Ex Parte 6,794,634 et al

Patent Trial and Appeal Board

Sep 10, 2015

95000604 (P.T.A.B. Sep. 10, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,604 02/02/2011 6,794,634 CRAN01-00524 1534
42624 7590 02/28/2017
DAVIDSON BERQUIST JACKSON & GOWDEY LLP
8300 Greensboro Dr, Suite 500
McLean, VA 22102
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/28/2017 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 PATENT TRIAL AND APPEAL BOARD
____________________

CRANE CO.
Requester
v.
Patent of AUTOMATED MERCHANDISING SYSTEMS, INC.
Appellant, Patent Owner
____________________

Appeal 2015-001737
Inter partes Reexamination Control 95/000,604
Patent US 6,794,634 C2
Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge SONG.

Opinion Dissenting filed by Administrative Patent Judge McCARTHY.

SONG, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

2
In the Request for Rehearing (hereinafter “Rehr’g Req.”), the Patent
Owner requests reconsideration under 37 C.F.R. § 41.79 of our Decision
mailed September 10, 2015 (hereinafter “Original Decision” or “Orig.
Dec.”) affirming Rejections 1 and 4 of claims 1–79 (Orig. Dec. 51).
Rejection 1 was based on the combination of Schuller and Dragne, while
Rejection 4 was based on the combination of Schuller, Levasseur, Dragne,
Endl, and acknowledged prior art identified in the specification (Orig. Dec.
5). The Patent Owner asserts that in the Original Decision, we
misapprehended or overlooked various issues, and requests modification of
the Original Decision.
In disagreeing with the findings and conclusions of the Board as set
forth in the Original Decision, some of the arguments submitted in the
Request for Rehearing reiterate the Patent Owner’s arguments submitted in
its Appeal Brief and Rebuttal Brief. Because such arguments already have
been sufficiently addressed in the Original Decision, we do not address these
arguments again. However, in view of the Rehearing Request, we further
clarify certain aspects of the Original Decision. We also generally do not
address new arguments that were not previously made in the briefs,
including those new arguments directed to limitations appearing in claims
that were not separately argued previously. 37 CFR § 41.79(b)(1)
(“Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the briefs are not permitted in the request for
rehearing ….”); see also In re Avid Identification Systems, Inc., 504 Fed.
Appx. 885, 891 (Fed. Cir. 2013) (Board properly refused to consider
arguments first raised in request for rehearing).
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

3
Correspondingly, we grant the Request to the extent that we consider
the Patent Owner’s arguments infra, and modify a small portion of the
Original Decision, but DENY the request to modify the substance of our
Original Decision. We address the issues raised in an order that differs from
the order presented by the Patent Owner.

Issue D
The Patent Owner argues that “the USPTO lost jurisdiction over this
reexamination upon entry of a Consent Judgment by the West Virginia
District Court adjudicating that the ‘634 patent is valid and dismissing
Crane’s declaratory judgment counterclaim of invalidity with prejudice.”
(Rehr’g Req. 19–20). However, this general issue as to the propriety of the
reexamination proceeding was sufficiently addressed in the Original
Decision, which explains that the issue is a petitionable matter, and as
conceded by the Patent Owner, not appealable to the Board (Orig. Dec. 9–
10). The substance of the issue raised has already been addressed by the
USPTO in “Decision Dismissing Petition to Terminate Inter partes
Reexamination Proceeding,” mailed November 19, 2012 (id.).

Issue B
The Patent Owner argues that in the Original Decision, the Board
failed to properly construe the following claim terms: “vend space”;
“automatically falling”; “calibration circuit”; and “ambient light.” (Rehr’g
Req. 7). As to the terms “vend space” and “automatically falling,” the
Patent Owner asserts that these terms mean there must be an unhindered
space through which the dispensed object falls unimpeded (Rehr’g Req. 8–
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

4
9). The Original Decision discussed the interpretation of the terms “vend
space,” “automatically falling,” and “calibration circuit,” the reasons for
such interpretation, and their applicability to the prior art relied upon (Orig.
Dec. 10–12, 45, 50–51; see also id. at 16, 27–29; FF 9, 29–33). While the
Patent Owner argues that the space must be unhindered, and the fall must be
unimpeded, it is well established that features not appearing in the claims
cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348
(CCPA 1982); see also Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”). The Patent Owner has had an opportunity to
further clarify the limitations “vend space” and “falls” by amending the
claims but has not availed itself of the opportunity.
The Patent Owner also asserts that the claimed invention is defined
“over the Schuller device which provides a [vend flap 29] that causes the
vended article to instantaneously stop upon impact,” and then pushes the
fingers of the flap down to rotate the vend flap (Rehr’g Req. 9; see also id. at
11). However, this assertion is incorrect and not supported by the
specification of Schuller, which discloses:
As the carton falls in passage 13, it strikes the fingers 219 of the
vend flap 29 of D4 and swings this flap down, spring means
225 being light enough to permit the carton to readily swing the
flap down, and functioning to swing the flap back up after the
carton has passed by the flap.
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

5
(Schuller, col. 16, ll. 43–48 (emphasis added); see also Orig. Dec. 15–16; FF
7, 8).
Schuller does not give any indication that the dispensed article is
stopped by the vend flap. Whether a falling article is stopped by the vend
flap would have depended on the mass of the article vended and its velocity
at impact, that is, its momentum, in comparison to the mass of the vend flap
29, and any force resisting pivoting of the vend flap 29 such as from spring
means 225, switches 231, and friction in the bearings 223 of bridge piece
221 (see generally Orig. Dec. 15–16; FF 7, 8). As to Schuller, while the
dispensed article may potentially be slowed upon impact due to loss of some
kinetic energy, there is no indication in Schuller that the article would have
been stopped as asserted by the Patent Owner.
The Patent Owner asserts that according to the Board’s interpretation,
a person in an elevator could be considered as falling through the elevator
shaft but is impeded or hindered by the elevator floor (Rehr’g Req. 9–10).
That is a rather poor analogy because such a person never falls. More apt
analogies would be that of a person stepping into an elevator shaft or over a
cliff, and falling, but impacting a structural component or a cliff formation
that protrude along the side walls of the elevator shaft or cliff during the fall.
Despite impacting such protruding structure, it is still accurate and
reasonable to characterize the person as falling in the elevator shaft or over
the cliff.
Moreover, as also explained in the Original Decision, the claim
interpretation of “vend space” and “automatically falling” is not dispositive
because even if the claim was interpreted to require an unhindered space
through which the dispensed object falls unimpeded, as advocated by the
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

6
Patent Owner, the suggested combination of prior art results in such an
unhindered space through which the object falls unimpeded. Specifically,
even under the Patent Owner’s proposed claim interpretation,
the vending machine resulting from the substitution of an
optical vend-sensing system for Schuller’s vend flap 29 would
have possessed a “vend space” corresponding to the vertical
passage 13. An article dropped from a product dispenser into
the vertical passage of the modified vending machine would
have fallen unhindered through the electromagnetic radiation
generated by the optical vend-sensing system; past the retracted
gate 25; and into the delivery chamber or bin.
(Orig. Dec. 45, fn. 11).
Hence, the Patent Owner’s argument based on interpretation of the
terms “vend space” and “automatically falling” does not impact the
conclusion of obviousness because it essentially argues the patentability of
the claims in the context of Schuller individually. In re Keller, 642 F.2d
413, 425 (CCPA 1981) (Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references).
The Patent Owner further argues that the rejection based on
substituting the mechanical sensing system of Schuller is improper because
“the Schuller device requires those components to function,” and thus, “are
essential to Schuller.” (Rehr’g Req. 9, fn. 7). This argument has been
already substantively addressed and was found unpersuasive (Orig. Dec. 17–
19; FF 12; Orig. Dec. 48). The rejection substitutes the mechanical sensing
system of Schuller with an optical sensing system of Dragne (Orig. Dec. 46–
48).
As to the terms “calibration circuit” and “ambient light,” the Patent
Owner relies on the description in the Specification of the ’634 patent, which
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

7
describes calibration as including numerous steps such as establishing “a
reference value as to the then current ambient (i.e., external) light
conditions,” and calibrating “for establishing the level of light lost, or
predetermined threshold value.” (Rehr’g Req. 13). However, none of this
language appears in the representative claims 1 and 21 that are addressed in
the Original Decision (Orig. Dec. 5–6).
In fact, representative claim 1, grouped with appealed claims 2–20
and 41–57, does not even recite the terms “calibration circuit” and “ambient
light.” Thus, any arguments based on these terms are not even applicable to
claims 1–20 and 41–57. See In re Self, 671 F.2d at 1348; see also
Superguide, 358 F.3d at 875. As to the remaining claims 21–40 and 58–79
that do recite the terms “calibration circuit” and “ambient light,” the Board’s
interpretation of the term “calibration circuit” has already been set forth, and
the applicability of prior art has also been discussed (Orig. Dec. 12, 47, 50–
51).
As to the term “ambient light,” the Patent Owner argues that the
Board failed to interpret this term, which means, and refers to, light that is
“external to the system.” (Rehr’g Req. 15). The Patent Owner argues that in
contrast, there is no external ambient light within the Dragne seed tubes.
However, while not explicitly interpreted, this limitation was generally
addressed in the Original Decision (Orig. Dec. 26, 28, 47; FF 25, 31, 32, 34,
35). In this regard, the Patent Owner’s argument is unpersuasive in view of
Dragne, which explicitly discloses filtering “to make the system less
responsive to ambient light.” (Dragne, col. 5, ll. 55–61; see also id. at col. 6,
ll. 22–24; and col. 8, ll. 20–23; see also Orig. Dec. 26; FF 25).
Nevertheless, according to the Patent Owner,
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

8
The Board confused the question by adopting the Examiner’s
argument that Dragne’s sensors cannot distinguish between
light sources. (FF 35). But the question is not whether the
Dragne sensors can differentiate between outside ambient light
and the extraneous light being generated by the Dragne emitters
or reflections of that light within the seed tube. That question is
entirely irrelevant. There is no external light entering Dragne’s
metal enclosed seed tube.
(Rehr’g Reg. 15).
However, it is the Patent Owner that appears to be confused as its
argument is misdirected. Whether the “ambient light” disclosed in Dragne is
“internal” or “external” ambient light does not impact the fact that Dragne’s
system accounts for light other than the excitation light provided by its
disclosed system for detecting a falling object. As explained in the Original
Decision with respect to Dragne, “[d]uring the calibration, the voltage V1
represents a combination of the light transmitted by the light transmitter 15
and of any ambient light.” (Orig. Dec. 28 (emphasis added); FF 31). As
further explained in the Original Decision,
Dragne teaches using infrared LEDs 29 in the light transmitter
15; and potting both the light transmitter 15 and the light
receiver 16 in a potting material containing a pigment tending
to filter light outside the infrared range, so as to make the
sensing system less sensitive to ambient light (whether
generated within or without the system) having a broad
frequency spectrum. (See Dragne, col. 5, ll. 54–60 and col. 6,
ll. 22–24.) Dragne also teaches including within the receiver
circuit 18 monitoring the light receiver 16, a DC compressor
circuit 44 which cooperates with the resistor 41 to filter out the
effects of ambient light (once again, whether generated within
or without the system). (See Dragne, col. 8, ll. 20–23.)
(Orig. Dec. 29–30; FF 35).
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

