Minson, John

Patent Trials and Appeals Board

Apr 1, 2020

13943397 - (D) (P.T.A.B. Apr. 1, 2020)

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.
13/943,397 07/16/2013 John Minson 3532-001.NP 7065
20551 7590 04/01/2020
THORPE NORTH & WESTERN, LLP.
P.O. Box 1219
SANDY, UT 84091-1219
EXAMINER
RANDALL, JR., KELVIN L
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
04/01/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket@tnw.com
warren.archibald@tnw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN MINSON, DAN LOVERIDGE, and
AMOL DESHMUKH

Appeal 2019-005463
Application 13/943,397
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–10, 14, 18, 20–25, and 27–31.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as John
Minson. Appeal Br. 3.
Appeal 2019-005463
Application 13/943,397

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STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and reproduced below.
1. A consumer card dispenser, comprising:
a planar sleeve shaped to receive a plurality of consumer
cards within a card chamber and having a dispense opening
shaped to pass the plurality of consumer cards edgewise, the
card chamber being defined at least in part by solid side panels
disposed opposite one another and a solid bottom edge opposite
the dispense opening;
an actuator extending along an edge of the planar sleeve
from the dispense opening to the solid bottom edge and forming
a solid sidewall of the card chamber, said actuator pivotable
about an actuator pivot fixed relative to the sleeve and located
between a retaining end and an actuation end of the actuator
such that the actuator pivots from a retaining position to a
dispense position, said retaining position orienting a card
contact surface of the retaining end against the plurality of
consumer cards to prevent removal of the plurality of consumer
cards; and
a lifter assembly associated with the actuation end and
contained entirely within the card chamber adjacent a bottom
edge of the card chamber, and adapted to apply force to at least
one of the plurality of consumer cards, upon movement of the
actuator to the dispense position, sufficient to dispense at least
one of the plurality of consumer cards from the dispense
opening, wherein the lifter assembly includes an elongate lifter
arm that interfaces with the actuator within the card chamber
and which rotates about a lifter pivot from a rest position to a
lift position.

Appeal 2019-005463
Application 13/943,397

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gould US 1,465,902 Aug. 21, 1923
Goodman et al.
(“Goodman”)
US 3,853,379 Dec. 10, 1974
Komatsu et al.
(“Komatsu”)
US 5,033,972 July 23, 1991
Bar-Yona et al.
(“Bar-Yona”)
US 5,351,858 Oct. 4, 1994
Soh US 5,655,918 Aug. 12, 1997
Dunn US 5,894,931 Apr. 20, 1999
Son et al. (“Son”) US 6,978,903 B2 Dec. 27, 2005
Long US 2009/0101255 A1 Apr. 23, 2009
Van Geer US 2015/0335118 A1 Nov. 26, 2015

Rejections
Claims 1, 2, 5–7, 9, 18, 20, 23, and 27–31 are rejected under
35 U.S.C. § 103 as unpatentable over Soh, Komatsu, Goodman, and Son.2
Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over Soh,
Komatsu, Goodman, Son, and Bar-Yona.
Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over Soh,
Komatsu, Goodman, Son, and Dunn.
Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over Soh,
Komatsu, Goodman, Son, and Gould.

2 Although the Examiner sets forth separate statements for the rejection of
claims 1, 2, 5–7, 9, 18, 20, and 27–30 (Final Act. 2) and claims 23 and 31
(id. at 9), we consolidate the statements into a single ground of rejection
because they are each based upon same the combination of references.
Appeal 2019-005463
Application 13/943,397

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Claims 14, 22, 24, and 25 are rejected under 35 U.S.C. § 103 as
unpatentable over Soh, Komatsu, Goodman, Son, and Van Geer.
Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable over Soh,
Komatsu, Goodman, Son, and Long.

