Ex Parte Blackson et al

Board of Patent Appeals and Interferences

Aug 29, 2012

10209213 (B.P.A.I. Aug. 29, 2012)

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.
10/209,213 07/30/2002 Dale Blackson D-1156 R2 4947
28995 7590 08/30/2012
RALPH E. JOCKE
Walker & Jocke
231 SOUTH BROADWAY
MEDINA, OH 44256
EXAMINER
ST CYR, DANIEL
ART UNIT PAPER NUMBER
2876
MAIL DATE DELIVERY MODE
08/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DALE BLACKSON and H. THOMAS GRAEF
________________

Appeal 2009-012408
Application 10/209,213
Technology Center 2800
___________________

Before THOMAS S. HAHN, BRADLEY W. BAUMEISTER, and
JOHN A. EVANS, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012408
Application 10/209,213

2
STATEMENT OF THE CASE1
Appellants invoke our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1, 2, 7-9, 12, 26, and 30.2 We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.
Exemplary Claim
Appealed independent claim 1 is exemplary and reads:
1. A method comprising:
(a) providing to a user from an automated banking machine a deposit
envelope having at least one measurable property that is known by
the machine at the time the envelope is provided;
(b) receiving the deposit envelope into the machine from the user
during a deposit transaction;
(c) sensing the at least one measurable property of the envelope
received into the machine in step (b) with a sensing device in the
machine.
Rejection
Claims 1, 2, 7-9, 12, 26, and 30 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Ochiai (US 6,012,633; issued Jan. 11, 2000)
(Ans. 3-4).

1 Rather than reiterate Appellants’ and the Examiner’s arguments, reference
is made to the Appeal Brief (filed June 5, 2006), the second Answer (mailed
February 12, 2007), and the second Reply Brief (filed April 4, 2007) for
respective details.
2 Claims 3-6 and 13-25 are reported as allowed (Ans. 4). Claim 10 is
reported to be objected to as being dependent upon a rejected base claim, but
would be allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims (id.).
Appeal 2009-012408
Application 10/209,213

3
ANALYSIS
Claim 1
Appellants contend the Examiner erred because “‘Ochiai does not
teach providing from an automated banking machine a deposit envelope that
has a measurable property that is known by the machine, especially at the
time the envelope is provided to a machine user’ (Appeal Brief page 11,
lines 18-20)” (Reply Br. 5). In contradistinction, however, we and the
Examiner find from reviewing the record that Ochiai teaches an “automatic
transaction apparatus . . . [that] includes an envelope discharger 5 for
discharging an envelope [to a requesting] user” (col. 4, ll. 33-35; see Ans. 3).
We and the Examiner also find Ochiai teaches that the dispensed envelope
has a machine-known “measurable property,” e.g., a “width W2, known by
the machine so that the sensor[s] 13 and 14 can determine[] whether to
accept an inserted envelop[e] based on the width . . . (col. 4, line[s] 4[7-50],
col. 5, lines 13-20)” (Ans. 5). Based on this record we conclude that
Appellants’ argument is unavailing.
Appellants also contend the Examiner erred because “‘Ochiai teaches
away from his machine knowing the properties of an empty envelope’
(Appeal Brief page 12, line 11)” (Reply Br. 5). We find this argument
unavailing because it is not commensurate with claim 1, which nowhere
recites an “empty envelope.”
For the foregoing reasons we will sustain the rejection of claim 1.
Claim 2
Claim 2 directly depends from claim 1 and further recites “(d) moving
the envelope out of the machine to the user if a difference in the at least one
measurable property from the envelope provided in step (a), is not sensed in
Appeal 2009-012408
Application 10/209,213

4
the envelope in step (c).” Appellants contend “‘Ochiai . . . does not teach
rejecting an envelope if there is no sensed difference in an envelope’s
property from the time it was provided to a user to the time it was received
into the machine’” (Reply Br. 10 (quoting App. Br. 13)). The Examiner
relies on a finding that Ochiai teaches “[i]f the [envelope] width is not within
the known limit, the medium is returned to the user (see col. 5, lines 16-20)”
(Ans. 5). The Examiner’s cited Ochiai disclosure reads as to whether the
envelope “width is smaller than the distance between the transmission
sensors 13, 14” (col. 5, ll. 16-17). We do not find Ochiai teaches any
machine response to failing to detect some difference in an envelope
measurable property. On this record, Appellants’ argument is persuasive.
For the foregoing reason we will not sustain the rejection of claim 2.
Claim 7
Claim 7 directly depends from claim 1 and further recites “marking
indicia corresponding to the at least one measurable property sensed in step
(c) on the envelope.” Appellants acknowledge that Ochiai discloses “us[ing]
an envelope printer (20) to print ‘reception’ information on an envelope (col.
5, lines 44-45)” (Reply Br. 10), but contend Ochiai fails to teach printing
any envelope measured property because “‘reception’ information” as
disclosed by Ochiai merely would encompass a date/time for envelope
reception (see id.). The Examiner identifies the finding that “Ochiai
discloses printing reception information onto the envelope, the reception
information includes the thickness information from the detector 16 and the
width information detected by the sensors 13 and 14 (see col. 5, lines 16-
45)” (Ans. 6). Based on our review of the cited Ochiai disclosures, we find
Ochiai does not teach that “reception information includes the thickness
Appeal 2009-012408
Application 10/209,213