9
In other words, when the mechanical sensing system of Schuller is
substituted with an optical sensing system like that described by Dragne,
including microprocessor 13 and control circuit 17 for performing the
calibration process in accordance with its teachings at column 7, lines 19–
28, the calibration would be based, at least in part, on the ambient light
entering through the transparent front, that is, external ambient light.
Whether the ambient light is generated inside or outside the system is not
pertinent because the system in Dragne does not discriminate as to where the
ambient light originates (Orig. Dec. 29; FF 35). Dragne also teaches
including within the receiver circuit monitoring the light receiver, a DC
compressor circuit that cooperates with the resistor to filter out the effects of
ambient light, and again, whether this ambient light is generated inside or
outside the system is not pertinent (see Orig. Dec. 28–30; FF 32–35; Dragne,
col. 8, ll. 20–23). Thus, Dragne filters light other than that provided by its
disclosed system for detecting the falling object.
Furthermore, as to Ground 4, not only does Dragne address the
problem of “ambient light,” Endl also explicitly recognizes the problem
raised by ambient light that is external to an optical sensing system (Orig.
Dec. 21; FF 17; see also RAN 16, stating “Endl is pertinent to the
combination of Schuller and Dragne because Endl explicitly teaches that the
accuracy of a photoelectric sensing system is affected by ambient light.”).
Moreover, while the Patent Owner notes the interpretation of the term
“predetermined threshold amount,” and “adjuster for adjusting said
predetermined amount” by the district court in a litigation pertaining to U.S.
Patent No. 6,384,402 (Rehr’g Req. 13), we fail to see how interpretation of
these terms is dispositive because it pertains to a different patent, and these
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

10
terms are not present in either representative claims 1 or 21. In addition, it is
not apparent, nor have we been directed to, where arguments pertaining to
such terms were previously presented in the Patent Owner’s briefs.
Correspondingly, not only are these arguments misdirected, to any extent
they may be pertinent, they are new and improperly raised in the present
rehearing.
The Patent Owner also asserts that the Board found that “both the
Dragne and Endl references disclosed filtering, not calibration.” (Rehr’g
Req. 14, citing Orig. Dec. 23, 30, 47). Based thereon, the Patent Owner
further asserts that the Board’s conclusion that Dragne discloses a
calibration circuit is “wrong, factually unsupported, and at odds with this
Board’s own statement on page 47 that Dragne taught the ‘use of filtering
rather than calibration circuits.” Indeed, we recognize that in isolation, the
portions in the Original Decision cited by the Patent Owner could be
misunderstood to be contradictory to the disposition of the rejections
addressed. Hence, we clarify the Original Decision infra.
Firstly, we observe that the entirety of the statement in the Original
Decision reads:
Although Dragne and Endl taught the use of filtering rather
than calibration circuits to compensate for what they referred to
as “ambient light” [], these references would have provided a
vending machine designer reason to expect that an optical
sensing system might be substituted successfully for Schuller’s
vend flap 29 despite exposure to ambient light entering through
Schuller’s window 13.
(Orig. Dec. 47).
Importantly, the above-noted statement in the Original Decision was
made in context of the Second issue, which was “Second, would it have been
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

11
obvious to substitute an optical vend-sensing system for the mechanical
vend-sensing system described by Schuller?” (Orig. Dec. 6, 43). Findings
19, 24, and 35 also noted by the Patent Owner (Rehr’g Req. 14–15) are
merely findings as to what the references disclose. In this regard, neither
Dragne nor Endl utilize the term “calibrate,” or variants thereof, but both
utilize the term “filter,” and variants thereof. The paragraph preceding the
above noted sentence states:
A vending machine designer seeking to modify
Schuller’s machine to sell smaller or lighter goods would have
understood that it would have been difficult to shield an optical
sensing system installed in Schuller’s machine[ ]from ambient
light. Therefore, a vending machine designer seeking to modify
Schuller’s vending machine would have had reason to look to
known optical sensing systems, typified by those of Dragne and
Endl, that compensated for the presence of light other than the
light used to detect the passage of articles. (See FF 19 and 35.)
(Orig. Dec. 47).
Thus, the sentence at issue addresses the question of whether such
substitution would have been obvious, despite the fact that neither Dragne
nor Endl utilizes the term “calibrate,” and instead, use the term “filter.” As
set forth in the full paragraph, the answer to this inquiry was in the
affirmative.
The factual issue of whether Dragne discloses an optical sensing
system including a calibration circuit as recited in representative
independent claim 21 is addressed with respect to the Third issue (Orig. Dec.
6).1 In this regard, in addressing the claim interpretation of the term

1 We again note that representative independent claim 1, grouped with
appealed claims 2–20 and 41–57, does not even recite the term “calibration
circuit.”
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

12
“calibration circuit,” and addressing the Patent Owner’s explicit arguments
distinguishing the terms “calibration” and “filtering,” we found that “one
general purpose dictionary defines the term ‘calibrate’ as sufficiently broad
to encompass ‘[t]o check, adjust, or determine by comparison with a
standard,’” and found the definition to be consistent with its usage in the
Specification of the ’634 patent (Orig. Dec. 12). We further considered the
Patent Owner’s definition and argument with respect to the term “filtering,”
and found that “[f]iltering circuits do not necessarily compare signals or
signal components to standards in order to separate or reconstruct signals.
As a consequence, a filtering circuit is not necessarily a calibration circuit.”
(Id.). However, that finding does not mean that filtering circuits cannot
calibrate, and as such, be a calibrating circuit. It just means that the term
“filtering” alone, does not necessarily connote calibrating. Correspondingly,
the relevant inquiry is whether the filtering circuit of Dragne compares
signals or signal components to standards so as to encompass calibration and
“calibration circuit.”
In this regard, in the Original Decision, we further found:
With regard to Ground 1, the Examiner correctly finds that the
process by which Dragne’s microprocessor 13 selects the duty
cycle of the current to be provided to the LEDs 29 is a
calibration circuit for calibrating the optical sensing circuit
based on ambient light. (See Ans. 4; FF 29–31.) The process
disclosed in Dragne is a calibration because it compares a
voltage V1 derived from the output of Dragne’s receiver 16
with a reference voltage. (FF 30.) “Based on” as recited in
claim 21 is a broad term which encompasses almost any type of
influence of an input variable on the resultant process. In the
calibration process described at column 7, lines 1–38 of
Dragne, ambient light would tend to drive the resultant duty
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

13
cycle toward a minimum duty cycle regardless of accumulated
dust or other causes. (FF 31.)
Were Dragne’s optical sensing system, including its
microprocessor 13 and control circuit 17, substituted for the
vend flap 29 described by Schuller, the resulting vend-sensing
system would have included a calibration circuit capable of
“calibrating the optical vend-sensing system based on ambient
light entering the vending machine through the transparent
front.”
(Orig. Dec. 50–51).
Indeed, the Findings of Fact referenced in the above reproduced
passage makes clear that the filtering circuit of Dragne compares signals or
signal components to standards (see Orig. Dec. 27–28; FF 30–31). In this
regard, the Board explicitly found that Dragne teaches calibration (id.).
Nonetheless, in view of the unclear wording, we modify page 47, lines
8–13 of the Original Decision herein to read as follows (deletions bracketed,
additions underlined):
Although Dragne and Endl taught [the use of filtering rather
than calibration circuits to compensate] compensating for what
they referred to as “ambient light” using the term “filtering”
rather than “calibrating,” or variations thereof (see id.), these
references would have provided a vending machine designer
reason to expect that an optical sensing system might be
substituted successfully for Schuller’s vend flap 29 despite
exposure to ambient light entering through Schuller’s window
13.
The Patent Owner further asserts that its “calibration circuit and the
Dragne DC compressor circuit operate in completely different ways.”
(Rehr’g Req. 16). Specifically, despite its arguments to the contrary
addressed supra, the Patent Owner concedes that Dragne performs
calibration in arguing that “[t]he Dragne reference calibrates at power up
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

14
only, not dynamically before discrete vend operations.” (Id.). However, as
already addressed in the Original Decision, the claims do not require
dynamic calibration (Orig. Dec. 51). The Patent Owner also argues that in
Dragne, if ambient light was present, less sensing light would be emitted,
whereas in the Patent Owner’s system, the amount of sensing light would be
provided and/or the receiver is recalibrated to increase the detection
threshold (Rehr’g Req. 16). However, such details of how calibration is
attained is not reflected in representative claim 21. In re Self, 671 F.2d at
1348; see also Superguide, 358 F.3d at 875.
In his dissent, our colleague interprets “calibration” to mean “a self-
adjusting process” based on statements of the Patent Owner during an earlier
ex parte reexamination distinguishing the claimed invention from the
combination of Schuller and Toth (Dissent 10–11). In this regard, U.S.
Patent 4,252,250 to Toth is referenced by the Patent Owner in its Request for
Rehearing as an example of “optical sensors used in an enclosed, dark
interior,” of which “those of skill in the vending machine design art knew.”
(Rehr’g Req. 3). Toth2 is entitled “Multiple-Beam Optical Sensing System
for an Article Vendor,” and discloses a glass front vending machine wherein
an optical vend-sensing system is provided on the end walls of an elevator

2 We do not rely on Toth to deny the Patent Owner’s Request for Rehearing,
but merely discuss it to give context as to the arguments of the dissent
(which are partially based on the assertions of the Patent Owner in an earlier
ex parte reexamination), and to further establish the background knowledge
of those of one of ordinary skill in the art, which the Patent Owner argues,
was not properly considered by the Board in its Original Decision (Rehr’g
Req. 3). See Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013)
(prior art of record not specifically relied upon in the rejection considered as
evidence of the state of the art, common knowledge, and common sense of
one of ordinary skill in the art).
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

15
that spans the width of the glass front3 for confirming proper vending of a
purchased product (Toth, Abs.; Figs. 1–6 and discussions related thereto).
Toth specifically discloses:
In order to filter out unwanted radiation (namely, visible
radiation) and to permit the desired radiation (namely infrared
radiation) to pass freely between the emitters and their
respective detectors, two infrared-transparent, visible-opaque
filters 42a (FIG. 3) and 42b (FIG. 4) are provided over holes 31,
41 and 33, 37 respectively. This helps insure that the detectors
are responsive only to the radiation emitted by the emitters and
not to extraneous sources of radiation.
(Toth, col. 4, ll. 10–18; see also Figs. 3, 4).
Hence, Toth discloses filtering lenses for filtering visible radiation,
which would have included any ambient light reaching the detectors, even
though the optical sensors are provided within the enclosed elevator.
The dissent observes that in the prior ex parte reexamination, the
Patent Owner distinguished the claimed invention by reciting a calibrating
circuit, and arguing “the claimed system adjusts for the amount of ambient
light instead of just trying to physically block such light from the sensing
system.” Indeed, filtering lenses such as those disclosed in Toth would not
have any calibrating or self-adjusting capability. Accordingly, in
interpreting “calibration” to mean “a self-adjusting process,” our colleague
finds that the recited “calibration” in certain claims such as claim 21,
excludes the system of Dragne (Dissent 13). However, even if “calibration”
means “a self-adjusting process,” we do not agree that such interpretation
excludes the optical sensing system of Dragne because the adjustments made

3 We understand the mechanical structure of the vending machine shown in
Toth as being more clearly illustrated in U.S. Patent No. 4,108,333, which
Toth discloses that it is directed toward improving (Toth, col. 1, ll. 16–18).
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

16
by Dragne are made by the control circuitry of Dragne itself (Orig. Dec. 27–
28, 50–51; FF 29–32). As discussed supra, the issue as to Dragne is
whether the filtering circuitry disclosed therein performs a calibrating
function, and thus, is a “calibration circuit.” The Original Decision found in
the affirmative, and it is the filtering circuitry of the optical sensing system
that makes the adjustment (id.). Indeed, as noted above, the Patent Owner
concedes that Dragne performs calibration at power up. We do not view
“calibration,” or “self-adjusting” as requiring anything more. As discussed
supra, the claims certainly do not require dynamic calibration before discrete
vend operations as asserted by the Patent Owner.

