Ex Parte Zwieg et al

Board of Patent Appeals and Interferences

Jan 10, 2012

10896472 (B.P.A.I. Jan. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT L. ZWIEG, THOMAS P. ADAMS,
JON R. STIEBER, MYRON W. SPOEHR,
DANIEL J. FOLGER, and ROBERT E. GUNST
____________________

Appeal 2010-001186
Application 10/896,472
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001186
Application 10/896,472
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
25-44. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a self-service cash redemption machine and
method. Claim 25, reproduced below, is illustrative of the claimed subject
matter:
25. A cash handling machine for receiving a batch of
unsorted coinage from a user, for sorting coins into a plurality
of denominations and for dispensing a receipt, a voucher or a
form of credit to the user, the cash handling machine
comprising:
an intake area for receiving a batch of unsorted coins
which are loaded into the machine by a user;
a sorting mechanism for receiving the batch of coins
from the intake area and for sorting the coins into a plurality of
denominations;
a plurality of stationary chutes for receiving the coins
from the sorting mechanism after they have been sorted and for
conveying coins of respective denominations;
a plurality of coin receptacle entrances for alignment
with a plurality of coin receptacles for receiving the coins from
the sorting mechanism, wherein said plurality of coin receptacle
entrances are arranged in two rows with each row having at
least four receptacle entrances for accommodating two rows of
coin receptacles having a corresponding number of at least four
receptacles in each row;
at least three pivotable coin diverter chutes for receiving
coins from the stationary chutes, the pivotable coin diverter
chutes being disposed on pivot points located between the two
rows of receptacle entrances, at least two of the pivotable coin
diverter chutes being configured to pivotably access only two
coin receptacle entrances, and at least one of the pivotable coin
diverter chutes being configured to pivotably access three or
Appeal 2010-001186
Application 10/896,472
3
more coin receptacle entrances without any of the pivotable
coin diverter chutes accessing coin receptacle entrances
accessed by the other ones of the pivotable coin diverter chutes.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bolen
Jones
US 5,190,133
US 6,318,537 B1
Mar. 2, 1993
Nov. 20, 2001

REJECTIONS
Since the rejections under 35 U.S.C. § 112 and the double patenting
rejection set forth in the Office Action dated Dec. 24, 2008 are not presented
in the Examiner’s Answer, these rejections are presumed to have been
withdrawn. Reply Br. 1-2.
Claims 25-36 and 38-44 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Jones. Ans. 3.
Claim 37 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Jones and Bolen. Ans. 8.

OPINION
The rejections of claims 25-32 and 36-44 are affirmed.
The Examiner relies on Jones, particularly the coin distribution
network 248 embodiment (Figs. 13a-c, 14a, 14b and 15; col. 14 et seq.) of
the coin processing module 32 and coin receptacle station, in concluding the
claimed subject matter would have been obvious to one having ordinary skill
in the art. In rejecting independent claim 25, the Examiner relies on two
alternate rationales. First, regarding the limitation “at least two of the
Appeal 2010-001186
Application 10/896,472
4
pivotable coin diverter chutes being configured to pivotably access only two
coin receptacle entrances…” the Examiner states “this language is
considered intended use language and does not carry patentable weight.”
Ans. 6. Second, the Examiner concluded it would have been obvious to
modify Jones to arrive at the claimed configuration based on the anticipated
volume and variety of coins handled. Ans. 6 citing Jones col. 7, ll. 35-48.
The language referenced by the Examiner is functional language and it must
be considered like all words in a claim when judging the obviousness of the
claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970). While the Examiner first relies on a very broad claim interpretation,
essentially that the functional language does not structurally distinguish the
claimed subject matter from the prior art, the Examiner follows it up by
articulating a reason why it would have been obvious to cause Jones’ device
to actually perform as described. We do not view the Examiner’s grouping
of method claims 41-44 with the Examiner’s discussion of claim 25 as an
intent to interpret the steps corresponding to the functional language
discussed with regard to claim 25 as “intended use” limitations in the
method claims.1 Contra App. Br. 21-22;Reply Br. 12-15, 26-27. Rather, we
understand only the second of the Examiner’s stated rationales as applicable
to the method claims. With the exception of the Examiner’s reference to the
embodiment depicted in Figure 17 of Jones, we find the Examiner’s second