5
information from the detector 16 and the width information detected by the
sensors 13 and 14.” Rather, the cited passage merely discloses “printing
reception information” (Ochiai, col. 5, l. 44). Accordingly, we find
Appellants’ argument that the Examiner erred in rejecting claim 7 to be
persuasive, and we will not sustain the rejection of claim 7.
Claims 8 and 9
Both of claims 8 and 9 depend from claim 7, and, therefore, the
Examiner erred in rejecting claims 8 and 9 for the reason addressed supra
for claim 7. We will not sustain the rejection of claims 8 and 9.
Claim 12
Independent claim 12 recites a method that inter alia “enable[es] the
taking of an empty deposit envelope from an automated banking machine by
a user operating the machine, wherein the empty envelope . . . has at least
one known measurable property which can vary responsive to items being
placed in the envelope . . . .” Appellants contend Ochiai is deficient by not
teaching a dispensing of empty envelopes and comparing a known envelope
property when empty to its sensed property when in the machine (App. Br.
16-17).
The Examiner in response begins by addressing Ochiai’s teachings
concerning comparing a dispensed envelope’s measurable property with its
sensed property when in the machine (Ans. 6-7). Our findings and
conclusion as to Ochiai teaching this subject matter are addressed supra with
respect to claim 1. Accordingly, we find this portion of Appellants’
arguments unavailing.
With respect to Ochiai not teaching a dispensing of empty envelopes,
the Examiner finds “Ochiai discloses discharging envelopes when [a]
Appeal 2009-012408
Application 10/209,213

6
transaction is selected” (Ans. 7). Reviewing Ochiai, we agree and adopt this
finding (see col. 4, ll. 33-35). Continuing, the Examiner concludes and
reasons:
[The] discharged envelopes are considered to be empty. There
is nothing in the art that would suggest otherwise. The
appellant stated that nothing in Ochiai prevents each discharged
envelope from containing an advertising insert or coupon.
There [is] nothing in the reference that would suggest an
advertising insert or a coupon is inserted in the discharged
envelopes. The appellant requested proving inherency, the
examiner did not employ inherency to reject the claim. Ochiai
discloses discharging envelopes, just envelopes, nothing
indicates that these envelopes are filled envelopes. The
examiner’s position [is that] these envelopes are empty
envelopes.
(Ans. 7). Appellants continue this dispute in the Reply Brief with a
contention that
determination of anticipation must be based on concrete
evidence or facts of record, not on an Examiner’s “position” or
what the Examiner has “considered” to be fact. Note In re
Zurko, 258 F.3d 1379, 59 USPQ2d 1693 (Fed. Cir. 2001) and
In re Lee, 277 F.3d 1338, 61 USPQ2d 1430 (Fed. Cir. 2002).
(Reply Br. 6-7).
The Examiner identified that “inherency” was not employed, but that,
instead, the Examiner inferred that the Ochiai dispensed envelopes are
empty because the reference “discloses discharging envelopes, just
envelopes[;] nothing indicates that these envelopes are filled envelopes”
(Ans. 7). In the circumstance of an anticipation reference, our reviewing
court has held that “it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom” In re Preda, 401 F.2d
Appeal 2009-012408
Application 10/209,213

