Ex Parte Automated Merchandising Systems, Inc.

Board of Patent Appeals and Interferences

Jun 25, 2009

90007451 (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 2008-005966
Reexamination Controls 90/007,451, 90/007,453 and 90/007,4622
Patent US 6,794,634 B23
Technology Center 3900
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Decided4: June 26, 2009
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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 13, 2006.
3 Issued Sep. 21, 2004 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.

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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 1-16, 18/3,
19/18/3, 20/18/3 and 41-57. Claims 17, 18/17, 19/18/17, 20/18/17, 21-40
and 58-79 have been found patentable and/or confirmed (App. Br. 3). We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306 (2002).
The ‘634 patent is presently involved in an infringement litigation5
which has been STAYED pending final resolution of the reexamination
proceedings (App. Br. 2-3; Related Proceedings App’x). Also pending is an
appeal in the reexamination of Patent US 6,384,402 B2 (Appeal No. 2008-
005779) which issued from a parent 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, and the Reply Brief filed
November 19, 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;

5 Automated Merchandising Systems Inc. v. Crane Co., Consolidated Case
No. 3:03-CV-88 (N.D. W.Va.).
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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
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
vending of an article in a vending machine.
Representative independent claims 1 and 41 read as follows (Claims
App’x; emphasis added and reformatted for clarity):
1. A vending machine, comprising:
a transparent front;
a dispensing mechanism configured to perform
vending operations in order to dispense a product
selected by a consumer;
a vend space comprising a portion of the space in
said vending machine through which said selected
product will automatically fall into a bin portion for
retrieval by the consumer; and
an optical vend-sensing system configured to sense
when said selected product passes through said vend
space,
said optical vend-sensing system including, an
emitter mechanism configured to generate
electromagnetic radiation that substantially spans said
vend space, and a detector mechanism configured to
receive said electromagnetic radiation generated by said
emitter mechanism and to detect changes in said
electromagnetic radiation caused by said selected
product passing through said vend space.

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41. A vending machine, comprising:
a transparent front;
a plurality of dispensing mechanisms, each
configured to respectively dispense a product selected by
a consumer, at least one of the dispensing mechanisms
configured to dispense a product having at least one of a
different size and a different shape as compared to a
product dispensed by another of the dispensing
mechanisms;
a vend space comprising a portion of the space in
said vending machine through which said selected
product will automatically fall into a bin portion for
retrieval by the consumer;
an optical vend-sensing system configured to sense
when said selected product passes through said vend
space regardless of the size, shape and from which
dispensing mechanism the selected product was
dispensed; and
a control mechanism configured to control said
dispensing as a function of when said optical vend-
sensing system senses said product passing through said
vend space.

The prior art relied upon by the Examiner in rejecting the claims is:
Schuller US 3,178,055 Apr. 13, 1965
Toth US 4,252,250 Feb. 24, 1981
Collins US 4,412,607 Nov. 1, 1983
Admitted Prior Art (hereinafter “APA”), columns 1 and 2 of U.S. Patent
6,794,634

The Examiner rejected claims 1-5, 7-16, 18/3, 19/18/3, 20/18/3, 41-45
and 47-57 under 35 U.S.C. § 103(a) as unpatentable over Schuller, the APA,
and Toth.
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The Examiner rejected claims 6 and 46 under 35 U.S.C. § 103(a) as
unpatentable over Schuller, APA, Toth and Collins.
We REVERSE.

ISSUE
The dispositive issue in the present appeal is whether the Examiner’s
suggested combination of Schuller, APA and Toth results in a vending
machine with an optical vend-sensing system that is configured to sense
when the selected product passes through the vend space.

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). With respect to claim 41, the spirals 43
are capable of accommodating different size items.

(Ans. 4).

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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.
3. Toth describes a vendor 11 having a plurality of tiers of article
dispensers 19, a delivery station 21 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; emphasis added).

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 mounted to the opposing 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. 50-55).

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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.
(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 optical vend-sensing system of Toth detects the
presence of an article at rest on the elevator 23 after the elevator has been
lowered to the delivery station 21 (FF 3-5; fig. 2).
7. In describing the operation of the Patentee’s invention, the
Specification of the ‘634 patent states:
A. Sensing of a product drop through the beam 50 involves
sensing that the radiation reaching the detectors as a result of
operation of the emitters has temporarily diminished by a
preselected amount, which the machine control unit 62 registers
as a product drop, for the purpose of terminating operation of
the respective helix-rotating motor or motors.
(Col. 7, ll. 17-22).

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B. For successful operation, it is necessary that the system
detect objects having a narrowest dimension equivalent to that
of the narrowest article likely to be vended by the machine, e.g.
0.25 inch (0.6 cm), while the object is falling at any velocity
which forcibly will occur in the vending machine.
(Col. 8, ll. 54-59).

C. In the preferred embodiment, the pulse frequency is
selected to be sufficiently large such that a plurality of pulses
are emitted during the traversal of an object through the
detection region.
(Col. 9, ll. 46-49).

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).
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
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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.