Issue C
The Patent Owner argues that the Original Decision improperly relies
on speculation and conjecture of the Requester’s expert that the device of
Schuller was failure prone due to friction, as a basis for modifying the
Schuller vending machine (Rehr’g Req. 16–17). The Patent Owner asserts
that there is no evidence that such frictional wear would cause failure, that
Schuller discloses two bearings 223 to mount the rocker arm, and Patent
Owner’s declarant Ms. Schull establishes that it is the optical sensor that has
the higher failure rate (Rehr’g Req. 17). The Patent Owner’s arguments are
unpersuasive because they do not take into full consideration the basis of the
rejections and our affirmance thereof.
While the Board did generally agree with the Examiner’s finding as to
friction between moving parts of Schuller, the Board’s agreement with the
Examiner is not as expansive as the Patent Owner characterizes in that it
merely found that such moving parts are subject to friction, and “[s]uch
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

17
friction may result in wear and, in some circumstances, failure of the vend
flap 29.” (Orig. Dec. 23, emphasis added; FF 20). The Board did not find
that wear and failure necessarily occur, but merely that wear may occur due
to friction, and failure can result. The Original Decision should be
understood in this light and any statements implying the contrary were not
intended. As to the presence of bearings through which pivot pins 221 are
journaled, we observe the well-known fact that bearings function to reduce
friction, but do not eliminate friction. In fact, it cannot be reasonably
disputed that bearings fail due to friction.
Importantly, the Board further agreed with the Patent Owner’s expert
Mr. McAlexander that Schuller’s vending system was not designed to sense
the delivery of smaller, lighter products as they were being delivered (Orig.
Dec. 19–20; FF 14; see also McAlexander Decl. 6, ll. 1–7). Specifically, the
Patent Owner’s declarant Mr. McAlexander testified that, as to the
mechanical sensing system disclosed in Schuller:
Lighter items (e.g., chewing gum, mints, life-savers, etc) would
not have sufficient weight to displace fingers 219 and
associated bar 217 and cause the actuation of the buttons of the
two switches 227 and 229, as described by the Schuller Patent.
The reliability of vending lighter items would be, at best,
inconsistent. Further, smaller sized items such as chewing
gum, mints, life-savers, etc[.] would be prone to fall between
adjacent fingers 219 and completely avoid being detected.
Selecting such items of a size smaller than “Cartons of
Cigarettes or Like Packages” could cause the vending of
multiple items before a vended item would contact and displace
fingers 219.
(Decl. McAlexander 6, emphasis added).
As set forth in the Original Decision:
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

18
One of ordinary skill in the art driven by market forces to
increase the variety of products that a glass-fronted vending
machine might dispense would have had reason to replace
Schuller’s vend flap 29 with a more accurate vend-sensing
system, that is, a vend-sensing system having greater sensitivity
to lighter or smaller items. (See ACP 26; Request 29.)
(Orig. Dec. 20; FF 14).
Correspondingly, the Board concluded that:
it would have been obvious to substitute a more accurate optical
sensing system (that is, an optical sensing system more
sensitive to light or small objects) for Schuller’s vend flap 29
independently of whether one of ordinary skill in the art might
have made such a substitution on the basis of a tendency of the
vend flap to wear or fail. (See RAN 20–21.)
(Orig. Dec. 44, emphasis added).
Hence, the Board’s affirmance of the Examiner’s rejections was
principally based on substitution of a mechanical sensing system with an
optical sensing system to allow for greater sensitivity range so also to allow
accurate detection of light-weight products, and/or to avoid “wear and
potential failure due to interaction between [] parts (e.g. friction).” (Orig.
Dec. 23; see also id. at 22, 43, 44, 48; FF 19, 20). An optical sensing system
such as that disclosed in Dragne does not rely on the weight of the object for
detection so as to allow for detection of passage of even light-weight objects.
In addition, the optical systems such as that disclosed in Dragne avoid
potential problems that can be caused by frictional wear because there are no
interacting moving parts. Accordingly, the rejection is based on addressing
inaccurate detection of light-weight objects so as to increase the sensitivity
range, and on avoiding the frictional wear present in interacting moving
parts, which could result in potential failure. Such reasons for substituting
the mechanical sensing system of Schuller with an optical system are
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

19
rational and sufficient to support the conclusion of obviousness. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Such substitution, however,
does not indicate any superiority as to one over the other as suggested by the
Patent Owner, but merely a valid basis for so doing.
In KSR, the Supreme Court affirmed that “when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at 416. The claimed
invention substitutes a mechanical sensing system with an optical sensing
system to attain predictable results. While presence of ambient light can be
problematic in applying an optical sensing system to glass front vending
machines, the prior art optical sensing systems had already recognized the
problem that ambient light could cause, and had already provided a solution
for addressing such a problem as evidenced by Dragne and Endl (Orig. Dec.
21, 22, 26, 28; FF 17, 19, 25, 31, 32).
We do not dispute the Patent Owner’s assertion that optical sensing
systems are also subject to failure (Rehr’g Req. 17). However, the failure of
such optical sensing systems is not attributable to friction. Moreover, the
failure of such optical systems is not dispositive. As already explained
(Orig. Dec. 44), “[a] given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006); see also Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000)(“The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

20
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”).
As noted, the substitution is proposed for addressing a specific
functional problem or limitation, that is, the inability of the mechanical
sensing system of Schuller to detect a broader range of products including
light-weight products, and/or to address a cause for potential failure. While
the optical sensing system may exhibit a higher rate of failure, it allows for
vending of a broader range of products, such that as explained, “one of
ordinary skill in the art would have had reason to modify Schuller’s machine
to display and sell smaller or lighter articles.” (Orig. Dec. 45; see also id. at
19–20; FF 14). Thus, we are in agreement with the Examiner that such
substitution would have been obvious to one of ordinary skill in the art.
The Patent Owner also argues that the Board failed to provide any
insight “as to why one of skill in the vending machine design art would have
chosen an optical sensor over the other six categories of known sensors,” and
further argues that various prior art vending machines that use optical
sensing systems utilize them in a manner or at locations that does not
involve ambient light (Rehr’g Req. 18–19). However, the fact that there
may have been other electronic sensors available such as impact and
vibration sensors, does not detract from the fact that an optical sensor would
have been suitable and obvious. In addition, the fact that optical sensors
have already been used in vending machines supports the Examiner’s
obviousness conclusion. In this regard, Levasseur explicitly teaches that
optical sensors can be used in substitution for mechanical sensors in the
vending machine art (Orig. Dec. 20–21, 24, 46; FF 15, 16, 22; see also RAN
16, stating “Levasseur is pertinent to the combination of Schuller, Dragne
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

21
and Friend because Levasseur explicitly teaches that an electromechanical
type sensor (like in Schuller) is interchangeable with a photoelectric or
optical type of sensor (like in Dragne)”; see also Ans. 10). As stated,
“[i]ndeed, photoelectric and optical sensors were among a finite, and
relatively small, number of sensor types that Levasseur taught to be suitable
for this purpose. (FF 16.)” (Orig. Dec. 46). See KSR, 550 U.S. at 421.
While the prior art vending systems may have used optical sensing
systems in a manner or at locations that did not involve ambient light, as
already explained, “Schuller’s vend-sensing system is positioned just below
the transparent front, above a customer-accessible portion of the retrieval bin
portion of the vending machine. (Schuller, col. 3, ll. 34–39 and 57–62; and
Fig. 6; see also Request 6.)” (Orig. Dec. 13; FF 1). Thus, in substituting the
mechanical sensing system of Schuller with the optical sensing system of
Dragne in order to allow accurate detection of light-weight products (i.e.,
greater sensitivity range), and/or to avoid potential issues attributable to
friction, one of ordinary skill in the art would have had reason to position the
replacement optical sensing system in approximately the same position
occupied by Schuller’s vend flap 29 in order to maintain the relationships
between different components of the vending machine. KSR, 550 U.S. at
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”). Once substituted, the optical sensing system would have
sensed the vended article as the article fell through the vend space.
The Patent Owner’s arguments appears to be premised on the belief
that the motivation for the combination of prior art references must be the
same as the reason that motivated the inventor of the subject ’634 patent.
Under such a view, the motivation for combining the references would have
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

22
to stem from the fact that glass front vending machines allow in external
ambient light, and because (according to the Patent Owner) there is no
external ambient light in the seed dispensing systems, there is no motivation
for the combination of prior art as suggested in the rejection. However, that
is not the law. “In determining whether the subject matter of a patent claim
is obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim.” KSR,
550 U.S. at 419. Moreover, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim.”
Id. at 418. What is required is an articulated reasoning with rational
underpinnings in support of the rejection, which is present in this case. Id.

Issue A
The Patent Owner argues that the “relevant art is the field of vending
machine design,” and one of ordinary skill in this art would have had limited
experience with sensors (Rehr’g Req. 2). According to the Patent Owner, a
person of ordinary skill in the vending machine design art knew of “physical
impact or vibration sensors,” “optical sensors used in an enclosed, dark
interior,” and “acoustic sensors,” but his or her knowledge “was limited to
the application of those known sensors –– not sensors of all types as used in
any field.” (Id. at 2–3). Hence, the Patent Owner asserts that “[p]rior to
1998, no one working in the vending machine field had any knowledge of
using an optical detector outside of these limited applications,” and
concludes that a person in the vending machine art:
would not have considered using optical sensors in an area
subject to outside light (such as that entering the vendor
through the glass front) to detect free falling product through an
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

23
unconstrained vertical and horizontal cross-section of the vend
space (i.e., the delivery path to the retrieval bin).
(Rehr’g Req. 3–4; see also id. at 5).
The Patent Owner’s assertions and arguments are unpersuasive.
Under its reasoning, the various sensors already used in vending machines
and known to those of ordinary skill in the vending machine art (and thus,
already within the field of vending machines) would have been the only
types of sensors that would have been considered, and only for the locations
already used in the art. Correspondingly, the Patent Owner’s assertions and
argument essentially eviscerate the second prong of the analogous test,
which is that even though a reference may be in a different field of endeavor,
“[a] reference is reasonably pertinent if … it is one which, because of the
matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.” In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007). As already
discussed in the Original Decision, while Dragne or Endl may not be in the
same vending machine field, they would have been reasonably pertinent to
the problem with which the named inventors were involved (Orig. Dec. 25,
30, 42–43; FF 24, 36, 37).
The Patent Owner’s assertions and argument set forth a view that the
vending machine art is a stagnant and non-evolving field in which those of
ordinary skill are merely relegated to what has been previously done or
limited to what was previously taught in the vending machine field, and
improperly relegate the person of ordinary skill to an automaton with no
creativity. The Patent Owner essentially requires the art to explicitly teach
the use of optical sensors in a vending machine environment (which is
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

24
known) in a glass-front vending machine (also known) at a location where
the sensor is subject to ambient light. To the contrary, the skill of those of
ordinary skill in a given field increases with each contribution made by
others in the same field, and those of ordinary skill are not automatons, but
instead, also possess ordinary creativity. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379–80 (Fed. Cir. 2007); KSR, 550 U.S. at 421 (“[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton.”).
While vending machines are largely mechanical machines, it cannot
be reasonably disputed that they utilize electronic controllers to vend
purchased products (see, e.g., Schuller, Figs. 13–16 and associated
disclosure; Levasseur, Figs. 1–4 and associated disclosure; Tanaka, Figs. 1–
3 and associated disclosure). A person of ordinary skill would have had a
sufficient level of skill to design and implement such an electronic
controller. In addition, these vending machines include vend-sensing
systems. Schuller discloses, inter alia, utilization of an electro-mechanical
sensing system in a glass-front type vending machine. Other references
contribute to the art of vending machines via disclosure of, inter alia, the use
of an optical sensing system (see Orig. Dec. 20–21; FF 15, 16 regarding
Levasseur; Orig. Dec. 26–27; FF 22 regarding Tanaka).4 Indeed, Levasseur
suggests interchangeability of an optical sensor for a mechanical or
electromechanical sensor (Orig. Dec. 20–21; FF 15, 16). As already
discussed, the claimed invention substitutes a mechanical sensing system in
a glass-front vending machine with an optical sensing system. KSR, 550

4 In addition to Levasseur and Tanaka, the Patent Owner also notes yet other
references in the vending machine art that utilize optical sensors in locations
not subject to ambient light, the references including “e.g., Toth, Percy,
[and] Truitt.” (Rehr’g Req. 3).
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

