Alfred Schmidt et al.

Patent Trials and Appeals Board

Oct 15, 2020

13055499 - (D) (P.T.A.B. Oct. 15, 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.
13/055,499 01/24/2011 Alfred Schmidt SCHM3020/TJM/TL 5988
23364 7590 10/15/2020
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
SHAPIRO, JEFFREY ALAN
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
10/15/2020 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):
MAIL@BACONTHOMAS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALFRED SCHMIDT, PETER DOPFER, and
ERWIN DEMMELER
Appeal 2020-000595
Application 13/055,499
Technology Center 3600
Before EDWARD A. BROWN, LYNNE H. BROWNE, and
BRANDON J. WARNER, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16–25 and 27–37. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as
DIESECKE+DEVRIENT CURRENCY TECHNOLOGY GMBH. Appeal
Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to an apparatus for processing documents of
value and a method for operating the apparatus. Spec. ¶ 1. Claim 16,
reproduced below, is illustrative of the claimed subject matter:
16. An apparatus for processing documents of value
comprising:
several processing zones located on the apparatus and
arranged to process documents of value, each of said several
processing zones having at least one door moveable between an
open and a closed position,
said apparatus comprising sensors arranged to detect
events which require an intervention of an operator of the
apparatus;
a control unit; and
at least one actuator associated with each door of the
several processing zones arranged to open the door under the
control of the control unit,
wherein said control unit is arranged to monitor the
sensors and as soon as the respective sensor detects a
malfunction to select a correct door out of the several doors of
the several processing zones associated with the event detected
by the respective sensor; and
to automatically operate the at least one actuator of a
respective door upon detection of an event associated with the
respective processing zone at which the door is located, so that
by the selected correct door opening automatically an operator
is led directly to the one processing zone of the several
processing zones in which the intervention of the operator is
required.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Genth US 4,811,680 3/14/1989
Ligtenberg US 2007/0019375 A1 1/25/2007
Zagorchev US 2009/0043172 A1 2/12/2009
Bally US 2009/0159585 A1 6/25/2009
Mori US 2009/0293424 A1 12/3/2009
Kogo JP 04350044 A 12/4/1992
Shin JP 2004020804 A 1/22/2004

REJECTIONS
1. Claims 16, 17, 19, 25, 31, and 34–36 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Mori and Kogo.
2. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mori, Kogo, and Ligtenberg.
3. Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mori, Kogo, and Bally.
4. Claims 18, 19, 22–24, 27–30, and 32 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Mori, Kogo, and Shin.
5. Claims 22–24, 27, 30, and 33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mori, Kogo, and Genth.
6. Claim 37 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mori, Kogo, and Zagorchev.
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OPINION
Rejection 1 – Obviousness of claims 16, 17, 19, 25, 31, and 34–36
based on Mori and Kogo
Claims 16, 19, 25, 31, and 34
Appellant argues claims 16 and 25 together.2 Appeal Br. 9. We
select independent claim 16 as the representative claim, and claims 19, 25,
31, and 34 stand or fall with claim 16.3 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Mori discloses an apparatus 100 for
processing documents of value having several processing zones 102–106.
Final Act. 2. The Examiner finds that each processing zone has at least one
“door/cover” movable between open and closed positions. Id. The
Examiner finds that apparatus 100 includes sensors 104c, a sensor for
detecting the conveyed sheets P, and a lever sensor 71c arranged to detect a
difficulty (e.g., a paper jam). Id. at 3 (citing Spec. ¶¶ 33, 49, 53, 54, 59–61).
The Examiner finds that Mori discloses a control unit. Id. (citing Spec. ¶¶ 8,
31, 43).
The Examiner determines that Mori fails to disclose at least one
actuator for each door/cover arranged to open the door/cover under the
control of the control unit. Final Act. 3. Given the fact that Mori fails to
disclose such actuators, the Examiner determines that Mori also fails to
disclose a control unit arranged to automatically operate them. Id.