1 We recognize the importance of clearly explaining the pertinence of
the prior art relied upon by the Examiner in each of the rejected
claims, particularly in a complex art such as this. See e.g., 37 C.F.R. §
1.104(c)(2). However, the role of this board is not to supervise the
Examination process.
Appeal 2010-001186
Application 10/896,472
5
rationale convincing and adopt the factual findings and legal conclusions
associated therewith as our own.2
Regarding claim 41, Appellants contend the language pertaining to a
“compartment” and the “diverter chutes being pivotable to transfer [a
particular number of coin denominations to a particular number of
receptacles],” distinguishes the claimed subject matter from Jones. App. Br.
23. Appellants raise essentially the same issues concerning claim 43. App.
Br. 32-33. Appellants’ argument concerning the “compartment,” is
predicated on the assertion that Jones only contains a 1x5 array of
receptacles. App. Br. 24; Reply Br. 9. This assertion appears to be based on
a misunderstanding of the Examiner’s position. The Examiner states, “[a]s
can be seen in figure 13b, there are two rows of receptacles (252) and two
rows of receptacle entrances (280), as looking in a direction from the right-
hand side of the figure.” Ans. 5. Thus, the Examiner is interpreting Jones’
sections 257a and 257b as the claimed “rows.” Jones does associate the term
“row” with each receptacle 251. See e.g., col. 14, ll. 10-12 (describing six
columns of ten rows). However, the prior art need not use identical language
to disclose a structure falling within the scope of a claim term. Appellants
have not persuasively argued why the compartment for containing two rows
of coin receptacles does not encompass the compartment containing Jones’
two sections.
Regarding the “diverter chutes being pivotable to transfer [a particular
number of coin denominations to a particular number of receptacles],”

2 We do not regard adopting less than all of the Examiner’s reasoning
as altering the thrust of the Examiner’s rejection since Appellants
were provided with adequate notice of the rejection and a fair
opportunity to respond. In re Jung 637 F. 3d 1356, 1365 (Fed. Cir.
2011) citing In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976).
Appeal 2010-001186
Application 10/896,472
6
Appellants contend there is no suggestion in Jones to achieve this. We
disagree. Pointing to Figures 13b and 15 of Jones, the rotating coin
manifolds 258a-d are interpreted by the Examiner as the claimed “diverter
chutes.” Ans. 5. Jones clearly does not intend to restrict use of the coin
distribution network 248 to the particular routing scheme depicted in Table 1
and heavily relied upon by Appellants in arguing that Jones does not
distribute coins as claimed. See Jones col. 15, ll. 7-28; App. Br. 25. In
addition, Jones specifically states
Further, the coin exit channels 254a-g, the rotating coin
manifolds 258a-d, the coin tubes 256, and the linear distribution
manifolds 260-265 can be arranged to route denominations of
coins into as few as one coin receptacle 251 or as many
columns 252 of coin receptacles 251 as desired. The particular
arrangement is a function of the nature of the operator's
business and the variety of coin denominations that the operator
encounters on a daily basis.3
Col. 15, ll. 28-35. The number of receptacles coins are routed to in Jones is
directly related to the number of apertures 276 or inlets 280 that the rotating
coin manifold chute outlets 275 can align with. While Jones may not provide
exact details of a control mechanism or other device that might be used to
achieve the particular mode of operation claimed, we cannot agree with
Appellants that such express guidance would be necessary in order to enable
one of ordinary skill in the art to operate Jones in this manner. See App. Br.

