Ex Parte Ohtsuki

Board of Patent Appeals and Interferences

Sep 17, 2010

10202887 (B.P.A.I. Sep. 17, 2010)

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.
10/202,887 07/26/2002 Takahiro Ohtsuki 000407.00032 7331
22907 7590 09/20/2010
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
THEIN, MARIA TERESA T
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
09/20/2010 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte TAKAHIRO OHTSUKI 8
___________ 9
10
Appeal 2009-007744 11
Application 10/202,887 12
Technology Center 3600 13
___________ 14
15
Before, HUBERT C. LORIN, ANTON W. FETTING, and 16
JOSEPH A. FISCHETTI Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL119

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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2
STATEMENT OF THE CASE 1
Takahiro Ohtsuki (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-9, the only claims pending in the 3
application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION2 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a system for managing vending machines using 10
portable communication terminals. Specification 1. 11
An understanding of the invention can be derived from a reading of 12
exemplary claims 1 and 5, which are reproduced below [bracketed matter 13
and some paragraphing added]. 14
1. A management system comprising: 15
[1] a vending machine and a plurality of other vending 16
machines; and 17
[2] a host computer separate from the vending machine and 18
the other vending machines that manages the vending machine 19
and the other vending machines, the host computer being 20

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed June 4, 2007) and the Examiner’s Answer (“Ans.,” mailed
December 6, 2007), and Final Rejection (“Final Rej.,” mailed January 5,
2007).
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connected to the vending machine and the other vending 1
machines via a first network, 2
[3] wherein said host computer includes management 3
information storage that stores management information on said 4
vending machine and the other vending machines and a remote 5
management controller that receives an access from a portable 6
communication terminal via a second network and, 7
[4] wherein said portable communication terminal includes 8
management information obtaining means that obtains all or a 9
part of said management information stored in said 10
management information storage from said host computer via 11
said second network, management information renewing means 12
that renews said obtained management information, and 13
management information sending means that sends said 14
renewed management information to said host computer via 15
said second network and updates said host computer with said 16
renewed management information, said portable 17
communication terminal being separate from the vending 18
machine and the other vending machines, and no network 19
directly connects said portable communication terminal to the 20
vending machine and the other vending machines. 21
22
5. A host computer that manages a plurality of vending 23
machines connected via a first network, comprising: 24
[1] management information storage that stores management 25
information on the vending machines; 26
[2] remote management controller that receives an access 27
from a portable communication terminal via a second network; 28
[3] sending means that sends a program to the portable 29
communication terminal in response to a request from the 30
portable communication terminal; and 31
[4] wherein said program causes said portable 32
communication terminal to functions as; 33
[5] management information obtaining means that obtains all 34
or a part of said management information stored in said 35
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management information storage from the host computer via 1
said second network; 2
[6] management information renewing means that renews 3
said obtained management information; and 4
[7] management information sending means that sends said 5
renewed management information to the host computer via said 6
second network and updates said host computer with said 7
renewed management information, 8
[8] wherein the portable communication terminal and the 9
host computer are separate from the vending machines, and said 10
portable communication terminal obtains said management 11
information and sends said renewed management information 12
only through the second network. 13
14
THE REJECTIONS 15
The Examiner relies upon the following prior art: 16
Werth et al. US 4,369,442 Jan. 18, 1983
Ohtsuki et al. US 6,757,585 B2 Jun. 29, 2004
Nakajima JP 2000-285291 Oct. 13, 2000
17
Claims 1-9 stand rejected under 35 U.S.C. § 112, first paragraph, for 18
failing to comply with the written description requirement. 19
Claims 1-9 stand rejected under 35 U.S.C. § 112, first paragraph, for 20
failing to comply with the enablement requirement. 21
Claims 1-9 stand provisionally rejected under the doctrine of 22
obviousness-type double patenting. 23
Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over 24
Werth and Nakajima. 25
