Ex Parte Nago et al

Board of Patent Appeals and Interferences

Sep 6, 2012

11253872 (B.P.A.I. Sep. 6, 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.
11/253,872 10/19/2005 Tokimi Nago 03-744-2 4015
34704 7590 09/07/2012
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
BEAUCHAINE, MARK J
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
09/07/2012 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 TOKIMI NAGO, TORU SEKI and
KAZUHIKO OKAMOTO
________________

Appeal 2010-000584
Application 11/253,872
Technology Center 3600
________________

Before STEVEN D.A. McCARTHY, JAMES P. CALVE and
RICHARD E. RICE, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 33-47. The Examiner rejects under 35 3
U.S.C. § 103(a): 4

1 The Appellants identify the real party in interest as Japan Cash
Machine Co., Ltd.
Appeal 2010-000584
Application 11/253,872

2
claims 33 and 34 as being unpatentable over Kobayashi 1
(JP 3037946 U, publ. Jun. 6, 1997)2 and Onishi (US 7,215,488 2
B2, issued May 8,2007); 3
claim 35 as being unpatentable over Kobayashi, Onishi 4
and Yasuda (US 6,457,586 B2, issued Oct. 1, 2002); 5
claim 36 as being unpatentable over Kobayashi, Onishi 6
and Liang (US 5,666,417, issued Sep. 9, 1997); 7
claims 37-40 as being unpatentable over Kobayashi, 8
Onishi and De Man (US 5,304,813, issued Apr. 19, 1994); 9
claim 41 as being unpatentable over Kobayashi, Onishi, 10
De Man and Matsui (US 7,242,796 B2, issued Jul. 10, 2007); 11
claim 42 as being unpatentable over Kobayashi, Onishi 12
and Levasseur (US 5,903,339, issued May 11, 1999); 13
claims 43-45 and 47 as being unpatentable over 14
Kobayashi, Onishi, Levasseur and De Man (US 5,304,813, 15
issued Apr. 19, 1994); and 16
claim 46 as being unpatentable over Kobayashi, Onishi, 17
Levasseur, De Man and Matsui. 18
(Final Office Action mailed May 10, 2008 (“Final Rejection”) at 2-7). 19
Claims 1-32 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 20
We REVERSE. 21
Claim 33 is the sole independent claim on appeal, reproduced below 22
with italics added for emphasis: 23