25
U.S. at 416. Hence, with such level of skill and in view of the teachings in
the prior art, as explained in the Original Decision:
One of ordinary skill in the art of vending machine design
would have had reason to familiarize himself or herself with the
design and operation of optical sensing systems. The teachings
of Levasseur and Tanaka (as well as the Patent Owner’s
characterization of the prior art) indicate that optical vend-
sensing systems were known alternatives for detecting vended
products in the chutes or product delivery bins of vending
machines. (See Ans. 22.) Such use would have provided one
of ordinary skill in the art of designing vending machines
reason to look into the art of optical sensing system design in
general rather than merely to optical vend-sensing systems then
in use in vending machines.
(Orig. Dec. 24–25; FF 22).
The Patent Owner also argues that by imputing too much sensor
knowledge to those in the vending machine design art, the Board also erred
in finding that those of skill in the art would have appreciated the scalability
of the optical sensor system disclosed in Dragne because only those of
ordinary skill in the sensor art would have appreciated such scalability
(Rehr’g Req. 5). However, this argument is unpersuasive for reasons similar
to those discussed above in that it does not account for the skill and
creativity of those in the art, which already incorporated optical sensing
systems (albeit in dark environments), and the knowledge which those of
ordinary skill would have sought out and availed themselves. Thus, the
Patent Owner’s arguments, which are essentially based on asserted lack of
explicit teachings in the art, and lack of skill and creativity of those in the
vending machine design art, are unpersuasive.
Related thereto, the Patent Owner further argues that:
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

26
even as to those of skill in the sensor art, Dragne does not teach
using a larger number of emitters/detectors to monitor a larger
cross-sectional area. Dragne uses the multiple emitters to detect
seed passage through a very small secondary seed tube.
(Rehr’g Req. 6).
In support, the Patent Owner refers to contemporaneous U.S. Patent
No. 5,847,389 to Mertins for stating that conventional seed monitoring
systems are limited to use in secondary seed tubes, and:
would not be applicable to being used in the larger cross-
section of the primary seed tubes.[5] This is because the larger
cross-section of the primary seed tubes cannot be adequately
covered with the existing seed sensor technology available for
seed planters.
(Rehr’g Req. 6, quoting Mertins, col. 3, ll. 8–13).
The Patent Owner’s argument is unpersuasive. Firstly, the Patent
Owner again does not account for the skill and creativity of those in the
sensor art or the vending machine art, and essentially demands an explicit
teaching in Dragne to use a larger number of emitters/detectors to monitor a
larger cross-sectional area. Secondly, while Mertins notes the limitations of
conventional seed monitoring systems, it does not speak to the system of
Dragne because as noted by the Patent Owner, the references are
contemporaneous. The contemporaneous timing of these references tends to
indicate that the conventional seed monitoring systems referred to in the
noted passage of Mertins is not in reference to the contemporaneously
developed system of Dragne. Thirdly, while the rejection is based on
scaling the optical sensing system of Dragne to increase the number of LEDs
and light receivers (see Orig. Dec. 31, 47–48; FF 41), Mertins merely notes

5 The original Mertins reference actually reads: “. . . would not be
applicable to being used in the primary seed tubes.”
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

27
the limitations of conventional seed monitoring systems, and does not speak
to scaling of such systems at all. In this regard, while Mertins notes the
limitations of conventional seed monitoring systems for detecting seeds in
larger cross-sectional areas, articles typically dispensed in vending
machines are many orders of magnitude larger in size than seeds. Mertins
does not teach that upon scaling for the larger cross-sectional area, the
optical sensing systems referred to therein, or disclosed in Dragne, would
have been inadequate for detecting objects that are many orders of
magnitude larger than seeds.
The dissenting opinion is also based on the finding that some level of
effort and expense would have been required to utilize the sensing system of
Dragne in a transparent front vending machine, which has a much larger
vend space, and the finding that a person of ordinary skill is not an expert in
the field of optical sensors (Dissent 29, 37).
The level of skill of those in the vending machine art is, at minimum,
exemplified by the prior art of record, which includes Levasseur, Tanaka,
Percy, and Truitt, as well as the admitted prior art. In this respect, there is
no dispute that optical sensors have been used in vending machines to detect
proper vending of products. While such optical sensors may not have been
used at a location directly exposed to ambient light, Schuller clearly teaches
the desirability of sensing the proper vending of product in transparent front
vending machines as the product falls by providing a vend-sensing system,
albeit an electromechanical sensing system. In fact, as noted supra, the
Patent Owner itself had directed our attention to Toth as having been known
to those in the art of vending machine design, which indicates that a person
of ordinary skill had background knowledge of the use, and skill to use, an
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

28
optical vend-sensing system in a glass front vending machine that scans the
dimensional width of the glass front, and a filter to address the undesirable
effects of visible radiation on the optical sensors (Toth, col. 4, ll. 10–18; see
also Figs. 3, 4). Thus, we view the suggested combination as applied in the
rejections of substituting an optical sensing system for the electromechanical
sensing system of Schuller to be a natural and logical progression of the
vending machine art, which would have been obvious to one of ordinary
skill.
In addition, each of these prior art vending machines includes
electronic controls not only to process the currency inserted and the product
selected by the consumer, but also to process the signal/information
provided by the vend-sensing system, and to deal with the situation in which
a product is not properly vended. Schuller itself discloses the relatively high
level of skill that a person of ordinary skill in the vending machine art
possesses in terms of electronics and signal processing, including the signal
from the provided electromechanical sensing system (see Schuller, Figs. 14–
16 and disclosure related thereto). Similarly, Levasseur discloses a vending
control system that demonstrates a relatively sophisticated level of skill in
electronics and signal processing in the vending machine art, including the
signal from the provided vend-sensing system (see Levesseur, Figs. 1–5 and
disclosure related thereto). Levasseur further teaches the substitutability of
an optical system for a mechanical system, thereby indicating that such
substitution is within the skill of those in the art (Orig. Dec. 18, FF 35).
Toth also demonstrates a relatively sophisticated level of skill in electronics
and signal processing in the vending machine art (see Toth Figs. 7A, 7B and
disclosure related thereto).
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

29
Furthermore, the use of a single light emitter and receiver, as well as
the use of multiple light emitter and receivers were known in the vending
machine art (Tanaka Figs. 1–3). In this regard, Tanaka discusses that “in the
prior art, it was necessary to eliminate detection light ray dead zones by
arranging multiple sets, usually 5 to 6 sets, of detection units in parallel in
the width direction of the receiving tray chamber.” (Tanaka, pg. 4).
Correspondingly, scaling of a detection system to include multiple sets of
emitters and receivers was also already known and within the skill of those
of ordinary skill in the vending machine design art. Such background
knowledge and skill of those in the vending machine design art is also
demonstrated by Toth (see Toth Figs. 5, 6, and disclosure related thereto).
Hence, in our view, the evidence indicates that the level of skill of
those in the vending machine art was quite high and sophisticated, not only
in the context of the mechanical components of a vending machine, but the
electronic controls and sensing systems, as well as processing signals
associated therewith. Accordingly, in our view, modification of the vending
machine of Schuller in the manner suggested in the rejection would have
been within his or her level of skill. To any extent that the skill of those in
the art was lacking, one of ordinary skill would have had a reason to look
into other art, such as the art of optical sensing systems. In this regard, the
dissent does not dispute that the seed dispensing system of Dragne, while in
a different field, is reasonably pertinent to the problem confronting the
inventors.
While the dissent also notes the size difference between the seed
transport ducts of Dragne and a detection region, as discussed above, we are
of the opinion that scaling of the system disclosed in Dragne is well within
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

30
the level of skill of those in the art. Furthermore, as already noted supra, a
person of ordinary skill would have had the background knowledge that an
optical vend-sensing system can scan across the dimensional width of a glass
front in a glass front vending machines. Moreover, we further observe that
articles typically dispensed in vending machines are many orders of
magnitude larger in size than seeds, thereby implying that any such scaling
of the system disclosed in Dragne may be minimal.6
In addition, while there may be costs associated with such a
modification,7 the fact that a combination may not be made by businessmen
for economic reasons does not mean that a person of ordinary skill in the art
would not make the combination. See Orthopedic Equipment Company, Inc.
et al. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (“the fact that
the two disclosed apparatus would not be combined by businessmen for
economic reasons is not the same as saying that it could not be done because
skilled persons in the art felt that there was some technological
incompatibility that prevented their combination. Only the latter fact is
telling on the issue of nonobviousness.”). Moreover, in the present case,
there is an economic motivation in favor of modifying Schuller in the
manner suggested. As explained, such modification allows the vending

6 Obviously, the system would have to be scaled up in size to deal with the
larger vend space relative to the seed tube in Dragne, but the relative sizes of
the vend space versus the item being vended would appear to be fairly
similar. Thus, we do not agree with our colleague that such scaling “would
have required significant modification to serve as a vend-sensing system in a
vending machine.” Dissent 4.

7 By cost, we refer to costs of modification, not the cost of manufacture,
which may or may not be reduced/increased in using optical electronics
instead of electromechanical components.
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

31
machine of the type disclosed in Schuller to vend, and allows better
detection of vending of, smaller and lighter products, thereby increasing the
variety of products that can be sold (see Orig. Dec. 27).

Additional Issues
The Patent Owner does not request rehearing based on the proffered
evidence of secondary considerations (Rehr’g Req. 2, fn.1, stating that the
Patent Owner “does not seek reconsideration of the Board’s analysis of the
secondary consideration of obviousness but reserves the right to appeal on
that issue.”). However, because the dissent is based, at least in part, on the
proffered secondary considerations, including sales evidence, licensing
evidence, and two advertisements, we address this evidence infra.
While the dissent disagrees with our weighing of this evidence
proffered by the Patent Owner, we are of the opinion that the evidence is of
poor quality and of little probative value. For example, as to the licenses, as
set forth in the Original Decision (Orig. Dec. 34–36; FF 46, 49), the Patent
Owner has not provided information regarding the actual value of these
licenses in generating royalties, or regarding the number of products
manufactured under the licenses. Without evidence as to the value of the
licenses, coupled with sufficient evidence as to the vending machine market
to put the value or impact of the licenses into perspective, the licenses are
not persuasive indicators of commercial success. In this regard, the licenses
may have been taken due to litigation or threat thereof, as compared to the
cost of the license (not provided), rather than due to industry recognition that
the claimed subject matter was valuable or nonobvious. Iron Grip Barbell
Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004) (the law
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

32
“specifically require affirmative evidence of nexus where the evidence of
commercial success presented is a license, because it is often ‘cheaper to
take licenses than to defend infringement lawsuits.’”).
As to sales, the Patent Owner has asserted that sales in 1999 were
294% over its 1998 sales levels but the Patent Owner does not provide what
the 1998 sales levels were (or for that matter, what sales levels were for any
year) so that the percentage increase cannot be appropriately considered
(Schull Decl. ¶ 12). To the contrary, the Patent Owner testifies that it did
not have an established customer base in 1998 (id. ¶ 11), and that its product
with “Sensit®” vend detection feature was introduced in 1998 (id. ¶ 10),
which implies that the sales volume in 1998 may have been very small. The
same can be said of the Patent Owner’s sales in 2000, which is said to have
increased another 60% over some unknown, but potentially small, 1999
sales levels (id. ¶ 12). In this respect, it is not entirely surprising that after
2000, the Patent Owner “never again experienced the sales growth of 1999
and 2000.” (Id.; see also Orig. Dec. 35; FF 47).
While testimony is provided in 2011 that over 50,000 units have been
sold since 1998, and that “tens of millions of dollars in revenue” has been
generated, the vagueness of the units sold, vagueness of the revenue, lack of
specific yearly information, and lack of any evidence as to what the asserted
sale and revenue numbers mean in the context of the vending machine
market, all limit the probative value of the evidence (see Orig. Dec. 35–36;
FF 48). In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“Although
Huang’s affidavit certainly indicates that many units have been sold, it
provides no indication of whether this represents a substantial quantity in
this market. This court has noted in the past that evidence related solely to
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

