10214870 (P.T.A.B. Mar. 26, 2013)

Ex Parte Blackson et al

Patent Trial and Appeal BoardMar 26, 2013

10214870 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/214,870 08/07/2002 Dale Blackson D-1156 R2+ 6038 28995 7590 03/27/2013 RALPH E. JOCKE Walker & Jocke 231 SOUTH BROADWAY MEDINA, OH 44256 EXAMINER ST CYR, DANIEL ART UNIT PAPER NUMBER 2876 MAIL DATE DELIVERY MODE 03/27/2013 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 DALE BLACKSON and H. THOMAS GRAEF ____________________ Appeal 2010-012185 Application 10/214,870 Technology Center 2800 ____________________ Before DEBRA K. STEPHENS, KRISTEN L. DROESCH, and JUSTIN BUSCH, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012185 Application 10/214,870 2 Appellants appeal under 35 U.S.C. § 134(a) (2002) from a non-final rejection of claims 1-18 and 23-27. We have jurisdiction under 35 U.S.C. § 6(b). 1 We AFFIRM. Introduction According to Appellants, the invention relates to an automatic banking machine for accepting deposited items, measuring the thickness of the deposit item; and recording indicia, including the thickness on the deposited item (Abstract). STATEMENT OF THE CASE Exemplary Claim Claim 1 is an exemplary claim and is reproduced below: 1. Apparatus comprising: an automated banking machine including: at least one sensor operative to sense thickness of each of a plurality of items deposited in the machine; a recording device, wherein the recording device is operative to record on each deposited item, indicia including data representative of sensed thickness of the respective item. References Hirose US 4,282,424 Aug. 4, 1981 1 Claims 19-22, 28, and 29 have been objected to and thus are not before us. Appeal 2010-012185 Application 10/214,870 3 Crighton US 5,238,143 Aug. 24, 1993 Graef US 5,540,425 Jul. 30, 1996 Clark US 6,378,770 B1 Apr. 30, 2002 Rejections (1) Claims 1-6, 8-12, 14-16, and 23-27 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Graef. (2) Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Graef and Hirose. (3) Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Graef and Crighton. (4) Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Graef and Clark. We have only considered those arguments that Appellants actually raised in the Briefs. Arguments Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Appeal 2010-012185 Application 10/214,870 4 ISSUE 1 35 U.S.C. § 102(b): claims 1-6, 8-12, 14-16, and 23-27 Claims 1 and 23 Appellants argue their invention is not anticipated by Graef (App. Br. 10-15). Specifically, Appellants contend Graef does not disclose the apparatus is capable of sensing an item’s thickness and printing data representing that sensed thickness on the item (App. Br. 10). Appellants further assert Graef states determining opacity is used to provide an indication of thickness (App. Br. 11). In contrast, Appellants argue, Graef does not disclose sensing the thickness (id.). In addition, Appellants argue the Examiner “has presented no evidence of a correlation between a thickness sensor and a thickness recording device” (App. Br. 12). According to Appellants, Graef describes the transaction information printed on a deposit does not include data representative of sensed thickness (App Br. 13). Nor does Graef disclose printing thickness data on each deposited item (id.). Issue 1a: Has the Examiner erred in finding Graef discloses: (i) “at least one sensor operative to sense thickness of each of a plurality of items deposited in the machine;” and (ii) “a recording device, wherein the recording device is operative to record on each deposited item, indicia including data representative of sensed thickness of the respective item” as recited in claim 1? Appeal 2010-012185 Application 10/214,870 5 ANALYSIS We agree with the Examiner. Graef discloses an indication of the thickness of the inserted deposit is determined (col. 16, l. 62 – col. 17, l. 3). Appellants would have us read “indication of thickness” as not being the “thickness;” however, we decline to do so. Appellants have not presented sufficient evidence or argument to persuade us Graef does not describe determining the thickness. We read the “indication of thickness” as clarifying the opacity is used in determining the thickness. How that determination is made is not specified in the claim. Therefore, we are not persuaded Graef does not disclose at least one sensor operative to sense thickness. Further, we are not persuaded by Appellants’ arguments that Graef does not disclose a recording device that records on each deposited item data representative of sensed thickness. Graef discloses information that “would typically include…other coded information relating to the transaction and/or customer” is printed onto the document (col. 17, ll. 60-66). We find coded information relating to the transaction includes “indicia including data representative of sensed thickness of the respective item.” Thus, we find Graef describes “at least one sensor operative to sense thickness of each of a plurality of items deposited in the machine;” and “a recording device, wherein the recording device is operative to record on each deposited item, indicia including data representative of sensed thickness of the respective item” as recited in independent claims 1 and 23. Appeal 2010-012185 Application 10/214,870 6 Claims 2-6, 8-12, 14-16, and24-27 Appellants present various arguments as to why Graef does not disclose the recited limitations (App. Br. 15 -18). Issue 1b: Has the Examiner erred in finding Graef describes the limitations recited in claims 2-6, 8-12, 14-16, and 24-27? ANALYSIS Claim 2 We are not persuaded by Appellants’ arguments that Graef discloses providing information enabling a CPU to identify a type of deposit not a thickness of deposit (App. Br. 15). Instead we agree with the Examiner’s findings (Ans. 9). Claim 3 Appellants argue limitations not recited in the claim (App. Br. 15). Specifically, claim 3 does not recite “a printer in relationship with… a sensor.” Further, we agree with the Examiner’s findings that Graef discloses the printer 70, emitters 114, and receivers 246 are all within the same device (Ans. 9). Appellants have not presented sufficient evidence or argument to persuade us of error in the Examiner’s finding. Claims 4 and 25 Appellants’ contention Graef does not disclose “data corresponding to sensed thickness of each deposited item is stored in the memory” as recited in claim 4 (App. Br. 16) is not persuasive. Moreover, Appellants have not Appeal 2010-012185 Application 10/214,870 7 persuaded us the Examiner erred in finding Graef describes the limitation recited in claim 25. Indeed, we agree with the Examiner that Graef describes the limitations recited in claims 4 and 25 (Ans. 10-11). Claim 5 Appellants’ argument that Graef does not describe “the machine includes at least one input device adapted to receive user identifying data, and wherein the recording device is operative to record on each deposited item, indicia corresponding to the user identifying data” is not persuasive (App. Br. 16). We agree with the Examiner’s findings (Ans. 10). Claim 6 We are further not persuaded Graef does not disclose “at least one input device adapted to receive deposit value data associated with each deposited item, and wherein the indicia recorded by the recording device is further indicative of the deposit value data input through the at least one input device for the corresponding deposit item,” as recited in claim 6 (App. Br. 16). We note Appellants have not defined “deposit value data” in their Specification. Thus, we agree with the Examiner that Graef describes this limitation (Ans. 10). Claim 8 Appellants’ argument (App. Br. 17) is not persuasive since, as the Examiner indicates, Graef discloses “the sensor comprises a non-contact sensor” as recited in claim 8 (Ans. 10). Appeal 2010-012185 Application 10/214,870 8 Claim 9 Again, Appellants have not persuaded us the Examiner erred (App. Br. 17), as Graef discloses “the banking machine further comprises a cash dispensing device,” recited in claim 9 (Ans. 10). Claim 10 We find Graef discloses “a magnetic sensing device adapted to sense magnetic properties of each deposited item” (col. 8, l. 58-col. 9, l. 15). We agree with the Examiner’s findings (Ans. 10). Therefore, we are not persuaded the Examiner erred in rejecting claim 10 (App. Br. 17). Claim 11 Graef discloses information that “would typically include ….other coded information relating to the transaction and/or customer” is printed onto the document (col. 17, ll. 60-66). We are not persuaded the Examiner erred in rejecting claim 11 (App. Br. 17), and agree with the Examiner that Graef describes the sensed magnetic properties of the respective items are transaction information printed on the document deposit (Ans. 11). Claims 12 and 14-16 We agree with the Examiner’s findings (Ans. 11). Appellants have not presented sufficient