2 “Kobayashi” as used in this opinion will refer to an apparently
uncontested English language translation of claim 1 of the utility model as
registered on March 19, 1997. A copy of the translation is in the prosecution
history of the application underlying this appeal.
Appeal 2010-000584
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33. An optical sensing device for 1
detecting optical features of valuable papers, 2
comprising first and second triplex assemblies 3
positioned in a spaced relation to each other, in the 4
vicinity of and on the opposite sides of a 5
passageway for guiding the transported valuable 6
paper, 7
wherein one of the first and second triplex 8
assemblies has an upper case, first and second light 9
emitting elements located in the upper case for 10
emitting first and second lights, and a first light 11
receiving element located in the upper case 12
adjacent to the first and second light emitting 13
elements, 14
the upper case has partitions for keeping the 15
first and second light emitting elements and first 16
light receiving element in an appropriately spaced 17
relation to each other, 18
the other of the first and second triplex 19
assemblies has a lower case, a third light emitting 20
element located in the lower case for emitting a 21
third light, and second and third light receiving 22
elements located in the lower case adjacent to the 23
third light emitting element, 24
the lower case has partitions for keeping the 25
third light emitting element and second and third 26
light receiving elements in an appropriately 27
spaced relation to each other, 28
the first light receiving element receives the 29
first and second lights from the first and second 30
light emitting elements reflected on the valuable 31
paper and the third light from the third light 32
emitting element penetrating the valuable paper, 33
the second light receiving element receives 34
the first light from the first light emitting element 35
penetrating the valuable paper and the third light 36
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from the third light emitting element reflected on 1
the valuable paper, and 2
the third light receiving element receives the 3
second light from the second light emitting 4
elements penetrating the valuable paper and the 5
third light from the third light emitting element 6
reflected on the valuable paper. 7
The Examiner finds that claim 1 of Kobayashi describes an optical 8
sensing device including each limitation of claims 33 and 34 except “a 9
case/partition configuration.” (Ans. 5, para. 7). The Appellants do not 10
appear to challenge this finding. (See generally App. Br. 9-10; Reply Br. 1-11
2). 12
The Examiner’s findings regarding the disclosure of Onishi and 13
reasoning with regard to the conclusion of obviousness are set forth on pages 14
5-6 of the Answer, in paragraph 7 of the “Grounds of Rejection” and 15
paragraphs 1 and 2 of the “Response to Argument.” The Examiner’s 16
findings and reasoning address only in an indirect or conclusory manner the 17
functional limitations italicized in claim 33 as reproduced above. 18
The Appellant correctly argues that Onishi does not describe an 19
optical device including “partitions for keeping the first and second light 20
emitting elements and first light receiving element in an appropriately 21
spaced relation to each other” or “partitions for keeping the third light 22
emitting element and second and third light receiving elements in an 23
appropriately spaced relation to each other.” The Examiner does not 24
conclude, nor do the Appellants argue, that either of these limitations is 25
subject to interpretation under the sixth paragraph of 35 U.S.C. § 112. 26
Therefore, these limitations are satisfied by partitions capable of performing 27
the recited functions. If the Examiner articulated a reason to believe that 28
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corresponding structure described in a prior art reference is capable of 1
performing the recited functions, the Examiner could have found that the 2
corresponding structure satisfies the limitations unless the Appellants 3
produced evidence to rebut the Examiner’s reasoning. 3 4
The Examiner addresses the recited functions only in an indirect or 5
conclusory manner. The Examiner does not articulate a persuasive reason 6
to believe that the partitions 15, 17a, 17b or 18 as described by Onishi are 7
capable of performing the functions. The Appellants bore no burden to 8
produce evidence to rebut the Examiner’s findings. That said, the 9
Appellants’ attorney did offer some explanation why the structure described 10

3 For example, in Re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997), the
Board found that a spout useful for purposes such as dispensing oil from an
oil can anticipate a claim reciting a “dispensing top for passing only several
kernels of a popped popcorn at a time from an open-ended container filled
with popcorn.” Id at 1475. The Court held that,
where the Patent [& Trademark] Office has reason
to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the
authority to require the applicant to prove that the
subject matter shown to be in the prior art does not
possess the characteristic relied on.
Id. at 1478 (quoting In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)). Our
reviewing court agreed with the Board that the Examiner had articulated a
reason to believe that the prior art spout inherently possessed the dimensions
necessary to perform the function of “passing only several kernels of a
popped popcorn at a time from an open-ended container filled with
popcorn.” Id at 1478. Alternatively, the court agreed with the Board’s fact
finding that the prior art spout was “capable of functioning to dispense
kernels of popped corn in the manner set forth in claim 1.” Id. On these
alternative bases, our reviewing court affirmed the rejection.