33
the number of units sold provides a very weak showing of commercial
success, if any”); see also In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed.Cir.1991) (“[I]nformation solely on numbers of units sold is
insufficient to establish commercial success.”); Kansas Jack, Inc. v. Kuhn,
719 F.2d 1144, 1150-51 (Fed. Cir. 1983) (“There was no evidence of market
share, of growth in market share, of replacing earlier units sold by others or
of dollar amounts, and no evidence of a nexus between sales and the merits
of the invention. Under such circumstances, consideration of the totality of
the evidence, including that relating to commercial success, does not require
a holding that the invention would have been nonobvious at the time it was
made to one skilled in the art.”).
Moreover, the evidence is inadequate to establish that such
commercial sales evidence is attributable to the unique characteristics of the
product. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (the Appellant
must offer proof “that the sales were a direct result of the unique
characteristics of the claimed invention-as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter.”).
While the Crane advertisements referenced in the dissent do highlight the
infrared beam vend-sensing feature, they also make clear that vending
machines are provided with multiple other features that can enhance the
desirability and sales of vending machines.8 (See also, Orig. Dec. 37; FF

8 For example, in addition to the infrared beam vend-sensing system, Crane
advertisements also tout features including: reestablishment of credit;
refund; consistent home position of spirals; no machine downtime (App. Br.
Attachment 2, Advertisement 1); slide out dividers; shelf tilting for easy
loading; continuous price rolls; pricing data recall (App. Br. Attachment 3,
Advertisement 2).
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

34
53). We are not provided with information regarding the products of the
Patent Owner that the asserted commercial success evidence is based and
features provided thereon, which would allow establishment of a sufficient
nexus between the claimed invention and the product sold and the asserted
commercial success.
In the above regard, the Patent Owner also does not provide us with
adequate information as to the marketing and pricing of the products,
especially considering that, in its own words, the company did not have an
established customer base, and the product was introduced in 1998. The
products introduced by the Patent Owner may have been aggressively
marketed and aggressively priced to allow entry of a newly introduced
product into the market. The Patent Owner wants the Board to attribute the
alleged success to the claimed invention. However, there are too many
missing pieces of the puzzle to allow us to fairly attribute the asserted
success to the claimed invention rather than other factors. The Patent Owner
has not provided persuasive evidence supporting such attribution.
We do not disagree with the dissent that Crane advertisements make
clear that the allegedly infringing SureVend™ feature is an important
feature. However, to extrapolate from provision of such a feature in a
competitor’s product to the conclusion that such a feature would have been
unobvious to one of ordinary skill in the art, in our view, goes too far. The
law provides the Patent Owner with various ways in which the secondary
consideration evidence can support the ultimate conclusion of
unobviousness. However, there are requirements for providing adequate
supporting evidence and proof.
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604

35
For example, the above cited In re Huang provides guidance as to the
types of evidence required to persuasively establish commercial success,
while Iron Grip Barbell provides guidance as to evaluating licenses. To the
extent that Patent Owner’s evidence implies copying (Schull Dec. ¶¶ 13, 14,
21, 22; Appeal Br. Attachments 2 and 3), “[n]ot every competing product
that arguably falls within the scope of a patent is evidence of copying.
Otherwise every infringement suit would automatically confirm the
nonobviousness of the patent. Rather, copying requires the replication of a
specific product.” Iron Grip Barbell Co. Inc. v. USA Sports, Inc., 392 F.3d
1317, 1325 (Fed. Cir. 2004). Copying
may be demonstrated either through internal documents, see
Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc.,
344 F.3d 1186, 1196-97 (Fed.Cir.2003); direct evidence such as
disassembling a patented prototype, photographing its features,
and using the photograph as a blueprint to build a virtually
identical replica, see Advanced Display Sys., Inc. v. Kent State
Univ., 212 F.3d 1272, 1285 (Fed.Cir.2000); or access to, and
substantial similarity to, the patented product (as opposed to the
patent), Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d
1015, 1027 (Fed.Cir.1985), overruled on other grounds by,
Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356,
1359 (Fed.Cir.1999) (en banc).
Iron Grip Barbell Co. Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed.
Cir. 2004).
In the present appeal, we are simply not provided with evidence of
sufficient quality that support the Patent Owner’s assertions, which are based
on general and vague statements. The dissent weighs the proffered evidence
more favorably, and in view of the skill of those in the vending machine art,
concludes unobviousness of the claims. In our view, the proffered evidence
is of little probative value, and is inadequate to show that the claimed
Appeal 2015-001737
Inter partes Reexamination Control 95/000,604
36
invention would not have been obvious to one of ordinary skill in the
vending machine art. We discuss issues raised by the dissent as to the
person of ordinary skill infra.
DECISION
While we have considered the Original Decision in view of the
Request for Rehearing, and have elaborated on certain aspects of it, and have
also modified a small portion thereof, we decline to modify the substance of
the Original Decision in any respect.
DENIED
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________
CRANE CO.
Respondent, Requester
v.
Patent of AUTOMATED MERCHANDISING SYSTEMS,
INC.
Appellant, Patent Owner
________________
Appeal 2015-001737
Inter Partes Reexamination Control 95/000,604
Patent No. US 6,794,634 C2
Technology Center 3900
________________
Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge, dissenting.
INTRODUCTION
I join my colleagues in denying rehearing of the issue raised on pages
19 and 20 of the “Patent Owner’s Request for Reconsideration of the
Decision on Appeal,” dated October 13, 2015 (“Rehearing Request” or
“Reh’g Req.”). Nevertheless, having reviewed the Record, including the
“Appeal Brief,” dated September 10, 2012 (“Appeal Brief” or “App. Br.”);
and the “Reply Brief on Appeal to Board,” dated November 29, 2013
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
2
(“Rebuttal Brief” or “Reb. Br.”),1 in view of the arguments raised in the
Rehearing Request, I believe that I misapprehended or overlooked sufficient
points to justify granting the Rehearing Request.
My colleagues affirm the Examiner’s decision rejecting claims 1–79
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combined
teachings of Schuller (US 3,901,366, issued Aug. 26, 1975) and Dragne (US
5,883,383, issued Mar. 16, 1999) (Ground 1); or of Schuller, Levasseur (US
4,359,147, issued Nov. 16, 1982), Dragne, Endl (US 3,742,222, issued June
26, 1973) and the Examiner’s finding that “Appellant’s [S]pecification
indicates at lines 18–50 of column 1 that a vending machine using a spiral or
helical structure to dispense articles or products, is acknowledged prior art”
(Ans. 12) (Ground 4). I disagree.
As set forth in the “Decision on Appeal,” mailed September 10, 2015,
the claims on appeal relate to vending machines. More specifically, the ’634
patent identifies as one its objects “provid[ing] an optical vend-sensing
system which detects vended objects which are of various sizes and shapes.”
(’634 patent, col. 3, ll. 1–3). The ’634 patent teaches that, “[f]or ensuring
that a vending machine motor will continue to operate until a product has
descended through a vending space or an established time interval has
elapsed, a continuous optical beam is established across the vend space
through which a product must drop.” (’634 patent, col. 3, ll. 18–22). A
change in beam intensity indicates passage of the product. (See ’634 patent,
col. 3, l. 24 and col. 4, ll. 11–14).
1 The Requester has not participated in this appeal.
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
3
Claims 1, 16, 21, 41, 51 and 58 are independent.2 Claim 1 recites:
1. A vending machine, comprising:
a transparent front;
a dispensing mechanism configured to perform vending
operations in order to dispense a product selected by a
consumer;
a vend space comprising a portion of the space in said
vending machine through which said selected product will
automatically fall into a bin portion for retrieval by the
consumer; and
an optical vend-sensing system configured to sense when
said selected product passes through said vend space, said
optical vend-sensing system including,
an emitter mechanism configured to generate
electromagnetic radiation that substantially spans said vend
space, and
a detector mechanism configured to receive said
electromagnetic radiation generated by said emitter mechanism
and to detect changes in said electromagnetic radiation caused
by said selected product passing through said vend space.
(See App. Br. 31 (Claims App’x.)).
Schuller describes a machine for displaying cartons of cigarettes or
other cartoned merchandise through transparent front doors; and for
dispensing selected cartons to a purchaser. (See “Examiner’s Answer,”
2 A comparison of claim 33 as reproduced in the “Claims Appendix,”
on page 39 of the Appeal Brief, with Ex parte Reexamination Certificate US
6,794,634 C1, issued November 10, 2009, indicates that the claim has been
reproduced in error in the Claims Appendix. It should read: “The vending
machine of claim 32, wherein said corrective action comprises maintaining a
credit established by a customer to allow an alternate selection or to provide
a refund.” Hence, claim 33 is not independent.
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2

4
mailed October 29, 2013 (“Ans.”), at 2, citing Schuller, col. 3, ll. 34–37; see
also Schuller, col. 1, ll. 5–7 & 14–22). Schuller’s machine includes an
electromechanical vend-sensing system capable of sensing when a carton
falls through a vertical passage 13 toward a customer-accessible delivery
chamber. The Examiner concludes that the subject matter of claims 1–79
would have been obvious based on a proposed replacement of Schuller’s
electromechanical vend-sensing system with an optical system that is
“accurate” in the sense of being capable of sensing the passage of small or
lightweight items. (See Ans. 3 & 20; see also id. at 17 & 18). Taking into
account the fact that the secondary reference, Dragne, is taken from an
arguably different field of endeavor; that the optical sensing system
described by Dragne would have required significant modification to serve
as a vend-sensing system in a vending machine; and that the objective
evidence indicates industry recognition that the claimed subject matter
represented a technical advance in the design of vending machines, the
Examiner’s articulated reason for the proposed modification does not
convince me that the subject matter of the appealed claims would have been
obvious.

CLAIM INTERPRETATION
Claims undergoing reexamination are given their broadest reasonable
interpretation. In re American Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). “Therefore, we look to the specification to see it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2

5
More specifically, “the PTO applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary usage as they
would [have] be[en] understood by one of ordinary skill in the art.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
The broadest reasonable interpretation must be reasonable under
general claim construction principles. See Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Thus, for example, our
reviewing court cautions us against reading limitations into claims from
embodiments described in the specification, absent a clear disclaimer.
American Acad. of Sci. Tech Ctr., 367 F.3d at 1369. On the other hand, a
proper claim interpretation “tak[es] into account whatever enlightenment . . .
may be afforded by the written description contained in the applicant’s
specification.” Morris, 127 F.3d at 1504. “The PTO should also consult the
patent’s prosecution history in proceedings in which the patent has been
brought back for a second review.” Proxyconn, 789 F.3d at 1298.

