to rest (FF 3-5). PRINCIPLES OF LAW “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,461 Patent US 6,384,402 B1 8 In KSR, the Court stated that “[o]ften, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. The Court also noted that “[t]o facilitate review, this analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). However, “the 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.” KSR, 550 U.S. at 418. In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). If this initial burden is met, the burden of coming forward with evidence or argument shifts to the appellant. See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472. Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472. Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,461 Patent US 6,384,402 B1 9 ANALYSIS The Examiner rejected claims 1, 5, 6, 23, 25, 37 and 41 under 35 U.S.C. § 103(a) as unpatentable over Schuller in view of the APA and Toth (Ans. 4). The Examiner relies on Schuller for describing many of the recited limitations (FF 1), but relies on Toth for teaching a vend-sensing system with an emitter (Ans. 5). The Examiner contends that “it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Schuller by providing the vending machine with a vend-sensing system comprising a plurality of emitters producing beams which substantially cover the vend space and a plurality of detectors whose output is used to terminate operation of the spiral motors upon detecting that a product has been vended. Modifying Schuller in this way improves the reliability of the vend operation and therefore results in greater customer satisfaction, as taught by the APA and Toth.” (Ans. 5). The Examiner further elaborates that the rejection “sets forth what is established by the APA of Patent No. 6,384,402, using this evidence to support the conclusion that it would have been obvious to use a vend- sensing system, as taught by Toth, in the glass-front vending machine of Schuller. In other words, the structure of the vend-sensing system is taught by Toth, while the suggestion to use Toth’s vend-sensing system in Schuller is found collectively in Toth and the APA.” (Ans. 10). Therefore, Examiner relies on both Toth and APA to provide the reason for incorporating the vend-sensing system of Toth into the glass-front vending machine of Schuller. Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,461 Patent US 6,384,402 B1 10 The Appellant initially contends that the Examiner failed to establish a prima facie case of obviousness in rejecting all of the pending claims based on Schuller, APA and Toth (App. Br. 14), and sets forth substantive arguments directed to independent claims 1 and 37, as well as dependent claims 5 and 23. The Appellant does not separately argue the Examiner’s rejection of claim 2, but relies on its dependency on claim 1 for patentability (App. Br. 48). The Appellant does not challenge the Examiner’s findings of fact relative to Schuller (FF 1 and 2), but argues, inter alia, that the Examiner mischaracterized Toth because Toth “does not disclose the detection of falling (or even a moving) product or placing an article sensing system in a ‘vend space’ as that term is used in the '402 patent.” (App. Br. 15). In this regard, the Appellant argues that “[c]laims 1 and 37 further require that detection occur ‘below said at least one mechanism [e.g., the spirals] but above where said article, upon being vended, comes to rest in said customer- accessible hopper.’ In other words, vend detection must occur while the product is falling through the claimed ‘vend space.’” (App. Br. 41-42; emphasis in original). The Appellant contends that Toth merely teaches the detection of a product after it has come to rest at a customer-accessible location (App. Br. 15-17). We are persuaded that the Examiner has not established a prima facie case of obviousness with respect to independent claims 1 and 37 because the combination of Schuller, APA and Toth suggested by the Examiner fails to result in an emitter that is positioned “below said at least one mechanism but above where said article, upon being vended, comes to rest in said customer- Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,461 Patent US 6,384,402 B1 11 accessible hopper.” We agree with the Appellant (App. Br. 41-42) that the recited positioning of the emitter above where the article comes to rest is not disclosed in Toth, and that this recitation implicitly requires the vended article to be detected as it falls or otherwise moves prior to coming to rest. In Toth, the emitters are positioned at the delivery station 21 (i.e., customer- accessible hopper) where the vended article comes to rest (FF 4-6), and are not positioned above the location where the vended article comes to rest as recited in independent claims 1 and 37 so as to detect the vended article as it falls or otherwise moves prior to coming to rest. Thus, the Examiner’s articulated application of the vend-sensing system of Toth in the vending machine of Schuller results in a vending machine having emitters that are positioned at the customer-accessible hopper (i.e., adjacent the customer accessible opening 71 of Schuller) where the vended article comes to rest. The Examiner has not articulated a rational reason as to why one of ordinary skill in the art, in incorporating the vend- sensing system of Toth into the vending machine of Schuller, would further modify the positioning of the emitters so that they are positioned before the location where the article comes to rest as recited in the rejected claims. Therefore, in view of the above, we conclude that the Examiner has not established a prima facie case of obviousness with respect to independent claims 1 and 37, as well as claims 5, 6, 23, 25 and 41 that ultimately depend from claim 1 or 37. The Appellant’s various other arguments such as: (1) that Toth does not describe emitting a beam in a broad plane which substantially completely covers the transverse cross section of a vend space or the recited Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,461 Patent US 6,384,402 B1 12 vend space in which the products fall (App. Br. 19-22); (2) that the Examiner misconstrued APA (App. Br. 22-30); (3) that there is a lack of reason to selectively combine the prior art (App. Br. 30-35); and (4) that Toth and APA teaches away from each other (App. Br. 35-41), are all moot in view of the above. We also do not reach the Appellant’s specific arguments with respect to claims 5 and 23 (App. Br. 45-46), these claims ultimately depending from independent claim 1. Regarding the Examiner’s separate rejection of claim 2, the Appellant relies on its dependency from claim 1 for patentability (App. Br. 48). The Examiner’s application of Falk (Ans. 6) fails to cure the above discussed deficiency in the Examiner’s rejection of independent claim 1. Hence, the Examiner’s rejection of claim 2 is also not sustained. Finally, we also do not reach the Appellant’s arguments based on the submitted evidence of secondary considerations (App. Br. 48-52). CONCLUSIONS The Examiner’s articulated application of the vend-sensing system of Toth in the vending machine of Schuller does not result in an emitter that is positioned “below said at least one mechanism but above where said article, upon being vended, comes to rest in said customer-accessible hopper.” ORDER 1. The Examiner’s rejection of claims 1, 5, 6, 23, 25, 37 and 41 as being unpatentable over Schuller, APA and Toth is REVERSED. Appeal 2008-005779 Reexamination Controls 90/007,450, 90/007,454 and 90/007,461 Patent US 6,384,402 B1 13 2. The Examiner’s rejection of claim 2 under as being unpatentable over Schuller, APA, Toth and Falk is REVERSED. REVERSED saw cc: TIMOTHY J. KLIMA HARBIN KING & KLIMA 500 9TH STREET, S.E. WASHINGTON, DC 20003 Third Party Requester: DANIEL E. VENGLARIK MUNCK CARTER, LLP P.O. DRAWER 800889 DALLAS, TX 75380