2 Appellant provides additional arguments for the patentability of claims 35
and 36, which are discussed in the following sections.
3 Appellant does not present separate arguments for claims 19, 31, and 34,
which also stand rejected based on the combined teachings of Mori and
Kogo and depend from claim 16. See Appeal Br. 22. Accordingly, claims
19, 31, and 34 stand or fall with claim 16.
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The Examiner finds that Kogo discloses a control unit 29 and an
actuator 21, 24 associated with a door/cover of a processing zone of,
presumably, an apparatus for processing documents. Final Act. 3. The
Examiner finds that Kogo includes a sensor 27 for detecting paper jams and
that “the processing zone [is] arranged to open the door/cover under the
control of the control unit.” Id. (emphasis omitted). The Examiner finds
that Kogo’s control unit 29 is arranged to automatically (i.e., without the
intervention of the operator) operate actuator 21, 24 of the door/cover upon
detection of an event such as a paper jam. Id. at 4. The Examiner finds that
this automatic operation would lead an operator directly to the processing
zone in which the intervention of the operator is required. Id.
The Examiner further finds that, in Kogo, sensors 27 are controlled by
control unit 29 and control unit 29 is arranged to select and open the door of
the processing zone requiring intervention “as soon as the sensor detects a
malfunction.” Final Act. 4 (emphasis omitted). The Examiner finds that
Kogo’s control unit 29 monitors sensors 26 and 27 to select the correct door.
Id. The Examiner asserts that Kogo’s reference in its Abstract to “the
pertinent access door” implies that more than one door is associated with an
event such as a paper jam. Id. at 4–5.
The Examiner reasons that it would have been obvious “to have
provided a control system portion, sensors, door/cover locks and door/cover
actuators, as taught by Kogo, in Mori’s apparatus for processing documents
for the purpose of automatically opening one of Mari’s door/covers
[]covering one of Mari’s processing zones.” Final Act. 5. According to the
Examiner, the proposed modification would “alert[] an operator to a
malfunction of the processing apparatus in a particular zone by not only
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displaying a notice on a display, and not only by lighting a particular light
near said zone, but also automatically opening the door/cover to the zone
where the malfunction is located.” Id.
Appellant contends that Kogo “fails to cure the deficiencies of Mori
with respect to claim 16” because, “Kogo only discloses the recording-
paper-position detecting sensor and control part, but fails to disclose” the
control unit as claimed. Appeal Br. 12. In support of this contention,
Appellant asserts that “Kogo cannot teach leading an operator to the correct
door, at least because, Kogo only teaches the apparatus as only having one
openable door, where there is no question as to which door has to be opened
for an intervention” Id. at 13 (citing Schmidt Dec. ¶ 8). Appellant asserts
further that Kogo “provides no teaching of how to perform a selection if
multiple doors and multiple processing zones were present in the apparatus.”
Id.
Appellant’s argument is unconvincing because it does not consider the
combined teachings of Mori and Kogo as applied in the rejection. As
discussed above, the Examiner finds that Mori disclose an apparatus having
multiple processing zones, each having at least one door and sensors for
monitoring these zones for difficulties. Final Act. 2–3. The Examiner
further finds that Kogo discloses an actuator for automatically opening at
least one door of a similar apparatus. Based on these findings, the Examiner
determines that it would have been obvious to add Kogo’s actuator to each
of Mori’s doors, to monitor Mori’s processing zones for difficulties, and to
automatically open the door for the affected processing zone based on
Mori’s detection of the difficulty. See Final Act. 5. We see no reason why
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Kogo’s teachings would be limited to only one door as argued by Appellant.
Rather, Kogo’s teachings would apply equally to all of Mori’s doors.
Next, Appellant contends that “modification of the sheet processing
apparatus of Mori with the teachings of Kogo . . . would have resulted in an
automatic opening of the door/cover that allows access to the jammed
recording paper.” Appeal Br. 14. According to Appellant, “the skilled
person would [have] modified the stacking storage cover of the stacking
devices of Mori to automatically open to allow the operator to access any
difficulty, instead of the door of the respective unit, which does not allow
access to the difficulty.” Id.
Appellant’s argument is unconvincing because the elements in Mori
that correspond to Kogo’s door are Mori’s doors 103(a)–105(a), not its
covers 71b. Although Mori’s covers 71b must be unlocked to provide
access to jammed paper, the door where the paper jam is located must first
be opened to access the associated cover. Mori ¶ 48. We agree with the
Examiner that the apparent reason the doors of Kogo’s apparatus are opened
is to provide an indication to the operator of where the paper jam is located.
Final Act. 5. In Mori, opening of covers 71b would not provide such
indication. Further, when a difficulty is detected in Mori, opening of one of
doors 103(a)–105(b) automatically unlocks cover 71b for that processing
zone. Mori ¶ 59. Thus, one skilled in the art considering Kogo’s teachings
would apply them to Mori’s doors 103(a)–105(a), not Mori’s covers 71b.
In addition, Appellant argues that “Mori does not ‘merely’ lack the
automation of the movement of the door/cover . . . but fails to provide any
reason why the skilled person would have modified the doors (102a to 105a)
to be locked/unlocked or opened automatically.” Appeal Br. 15.
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Appellant’s argument is unconvincing because we are unaware of any
requirement that the primary reference provide a reason for the proposed
modification of itself. Rather, the test for obviousness is not whether the
claimed invention is expressly suggested in any one or all of the references,
but whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the
Examiner reasons that
it would have been obvious to one of ordinary skill in the art to