Appeal 2010-000584
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6
by Onishi does not satisfy the limitations at issue. (See Reply Br. 2). The 1
Examiner offers no reasoning to explain why one of ordinary skill in the art 2
might have had reason to modify the partitions described by Onishi to 3
perform the recited functions. Because the Examiner has not provided 4
sufficient rational underpinning to support the conclusion that an optical 5
device including all limitations of independent claim 33 would have been 6
obvious, we do not sustain the rejection of claims 33 and 34 under § 103(a) 7
as being unpatentable over Kobayashi and Onishi. 8
The Examiner cites Yasuda for the teaching of “an optical sensing 9
device comprising light emitting element 31 and light receiving element 32 10
that are attached to printed circuit boards 35 and 36, respectively (see Figure 11
1 and column 4, lines 33-39) for the purpose of anchoring said light 12
elements in a fixed orientation within said device.” (Final Rejection at 3-4). 13
The Examiner provides no reasoning which might explain how the teachings 14
of Yasuda might remedy the deficiency in the teachings of Kobayashi and 15
Onishi. We do not sustain the rejection of claim 35 under § 103(a) as being 16
unpatentable over Kobayashi, Onishi and Yasuda. 17
The Examiner cites Liang for the teaching of “an optical sensing 18
device comprising light elements 620, 630 and 640 (see Figure 10 and 19
column 13, lines 3-21) for the purpose of anchoring light elements in a 20
predetermined orientation within said device.” (Final Rejection at 4). The 21
Examiner provides no reasoning which might explain how the teachings of 22
Liang might remedy the deficiency in the teachings of Kobayashi and 23
Onishi. We do not sustain the rejection of claim 36 under § 103(a) as being 24
unpatentable over Kobayashi, Onishi and Liang. 25
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The Examiner cites Levasseur for the teaching of “an optical sensing 1
device comprising third optical assembly 125 and [fourth] optical assembly 2
123 and 124 that are arranged longitudinally along passageway 16 behind 3
and in parallel to first optical assembly 120 and 121, and second optical 4
assembly 122 (see Figure 8) for the purpose of detecting various 5
characteristics of valuable papers being processed by said device.” (Final 6
Rejection at 6). The Examiner provides no reasoning which might explain 7
how the teachings of Levasseur might remedy the deficiency in the teachings 8
of Kobayashi and Onishi. We do not sustain the rejection of claim 42 under 9
§ 103(a) as being unpatentable over Kobayashi, Onishi and Levasseur. 10
The Examiner cites De Man for the teaching of “an optical sensing 11
device comprising light emitting elements 27 that produce infrared, red, 12
yellow and green light (see Figures 2 and 4, and column 7, lines 35-55) at 13
different points in time (see column 3, lines 41-54) for the purpose of 14
detecting characteristic data of a valuable paper.” (Final Rejection at 5). 15
The Examiner provides no reasoning which might explain how the teachings 16
of De Man might remedy the deficiency in the teachings of Kobayashi and 17
Onishi. We do not sustain the rejection of claim 37-40 under § 103(a) as 18
being unpatentable over Kobayashi, Onishi and De Man. Neither does the 19
Examiner provide reasoning which might explain how the teachings of De 20
Man might remedy the deficiency in the teachings of Kobayashi, Onishi and 21
Levasseur as applied to claim 42. We do not sustain the rejection of claim 22
43-45 and 47 under § 103(a) as being unpatentable over Kobayashi, Onishi, 23
Levasseur and De Man. 24
The Examiner cites Matsui for the teaching of “an optical sensing 25
device comprising a first reference light that provides data for detecting the 26
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level of a second light (see column 2, lines 32-52) for the purpose of 1
evaluating valuable paper characteristics.” (Final Rejection at 5). The 2
Examiner provides no reasoning which might explain how the teachings of 3
Matsui might remedy the deficiency in the teachings of Kobayashi, Onishi 4
and De Man as applied to claims 37-40. We do not sustain the rejection of 5
claim 41 under § 103(a) as being unpatentable over Kobayashi, Onishi, De 6
Man and Matsui. Neither does the Examiner provide reasoning which might 7
explain how the teachings of Matsui might remedy the deficiency in the 8
teachings of Kobayashi, Onishi, Levasseur and De Man as applied to claims 9
43-45. We do not sustain the rejection of claim 46 under § 103(a) as being 10
unpatentable over Kobayashi, Onishi, Levasseur, De Man and Matsui. 11
12
DECISION 13
We REVERSE the Examiner’s decision rejecting claims 33-47. 14
15
REVERSED 16
17
18
19
Klh 20