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ISSUES 1
The issue of whether the Examiner erred in rejecting claims 1-9 under 35 2
U.S.C. § 112, first paragraph, for failing to comply with the written 3
description requirement turns on whether the original disclosure describes 4
the claimed invention such that a person with ordinary skill in the art would 5
have understood the Appellant was in possession of the claimed invention. 6
The issue of whether the Examiner erred in rejecting 1-9 under 35 7
U.S.C. § 112, first paragraph, for failing to comply with the enablement 8
requirement turns on whether the Specification describes the claimed 9
invention such that a person with ordinary skill in the art would know how 10
to make and use the full scope of the claimed invention without undue 11
experimentation. 12
The issue of whether the Examiner erred in rejecting claims 1-9 under 13
the doctrine of obviousness-type double patenting turns on whether the 14
differences between the claims of Ohtsuki and the claimed invention, render 15
the claims of the claimed invention patentably distinct from Ohtsuki. 16
The issue of whether the Examiner erred in rejecting 1-9 under 35 17
U.S.C. § 103(a) as unpatentable over Werth and Nakajima turns on whether 18
Werth and Nakajima describe that no network directly connects said 19
portable communication terminal to the vending machine and the other 20
vending machines, management information sending means that sends said 21
renewed management information to the host computer via said second 22
network, and whether there is a motivation to combine Werth and Nakajima. 23
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to Appellant’s Disclosure 4
01. A portable communication terminal 300 is connected to a host 5
computer 110 using the Internet. Specification 5 and Fig. 1. The 6
host computer 110 and the vending machines 200 are also 7
connected by a network, although the form of the network does 8
not matter. Specification 4-5. 9
02. If a request for obtaining product master information is received 10
from the portable communication terminal, the remote 11
management program obtains the product master information from 12
the database server and transfers the information to the portable 13
communication terminal. Specification 7. Upon receiving 14
information from the portable communication terminal, the remote 15
management program renews data in the database server with 16
contents of the received information. Specification 7. 17
Facts Related to the Prior Art 18
Werth 19
03. Werth is directed to a vending machine where the operations 20
are monitored by a counter sensor comprising a single chip battery 21
powered microelectronic circuit which detects coin transactions. 22
Werth 1:10-14. Werth is concerned with the reduction of costs 23
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and time associated with modifying items and item prices in a 1
vending machine. Werth 2:9-13. 2
04. The vending machine system consists of a counter monitor 3
controller (CMC) consisting of a microprocessor and a portable 4
collection unit (PCU) input/output interface. Werth 3:21-23 and 5
Fig. 1. The system further comprises a PCU, which is a 6
microprocessor having keyboard control, and a vending machine. 7
Werth 1:25-26 and Fig. 1. The PCU accesses and interrogates an 8
individual counter sensor and obtains information contained in the 9
sensor’s memory. Werth 1:26-30. The PCU is portable and 10
therefore can service a large number of vending machines and 11
read the data stored in the vending machines. Werth 1:34-37. The 12
PCU connects to the vending machines through an input/output 13
interface. Werth 4:27-30. The PCU may be employed to receive 14
a program from a central processor unit (CPU), download the 15
program into the microprocessor, and modify the program. Werth 16
4:62-67. The program can be modified on the PCU and 17
downloaded on to the microprocessor. Werth 4:66-67 and 5:1. 18
The program controls code, price, and item changes, etc. Werth 19
5:1-3. 20
Nakajima 21
05. Nakajima is directed to an automatic-vending-machine network 22
system which can carry out management employment of many 23
automatic vending machines efficiently. Nakajima ¶ 0001. 24
Nakajima is concerned with decreasing the time to fix a vending 25
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machine and the number of resources that need to be allocated to 1
fix vending machines and therefore provides a system that is 2
efficient and low cost. Nakajima ¶’s 0006-0007. 3
06. Nakajima describes a system that uses three devices: a host 4
computer, vending machines, and a radio communication 5
terminal. Nakajima ¶ 0008. The vending machines can be 6
connected to the host computer through a direct or public network. 7
Nakajima ¶ 0008. The communication terminal is connected to 8
the host computer through a pubic line. Nakajima ¶ 0008. A 9
public line is used specifically because direct communication is 10
not possible. Nakajima ¶ 0023. 11
Ohtsuki 12
07. Ohtsuki is directed to a system for managing a plurality of 13
vending machines in a concentrated manner via a host computer. 14
Ohtsuki 1:8-10. Ohtsuki is concerned with providing a 15