have provided a control system portion, sensors, door/cover
locks and door/cover actuators, as taught by Kogo, in Mori’s
apparatus for processing documents for the purpose of
automatically opening one of Mori’s door/covers door/covering
one of Mari's processing zones, thus alerting an operator to a
malfunction of the processing apparatus in a particular zone by
not only displaying a notice on a display, and not only by
lighting a particular light near said zone, but also automatically
opening the door/cover to the zone where the malfunction is
located.
Final Act. 5. Appellant does not explain why the Examiner’s reasoning is
flawed, and thus, does not apprise us of error.
Finally, Appellant contends that “the skilled person would not have
automated the opening/closing of the door, since such automatic opening of
the doors would have decreased the security of the sheet processing
apparatus.” Appeal Br. 16 (citing Mori Figs. 6–9) (internal citation omitted).
Appellant also argues that such a modification “would have lengthened the
power supply time and increased the time the electromagnetic lock is turned
on, which would have improperly changed the principle of operation of
Mori.” Id. (citing MPEP § 2143.01(VI)). In support of this contention,
Appellant argues that “if the doors were automatically opened . . . not only
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would such automation bypass a condition for unlocking the stacking
portion, e.g., loses its security function, but also such automation would
prevent Mori from performing its function to shorten the power supply time
of the electromagnetic lock.” Id.
Appellant’s argument is unconvincing. In Mori, opening of a door
103(a)–105(a) only triggers automatic opening of an associated cover 71b in
the instance when a difficulty is encountered. Mori ¶¶ 63–64. Applying
Kogo’s teachings to Mori’s apparatus by providing an actuator to
automatically open the door upon detection of a difficulty would not alter
the operation of Mori’s cover locking/unlocking mechanism. Thus, the
proposed modification would not change Mori’s principle of operation.
For these reasons, we sustain the rejection of claims 16, 17, 19, 25,
31, and 34.
Claim 35
In addition to the arguments discussed above, Appellant provides an
additional argument for claim 35. Appeal Br. 19–20. Asserting that “Mori
only discloses a cover opening-closing permission display lamp to indicate
whether access to the stacking device is allowed,” Appellant contends that
Mori “fails to disclose ‘wherein the apparatus is arranged to indicate the
automatic opening of the door by one or more acoustic and/or visual signals
before the automatic opening of the door,’” as required by the claim. Appeal
Br. 20. In support of this contention, Appellant argues that, in Mori, “[o]nly
after the opening of the door of the unit is the cover opening-closing
permission display lamp 71m visible to notify that the stacking device 71 is
in the unlocked state and can be accessed to the operator.” Id. at 19–20
(citing Mori ¶ 60).
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In response to this argument the Examiner asserts that Mori recites
“the phrase ‘displaying permission of access to the stacking device.’” Ans.
16 (citing Mori, Abst.). The Examiner also points out that in the next
sentence Mori states, “When a condition of unlocking a stacking portion and
opening of the door is detected, the electromagnetic lock is held in an
unlocking state and a cover opening-closing permission display lamp is
turned on.” Id. (quoting Mori, Abst.).
The Examiner is correct. Mori discloses “when the opening of the
door is detected, a cover opening-closing permission lamp/light is turned
on.” Ans. 17. This, however, is not what claim 35 requires. Rather, claim
35 requires the exact opposite, stating, “wherein the apparatus is arranged to
indicate the automatic opening of the door by one or more acoustic and/or
visual signals before the automatic opening of the door.” Appeal Br. 27.
For this reason, we do not sustain the rejection of claim 35.
Claim 36
In addition to the arguments discussed above, Appellant argues that
“neither Mori nor Kogo teach actively notifying an operator” as required by
claim 36. Appeal Br. 22. Claim 36 states “that by the selected correct door
opening automatically the operator is notified and led directly to the first
processing zone in which the intervention is required.” Id. at 27.
We agree with the Examiner that the combined teachings of Mori and
Kogo would have taught or suggested modifying Mori’s doors
103(a)–105(a) to each include one of Kogo’s actuators to automatically open
one of these doors when a difficulty such as a paper jam is detected as
discussed above. After such modification, automatic opening of the correct
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door would notify and lead the operator to the processing zone where
operator intervention is required, thus meeting the contested limitation.
For this reason and the reasons discussed above, we sustain the
rejection of claim 36.
Rejection 2 — Obviousness of claim 20 based on Mori, Kogo, and
Ligtenberg
Claim 20 depends from claim 16 and adds the limitation “wherein the
apparatus is arranged to indicate the automatic opening of the door by one or
more acoustic and/or visual signals before the automatic opening of the
correct door.”4 Appeal Br. 25. The Examiner finds that “Ligtenberg teaches
wherein the apparatus (200) is arranged to indicate the automatic opening of
the door (304) by one or more acoustic and/or visual signals, i.[]e., indicator
light (308) before the automatic opening of the correct door.” Final Act. 9
(citing Ligtenberg ¶ 53, Figs. 3–4).
Appellant contends that “Ligtenberg is non-analogous art with respect
to Mori and the present invention.” Appeal Br. 21. Appellant argues that
“Ligtenberg not only fails to disclose several processing zones . . ., since
Ligtenberg is only directed to a portable computer, the portable computer of
Ligtenberg does not have any security functionality or need to access a
difficulty behind the access door.” Id. In other words, Appellant appears to
assert that Ligtenberg is not in the same field of endeavor as the instant
invention and is not reasonably pertinent to the particular problem with
which the inventors are involved. In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004) (“Two separate tests define the scope of analogous prior art:

