10013378 (B.P.A.I. Jan. 26, 2012)

Ex Parte Taylor

Board of Patent Appeals and InterferencesJan 26, 2012

10013378 (B.P.A.I. Jan. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JASON W. TAYLOR ____________ Appeal 2010-001922 Application 10/013,378 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001922 Application 10/013,378 2 STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-2 and 4-20 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellant’s claimed invention is directed to a rental return apparatus with an opening, chute, store area, and device to identify the returned rental items (Spec. 2:5-10). Claim 1, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 1. A rental item return apparatus comprising: an opening to receive returned rental items; a store area for returned items; [1] a chute arranged to connect the opening to the store area, the chute being disposed so that items placed within the chute slide down the chute under the propulsion of gravity; and [2] a bar code scanner disposed so as to scan a bar code affixed to each return rental item to uniquely identify and log each returned rental item, scanning of the bar code being performed as the return rental item slides down the chute under the propulsion of gravity. Appeal 2010-001922 Application 10/013,378 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Bradt US 4,839,505 Jun. 13, 1989 Hardgrave US 6,010,239 Jan. 4, 2000 Koh US 2001/0016800 A1 Aug. 23, 2001 Bunch, III US 2002/0195491 A1 Dec. 26, 2002 Ratesic US 6,651,821 B2 Nov. 25, 2003 The following rejections are before us for review: 1. Claims 1, 4, 8-11, and 15-16 are rejected under 35 U.S.C. § 102(b) as anticipated by Hardgrave. 2. Claims 2, 12, 17, 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hardgrave. 3. Claims 1, 2, 4-8, 10-17, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bunch, III and Koh. 4. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over Bunch, III, Koh, and Bradt. 5. Claims 18, 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bunch, III, Koh, and Rastic THE ISSUES With regards to the rejections made using the Hardgrave reference the issues turn on whether the cited reference discloses claim limitation [2]. With regards to the rejections made using the Koh reference the issues turn on whether the cited Koh reference discloses claim limitation [1]. Appeal 2010-001922 Application 10/013,378 4 FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence.1 Additional facts may appear in the Analysis section below. FF1. Hardgrave has disclosed an automatic item-driven system for deposit and pick-up. (Abstract). FF2. Hardgrave at Col. 6:4-14 and Col. 9:48-10:38 does not disclose an embodiment with a bar code scanner disposed so as to scan a bar code affixed to each return rental item to uniquely identify and log each returned rental item with the scanning of the bar code being performed as the return rental item slides down the chute under the propulsion of gravity. FF3. Hardgrave in Fig. 1 shows the detection of the bar code 36 to be outside of the doors 8 which would provide access to the chute area in the machine. FF4. Koh has disclosed a library monitoring system in which a borrowed item is returned to a receptacle where an identification code is sent to a processing unit which updates the database. (Abstract). FF5. Koh in Fig. 3 shows the chute connecting the opening to a conveyer and not to the “store area” which would be further downstream of the conveyer. 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2010-001922 Application 10/013,378 5 ANALYSIS Rejections using the Hardgrave Reference The Appellant argues that the rejection of claim 1 is improper because Hardgrave fails to disclose claim limitation [2] (Br. 4-5). In contrast, the Examiner has determined that Hardgrave discloses claim limitation [2] at column 9:48-10:38 (Ans. 4-5, 14-15) and determined that “[i]t is considered inherent that the scanning of the bar code is done as the item sliding down the chute is under the influence of gravity as claimed” (Ans. 5). We agree with the Appellant. Hardgrave at column 9:48-10:38 does not disclose claim limitation [2] as asserted by the Examiner so this rejection is not sustained. The Examiner has cited to column 9:48-10:38 of Hardgrave as disclosing claim limitation [2] but a close examination of the passage reveals that the cited section actually refers to two separate embodiments. The first embodiment shown in Fig. 4 does describe the bag dropped down the chute, but this embodiment does not specifically include a bar code scanner in the claimed location. The embodiment described in Figs. 5a-b does disclose screening for detection of the bags but is not specifically disclosed that the scanning takes places as the return rental item slides down the chute under the propulsion of gravity. Figs. 5a-b are flowcharts and do not show the physical placement of the bar code scanning apparatus specifically inside the chute area. An examination of Fig. 1 shows the bar code scanning 36 to be outside of the doors 8 which would lead to the chute area in the machine (FF3), and thus the scanning is not specifically shown in this Figure to occur down the chute. Further, it is also unclear how the device of Hardgrave would operate in the claimed manner as the scanner Appeal 2010-001922 Application 10/013,378 6 would have to be in a very specific location in order to so quickly scan in the chute unless the item was scanned by hand outside the shoot. “To establish inherency, the extrinsic evidence must ‘make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.’’’ “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted) (internal quotation marks omitted). Here, the cited claim limitation [2] cannot be established in the cited reference beyond probabilities or possibilities. For these reasons above the rejection of claim 1 and its dependent claims under these rejections is not sustained. Claim 11 contains a similar limitation and the rejection of this claim and its dependent claims under these rejections is not sustained for these same reasons. Rejections using the Bunch and Koh References The Appellant argues that this rejection of claim 1 is improper because Koh fails to disclose claim limitation [1] (Br. 8-9). In contrast, the Examiner has determined that Koh teaches the cited claim limitation at Fig. 3 (Ans. 8, 15-16). We agree with the Appellant. Claim limitation [2] requires in part “a chute arranged to connect the opening to the store area”. Koh in Fig. 3 shows the chute connecting the opening to a conveyer (FF3) and not to the “store area” which is further downstream of the conveyer. As this claim Appeal 2010-001922 Application 10/013,378 7 limitation has not been shown in the prior art, the rejection of record is not sustained. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting the claims as listed in rejection section above. DECISION The Examiner’s rejection of claims 1-2 and 4-20 is reversed. REVERSED MP