3 We recognize that we cite portions of Jones that do not appear to be
specifically cited by the Examiner. However, such citations merely
provide further support for the Examiner’s position in response to
Appellants’ arguments. Thus, our citation to these passages does not
alter the thrust of the rejection. See e.g., In re Hedges, 783 F. 2d 1038
citing In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (the reference
is considered in its entirety for what it fairly suggests to one skilled in
the art).
Appeal 2010-001186
Application 10/896,472
7
26-27, 38. If implemented via the control system (see e.g., Col. 16, ll. 47-
49), this result could be achieved by only allowing the outlet 275 of coin
chute 270 to align with particular apertures 276. See fig. 14b. If implemented
mechanically, apertures 276 could simply vary in number. Either of these
modifications to Jones would yield the claimed subject matter and are the
product of modifying Jones according to Jones’ express suggestion to do so.
Thus, we agree with the Examiner that the subject matter of claims 25, 41
and 43 would have been obvious to one having ordinary skill in the art.
Appellants correctly point out that the alternative structure depicted in
Figure 17 of Jones could not be reasonably interpreted as the “pivotable
diverter chutes” because they are not between Jones’ sections, interpreted by
the Examiner as the claimed “rows.” App. Br. 27, 37-38. We regard the
Examiner’s comment concerning the embodiment depicted in Figure 17 of
Jones as an alternative rationale. While, to the extent the Examiner relies
upon this structure as the claimed “diverter chutes,” we do not adopt the
Examiner’s position, this does not alter our ultimate conclusion that the
subject matter of claims 25, 41 and 43 would have been obvious to one
having ordinary skill in the art.
Regarding claims 42 and 44, Appellants raise essentially the same
issue: “There is no positive step of limiting rotation of certain ones of the
coin diverter chutes to prevent overlap or interference with other coin
diverter chutes in Jones.” App. Br. 29-31, 33-34; Reply Br. 15-22. We
recognize that the rotating coin manifolds 258 in Jones are spaced more
similarly to Appellants’ diverter chutes 30a and 30d, which cannot overlap,
than similarly to Appellants’ diverter chutes 30a and 30b which can overlap.
See Spec. fig. 12a. However, claims 42 and 44 merely require limiting
rotation to prevent overlap or interference. This language does not expressly
Appeal 2010-001186
Application 10/896,472
8
or implicitly require the diverter chutes to actually have the ability to overlap
or interfere. Jones’ chutes 270 rotate within stationary housings 272. Jones
limits their rotation so as not to interfere with each other and this is all
claims 42 and 44 require. Whether the lack of interference of overlap is the
result of programming or physical position (See App. Br. 29) is not germane
to claims 42 and 44.
Regarding claim 25, Appellants contend that “[t]he exits 276
accessed by chutes 270 in Jones et al. are not coin receptacles entrances ‘for
alignment’ with the coin receptacles.” App. Br. 35; Reply Br. 7-9. We note
that the Examiner refers to both manifold apertures 276 and the inlets 280 to
which they are connected as the claimed “receptacle entrances.” Ans. 4-5.
The fact that Jones’ apertures or inlets are connected via Y-chutes and may
be offset when viewed from a particular angle (e.g., Fig. 13c reproduced at
Reply Br. 9) does not mean they are not “for alignment.” When viewed from
the front of Appellants’ machine 10 receptacles 60 are also horizontally
offset from receptacle entrances 42. See e.g., Fig. 3. In each case a line can
be drawn between the two structures and a coin path therebetween is created.
The receptacle entrances are not required to pivotably access the receptacles.
Contra App. Br. 7-8. Appellants have not persuasively argued the
Examiner’s interpretation of “coin receptacle entrances for alignment with
the coin receptacles” is improper. Additionally regarding claim 25, while the
“configured to” terminology raises questions as to whether Jones’ controller
must actually be programmed to carry out the recited function or merely be
capable of being so programmed by the operator (see e.g., Ans. 10; App. Br.
35-36; Reply Br. 11; see also Jones col. 15, l. 55 – col. 16, l. 8), we have
concluded above it would have been obvious to program Jones’ controller in
this manner, thereby meeting the more narrow interpretation of the claim.
Appeal 2010-001186
Application 10/896,472
9
Regarding claim 26, Appellants’ argument that Jones does not
disclose the specific coin distribution plan pattern 3-3-2-2 is not persuasive
for the same reasons discussed above regarding claims 25, 41 and 43: Jones
expressly suggests arranging the disclosed components, including the
rotating coin manifolds, to alter the number of receptacles coins are routed
to. See App. Br. 38. Appellants’ argument regarding overlap in claim 26 is
unpersuasive for reasons similar to those discussed regarding claims 42 and
44. App. Br. 39. Regarding claim 30, Appellant relies on those arguments
presented regarding claim 25 and they remain unpersuasive. See App. Br.
43.
Appellants characterize the rejection of claims 27-29 and 31, as “non-
art” rejections. App. Br. 40-45. We understand the Examiner’s reference to
MPEP 2115 entitled “Material or Article Worked Upon by Apparatus” in
rejecting these claims as pointing out that the claim features pertaining to the
particular denominations of coins, e.g., “positioned to convey nickels and
dimes” do not structurally distinguish the claimed invention from Jones. We
agree with the Examiner’s analysis. Again, we recognize all words in a
claim must be considered in judging obviousness. However, we fail to see
how the diverter chutes being “positioned to convey nickels and dimes” in
any way changes the structure of the diverter chutes themselves or of any
other element of the claimed apparatus. Even if Jones’ manifolds convey
quarters or half dollars or tokens, they can still be reasonably regarded as
“positioned to convey nickels and dimes,” whether or not they actually do,
in practice, convey those coins. Appellants have not persuasively argued that
the recitation of using a particular coin or set of coins structurally
distinguishes Appellants’ claimed apparatus from Jones’ device which is
capable of accommodating various types of coins. Jones col. 15 l. 21 – col.
Appeal 2010-001186
Application 10/896,472
10
16 l. 33. Appellants present similar arguments regarding claim 32 and these
arguments are unpersuasive for similar reasons.
Regarding claim 39, Appellants’ argument appears to be premised on
an incorrect reading of Jones which clearly distinguishes between a “user”
and an “operator.” See App. Br. 47-48; Jones, passim. We note that claim
37, and not claim 36, is rejected based upon the combination of Jones and
Bolen. Contra App. Br. 48. In any case, Appellants do not raise any issues
relating to the specific language of these claims. App. Br. 48.

The rejection of claims 33-35 is reversed.
Regarding claim 33, the Examiner interprets Jones’ housing
encompassing the entire sorting mechanism as the claimed “rigid support.”
Jones’ columns 252a-f have rollers that appear to correspond to the doors
122 in Figure 8. However, the Examiner does not address, and it is not
apparent how the structure cited by the Examiner as the claimed “rigid
support” is “one-piece,” supports the rotating manifolds 258, interpreted by
the Examiner as the “diverter chutes,” while forming the inlets 280,
interpreted by the Examiner as the “coin receptacle entrances” and is
“slidable out of a front of the machine” as required by claim 33. See Ans. 7;
App. Br. 45-46; See also e.g., Spec. p. 6, para. [0031], figs. 5-7 at numeral
40. Accordingly, we cannot sustain the rejection of claim 33 or of
dependent claims 34 and 35. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988) (“Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious.”)

DECISION
The rejections of claims 25-32 and 36-44 are affirmed.
Appeal 2010-001186
Application 10/896,472
11
The rejection of claims 33-35 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

mls