4 We note that this limitation is similar to the limitation in claim 35
discussed above.
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(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.”) (citing In re
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032,
1036 (CCPA 1979)).
The Examiner does not respond to this argument. See, generally, Ans.
We agree with Appellant that Ligtenberg is not in the same field of endeavor
as the instant invention or reasonably pertinent to the particular with which
Appellant is involved (i.e., the problem of providing an audio or visual
signal before an automatic door is opened) because Ligtenberg’s door is not
automatically opened.
For this reason, we do not sustain the Examiner’s rejection of claim
20.
Rejections 3–6 — Obviousness of claim 21 based on Mori, Kogo, and
Bally; Obviousness of claims 18, 19, 22–24, 27–30, and 32 based on Mori,
Kogo, and Shin; Obviousness of claims 22–24, 27, 30, and 33 based on
Mori, Kogo, and Genth; and Obviousness of claim 37 based on Mori, Kogo,
and Zagorchev
Appellant does not separately contest any of these rejections. Rather,
Appellant contends that “[t]the remaining pending claims, which depend
from claims 16 and 25 and contain all of the features recited in claims 16
and 25, are allowable over the proposed modification at least based on their
dependency on claims 16 and 25.” Appeal Br. 22. As we have sustained the
rejection of claims 16 and 25, Appellant’s argument is unconvincing.
Accordingly, we sustain these rejections.
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CONCLUSION
The Examiner’s rejections of claims 16–19, 22–25, 27–34, 36, and 37
are AFFIRMED.
The Examiner’s rejections of claims 20 and 35 are REVERSED.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
16, 17, 19,
25, 31, 34–
36
103 Mori, Kogo 16, 17, 19,
35, 31, 34,
36
35
20 103 Mori, Kogo,
Ligtenberg
20
21 103 Mori, Kogo, Bally 21
18, 19, 22–
24, 27–30,
32
103 Mori, Kogo, Shin 18, 19, 22–
24, 27–30,
32

22–24, 27,
30, 33
103 Mori, Kogo, Genth 22–24, 27,
30, 33

37 103 Mori, Kogo,
Zagorchev
37
Overall
Outcome
16–19, 22–
25, 27–34,
36, 37
20, 35

TIME PERIOD FOR RESPONSE
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