management system for vending machines manufactured at a 16
lower cost and improve the convenience of use. Ohtsuki 1:51-54. 17
08. A portable communication terminal is connected to a host 18
computer through a second network and is enabled to access the 19
management information on each vending machine managed by 20
the host computer. Ohtsuki 2:1-5. The portable communication 21
terminal is provided with a Web browser and can access various 22
information items by using the browser. Ohtsuki 8:11-18 and 23
8:35-37. Information that results from the use of the portable 24
communications terminal is updated by the host computer in the 25
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management information. Ohtsuki 2:5-10. Specifically, the 1
portable communication terminal is enabled to update the product 2
correspondence information table in the vending machine 3
database. Ohtsuki 8:18-21. 4
ANALYSIS 5
Claims 1-9 rejected under 35 U.S.C. § 112, first paragraph, for failing to 6
comply with the written description requirement 7
The Examiner found that the Appellant introduced new matter with the 8
limitations that (1) no network directly connects said portable 9
communication terminal to the vending machine and the other vending 10
machines, as per claim 1 and (2) portable communication terminal obtains 11
said management information and sends said renewed management 12
information only through the second network, as per claim 5. Ans. 4. 13
The Appellant first contends that (1) Figure 1 describes no network 14
directly connects the communication terminal to the vending machines and 15
therefore this limitation is not new matter. App. Br. 5-6. We agree with the 16
Appellant. In order to comply with the written description requirement, it 17
must be demonstrated that the patentee was in possession of the invention 18
that is claimed. Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). 19
The Specification describes a host computer is connected to the portable 20
communication terminal through a network, where the network is 21
specifically the Internet. FF 01. The host computer is also connected to 22
vending machines through a network; however, the type of network does not 23
matter. FF 01. There is no direct connection between the vending machines 24
and the portable communication terminal. Fig. 1. The vending machines 25
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and portable communication terminal are only indirectly connected through 1
the host computer. Fig. 1. Since the drawings are part of the original 2
disclosure and Figure 1 explicitly demonstrates there is no direct connection 3
between the vending machines and the portable communication network, 4
this feature is not considered to be new matter. As such, a person with 5
ordinary skill in the art would have understood the Appellant was in 6
possession of the claimed invention as claimed. 7
The Appellant also contends that (2) Figure 1 describes that renewed 8
management information is only sent through a second network, as per the 9
rejection of claim 5. App. Br. 12-13. We agree with the Appellant. As 10
discussed supra, the portable communication terminal connects to the host 11
computer through a different network than the vending machines. FF 01. 12
This different network can be considered a second network. Furthermore, 13
information is transferred to the portable communication terminal on this 14
second network and renew information is submitted back to the host 15
computer on the second network. FF 01-02. As such, this limitation is not 16
considered to be new matter because it is described by the Specification and 17
a person with ordinary skill in the art would have understood the Appellant 18
was in possession of the claimed invention. 19
Claims 1-9 rejected under 35 U.S.C. § 112, first paragraph, for failing to 20
comply with the enablement requirement 21
The Examiner found that the limitation that no network directly connects 22
said portable communication terminal to the vending machine and the other 23
vending machines is contradictory to the original disclosure. Ans. 5. 24
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The Appellant contends that there is no disclosure to indicate that a 1
network directly connects to the communication terminal to the vending 2
machines and therefore there is no contradiction, as per claims 1 and 5. 3
App. Br. 5-6. The Appellant also argue that a person with ordinary skill in 4
the art could perform the claimed invention without undue experimentation. 5
App. Br. 6 and 13-14. 6
We agree with the Appellant. “[T]o be enabling, the specification of a 7
patent must teach those skilled in the art how to make and use the full scope 8
of the claimed invention without ‘undue experimentation.’” In re Wright, 9
999 F.2d 1557, 1561 (Fed. Cir. 1993). 10
As discussed supra, the original disclosure describes that the vending 11
machines and portable communication terminal are connected to the host 12
computer on different networks. FF 01. As such, the vending machines and 13
portable communication terminal are indirectly connected through the host 14
