Ex Parte Jones et al

Patent Trial and Appeal Board

Jun 17, 2014

12408638 (P.T.A.B. Jun. 17, 2014)

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.
12/408,638 03/20/2009 William J. Jones 247171-000485USP1 9825
41230 7590 06/17/2014
CUMMINS-ALLISON CORP.
C/O NIXON PEABODY LLP
300 S. Riverside Plaza
16th Floor
CHICAGO, IL 60606
EXAMINER
SHAPIRO, JEFFREY ALAN
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
06/17/2014 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 WILLIAMS J. JONES, DOUGLAS U. MENNIE,
JOHN R. BLAKE, and CURTIS W. HALLOWELL
___________

Appeal 2012-006079
Application 12/408,638
Technology Center 3600
___________

Before MICHAEL W. KIM, MICHAEL C. ASTORINO, and
KEVIN W. CHERRY, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE1
Williams J. Jones, Douglas U. Mennie, John R. Blake, and Curtis W.
Hallowell (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 14–20 and 33–43, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
Appellants’ claimed invention relates to a redemption kiosk with a
reading device for a non-bank value storage media and for dispensing

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed November 1, 2011) and the Examiner’s Answer (“Ans.,” mailed
November 30, 2011).
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currency in an amount relating to the value associated with the value storage
media (Spec. ¶ 10).
Claim 14, which is reproduced below, is illustrative of the subject
matter on appeal.
14. A redemption kiosk comprising:
a non-bank value storage media reading device
configured to read data from a non-bank value storage media
and determine a value associated therewith;
a display device;
a communication device configured to transmit data to
and receive data from a non-bank accounting system associated
with the non-bank value storage media;
a controller configured to transmit data relating to the
non-bank value storage media from the value card redemption
kiosk to the non-bank accounting system to obtain the value
associated with the non-bank value storage media;
a currency storage device configured to store currency
bills and coins; and
a currency dispensing device operatively coupled to the
currency storage device and configured to, following instruction
from the controller and a corresponding decrementing of the
value associated with the non-bank value storage media in the
non-bank accounting system, output from the currency storage
device currency bills, currency coins, and combinations thereof
to the user in an amount relating to the value associated with
the non-bank value storage media.
(App. Br. A1, Clms. App’x.)
The following rejections are before us on review:
(1) Claims 14–19 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Doran (US 2006/0064379 A1, pub. Mar. 23, 2006) and
Molbak (US 5,620,079, iss. Apr. 15, 1997) (as incorporated by reference
into Doran);
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(2) Claims 14–20 and 33–38 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Knox (US 2002/0179401 A1,
pub. Dec. 5, 2002);
(3) Claims 38, 39, 42, and 43 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Knox and Doran; and
(4) Claims 40 and 41 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Knox and Cousin (US 2006/0283685, pub. Dec. 21,
2006).
We AFFIRM
ANALYSIS
Independent Claim 14
We are not persuaded by Appellants’ arguments that neither Doran
(including Molbak, incorporated by reference) nor Knox anticipates claim
14 because neither discloses a “currency dispensing device” and “a non-
bank accounting system associated with the non-bank value storage media”
as recited in claim 14 (App. Br. 13–17). With respect to the “currency
dispensing device,” we agree with and adopt the Examiner’s discussion on
pages 20–26 of the Answer that Doran discloses this element as recited in
claim 14 in paragraphs 17, 37, 38, 39, and 55, Figure 4, and in Figure 13 of
Molbak, which is incorporated by reference into Doran. In particular, we
note that in paragraph 38, Doran discloses that machine 100 “dispenses the
new form of value” and gives cash as an example of “value” (Doran ¶ 39)
and that Molbak shows a “coin holding/transfer system” in Figure 13, which
corresponds to the recited “currency dispensing device.”
We also agree with and adopt the Examiner’s discussion on pages 26–
30 of the Answer that Knox discloses a currency dispensing device as
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recited in claim 14 (citing Knox ¶¶ 14, 25, 31, 73, 74 and Fig. 2). In
particular, we agree with the Examiner that Knox discusses in paragraph 31
that the machine of Knox dispenses token 140, in exchange for different
currencies, cards, or receipts, that the user can deposit and that token 140
“does not necessarily include cash” (Knox ¶ 31), which by implication
includes cash. Thus, Knox discloses dispensing cash as it would any other
“token.” In light of this disclosure, we agree with the Examiner that Knox
discloses a “coin cash receiver and change maker 226,” which is described
as an “input/output device,” which corresponds to the recited “currency
dispensing device” (Knox ¶ 39).
As for Appellants’ arguments that neither Doran nor Knox discloses a
“non-bank accounting system,” as recited in claim 14, we are not persuaded
that the Examiner erred in finding this element disclosed in both of these
references. We agree with the Examiner that Doran discloses a
communication facility 113 between the value exchange machine of Doran
and remote computers to obtain authorization from a financial institution
(Doran ¶¶ 38, 42). We further note that Doran discloses that this “financial
institution computer 506” communicates with more than just banks and “can
communicate with a prepaid card-issuing institution to facilitate prepaid card
accounts” (Doran ¶ 43). Thus, we find that Appellants have not shown that
the Examiner erred in finding a “non-bank accounting system” disclosed in
Doran.
We also agree with the Examiner that Knox discloses the “non-bank
accounting system.” In particular, we agree with the Examiner that Knox
discloses that the machine can communicate transaction information to a
financial network 110 and financial server 112 (Knox ¶¶ 25, 32). Moreover,
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we find that Knox defines the term “financial institution 112” to include
non-bank institutions such as “currency exchange institutions, credit card
companies, and electronic transactions processing companies such as
DataWave, Inc.” (Knox ¶ 34). Thus, we find that the Appellants have not
shown that the Examiner erred in finding a “non-bank accounting system”
disclosed in Knox.
We are also not persuaded by Appellants’ arguments that neither
Doran nor Knox can anticipate because they do not enable “a currency
dispensing device,” as recited in claim 14 (App. Br. 17–18). Prior art
publications are presumptively enabled. In re Antor Media Corp., 689 F.3d
1282, 1288–89 (Fed. Cir. 2012). We agree with and adopt the Examiner’s
reasoning why Doran and Knox contain sufficient disclosure to enable a
person of ordinary skill to practice this element (Ans. 31–32). Thus, we
sustain the rejection of claim 14 as anticipated by both Doran (and Molbak,
as incorporated by reference into Doran) and Knox.

