Ex Parte Hallowell et al

Board of Patent Appeals and Interferences

May 22, 2012

10256818 (B.P.A.I. May. 22, 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.
10/256,818 09/27/2002 Curtis W. Hallowell 247171-000357USPT 4881
41230 7590 05/23/2012
CUMMINS-ALLISON CORP.
C/O NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
SHAPIRO, JEFFERY A
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
05/23/2012 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 CURTIS W. HALLOWELL and ROBERT J. KLEIN
____________________

Appeal 2010-004000
Application 10/256,818
Technology Center 3600
____________________

Before: JOHN C. KERINS, EDWARD A. BROWN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004000
Application 10/256,818
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-4, 6-20, 22-24, 26, 27, 34-37, and 39-62 under 35
U.S.C. § 103(a) as unpatentable over Stieber (US 2002/0100660 A1, pub.
Aug. 1, 2002) in view of Urata (US 6,507,769 B2, iss. Jan. 14, 2003). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claim 1, reproduced below with added emphasis, is illustrative of the
claimed subject matter.
1. A currency processing system comprising:
a first currency bill processing device having a plurality
of output receptacles, the first currency bill processing device
including an input receptacle adapted to receive bills to be
processed and a transport mechanism adapted to transport the
bills, one at a time, from the input receptacle past an evaluation
unit to the plurality of output receptacles, the first currency bill
processing device being adapted to determine information
concerning each of the bills including determining the
denomination of each of the bills, the first currency bill
processing device being adapted to maintain a first count of the
determined denominations of the processed bills; and
a second currency bill processing device for processing
currency bills having at least one output receptacle, the second
currency bill processing device being communicatively
interfaced with the first currency bill processing device, the
second currency bill processing device having an input
receptacle adapted to receive currency bills and a transport
mechanism adapted to transport the bills, one at a time, from
the input receptacle past an evaluation unit to the at least one
output receptacle, the evaluation unit of the second currency bill
processing device being adapted to determine information
concerning each of the bills including the denomination of each
of the bills, the second currency bill processing device being
adapted to maintain a second count of the determined
denominations of the currency bills processed by the second
Appeal 2010-004000
Application 10/256,818
3
currency processing device, the first currency bill processing
device being adapted to receive the second count from the
second currency processing device;
wherein the second currency bill processing device is
adapted to process bills previously processed by the first
device.

OPINION
Appellants propose claims 1-4, 6, 7, 9, 11, 14-17, 20, 22-24, 26, 34-
37, 39, 40, 42-52, and 57-62 as a first group; claims 8, 27, and 41 as a
second group; claims 10, 12, 13, 18, and 19 as a third group; and claims 53-
56 as a fourth group. App. Br. 15. With respect to the Examiner’s
obviousness rejection, Appellants present no arguments for groups two and
three. Appellants argue claim 62 separately. App. Br. 37. Accordingly, we
select claim 1 as representative of claims 2-4, 6-20, 22-24, 26, 27, 34-37, 39-
52, and 57-61; claim 53 as representative of claims 54-56; and claim 62
stands alone. We address the arguments directed towards the rejection of
each of these representative claims in turn.1
Claim 1
Claim 1 is directed to a currency processing system having two
currency processing devices (hereinafter, first and second devices). Each of
the devices determines and maintains a count of the denomination of bills

1 Appellants additionally argue that Stieber is not prior art because the
Examiner is not entitled to use the filing of a provisional application in a
§102(e) rejection. App. Br. 27-30. This issue has, since the filing of
Appellants’ brief, been addressed in In re Giacomini, 612 F.3d 1380 (Fed.
Cir. 2010) (the patent-defeating date of a published application under
§102(e) can be the provisional filing date). Appellants have not identified
any particular disclosure of the Stieber published application that is not
entitled to the filing date of the provisional application. Not being apprised
of error, we decline to reverse the Examiner’s decision on this basis.
Appeal 2010-004000
Application 10/256,818
4
processed by the device. Two limitations are particularly relevant: (1) the
first device is “adapted to receive the … count” from the second device; and
(2) the second device is “adapted to process bills previously processed by
the first device.”
“adapted to receive the … count”
The Examiner found that Stieber teaches a networked cash handling
system including cash handlers 12 and 13. Ans. 3. The Examiner found that
these devices communicate with each other (Ans. 3, citing Stieber, para. 15),
and specifically, device 13 receives the count from device 12 (Ans. 10,
citing Stieber, para. 23). The Examiner found that the Stieber reference does
not describe the specifics of the cash machines, and points to Urata to teach
these features. Ans. 3-4. The Examiner found that Urata teaches that the
cash counting machines can communicate. Ans. 4 (citing Urata, col. 19, ll.
36-38).
Appellants argue, “there is no teaching or suggestion within Urata that
[the] currency bill processing devices are even linked together.” App. Br.
32. However, the Examiner found that Stieber teaches linking multiple cash
machines together and sharing a count. Ans. 3, 10. Further, the Examiner
points to Urata for the details of the cash machines and also points out that
Urata specifically teaches that the devices can communicate. Ans. 3-4. As
such, we consider the Examiner’s position to be that Stieber teaches
communicating the count, and that Urata’s ability to communicate is an
expedient to the combinability of the two references’ teachings. In view of
this, we are not apprised of error in the Examiner’s conclusion that the
teachings of Stieber and Urata render obvious a first device adapted to
receive the count from the second device.