computer (Fig. 1) and there is no contradiction. Additionally, the original 15
disclosure describes a structure where a host computer is connected to 16
vending machines on a first network and is connected to a portable 17
communication network on a second network, where each network is 18
controlled through a router. Fig. 1. A person with ordinary skill in the art 19
would have understood how to create and use two different networks such 20
that the vending machines and portable communication terminal are only 21
connected indirectly. As such, a person with ordinary skill in the art would 22
have understood how to make and use the claimed invention without undue 23
experimentation. The Examiner fails to set forth any further rationale as to 24
why a person with ordinary skill in the art would not have been able to make 25
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or use the claimed invention without undue experimentation. As such, we 1
find the original disclosure to be enabling. 2
Claims 1-9 provisionally rejected under the doctrine of obviousness-type 3
double patenting 4
The Examiner found that claims 1-9 of the claimed invention are not 5
patentably distinct and are obvious in light of claims 1-10 of Ohtsuki. Ans. 6
5. The Appellant contends that the claimed invention omits the 7
identification information storage and the certifying means limitations of 8
Ohtsuki. App. Br. 7-8 and 14-15. The Appellant also contends that none of 9
the claims in Ohtsuki describe management information obtaining means, a 10
management information renewing means, or a management information 11
sending means, as required by claims 1 and 5. App. Br. 7-8 and 14-15. 12
We disagree with the Appellant. At issue is whether the differences in 13
subject matter between the two claims render the claims patentably distinct. 14
Georgia-Pacific Corp. v. United States Gypsum Co., 195 F.3d 1322, 1327 15
(Fed. Cir. 1999). 16
First, the limitations omitted by the claimed invention render the claimed 17
invention broader than Ohtsuki. As such, the omission of these limitations 18
would not render the claimed invention patentably distinct from Ohtsuki. 19
Second, the additional limitations of the claimed invention also do not 20
render the claimed invention patentably distinct from Ohtsuki. The 21
additional limitations require management information obtaining means, 22
management information renewing means, or a management information 23
sending means. The claims in Ohtsuki require a certifying means that 24
includes steps of updating and communication information. Ohtsuki claim 25
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1. Although the language between Ohtsuki and the claimed invention is not 1
exactly the same, the limitations in the claimed invention are obvious in light 2
of Ohtsuki’s claims since they are claiming the same functionality. Ohtsuki 3
further describes a portable communication terminal that connects to a host 4
computer via the Internet. FF 08. 5
The portable communication terminal includes a Web browser and is 6
enabled to access various information items using the Web browser. FF 08. 7
That is, the portable communication terminal obtains management 8
information using a Web browser. The portable communication terminal 9
can further update the management information that is controlled by the host 10
computer. FF 08. That is, the portable communication terminal can update 11
or renew management information and submit these updates to be reflected 12
in the management information. 13
Ohtsuki is concerned with improving the convenience of use of vending 14
machines. FF 07. Convenience of use includes providing the vending 15
machines with the most current information. Since Ohtsuki is concerned 16
with the same problem as the present invention, a person with ordinary skill 17
in the art would have found it obvious to modify Ohtsuki to include features 18
of management information obtaining means, management information 19
renewing means, and a management information sending means in order to 20
increase the convenience of use of the vending machines. As such, the 21
claims of the present invention are not patentably distinct from those of 22
Ohtsuki. 23
24
25
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Claims 1-9 rejected under 35 U.S.C. § 103(a) as unpatentable over 1
Werth and Nakajima 2
The Appellant first contends that (1) Werth and Nakajima fail to 3
describe the limitation that no network directly connects the portable 4
communication terminal to the vending machine and other vending 5
machines, as per claims 1-4 and 8-9. App. Br. 8-11. We disagree with the 6
Appellant. 7
First, the Appellant’s arguments that Werth fail to describe this feature 8
are not found persuasive because the Appellant is attacking the references 9
separately, even though the rejection is based on the combined teachings of 10
the references. Nonobviousness cannot be established by attacking the 11
references individually when the rejection is predicated upon a combination 12
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 13
(Fed. Cir. 1986). 14
Second, Nakajima explicitly describes a system where there is no direct 15