ANALYSIS
The Examiner rejected claims 1-5, 7-16, 18/3, 19/18/3, 20/18/3, 41-45
and 47-57 under 35 U.S.C. § 103(a) as unpatentable over Schuller, 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
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system with an optical vend-sensing system (Ans. 5). The Examiner asserts
that Toth clearly teaches “a product that moves through a vend space on its
way to a customer-accessible location, the sensing system detecting the
product during this movement through the vend space.” (Ans. 7 and 8).
Hence, the Examiner contends that “[f]rom the teachings of the APA
and Toth, 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 . . . . 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. 6). The
Examiner further elaborates that the rejection “sets forth what is established
by the APA of Patent No. 6,794,634, 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.
The Appellant initially contends that the Examiner failed to establish a
prima facie case of obviousness in rejecting all of the pending claims
because the Examiner mischaracterized Toth and APA (App. Br. 13), and
sets forth substantive arguments directed to independent claims 1 and 41, as
well as dependent claims 4, 7, 11, 12, 15, 16, 19, 47, 50-52, 54 and 56. The
Appellant does not separately argue the Examiner’s rejection of claims 6 and
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46, but merely relies on their dependency on claims 1 and 41 for
patentability (App. Br. 43).
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 [a]
falling product or placing an article sensing system in a ‘vend space’” (App.
Br. 14). In this regard, the Appellant contends that “Toth does not teach the
detection of an article while the article is moving toward a customer-
accessible location. Rather, Toth teaches the detection of a product after it
has come to rest at the delivery station.” (App. Br. 14; emphasis in original).
Firstly, as a factual matter, we agree with the Appellant that the
Examiner’s characterization of Toth is incorrect. In the optical vend-sensing
system of Toth, the optoelectronic emitters 27, 35 and optoelectronic
detectors 29, 39 are mounted to the opposite walls of the vendor 11 so as to
detect the presence of an article at rest on the elevator 23 at the delivery
station 21 (FF 4-6). Thus, the Examiner’s finding that Toth describes
detection of the vended article during its movement through the vend space
is erroneous.
Implicit in the Examiner’s finding with respect to Toth, as well as in
the Appellant’s arguments for patentability, is the construction of the
limitation “an optical vend-sensing system configured to sense when said
selected product passes through said vend space” in claims 1 and 41 to
require sensing while the selected product passes through the vend space
(App. Br. 14-16), both “when” and “while” being temporal terms. We have
no reason to disturb this construction by the Examiner and the Appellant,
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and adopt this construction for the purposes of the present appeal. The
adopted construction is consistent with the further limitations of claim 1
which recites that the optical vend-sensing system is configured to “detect
changes in said electromagnetic radiation caused by said selected product
passing through said vend space,” and claim 41 which recites that the
control mechanism controls dispensing “as a function of when said optical
vend-sensing system senses said product passing through said vend space.”
(Emphasis added). The adopted construction is also consistent with
description of the operation of the Patentee’s invention in the specification
of the ‘634 patent (FF 7A-7C). See In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004) (claims are to be given their broadest
reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art).
In view of the above claim construction and the Examiner’s erroneous
factual finding with respect to Toth, we conclude that the Examiner has not
established a prima facie case of obviousness with respect to independent
claims 1 and 41 because the combination of Schuller, APA and Toth
suggested by the Examiner fails to result in an optical vend-sensing system
that senses “when said selected product passes through said vend space.”
Instead, the Examiner’s articulated application of the vend-sensing system of
Toth in the vending machine of Schuller results in sensing of the selected
product at rest. The Examiner has not articulated a rational reason as to why
one of ordinary skill in the art would further modify the resultant vend-
sensing system to sense the selected product when the product passes
through the vend space as recited in claims 1 and 41.
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The Appellant’s various other arguments such as: (1) that Toth does
not describe emitting a beam that substantially spans a vend space or the
recited vend space in which the products fall (App. Br. 18-20); (2) that the
Examiner misconstrued APA (App. Br. 20-29); (3) that there is a lack of
reason to selectively combine the prior art (App. Br. 29-33); and (4) that
Toth and APA teaches away from each other (App. Br. 34-40), are all moot
in view of the above.
Likewise, we also conclude that the Examiner has not established a
prima facie case of obviousness with respect to claims 2-5, 7-16, 18/3,
19/18/3, 20/18/3, 42-45 and 47-57, these claims ultimately depending from
independent claim 1 or 41. Hence, the Appellant’s specific arguments with
respect to claims 4, 7, 11, 12, 15, 16, 19, 50-52, 54 and 56 (App. Br. 41-43;
Reply Br. 1-4) are also moot.
Regarding the Examiner’s separate rejection of claims 6 and 46, the
Appellant relies on their ultimate dependency from claims 1 and 41,
respectively, for patentability (App. Br. 43). The Examiner’s application of
Collins (Ans. 6) fails to cure the above discussed deficiency in the rejection
of independent claims 1 and 41. Hence, the Examiner’s rejection of claims 6
and 46 is also not sustained. Finally, we also do not reach the Appellant’s
arguments based on the submitted evidence of secondary considerations
(App. Br. 43-47).

CONCLUSIONS
The Examiner has failed to set forth a prima facie case of obviousness
because the suggested combination of Schuller, APA and Toth fails to result
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in a vending machine with an optical vend-sensing system that is configured
to sense when the selected product passes through the vend space.

ORDER
1. The Examiner’s rejection of claims 1-5, 7-16, 18/3, 19/18/3,
20/18/3, 41-45 and 47-57 as unpatentable over Schuller, APA and Toth is
REVERSED.
2. The Examiner’s rejection of claims 6 and 46 as unpatentable
over Schuller, APA, Toth and Collins 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