Ex Parte Mennie et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10084856 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte DOUGLAS U. MENNIE, 8
WILLIAM J. JONES, and 9
MARK C. MUNRO 10
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Appeal 2009-006570 13
Application 10/084,856 14
Technology Center 3600 15
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Decided: April 28, 2010 18
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Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R. MOHANTY, 21
Administrative Patent Judges. 22
FETTING, Administrative Patent Judge.23
DECISION ON REQUEST FOR REHEARING 24
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Application 10/084,856

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STATEMENT OF THE CASE 1
The Appellants filed a REQUEST FOR REHEARING on March 1, 2010. 2
The Examiner rejected claims 258-261 and 267-270 under 35 U.S.C. § 112, 3
first and second paragraphs. We reversed these rejections in our Decision issued 4
December 28, 2009. 5
The Examiner further rejected claims 258-261 and 267-270 under 35 U.S.C. 6
§ 103(a) as unpatentable over Smith and Avnet. We affirmed these rejections in 7
our December 28, 2009 Decision. 8
The Appellants seek reconsideration of the decision to affirm these 9
rejections. 10
We DENY the REQUEST FOR REHEARING. 11
ISSUES 12
The issue pertinent to this request is whether the Appellants have sustained 13
their burden of showing that we misapprehended the art and thus erred in 14
sustaining the rejections of claims. 37 C.F.R. 41.52(a)(1). 15
The pertinent issue turns on whether Smith describes the step of singulating the 16
bulk coins using a coin separation device. 17
ANALYSIS 18
We found in our decision 19
The Appellants have not sustained the burden of showing that the 20
Examiner erred in rejecting claims 258-261 and 267-270 under 35 21
U.S.C. § 103(a) as unpatentable over Smith and Avnet. 22
Decision 15 23
The Appellants argue Smith fails to describe singulating the bulk coins using a 24
coin separation device (Request 2-7). The Appellants agree that that “singulating” 25
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means “to make single and not commingled with other coins” (Decision 10 and 1
Request 3). However, Appellants contend that Smith fails to describe singulating 2
using a coin separation device. Smith further fails to require a structure to 3
singulate (Request 3). We begin by pointing out that Smith describes a structure 4
for accepting coins (Decision 6: FF 04-05). This structural slot only allows for a 5
single coin to be inserted at a time (Decision 6: FF 04-05). Although the user is 6
inserting the coins, the structure of the coin acceptor is singulating the coins as 7
they are inserted. If a user were to attempt to insert several coins into the device, 8
the coin acceptor would only allow a single coin to be accepted. This context and 9
definition of singulation is the same context and definition used in the claimed 10
invention. As such, the Appellants’ argument that Smith fails to describe a device 11
or structure that singulates using a coin separation device is not found persuasive. 12
The Appellants also argue that the claimed invention is distinguished from 13
Smith because the claimed invention utilizes a hopper to receive coins and a 14
sorting head to singulate coins in contrast to Smith’s coin acceptor (Request 3-6). 15
However, these features that the Appellants are arguing to distinguish the claimed 16
invention from Smith are not recited in the claim language. As such, this argument 17
is not found persuasive. 18
The Appellants additionally argue that Avnet fails to describe singulating using 19
a coin separation device (Request 6-8). However, this argument is not found 20
persuasive because the Appellants are attacking the reference individually, even 21
though the rejection is based on the combined teachings of the references. 22
Nonobviousness cannot be established by attacking the references individually 23
when the rejection is predicated upon a combination of prior art disclosures. See In 24
re Merck & Co. Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986). 25
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The Appellants further contend that we applied inconsistent definitions for a 1
bulk coin receptacle (Request 8-12). The Appellants specifically argue that we 2
correctly defined a bulk coin receptacle as a structure capable of holding a plurality 3
of coins and then incorrectly applied a definition for this term as a structure 4
capable of receiving a plurality of coins with respect to Smith’s description of a 5
coin acceptor (Request 9-10). The Appellants further provide the rationale that 6
distinguishes holding and receiving coins is that the specification describes that the 7
separation of the coins is done subsequent to the loading of coins (Request 11). 8
We point out that the limitation [1] of claim 1 recites the receiving of bulk coins in 9
a bulk coin receptacle. As such, claim 1 requires that the proper definition for a 10
bulk coin receptacle is a coin accepter that receives coins, not the loading or 11
holding of coins. The additional features of holding or loading coins are not 12
claimed. Therefore, this argument is not found persuasive since these limitations 13
are not found in the claim language. 14
For the above reasons we are not convinced of reversible error in our 15
decision. Accordingly, the Appellants’ request for rehearing is denied. 16
DECISION 17
To summarize, our decision is as follows: 18
• We have considered the REQUEST FOR REHEARING. 19
• We DENY the request that we reverse the Examiner as to claims 258-261 20
and 267-270. 21
o The rejection of claims 258-261 and 267-270 under 35 U.S.C. 22
§ 103(a) as unpatentable over Smith and Avnet remains sustained. 23
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DENIED 1
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mev 5
Address 6
CUMMINS-ALLISON CORP. 7
C/O NIXON PEABODY LLP 8
300 S. RIVERSIDE PLAZA, 16TH FLOOR 9
CHICAGO IL 60606 10