Claim 16
We are not persuaded by Appellants’ arguments that neither Doran
nor Knox discloses outputting an account currency to the user where the
amount is the total value associated with the value storage media as recited
in claim 16 (App. Br. 20–21). We agree with the Examiner that this is
disclosed in paragraph 39 of Doran, where it discloses that the machine can
be instructed to “dispense either cash or a redeemable voucher equivalent to
the value remaining on the card” (see Ans. 11 (referring to Ans. 6–10)) and
Knox at paragraphs 25 and 31, which discloses that any amount of money on
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a cards or receipts can be exchanged for tokens that could include currency.
Thus, we sustain the rejection of claim 16.
Claim 33
We also are not persuaded by Appellants’ argument that “Knox never
indicates that either of the Card Dispensers 236, 238 is ‘configured to store a
plurality of value cards,’” as recited in dependent claim 33 (App. Br. 21).
We agree with and adopt the Examiner’s conclusion that the card dispensing
devices disclosed in Knox would hold only one value card (Ans. 35). Thus,
we sustain the rejection of claim 33.

Claim 37
We also are not persuaded by the Appellants’ argument that Knox
does not disclose a first non-zero fee for dispensing one or more value cards
and a second non-zero fee for dispensing currency (App. Br. 21-22). We
agree with the Examiner that Knox shows in paragraphs 55, 71, 73, and 74, a
non-zero fee for dispensing value cards and a non-zero fee for dispensing
cash (Ans. 35–36). Thus, we sustain the rejection of claim 37.

Independent Claim 43
We are not persuaded by Appellants’ arguments that the Examiner
erred in rejecting claim 43, as obvious over Knox and Doran, for failing to
“properly articulate a complete and proper rejection” (App. Br. 19–20). We
disagree. The Examiner identified the anticipation analysis of claims 14–20
by Knox and noted the differences between claim 43 and the previous
analysis and identified where in Knox and Doran the Examiner believed
these new aspects to be disclosed (Ans. 17–18). We are unpersuaded this
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analysis is either incomplete or improper. Thus, we sustain the rejection of
claim 43.

Remaining Claims
Appellants do not argue claims 15, 17–20, 34–36, 38, 39, 40 and 41
separately, so based on the discussion above, we sustain the rejections of
those claims.
DECISION
The rejection of claims 14–20 and 33–43 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).
AFFIRMED

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