“Vend Space” and “Automatically Fall”
Independent claims 1, 16, 21, 41 and 51 each recite a vending
machine including a transparent front and “a vend space comprising a
portion of the space in said vending machine through which said selected
product will automatically fall into a bin portion for retrieval by the
consumer.” Independent claim 58 recites a vending machine including a
transparent front and “a vend space comprising a portion of space in said
vending machine defined by a front to rear depth in the area between said
transparent front and said dispensing mechanism and across a substantial
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
6
width of the vending machine through which said selected product will
automatically fall into a bin portion for retrieval by the consumer.”
The ’634 patent does not formally define the term “vend space.”
Nevertheless, in the “Statement of Reasons for Patentability and/or
Confirmation,” beginning on page 2 of the “Notice of Intent to Issue Ex
parte Reexamination Certificate,” mailed on October 7, 2010 in prior
Reexamination 90/009,569 (Attachment 9 to Appeal Brief), the prior
examiner found that “the vend space [of a particular transparent front
vending machine described in the ’634 patent] extends between the glass to
the product support surfaces and must extend across the entire length of the
vending machine containing tray support surfaces for products to be
vended.” (Id. at 2). The prior examiner concluded that “[t]his is seen as the
definition of vend space that the [P]atent [O]wner has consistently followed
during prosecution, including to the Board of Appeals, in prior
reexaminations and in the proposed Markman claim construction in District
Court.” (Id. at 2 & 3). I maintain that this as the broadest reasonable
interpretation of the term “vend space.”
This interpretation is consistent with the use of the term elsewhere in
the ’634 patent. The ’634 patent discloses a particular vending machine in
which:
Vending, upon selection, is accomplished by . . .
advanc[ing] all of the products nested in the turns
of [a] respective spiral or spirals forward such that
the leading one loses support from below as it
reaches the front of the respective tray support
surface and the runout at the front end or ends of
the respective spiral or spirals, and drops through
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
7
the vend space 24 behind the glass front 22, down
into a vend hopper 26.
(’634 patent, col. 5, ll. 48–60). In this example, as depicted in Figure 1 of
the ’634 patent, the vend space extends between the glass front 22 to the
product support surfaces (that is, to the front of the respective tray support
surfaces). The vend space also extends across the entire lateral width of the
vending machine containing tray support surfaces for products to be vended.
26.
I agree with the Examiner that to “automatically fall” is to experience
a gravity-induced fall. (See Ans. 15 (“All of claims 1, 16, 21, 41, 51 and 58
actually recite ‘automatically fall,’ and the acknowledged gravity-induced
fall associated with the Schuller vending machine is not distinguished by
that claim requirement.”)).
Nevertheless, the scope of both the term “vend space” and
“automatically fall” are limited by the prosecution history of prior
Reexamination 90/009,570. During that reexamination proceeding, the
Examiner rejected claims 1 and 41, among others, under § 103(a) as being
unpatentable Schuller, “admitted prior art” and Toth (US 4,252,250, issued
Feb. 24, 1981), in combination with either Kawarazuka (JP H10-11639 A,
publ. Jan. 16, 1998) or Levasseur (see Office Action, mailed Mar. 12, 2010,
at 5 & 11); and rejecting claims 16, 21, 51 and 58, among others, under
§ 103(a) as being unpatentable Schuller, the “admitted prior art,” Toth,
Levasseur and Dogul (US 5,218,196, issued June 8, 1993) (see id. at 18).
The Patent Owner’s counsel subsequently interviewed the Examiner. In
written arguments following the interview, the Patent Owner wrote that
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
8
“within the Examiner’s Interview Summary it is stated that claims which
contain a specific recitation of the vend space extending from the glass front
to the shelves for products and extending substantially across the entire
width of the vending machine would make the claims allowable.”
(“Response to Office Action,” dated April 12, 2010, at 7). In fact, claim 58,
among others, was indicated allowable, based on this definition of the “vend
space,” on pages 15 and 16 of the following Office Action, mailed May 7,
2010.
The Patent Owner further argued in the prior reexamination that:
Two phrases are important in the [language of claims 1 and 41].
One is “the space in said vending machine through which” and
the other phrase is “said selected product will automatically fall
into a bin.” Together, these two phrases require not only that
dispensed product passes through the vend space, but that such
passing or movement occur automatically as when the product
drops from a selected dispensing mechanism, regardless from
which one, or whether it falls from the top or from the bottom
of the dispensing mechanisms. The dispensed product
automatically falls to the bin portion; it is not being channeled
to that bin as that would not be “automatic.”
(“Response to Office Action,” dated April 12, 2010, at 10 & 11). In other
words, the Patent Owner distinguished a vending machine having “a vend
space comprising a portion of the space in said vending machine through
which said selected product will automatically fall into a bin portion for
retrieval by the consumer,” as recited in claims 1, 16, 21, 41 and 51, from
vending machines in which selected products were delivered through
product delivery chutes. The Examiner ultimately allowed the claims over
the teachings of Schuller, the “admitted prior art,” Toth and Levasseur, the
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2

9
latter describing a vending machine capable only of detecting the delivery of
a product through such a product delivery chute.
Thus, the prosecution history indicates that the term “automatically
fall” excludes the motion of items whose passage into a retrieval bin is
channeled, such as by standing in an elevator as in Toth (see Reh’g Req. 9 &
10); or by passing along a chute or the like as in Levasseur. This is not the
same as saying that the term “automatically fall” excludes a fall through any
path where the passage of the item is hindered, as by Schuller’s
downwardly-pivotable vend flap 29. The Patent Owner probably did not
contemplate the presence of a downwardly-pivotable flap in the path of fall
when using the term “automatically fall” in the ʼ634 patent. The Patent
Owner has not shown any restriction in the ordinary usage of the term
“automatically fall” within the pertinent art of designing or manufacturing
vending machines; or any clear disclaimer in the ʼ634 patent itself or its
prosecution history, that would limit the term so as to exclude a fall hindered
by a pivotable flap.
The Patent Owner argues that the “vend space” recited in the
independent claims must extend into the bin portion. The reasons the Patent
Owner advances for limiting the claims in this fashion (see Reh’g Req. 7 &
8) are not persuasive. For example, claim 1 recites that the vend space is a
space “through which said selected product will automatically fall into a bin
portion.” Claim 1 does not recite that the vend space itself extends the full
distance that the selected product falls, that is, into the bin portion.
Nevertheless, limiting the scope of the term “vend space” in the fashion
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2

10
advocated by the Patent Owner would not change the result in this
proceeding.
Schuller describes a vending machine in which screw-driven pushers
95 in dispensers 3 cause a forward-most carton to drop off the front end of
the dispenser 3 into a vertical passage 13 when the forward-most carton is
purchased by a customer. (See Schuller, col. 3, ll. 31–34 & 47–51; see also
id. col. 16, ll. 16–19 & 38–43; & Fig. 6). The purchased carton will drop
unobstructed through the vertical passage 13 until it strikes a vend flap 29
below the vertical passage but above a delivery chamber 19. The Patent
Owner argues that the vertical passage 13 is not a “vend space” because it
does not extend unobstructedly into the delivery chamber 19. (See Reh’g
Req. 11). Even assuming this were true, the Examiner concludes that the
subject matter of the appealed claims would have been obvious based on a
proposed replacement of the vend flap 29 with an optical sensing system.
This replacement would have permitted a purchased carton to fall through
the vertical passage 13 and ultimately into the delivery chamber 19
unobstructed, barring a failure of a gate 25 to function as intended.
Regardless whether the term “vend space” is interpreted as being limited to a
space that extends into a bin portion, the modification proposed by the
Examiner would satisfy the limitation.3

3 The Patent Owner’s argument in footnote 7 on page 9 of the
Rehearing Request is not persuasive. The Patent Owner explains why
replacing the vend flap 29 would render Schuller’s electromechanical sensor
inoperative. That, however, is the point—the Examiner proposes replacing
Schuller’s electromechanical vend-sensing system with an optical sensing
system.
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2

11
“Ambient Light” and “Calibration”
Claims 21 and 58 each recite a vending machine having a transparent
front, an optical vend-sensing system and “a calibration circuit for
calibrating the optical vend-sensing system based on ambient [light or
electromagnetic radiation] entering the vending machine through the
transparent front.” The term “calibration” or “calibrating” is difficult to
interpret. The Decision quoted a general purpose dictionary defining the
term “calibrate” sufficiently broadly to encompass “[t]o check, adjust, or
determine by comparison with a standard.” (Decision 12, citing THE
AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (Houghton
Mifflin Co., 4th ed., 2009), available at http://www.thefreedictionary.com
/calibrate (last visited September 10, 2013)). Facially, this definition
appears consistent with the usage of the term in the written description of the
ʼ915 patent. For example, the “full calibration” discussed in column 16 of
the ’915 patent is an iterative process for bringing a set of optical and control
parameters of the vend-sensing system within ranges of standard values.
(See ’915 patent, col. 16, ll. 3–46). Although the constraint of the variables
within ranges of standard values is somewhat analogous to comparison with
standard values, the gist of the “full calibration” is the incremental variation
of the “PULSE” variable until a stable value is reached. (See ʼ915 patent,
col. 16, ll. 35–46). When carefully considered, the dictionary definition is
not consistent with the written description of the ʼ915 patent.
Instead, the term “calibration” is best interpreted as a self-adjusting
process. In prior merged Reexaminations 90/007,451; 90/007,453; and
90/007,462, the Examiner rejected prior versions of claims 21 and 58,
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
12
among others, under § 103(a) as being unpatentable over Schuller ʼ055 (US
3,178,055, issued Apr. 13, 1965), “admitted prior art” (“APA”) and Toth.
(Office Action, mailed June 12, 2006, at 4). In an effort to distinguish the
teachings of these references, the Patent Owner added the limitation, among
others, of “a calibration circuit for calibrating the optical vend-sensing
system based on ambient [light or electromagnetic radiation] entering the
vending machine through the transparent front,” to each of claims 21 and 58.
(“Response to Office Action in Merged Reexams,” dated July 12, 2006, at 6
& 14). The Patent Owner argued that:
None of Schuller [ʼ055], the APA or Toth discloses or
suggests such a calibration circuit. As the [prior examiner]
stated in the Office Action at page 5, first paragraph (emphasis
added), the “emitters 27a, 35a [of Toth] and detectors 29a, 39a
are positioned behind holes 31, 33, 37 and 41 and filters 42a,
42b which help to reduce the effects of ambient light on the
vend-sensing system (see column 4, lines 10–18).” Such an
approach of using holes and filters to reduce the effect of
ambient light, that is, physically block the ambient light, is
completely contrary to the claimed approach of using “a
calibration circuit for calibrating the optical vend-sensing
system based on ambient light entering the vending machine
through the transparent front.” That is, the claimed system
adjusts for the amount of ambient light instead of just trying to
physically block such light from the sensing system.
(Id. at 24 (underling and boldface type in original; italics added for
emphasis)). In the succeeding Office Action, the Examiner allowed both
claims 21 and claim 58, explaining that the two claims were patentable
“because the cited prior art patents and printed publications fail[ed] to teach
a vending machine, as defined in [claims 21 and 58], including a calibration
circuit for calibrating the optical vend-sensing system based on ambient light
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2

13
entering the vending machine through the transparent front.” (Office
Action, mailed October 20, 2006, at 8, paras. 9 & 11). I am not aware of any
argument in prior Reexamination 90/009,570 that might further restrict the
interpretation of the term “calibration circuit” or “calibrating.”
Thus, the prosecution history of the prior reexamination proceedings
indicates that the terms “calibration circuit” and “calibrating” are used in
claims 21 and 58 to indicate circuits that self-adjust to ambient light
conditions, rather than to mechanisms that block such light. Indeed, it
appears that the terms “calibration” and “self-adjusting” are used
interchangeably by vending machine manufacturers other than the Patent
Owner. For example, an advertisement by the Requester reproduced as
Attachment 2 to the Appeal Brief describes its optical vend-sensing system
as having “Automatic Self-calibration—No Adjustment Is Necessary.” This
statement supports the interpretation of the term “calibrating” as “self-
adjusting.”
When used in this sense, the term “calibration circuit” does exclude
the DC compressor circuit described at column 7, line 53 through column 8,
line 23 of Dragne. The circuit filters out the DC component (that is, the
steady state or slowly varying component) of the amplified output of the
photo diode 32, but does so without any self-adjustment. Nevertheless,
Dragne’s DC compressor circuit would serve to filter out effects of any
external ambient light to which a photodiode connected to such a circuit
might be exposed even if the DC compressor circuit is not a “calibration
circuit” within the scope of that term as used in claims 21 and 58.

Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
14
PRINCIPLES OF LAW
Section 103(a) provides that:
A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of
this title, if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said
subject matter pertains.
The statute is broadly consistent with the “functional approach to questions
of patentability” taken earlier by the Supreme Court in Hotchkiss v.
Greenwood, 11 How. 248 (1850):4 “In practice, Hotchkiss has required a
comparison between the subject matter of the patent, or patent application,
and the background skill of the calling. It has been from this comparison
that patentability was in each case determined.” Graham v. John Deere Co.,
383 U.S. 1, 12 (1966).
4 The Supreme Court held in Graham that the “legislative history, as
well as other sources, show that the [1952] revision was not intended by
Congress to change the general level of patentable invention. [It held] that
[§ 103] was intended merely as a codification of judicial precendents
embracing the Hotchkiss condition.” Id. at 17. Nevertheless, the Reviser’s
Note indicated that § 103 was “added to the statute for uniformity and
definiteness;” and the “section should have a stabilizing effect and minimize
great departures which have appeared in some cases.” Federico,
Commentary on the New Patent Act, 35 U.S.C. 1, 20 (West Publ’g 1974). A
commentator active in the drafting of the 1952 codification stated that,
“[w]hile it is not believed that Congress intended any radical change in the
level of invention or patentable novelty, nevertheless, it is believed that
some modification was intended in the direction of moderating the extreme
degrees of strictness exhibited by a number of judicial opinions over the
[previous] dozen or more years; that is, some change of attitude more
favorable to patents was hoped for.” (Id. at 20 & 21).
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2

15
The Supreme Court discussed the factual framework to be used in
analyzing obviousness in Graham:
While the ultimate question of patent validity is one of
law, [Great Atlantic & Pac. Tea Co. v. Supermarket Equip.
Corp., 340 US 147, 150 (1950)], the § 103 condition, which is
but one of three conditions, each of which must be satisfied,
lends itself to several basic factual inquiries. Under § 103, the
scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to
be ascertained; and the level of ordinary skill in the pertinent art
resolved. Against this background, the obviousness or
nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented. As indicia of obviousness or
nonobviousness, these inquiries may have relevancy. See Note,
Subtests of “Nonobviousness,” 112 U. Pa. L.Rev. 1169 (1964).
Id. at 17–18.
On the one hand, the Supreme Court instructs us that claimed subject
matter “composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). On the
other hand, the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416 (italics added for emphasis). Within these bounds, the
Supreme Court has left it to the inferior courts to define the precise contours
of obviousness under § 103(a).
Our reviewing court has further defined the test for obviousness as
follows:
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
16
If all the elements of an invention are found in a combination of
prior art references,
a proper analysis under §103 requires, inter alia,
consideration of two factors: (1) whether the prior
art would have suggested to those of ordinary skill
in the art that they should make the claimed
composition or device, or carry out the claimed
process; and (2) whether the prior art would also
have revealed that in so making or carrying out,
those of ordinary skill would have a reasonable
expectation of success.
Velander v. Gardner, 348 F.3d 1359, 1363 (Fed. Cir. 2003) (quoting In re
Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991)). The motivation or reason to
combine the teachings of the prior art “need not be found in the references
sought to be combined, but may be found in any number of sources,
including common knowledge, the prior art as a whole, or the nature of the
problem itself.” DyStar Textilfabriken GmbH v. C.H. Patrick Co., 464 F.3d
1356, 1361 (Fed. Cir. 2006). In a reexamination proceeding, it is
appropriate to consider all of the evidence of record bearing on the
knowledge of one of ordinary skill in the art in order to determine whether
there would have been a motivation or reason to combine the teachings of
the references as claimed. Randall Mfg. v. Rea, 733 F.2d 1355, 1362–63
(Fed. Cir. 2013).
The Supreme Court warns us against an overly rigid application of a
“teaching-suggestion-motivation” test for obviousness. In particular, the
Court cautions us that “[r]igid preventative rules that deny factfinders
recourse to common sense . . . are neither necessary under [the Court’s] case
law nor consistent with it.” KSR Int’l at 421. Nevertheless, the Court
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
17
recognizes that “it can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does. This is because
inventions in most, if not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will be combinations
of what, in some sense, is already known.” Id. at 418–19. In addition, the
Supreme Court instructs inferior tribunals to make explicit their reasons for
concluding that the subject matter of a claim would have been obvious, in
order to facilitate review. See id. at 418.
The nature of the motivation or reason required to prove obviousness
depends on the circumstances of the case. In certain simple fact scenarios,
little in the way of motivation may be required to satisfy the test for
obviousness. Drawing on its precedent, the Supreme Court instructs us that,
“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l at 416 (citing United States v. Adams, 383 U.S. 39, 50–51 (1966)). In
such a case, the conclusion of obviousness might be justified based on the
normal desire of artisans to consider known alternatives in search of an
improvement to a conventional device or process. The Supreme Court also
instructs us that,
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
18
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
KSR Int’l at 417. In the former case, the design incentives or other market
forces may provide the motivation. In the latter case, the prospect of
improving the similar device may provide the motivation.
The Supreme Court recognizes that the analysis of obviousness in
other fact scenarios may prove less simple:
Following these principles may be more difficult in other cases
than it is here because the claimed subject matter may involve
more than the simple substitution of one known element for
another or the mere application of a known technique to a piece
of prior art ready for the improvement. Often, it will be
necessary for a court to look to interrelated teachings of
multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.
KSR Int’l at 417–18.
Our reviewing court has emphasized that obviousness can only be
determined on the basis of a fact-specific inquiry. See In re Ochiai, 71 F.3d
1565, 1569 (Fed. Cir. 1995). In particular, the Board must consider
objective evidence of patentability, such as evidence tending to establish one
of the “secondary considerations” enumerated by the Supreme Court in
Graham, in any case where such evidence is of record. “Whether before the
Board or a court, [our reviewing court] has emphasized that consideration of
the objective indicia is part of the whole obviousness analysis, not just an
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2

19
afterthought.” Leo Pharma. Prods., Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed.
Cir. 2013). The mere presence of objective evidence does not imply
patentability. See Leapfrog Enterps., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1372 (Fed. Cir. 2007). For this reason, it can be useful for a party
submitting objective evidence to explain how the evidence impacts the
analysis whether the claimed subject matter would have been obvious.
Nevertheless, where present, objective evidence “may often establish that an
invention appearing to have been obvious in light of the prior art was not.”
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983).
Our reviewing court instructs us that there is a fundamental
requirement for objective evidence to be persuasive:
“For objective evidence of secondary considerations to be
accorded substantial weight, its proponent must establish a
nexus between the evidence and the merits of the claimed
invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246
(Fed. Cir. 2010) (quotation omitted). Where the offered
secondary consideration actually results from something other
than what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention. Tokai Corp. v.
Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If
commercial success is due to an element in the prior art, no
nexus exists.”); Ormco Corp. [v. Align Tech., Inc., 469 F.3d
1299, 1312 (Fed. Cir. 2006)] (“[I]f the feature that creates the
commercial success was known in the prior art, the success is
not pertinent.”).
In re Kao, 639 F.3d 1057, 1068–69 (Fed. Cir. 2011). The nexus between
secondary evidence, such as evidence of commercial success or licensing,
and the subject matter of a claim may be established by secondary evidence
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2

20
independent of the economic data or licenses submitted to prove such
secondary indicia. See, e.g., Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir.
2013) (finding a nexus between licenses and the claimed subject matter
based, at least in part, on a news article describing a novel feature of the
claimed subject matter as a “key part” of the licensed technology).

DIFFERENCES BETWEEN THE PRIOR ART
AND THE CLAIMS AT ISSUE
As mentioned earlier, Schuller describes a transparent front vending
machine for selling cigarette cartons and other cartoned merchandise that
uses a vend flap 29 to sense that a selected carton has been dispensed. (See
Ans. 2 & 3; see also Schuller, col. 1, ll. 5–7 & 14–22; col. 3, ll. 21–57; col.
16, ll. 16–19 & 38–43; & Figs. 3, 4 & 6). Dragne, describes optical sensing
units 11 for counting seeds moving through seed transport ducts 12 of a
planter. (See Dragne, col. 1, ll. 4–7 & col. 4, l. 66 – col. 5, l. 7). Dragne
addresses the problem of sensing the passage of small items such as seeds
while providing an unobstructed path for the items to move past the sensor.
It teaches that each duct 12 “includes openings 12A and 12B which allow
the mounting of [a] transmitter and receiver in the openings in a manner
which maintains the duct substantially closed and does not interfere with the
flow of seeds or particles through the duct.” (Dragne, col. 5, ll. 28–32).
Dragne also addresses the problem of “dark sections (or blind spots)” that
might permit small items such as seeds to pass through the detection zone
undetected. (See, e.g., Dragne, col. 1, ll. 56–59 & col 5, l. 62 – col. 6, l. 6).
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
21
Among the objects of Schuller’s vending machine is to provide for the
“effective display of the articles stocked in the vendor” through transparent
front windows. (Schuller, col. 1, ll. 26–49; see also id., col. 3, ll. 34–37).
Although Schuller’s machine itself is designed to sell cartons of cigarettes or
other cartoned merchandise (See Schuller, col. 1, ll. 5–7 & 14–22), a
vending machine capable of displaying and vending both large and small
products likely would have found a larger customer base. The Patent
Owner’s expert witness points out that Schuller’s vend flap 29 would have
prevented Schuller’s vending machine from selling and dispensing smaller,
lighter products. (See “Declaration of Joseph C. McAlexander, III Pursuant
to 37 CFR 1.248,” executed August 18, 2011 (“McAlexander Decl.”), at 6).
One familiar with the teachings of Schuller would have had reason to
modify Schuller’s transparent front vending machine to sense the dispensing
of both larger, heavier items and smaller, lighter items.
The Examiner correctly finds that “Schuller teaches all elements set
forth in claims 1–79 except for the sensing system operating optically.”
(Ans. 3) That said, the Patent Owner points out that one of ordinary skill in
the art could not have obtained the claimed subject matter merely by
substituting an optical sensing system such as that described by Dragne for
the electromechanical sensing system described by Schuller. (See App. Br.
21). For example, the Examiner has not shown that the size of a seed
transport duct 12 as described by Dragne was comparable in size to the vend
space of a transparent front vending machine. Some level of effort and
expense would have been required to scale the sensing system taught by
Dragne up to the dimensions required to span the vend space of a transparent
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2

22
front vending machine. Apart from this problem of scale, Dragne described
a system for counting seeds flowing through a seed transport duct. One of
ordinary skill in the art seeking to adapt the teachings of Dragne to the
problem of sensing that a product had been dispensed, one-at-a-time, within
a vending machine would have had to modify the signal processing circuitry
of Dragne. (See App. Br. 21). Proof that the subject matter of the appealed
claims would have been obvious would require the articulation of a reason
or motivation for modifying the vending machine described by Schuller
sufficiently compelling to justify the level of effort and expense likely
required to carry out the modification.