Appeal 2010-004000
Application 10/256,818
5
“adapted to process bills previously processed by the first device”
The Examiner found that transferring bills from one sorter to another
is a “typical cash management function.” Ans. 5 (citing Stieber, para. 17).
The Examiner adds, “one of Urata’s sorters is ‘adapted’ to sort a batch of
flagged bills or sorted bills from another of Urata’s sorters,” and further “it
would have been well with in [sic] the skill level of a person of ordinary skill
to try a stack of bills rejected by one machine in another.” Ans. 11.
With the claim language in mind, we agree with the Examiner. The
claim merely states that the second device is “adapted to process” bills from
the first device. A bill is free to be placed into a second device’s input after
processing by a first device. Thus, a device having an input receptacle is
“adapted to process bills previously processed by the first device.” The
claim language does not imply any particular structure(s), aside from an
input receptacle in the second device and the ability for the first device to
output bills. As such, Appellants’ arguments that the bills processed by the
second device may not have necessarily been processed by the first device
are not persuasive. See, e.g., App. Br. 33. Further, these arguments are
directed towards a particular use of the device; not a particular claimed
structure.
In view of the above, we are not apprised of error in the Examiner’s
conclusion that the teachings of Stieber and Urata render obvious a second
device “adapted to process bills previously processed by the first device.”
Accordingly, we sustain the Examiner’s rejection of claims 1-4, 6-20, 22-24,
26, 27, 34-37, and 39-52.
Claim 53
Independent claim 53 requires, in relevant part, the first and second
devices that are “adapted to off-sort the substitute currency media from the
Appeal 2010-004000
Application 10/256,818
6
currency bills.” The Examiner found that it “would have been obvious to
discriminate such foreign, substitute and actual currencies from each other in
a batch because … [this] is well within the capabilities of the sorter
described in Urata. Ans. 6. The Examiner also found “counterfeit or
unacceptable” currencies are substitute currency. Ans. 13. Lastly, the
Examiner also considers that currency is the item worked on by an
apparatus, and thus “substitute currency” is not limiting. Ans. 14 (citing
MPEP § 2115).
We agree with Appellants’ position expressed in the Reply Brief at
pages 9-11, namely, that foreign, counterfeit, or unacceptable bills are not
“substitute currency” as required by claim 53. In particular, the
Specification describes “currency” as including foreign and counterfeit bills.
Spec. 21:31 to 22:21 (foreign currencies), 8:19-24 (suspect bills). Thus, to
consider foreign or counterfeit bills “substitute currency” would be
inconsistent with the Specification’s use of the term “currency.” In re
Prater, 415 F.2d 1393, 1404 (CCPA 1969) (“claims yet unpatented are to be
given the broadest reasonable interpretation consistent with the
specification”). Further, “unacceptable bills” may be damaged currency
bills but are still currency bills. Urata, col. 8, ll. 7-8.
With respect to the Examiner’s “item worked on by an apparatus”
position (Ans. 14), we likewise disagree. The structure of a reading device
will vary depending on what types of objects it is required to discriminate.
For example, a currency reader may be able to determine the validity of
certain currency by various tests (image, magnetic, UV, see Urata, col. 7, l.
66 to col. 8, l. 21), but may not be able to read a bar code if it were not
programmed to recognize those types of images. Similarly, the claimed
device is not merely working on objects but rather reacting in a specific way
Appeal 2010-004000
Application 10/256,818
7
according to certain measured properties of the objects. As such, an ability
of the reading device to discriminate a particular object (currency or
substitute currency) implies certain functionality and structure to
discriminate that object.
The Examiner does not propose that it would have been obvious to
modify the Stieber system (modified to include Urata devices) to process
substitute currency. But see, e.g., Munro (US 5,790,697, Aug. 4, 1998) at
col. 27, ll. 37-42 (“the present invention may be employed in conjunction
with stock certificates, bonds, and postage and food stamps”); Izawa (US
5,420,406, May 30, 1995) at col. 2, ll. 24-29 (“a novel device which can
validate both . . . bills and bar coded documents”); Ex parte Jones et al.,
Appeal No. 2010-002640 (BPAI 2011) (sustaining the obviousness rejection
of a device that processes “substitute funds” in application 09/967,232).
In view of the above, we are apprised of error in the Examiner’s
rejection of claim 53. The Examiner’s rejection of dependent claims 54-56
contains the same error. As such, we do not sustain the Examiner’s rejection
of claims 53-56.
Claim 62
Claim 62 depends from independent claim 43 and specifies that
“flagging comprises stopping the first device and presenting a flagged bill in
an output receptacle.” Claim 43 recited that the first and second devices are
“adapted to flag those bills for which the … device cannot determine the
denomination.”
The Examiner found that Urata teaches a bill rejector 72 is an outlet
where flagged bills (false or damaged) are sent. Ans. 4. In other words, the
flagged bills are “presented” by way of being routed into the reject bin. See
Urata, col. 26, ll. 2-6 (“bills stacked in the rejecter 72 are false”).
Appeal 2010-004000
Application 10/256,818
8
Appellants argue that “presented” means “the transport mechanism
104 is stopped so that the unidentified bill is located at a predetermined
position within one of the output receptacles 106a-106h.” App. Br. 37
(citing Spec. 8:28-31). However, this passage merely describes an
embodiment of the disclosed invention and does not limit the claim to this
particular structure or set of actions. See In re Morris, 127 F.3d 1048, 1056
(Fed. Cir. 1997) (“Absent an express definition in their specification, the fact
that appellants can point to definitions or usages that conform to their
interpretation does not make the PTO’s definition unreasonable”).
Accordingly, Appellants’ argument is not persuasive. Because we are not
apprised of error in the Examiner’s rejection of claim 62, it is sustained.

DECISION
We affirm the Examiner’s decision regarding claims1-4, 6-20, 22-24,
26, 27, 34-37, 39-52, and 57-62.
We reverse the Examiner’s decision regarding claims 53-56.
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

hh