connection between a portable communication terminal and the vending 16
machines. Nakajima describes that the vending machine are connected to a 17
host computer through a direct connection, whereas a communication 18
terminal is connected to the host computer through a public line. FF 06. 19
Nakajima explicitly describes that a public line is used because a direct 20
connection is not possible. FF 06. Nakajima clearly illustrates that the 21
vending machines and communication terminal are connected to the host 22
computer using two networks. Nakajima Drawing 1. As such, the 23
Appellant’s contention that this feature is not described by Werth and 24
Nakajima is not found persuasive. 25
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The Appellant also contends that (2) Werth fails to describe obtaining 1
management information, renewing management information, and sending 2
the renewed management information, as required by claims 1-9. App. Br. 3
11-12. We disagree with the Appellant. 4
Werth describes a system that includes a counter-monitor-controller 5
(CMC), consisting of a microprocessor and an input/output interface, a 6
portable communication unit (PCU), and a vending machine. FF 04. An 7
information control program that is used by the microprocessor of the CMC 8
can be modified by the PCU. FF 04. The modification can be done on the 9
PCU and uploaded to the CMC microprocessor. That is, the PCU 10
downloads the management information program, update or modifies the 11
program, and sends the modified program back to the CMC microprocessor. 12
As such, Werth explicitly describes obtaining, renewing, and sending 13
management information. 14
The Appellant further contends that (3) there is no suggestion or 15
motivation to combine Werth and Nakajima. App. Br. 12. We disagree with 16
the Appellant. 17
Werth and Nakajima are both concerned with lowering the costs 18
associated with vending machines and specifically with the cost of time 19
needed to fix or modify vending machine information. FF 03 and 05. Werth 20
solves this problem by describing a system where the modification of a 21
program that controls product and price information is modified by the PCU 22
and uploaded to several vending machines. FF 04. Nakajima addresses this 23
concern by describing a system that uses radiocommunications on a public 24
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network that allows for operators to communicate with vending machines. 1
FF 06. 2
Since both Werth and Nakajima are concerned with solving the same 3
problems with vending machines, a person with ordinary skill in the art 4
would have been led from Werth to Nakajima. As such, a person with 5
ordinary skill in the art would have found it obvious to modify Werth to 6
include a feature to increase the ability to communicate with vending 7
machines in order to lower the time and cost associated with fixing, 8
modifying, or updating vending machine information. 9
The Appellant additionally contends that (4) Werth and Nakajima fail to 10
describe the portable communications terminal obtains management 11
information and sends renewed management information only through the 12
second network, as required by claims 5-7. App. Br. 15-16. We disagree 13
with the Appellant. 14
As discussed supra, Werth describes obtaining, renewing, and sending 15
management information. As also discussed supra, Nakajima describes the 16
communication terminal uses a second indirect network to the host 17
computer. As such, the combination of Werth and Nakajima explicitly 18
describes obtaining and sending management information through the 19
second, public, indirect network. 20
21
CONCLUSIONS OF LAW 22
The Examiner erred in rejecting claims 1-9 under 35 U.S.C. § 112, first 23
paragraph, for failing to comply with the written description requirement. 24
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The Examiner erred in rejecting claims 1-9 under 35 U.S.C. § 112, first 1
paragraph, for failing to comply with the enablement requirement. 2
The Examiner did not err in rejecting claims 1-9 under the doctrine of 3
obviousness-type double patenting. 4
The Examiner did not err in rejecting claims 1-9 under 35 U.S.C. 5
§ 103(a) as unpatentable over Werth and Nakajima. 6
DECISION 7
To summarize, our decision is as follows. 8
• The rejection of claims 1-9 under 35 U.S.C. § 112, first paragraph, for 9
failing to comply with the written description requirement is not 10
sustained. 11
• The rejection of claims 1-9 under 35 U.S.C. § 112, first paragraph, for 12
failing to comply with the enablement requirement is not sustained. 13
• The rejection of claims 1-9 under the doctrine of obviousness-type 14
double patenting is sustained. 15
• The rejection of claims 1-9 under 35 U.S.C. § 103(a) as unpatentable 16
over Werth and Nakajima is sustained. 17
18
No time period for taking any subsequent action in connection with this 19
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 20
§ 1.136(a)(1)(iv) (2007). 21
AFFIRMED 22
23
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1
2
3
mev 4
5
Address 6
BANNER & WITCOFF, LTD. 7
1100 13th STREET, N.W. 8
SUITE 1200 9
WASHINGTON DC 20005-4051 10