argument or evidence to show error in the Examiner’s findings (App. Br. 18). Claim 24 We are not persuaded by Appellant’s arguments regarding claim 24 (App. Br. 24). As Graef discloses printing other code information relating to the transaction (col. 17, ll. 60-66) and there are a plurality of sensors (col. Appeal 2010-012185 Application 10/214,870 9 16, l. 59- col. 17, l. 3), we find Graef discloses the invention as recited in claim 24. Claim 26 We agree with the Examiner’s findings and are not persuaded by Appellants’ arguments (App. Br. 20). Since the apparatus transfers information to an external database, the apparatus communicates with the database (col. 17, l. 66 to col. 18, l. 2). Therefore, the “database” must have the ability to transmit/receive information and the apparatus must communicate to the remote computer. Thus, we find Graef discloses the limitation as recited in claim 26. Claim 27 We are not persuaded by Appellants’ arguments which argue the Examiner erred in finding claim 27 anticipated (App. Br. 20) for the reasons discussed above. CONCLUSION Based on the record and findings above, Appellants have not persuaded us the Examiner erred in finding Graef discloses the invention as recited in claims 1-6, 8-12, 14-16, and 23-27. Therefore, the Examiner did not err in rejecting claims 1-6, 8-12, 14-16, and 23-27 under 35 U.S.C. § 102(b) for anticipation by Graef. Appeal 2010-012185 Application 10/214,870 10 ISSUE 2 35 U.S.C. § 103(a): claims 7, 13, and 17-18 Appellants assert the invention of claim 7 is not obvious over Graef and Hirose because “Hirose is directed to dispensing cash, not receiving deposits” and does not cure the deficiencies of Graef (App. Br. 22-23). Appellants assert the invention of claim 13 is not obvious over Graef and Crighton because the Examiner has not specified how Graef could be structurally modified to include the teaching of Crighton and incorporating the technique of providing empty deposit envelopes would “destroy the disclosed utility or operability of Graef” (App. Br. 23-24). Appellants assert the invention of claims 17 and 18 is not obvious over Graef and Clark because Clark is directed to dispensing cash, not receiving deposits and thus, it would not have been obvious to combine the techniques of Clark into the system of Graef (App. Br. 24-26). Issue 2: Has the Examiner erred by improperly combining the teachings and suggestions of Graef and Hirose; Graef and Crighton; and Graef and Clark? ANALYSIS We are not persuaded by Appellants’ arguments. The Examiner has provided articulated reasoning with rational unpinning for each of the rejections and Appellants have not presented sufficient evidence or argument to persuade us the Examiner erred. We further emphasize: [t]o justify combining reference teachings in support of a rejection it is not necessary that a device shown in one reference can be physically inserted into the device shown in the other. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor Appeal 2010-012185 Application 10/214,870 11 is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981)(citations omitted). Thus, Appellants’ arguments that Hirose and Clark are directed to dispensing cash and neither would be combined with the system of Graef are not persuasive. Further, Appellants have not persuaded us providing empty deposit envelopes would “destroy the disclosed utility or operability of Graef” (App. Br. 23-24). Indeed, Appellants have presented no evidence that modifying the system of Graef to provide empty deposit envelopes was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citations omitted). Accordingly, the Examiner did not err by combining the teachings and suggestions of Graef and Hirose; Graef and Crighton; and Graef and Clark. Therefore, the Examiner did not err in rejecting claims 7, 13, 17, and 18 under 35 U.S.C. § 103(a) for obviousness. DECISION The Examiner’s rejection of claims 1-6, 8-12, 14-16, and 23-27 under 35 U.S.C. § 102(b) as being anticipated by Graef is affirmed. The Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Graef and Hirose is affirmed. Appeal 2010-012185 Application 10/214,870 12 The Examiner’s rejection of claim 13 under 35 U.S.C. § 103(a) as being unpatentable over Graef and Crighton is affirmed. The Examiner’s rejection of claims 17 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Graef and Clark is affirmed. 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) (2011). AFFIRMED tj