Ex Parte Thorsen et al

Board of Patent Appeals and Interferences

May 11, 2012

11470880 (B.P.A.I. May. 11, 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.
11/470,880 09/07/2006 Peter THORSEN 2968.319US01 8734
52835 7590 05/14/2012
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
P.O. BOX 2902
MINNEAPOLIS, MN 55402-0902
EXAMINER
MARSHALL, CHRISTLE I
ART UNIT PAPER NUMBER
2887
MAIL DATE DELIVERY MODE
05/14/2012 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 PETER THORSEN, GARY KELLER, HARRY OLSON,
PATRICK S. KRAGTHORPE-SHIRLEY, and LAWRENCE J. COX
____________

Appeal 2010-003151
Application 11/470,880
Technology Center 2800
____________

Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and
TREVOR M. JEFFERSON Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4, 6-11, 18-20, and 25, which are all of the claims
remaining in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2010-003151
Application 11/470,880

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STATEMENT OF THE CASE
Invention
Appellants’ invention relates to “methods and systems for automated,
self-service issuing of a card or other object to an individual” where the card
or other object is “returned by the individual for later automated
re-issuance . . . to the same or different individual.” (Spec. 2: 14-17).
Claim 1 is illustrative:
1. An apparatus for issuing, allowing return of, and re-
issuing access control badges, comprising:
a housing;
a user interface to enable a user to interact with the
apparatus;
a retrieval and return area through which an access
control badge is dispensed to and returned by a user;
an access control badge storage area within the housing,
the access control badge storage area having a plurality of
separate access control badge storage locations, each access
control badge storage location holding a different type of access
control badge, and each access control badge storage location is
configured to hold a plurality of access control badges; and
a transport mechanism that transports an access control
badge from one of the access control badge storage locations of
the access control badge storage area to the retrieval and return
area and from the retrieval and return area back to the one
access control badge storage location of the access control
badge storage area to permit issuance of an access control
badge from the retrieval and return area and later return of the
issued access control badge via the retrieval and return area to
the one access control badge storage area.

Appeal 2010-003151
Application 11/470,880

3
Prior Art
The Examiner relies on the following references as evidence:
Tuttobene US 5,139,384 Aug. 18, 1992
Martin US 2003/0155370 Al Aug. 21, 2003
Newsome US 6,595,416 Bl Jul. 22, 2003
Hilton US 6,805,286 B2 Oct. 19, 2004

Examiner’s Rejection
Claims 1-4, 7-11, and 18-20 were rejected under 35 U.S.C. § 103(a)
as being unpatentable over Tuttobene in view of Martin.
Claims 6 and 25 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tuttobene and Martin, in view of Newsome for claim 6
and in view of Hilton for claim 25. (Ans. 3-11).
1

Claims 5, 12-17, 21-24, and 26 were canceled.

Appellants’ Contentions
With respect to independent claim 1, Appellants contend that the cited
references, Tuttobene and Martin, do not support the Examiner’s finding of
obviousness because the combination is not analogous art and fails to teach
how to return an object to a storage location that holds a plurality of objects
(Br. 9, 10). In addition, Appellants argue that there is no expectation of
success in combining the references and that they lack a motivation to
combine. (Br. 11). With respect to claim 6, Appellants contend that

1
We refer throughout this opinion to the Examiner’s Answer (“Ans.”)
mailed on October 1, 2009 and Appellants’ Appeal Brief (“Br.”) filed on
June 16, 2009. Appellants did not file a Reply Brief.
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Application 11/470,880

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Newsome does not teach or suggest an access control badge that can be
processed for reissuance to another user. (Br. 12).
Appellants argue claims 1-4, 7-11, and 18-20 as a group using claim 1
as the representative claim, and argue claim 6 separately. Claim 25 also
stands or falls with claim 1, as Appellants are not contesting the relevance or
combination of Hilton as applied to claim 25. (Br. 8). We will, therefore,
decide this appeal for claims 1-4, 7-11, 18-20 and 25 based upon
representative claim 1 and address claim 6 separately. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Issues
1. Did the Examiner err in rejecting claim 1 as being unpatentable
under 35 U.S.C. § 103(a) over Tuttobene in view of Martin?
2. Did the Examiner err in rejecting claim 6 as being unpatentable
under 35 U.S.C. § 103(a) over Tuttobene as modified by Martin, in view of
Newsome.
ANALYSIS
With respect to claim 1, we have reviewed the Examiner’s rejections
in light of Appellants’ contentions that the Examiner erred. We disagree
with Appellants’ conclusions.
First, Appellants contend that Tuttobene and Martin are not analogous
art. The Examiner properly found that Tuttobene and Martin are both
“references from the field of dispensing items,” (Ans. 11). The Examiner
further found that Tuttobene discloses issuing and transporting an item from
a respective storage bin and accepting return of the item back to its
respective storage bin, where the storage bins are among a plurality of
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Application 11/470,880

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storage bins that each holds one item. (Ans. 4-6, 11). The Examiner also
found that Martin discloses issuing an item, particularly multiple access
badges, from a respective storage location among a plurality of storage
locations, where each storage location holds more than one item or access
badge. (Ans. 11-12).
We agree with the Examiner’s findings regarding the teachings of
Tuttobene and Martin and their combination. (Ans. 4-8). “Two separate
tests define the scope of analogous prior art: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.”In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
The Examiner found that Tuttobene and Martin relate to dispensing items,
just as Appellants’ “disclosure relates to a self-service machine that issues an
object to a user, and allows return of the object for later reissuance to
another user.” (Spec. 1: 6-7). As such, the Examiner has found that
Tuttobene and Martin are from the same field of endeavor as the claimed
invention and therefore are analogous prior art. Thus, Appellants’
unsupported argument that Tuttobene and Martin are not analogous art is not
persuasive.
We also disagree with Appellants that the mechanical systems in
Tuttobene and Martin are “completely different from one another” and
cannot be interchanged. (Br. 10). Appellants presented no evidence that the
mechanical combination of the teachings in Tuttobene and Martin are
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
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Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007)). Indeed, Appellants’
claims themselves do not require any particular mechanics for the retrieval
and return of the access control badge to or from its storage area.
Appellants also fail to provide any evidence that the Martin reference
“lead[s] a person of ordinary skill in the art away from the feature of
returning an object to a storage location.” (Br. 9, 12). We find that the
Examiner has articulated how the limitations of claim 1 are met by the
reference teachings with support to combine Martin and Tuttobene. (See
KSR Int’l, 550 U.S. at 418).
With respect to claim 6, Appellants merely repeat the claim limitation
and assert that Tuttobene and Martin, in view of Newsome do not teach or
suggest the claim features. (Br. 12). See 37 C.F.R. § 41.37(c)(1)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
As such, we agree with the Examiner’s findings and conclusions regarding
the teachings of Newsome. (Ans. 9).

CONCLUSION
The Examiner did not err in rejecting claims 1 and 6. Therefore, we
sustain the 35 U.S.C. § 103(a) rejections of claims 1-4, 6-11, 18-20, and 25
as being unpatentable under 35 U.S.C. § 103(a).
Appeal 2010-003151
Application 11/470,880

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DECISION
The Examiner’s decision rejecting claims 1-4, 6-11, 18-20 and 25
under 35 U.S.C. §103(a) 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)(1)(iv).

AFFIRMED

ELD