ANALYSIS
Independent claim 1 recites, “an actuator extending along an edge of
the planar sleeve from the dispense opening to the solid bottom edge and
forming a solid sidewall of the card chamber.” Appeal Br., Claims App.
The Examiner relies on Soh to teach “an actuator . . . forming a solid
sidewall of the card chamber,” as recited in claim 1. Final Act. 2. More
specifically, the Examiner finds Soh’s ejection button 48 and associated
shaft 49 corresponds to the claimed “actuator.” Id. (citing Soh, Fig. 1). In
the Answer, the Examiner points to additional components of Soh to
correspond to the claimed “actuator.” Ans. 4. Namely, the Examiner
identifies the components of Soh’s double-deck PCMCIA card connector 10
that extend from ejection button 48 to reference number 36. Id. (citing Soh,
Figs. 1, 5); see also id. at 6; Soh, col. 4, ll. 15–17. Soh describes reference
number 36 as a point where upper eject arm 32 is coupled to upper eject rod
38. See Soh, Fig. 2, col. 5, ll. 2–6. Additionally, the Examiner relies on Soh
to teach “a plurality of consumer cards (13) within a card chamber.” Final
Act. 2 (citing Soh, Fig. 1). Therefore, we understand the Examiner to find
the space where upper and lower PCMCIA cards 13 are positioned in
connector 10 as Soh’s card chamber. See Soh, col. 4, ll. 43–47, Fig. 2.
Appeal 2019-005463
Application 13/943,397

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The Appellant argues that “Soh fails to teach an actuator forming a
solid sidewall of a card chamber, as required by claim 1.” Appeal Br. 19.
The Appellant supports this argument by asserting:
It is also clear from FIGS. 1, 2, 5, and 8 of Soh that the
left sidewall 22 forms a solid sidewall for a card chamber and
that the selection and ejection button 48 and ejection shaft 49
are separated from the sidewall 22 by the upper guide 44, which
at least partially contains the ejection button 48 and ejection
shaft 49 and provides a guide to movement of the ejection
button 48 and ejection shaft 49. The ejection button 48 and
ejection shaft 49 therefore reside outside of any card chamber
and do not form any part of a card chamber in Soh, specifically
a solid sidewall of a card chamber.
Id. at 18–19. The Appellant’s argument is persuasive.
Soh describes PCMCIA cards 13 as residing in upper and lower slots
24, 26 between right and left side arms 20, 22. Soh, col. 4, ll. 30–47,
Figs. 1–2. Accordingly, the space between arms 20 and 22 corresponds to
Soh’s card chamber. The solid sidewalls of Soh’s card chamber are the
portions of right and left side arms 20, 22 that form upper and lower slots 24,
26. These portions of arms 20 and 22 are not included in the structures that
the Examiner identifies as Soh’s actuator, i.e., the parts that extend from
ejection button 48 to reference number 36. Moreover, portions of arms 20
and 22 22 that form upper and lower slots 24, 26 are not actuators.
Therefore, we do not agree with the Examiner’s finding that Soh teaches “an
actuator . . . forming a solid sidewall of the card chamber,” as recited in
claim 1.
The Examiner fails to rely on the teachings of Komatsu, Goodman,
and Son in any manner that would remedy the deficiency in the Examiner’s
finding. Thus, we do not sustain the Examiner’s rejection of independent
Appeal 2019-005463
Application 13/943,397

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claim 1 and claims 2, 5–7, 9, 18, 20, 23, and 27–31, which depend
therefrom. Further, the Examiner fails to rely on the teachings of Bar-Yona,
Dunn, Gould, Van Geer, or Long in any manner that would remedy the
deficiency in the Examiner’s rejection of claim 1. Therefore, we do not
sustain the rejections of claims 4, 8, 10, 14, 21, 22, 24, and 25.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 2, 5–7, 9,
18, 20, 23,
27–31
103 Soh, Komatsu,
Goodman, Son

1, 2, 5–7,
9, 18, 20,
23, 27–31
4 103 Soh, Komatsu,
Goodman, Son,
Bar-Yona
4
8 103 Soh, Komatsu,
Goodman, Son, Dunn
8
10 103 Soh, Komatsu,
Goodman, Son, Gould
10
14, 22, 24,
25
103 Soh, Komatsu,
Goodman, Son,
Van Geer
14, 22, 24,
25
21 103 Soh, Komatsu,
Goodman, Son, Long
21
Overall
Outcome
1, 2, 4–10,
14, 18, 20–
25, 27–31

REVERSED