7
825, 826 (CCPA 1968) (citation omitted). With this guidance, we find the
Examiner’s inference to be reasonable in that Ochiai teaches dispensing
envelopes “when the user selects a deposition using an envelope” (col. 4, ll.
33-35). Nothing in the record suggests that a requesting user could or would
be served by being provided other than an empty envelope for making a
deposit. We do not find persuasive evidence that an ordinarily skilled
artisan would fail to infer that the Ochiai described machine dispenses empty
envelopes to users requesting envelopes by selecting deposit. Accordingly,
we find Appellants’ arguments concerning empty envelopes to be
unavailing.
For the foregoing reasons we will sustain the rejection of claim 12.
Claim 26
Independent claim 26 covers an “automated banking machine” that
inter alia includes
a device adapted to provide . . . at least one empty deposit
envelope to a machine user; [and]
at least one input device, wherein the at least one input
device is operative to receive an input value from a user
indicative of a value of items a user indicates have been placed
in a deposit envelope.
Appellants initially rely on “previous remarks regarding the patentability of
claims 1 and 12” (App. Br. 20), which are addressed supra and are not found
to be persuasive. Appellants continue with a repeated contention that
“[t]here is no evidence of record that the machine of Ochiai provides an
empty envelope” (id.), which also is addressed supra and is not found to be
persuasive.
Appellants further contend that “Ochiai also does not teach an input
device that can receive an input value from a user indicating the value of
Appeal 2009-012408
Application 10/209,213

8
items the user placed in a deposit envelope” (App. Br. 21). Appellants argue
that “[a]t best, a customer in Ochiai can input the value of a check (not an
envelope) using console keys (1-3) (col. 11, lines 34-35)” (id.). The
Examiner disagrees and finds “Ochiai discloses an array of input keys 1-3
[for] entering [a] password, a sum, etc.” (Ans. 8; see Ochiai col. 4, ll. 28-29).
We agree with and adopt this finding by the Examiner. Further, we agree
that Ochiai discloses that a customer can enter the sum of a check using keys
1-3 (col. 11, ll. 34-35). We also disagree with Appellants that Ochiai “[a]t
best” provides keys 1-3 to “input the value of a check (not an envelope)”
(App. Br. 21) because we find no persuasive evidence to support this
conclusion excluding envelopes or that an ordinarily skilled artisan would
fail to infer that the keys 1-3 could be used to input a sum for an envelope.
Ochiai discloses that keys 1-3 are usable to enter a “sum” without any
restriction as to identity for the “sum” (col. 4, ll. 28-29).
For the foregoing reasons we will sustain the rejection of claim 26.
Claim 30
Appealed independent claim 30 reads:
30. Apparatus comprising:
an automated banking machine including:
a deposit receiving device;
at least one sensor adapted to sense at least one measurable property
of deposit envelopes presented to the deposit receiving device;
at least one controller in operative connection with the at least one
sensor, wherein the controller is operative to cause the deposit
receiving device to reject empty envelopes presented for deposit into
the automated banking machine.
Appellants initially rely on “previous remarks regarding the
patentability of claims 1, 12, and 26” (App. Br. 21). To the extent
Appeal 2009-012408
Application 10/209,213

9
commensurate with the claim 30 limitations, these arguments have been
addressed supra and are not found to be persuasive. Appellants further
contend and argue:
Ochiai . . . does not teach an automated banking machine
that rejects empty envelopes that have been presented for
deposit. As previously discussed (e.g., claim 1 remarks),
Ochiai’s machine allows envelopes, regardless of whether they
are empty or full, to be deposited. Ochiai’s machine doesn’t
reject the empty envelopes. Simply put, if Ochiai’s machine
permits the deposit of the empty envelopes along with the full
envelopes, th[e]n it doesn’t reject these same empty
envelop[e]s.
(App. Br. 22).
The Examiner disagrees and identifies that the Ochiai
depositing apparatus uses specific type of envelop[e]s with
characteristics known by the apparatus (i.e., the width). If the
width is not within the known limit, the medium is returned to
the user (i.e. any kind of envelope, empty or filled, not within
the range would be returned to the user) (see col. 5, lines 16-
20).
(Ans. 8).
Based on the record, we agree with the Examiner because Ochiai
teaches rejecting envelopes (col. 5, ll. 16-20) and claim 30 merely recites
that the “deposit receiving device . . . reject[s] empty envelopes presented
for deposit into the automated banking machine.” Appellants have not
presented persuasive evidence or argument as to any special interpretation
for claim 30. Accordingly, applying a reasonably broad interpretation that is
consistent with the Specification, without reading disclosed narrowing
embodiments into broader claim language, we find the subject claim 30
limitation is not restricted to only rejecting “empty” envelopes but
Appeal 2009-012408
Application 10/209,213

10
reasonably encompasses also rejecting other type envelopes. In re Morris,
127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
For the foregoing reasons we will sustain the rejection of claim 30.

ORDER
The Examiner’s decision rejecting claims 1, 12, 26, and 30 is
affirmed, and the decision rejecting claims 2 and 7-9 is reversed.
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-IN-PART

babc