LEVEL OF ORDINARY SKILL IN THE ART
In order to properly evaluate the evidence in this case, one must
reorient one’s thinking from what the various devices described in the prior
art were capable of doing when considered in hindsight, to what one of
ordinary skill in the art knew those devices to be capable of doing at the
pertinent time. The record supports a finding that one of ordinary skill in the
pertinent art was a person with engineering training and experience in the
design of vending machines. (See Decision 43 n.10 (citing Reb. Br. 9);
Reh’g Req. 2). Levasseur describes the use of an optical delivery sensor,
albeit within a closed chute. (See Levasseur, col. 7, ll. 48–58). Likewise,
Percy (US 5,651,476, issued July 29, 1997) and Truitt (US 5,927,539, issued
July 27, 1999) describe optical delivery sensors used in closed-front vending
machines. (See Percy, col. 3, ll. 49–62 & Fig. 1; Truitt, col. 4, ll. 48–61 &
Fig. 1). Tanaka (JP H04-52284 U, publ. May 1, 1992) describes a product
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
23
detection device for a vending machine including a light projector that
projects a beam of light parallel to a bottom surface of a receiving tray to
sense the presence or absence of a vended item in the receiving tray.
(Tanaka 4–5). Kawarazuka (JP H10-11639 A, publ. Jan. 16, 1998), a prior
art reference used as a basis for rejecting claims in the prior reexamination
proceedings, describes an optical vend-sensing system located near a
product retrieval door (“exhaust port door” 23) at the base of a product
delivery chute 17, below product dispensing spirals 15. (See Kawarazuka,
paras. 13 & 15–18). Hence, one of ordinary skill in the art would have been
familiar with the use of optical vend-sensing systems in vending machines,
at least within product delivery chutes or other shaded areas. (See Reh’g
Req. 3).
The Patent Owner argues, for the first time in the Rehearing Request,
that “one of ordinary skill in vending machine design is typically more
skilled in mechanical design than optics or sensors.” (Reh’g Req. 2).
Although the Patent Owner cites no support for this statement, it is plausible
based on the teachings of Schuller, Vogelpohl, Levasseur, Percy, Truitt and
Tanaka. The bulk of the written descriptions of these patents is given over
to the description of mechanical systems, although Schuller also devotes a
significant portion of its description to analog control circuitry used to
coordinate the various mechanical systems in the machine. (See Schuller,
col. 9, l. 49 – col. 14, l. 40 & Figs. 13–15).
Nevertheless, the prior art of record describes the use of optical
sensing systems in vending machines, albeit only in areas within the
machines isolated from exposure to external ambient light. I find based on
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
24
the teachings of the prior art describing vending machines that one of
ordinary skill in the art would have had both reason and some capacity to
familiarize himself or herself with the design and operation of optical
sensing systems. On the other hand, a preponderance of the evidence does
not support a finding that one of ordinary skill in the art was an expert in the
design of optical sensing systems and processing of signals emitted by
optical sensors. (See Reh’g Req. 3).
The prior art itself does not resolve the precise level of knowledge that
one of ordinary skill in the art of vending machine design and manufacture
would have possessed regarding optical sensing systems. In particular, the
prior art does not resolve the question whether one of ordinary skill in the art
had the necessary skill at the pertinent time to implement an optical sensing
system in a high ambient light environment, regardless whether the ambient
light was generated within or without the vending machine. Despite
Dragne’s teachings regarding the optical sensor units resident in its seed
transport ducts; and Endl’s teachings regarding its optical intrusion detection
system, the Patent Owner argues that one of ordinary skill in the pertinent art
lacked the necessary knowledge and skill. (See Reh’g Req. 2–4).
OBJECTIVE EVIDENCE OF PATENTABILITY
The Patent Owner does not address its objective evidence in the
Rehearing Request. Nevertheless, I find that the best evidence in the
present case for resolving how much one of ordinary skill in the art knew
concerning optical sensing systems, and the processing of signals emitted by
optical sensors, is the objective evidence concerning the forces at work in
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
25
the market for vending machines in which the Patent Owner and its
competitors participated. Because the Patent Owner raised the issue of the
level of ordinary skill in the art (see Reh’g Req. 2–6), I will address the
objective evidence here.
Licensing Evidence
Eight of the Patent Owner’s competitors, including the Requester,
have taken licenses under patents including the ’634 patent. (See App. Br.
12; “Declaration of Sharon F. Shull,” executed May 17, 2011 (“Shull
Decl.”), paras. 14–22). The Patent Owner has provided redacted copies of
these license agreements. These eight licensees appear to include all of the
Patent Owner’s significant competitors (See Shull Decl., para. 19).
Unlike my colleagues, I find that there exists a substantial nexus
between the licenses and the subject matter claimed in the ʼ634 patent. This
finding is not based on the content of the license agreements alone, but also
on the content of two advertisements appended to the Appeal Brief as
Attachments 2 and 3.5 In particular, the first of these advertisements,
Attachment 2 to the Appeal Brief, was for a SUREVEND product delivery
5 I find these advertisements, and particularly that reproduced as
Attachment 2, more persuasive of nexus than the post hac, non-specific
testimony of John Hens, a distributor of the Patent Owner’s machines, that
he “immediately perceived [at a trade show ten years previous] that the
introduction of [the Patent Owner’s] optical vend detection system as an
industry changing event, a profound step forward;” or that he “understood
that the addition of a reliable vend detection system would make a real
difference to vending machine operators and the response [he] saw at the
tradeshow [ten years previous] was all positive.” (Hens Decl., para. 7).
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2

26
sensor. The undated advertisement stated that the SUREVEND sensor, which
was “a standard feature on all NV spiral equipment,” guaranteed the delivery
of products to the consumer. According to the advertisement, the
SUREVEND sensor provided features including “automatic self-calibration—
no adjustment is necessary” and “works in all lighting conditions” (leading
capitals omitted). In addition, the advertisement included an expanded view
of the lower portion of the product dispensers of a glass front vending
machine featuring a package of snack food items falling through a planar
array of simulated infrared beams. The expanded view was captioned
“successful vend is detected when falling product breaks infrared beams”
(leading capitals omitted).
The first advertisement, in particular, indicates that at least one
licensee, the Requester, considered the use of an optical sensing system in a
transparent front vending machine to be of commercial importance. The
advertisement placed special emphasis on the provision of “automated self-
calibration” that permitted the sensor to work in all lighting conditions.
Although the advertisement listed many purported advantages of the
Requester’s vending machines, the references to “automatic self-
calibration—no adjustment is necessary” and “works in all lighting
conditions” indicated that the Requester regarded these features as
commercially important. This fact bolsters the Patent Owner’s argument
that the licenses are probative of the patentability of the subject matter of the
appealed claims.
The timing of the licenses suggests that pending litigation against at
least two of the licensees might have influenced the decision of the others to
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
27
take licenses. Three of the licenses attached to the Shull Declaration were
dated within a year after consent decrees were entered against at least two of
two of the Patent Owner’s competitors, Automatic Products and USI, in
response to lawsuits involving related Patent US 6,384,402. Another license
attached to the Shull Declaration was dated nineteen months after the
consent decrees were entered against the two competitors. (See Shull Decl.,
para. 16 & Tabs A–G). Nevertheless, the timing of the licenses must be
balanced against the fact that the entire industry took licenses under the
Patent Owner’s patents rather than seeking to design around the claimed
subject matter.
Commercial Success
Sharon Shull, the President of the Patent Owner, declares that the
Patent Owner was a start-up company having no customer base in 1998.
(See Shull Decl., paras. 1 and 11). The Patent Owner introduced a
transparent front vending machine having an optical vend-sensing system at
a trade show in the spring of 1998. No other manufacturer of glass front
vending machines at the time offered a machine having an optical vend-
sensing system. (See Shull Decl., paras. 2 and 9; “Declaration of John
Hens,” executed March 16, 2009, para. 6). John Hens testified that his
business became a distributor for the Patent Owner and its SENSIT vending
machines almost immediately after the product introduction. (Hens Decl.,
para. 8).
Shull further declares that the Patent Owner’s sales in 1999 increased
approximately 294% over its 1998 sales levels; and that the Patent Owner’s
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
28
sales in 2000 increased another 60% over its 1999 sales levels. (See Shull
Decl., para. 12). Shull declares, in a declaration executed in 2011, that the
Patent Owner “ha[d] sold well over 50,000 units since 1998, netting [the
Patent Owner] tens of millions of dollars in revenue.” (Shull Decl., para.
12). Apart from these sales, Hens testifies that his business retrofits optical
vend-sensing systems manufactured by inOne Technologies, Inc., a licensee
of the Patent Owner, into refurbished machines. (Hens Decl., para. 11).
The testimony of Ms. Shull at paragraphs 2–6 of the Shull Decl.,
while not a limitation-by-limitation comparison between the appealed claims
and the machines sold by the Patent Owner, convinces me by a
preponderance of the evidence that the machines sold by the Patent Owner
embodied the subject matter of the claims. (See Reh’g Req. 20). In
particular, I note Ms. Shull’s testimony that the machines as first introduced
stored items to be vended “such that [the products could] be viewed through
the vending machine’s transparent front” (Shull Decl., para. 2); that, “[w]hen
purchased by the customer, the selected product [was] advanced forward,
over the edge of the storage tray, to fall through the delivery passage” (id.);
and that the sensing system “reliably detect[ed] the passage of products as
they [fell] through the product delivery passage having a depth largely
defined by the distance between the transparent front glass and the front
edge of the product storage trays” (id., para. 3). Ms. Shull does not indicate
that these basic features were changed in later versions of the machines. As
such, I am persuaded that there exists a substantial nexus between the sales
and growth figures, on the one hand, and the claimed subject matter, on the
other.
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
29
Furthermore, the fact that the Patent Owner’s competitors took
licenses to the ʼ634 patent, among others, indicates that the competitors
believed that the subject matter claimed in those patents was of competitive
value. The competitors’ willingness to pay money for access to this
technology suggests that those competitors believed the Patent Owner’s
exclusive right to sell vending machines embodying the technology
threatened their sales and market shares. One may reasonably infer, on this
basis, that the technology contributed to the Patent Owner’s commercial
success. Nevertheless, the weight to be given to the sales and growth figures
must be discounted for the fact that the figures do not indicate in absolute
terms how many sales were made during the first few years after the
introduction of the machines incorporating the SENSIT systems; or how
much market share, if any, those machines took from competitive machines
not embodying the claimed subject matter.
ANALYSIS
I disagree with my colleagues’ balancing of the evidence and ultimate
conclusion. As mentioned earlier, Schuller describes a transparent front
vending machine. Schuller’s vending machine uses an electromechanical
vend-sensing mechanism that renders the machine unsuited for the sale of
relatively small or relatively light items. (See McAlexander Decl. 6). The
Examiner concludes that it would have been obvious “to associate
electromagnetic radiation operation with the Schuller sensing system in
order to replace the wear and failure prone mechanical system with an
accurate electronic system.” (See Ans. 3 & 20). By “accurate,” the
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
30
Examiner refers to the problem of providing a vend sensor capable of
spanning a vend space large enough to accommodate relatively large
products, yet capable of sensing whether relatively small or relatively light
products have been dispensed into that space. (See Ans. 17 & 18).
Optical sensing is one of a very limited set of mechanisms known for
use in detecting the movement of items in a vending machine. (See, e.g.,
Levasseur, col. 7, ll. 51–58). Nevertheless, the record indicates that vending
machine designers prior to the named inventor used optical sensing systems
only in shaded areas of the vending machine, such as product delivery chutes
(see Levasseur, Percy & Truitt) or within a retrieval bin (see Tanaka &
Kawarazuka). (See Reh’g Req. 3).6 This is consistent with Endl’s teaching
in the field of optical sensing systems that changes in ambient light can
cause such systems to output false detection signals. (See Endl, col. 1, ll.
13–15). Common sense dictates that the presence of ambient light would
have been a significant problem for one of ordinary skill in the art seeking to
install an optical sensing system near a transparent front window or panel of
a vending machine. (See Reh’g Req. 3 & 4).
One of ordinary skill in the art would not have recognized Dragne’s
optical sensing system to be a solution to the problem of providing a vend
sensor capable of spanning a vend space large enough to accommodate
relatively large products, yet capable of sensing whether relatively small or
relatively light products have been dispensed into that space. Neither would
one of ordinary skill in the art have had a reasonable expectation that an
6 These vending machines are excluded from the scope of the claims on
appeal by the “freely falling” and “vend space” limitations of claims 1–79.
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
31
optical sensing unit like that described by Dragne could be adapted to
successfully solve the problem.
One of ordinary skill in the pertinent art was a designer or
manufacturer of vending machines. As the Patent Owner points out, Dragne
described a device intended for use in the field of agricultural equipment, not
vending machines. (See Reh’g Req. 6). The optical sensing system
described by Dragne was designed to count seeds moving through seed
transport ducts. It was not designed to sense the dispensing of products,
one-at-a-time, from dispensing mechanisms in vending machines. (See App.
Br. 21). Dragne described optical sensing systems including various
measures capable of addressing the problem of ambient light, including
external ambient light. That said, the Examiner has not proven that the
optical system described by Dragne was subject to external ambient light
when resident in a seed transport duct. The fact that the optical sensing
system described by Dragne included various measures capable of
addressing the problem of ambient light, including external ambient light,
does not imply that one of ordinary skill in the art would have recognized
those measures as capable of successfully filtering out the ambient light
entering through the transparent front window or panel of a vending
machine. Although the optical sensing system described by Dragne, which
used arrays of LEDs to generate excitation light (see Dragne, col. 5, ll. 39–
48 & Figs. 3 & 4), might have been scaled up from the size of the seed
transport ducts of Dragne to the vend space of a transparent front vending
machine, it is not clear that one of ordinary skill in the art had sufficient
expertise with optical sensing systems to recognize the scalability.
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
32
This uncertainty must be considered in the context of the objective
evidence presented by the Patent Owner. The only prior art of record
describing the use of optical sensing systems in vending machines used
those sensing systems either in retrieval bins below the front panels of
vending machines or in closed chutes within the machines, where ambient
light was not as substantial an issue. After the Patent Owner introduced
vending machines implementing the claimed subject matter, the Patent
Owner experienced growing sales and succeeded in licensing the entire
industry. The Requester’s advertising, or at least those advertisements
appearing in Attachments 2 and 3 to the Appeal Brief, indicate that the
claimed subject matter was valuable precisely because of the ability of the
claimed subject matter to address the problem of conducting optical vend-
sensing notwithstanding the ambient light admitted through a transparent
front window or panel of a vending machine.
This commercial success and licensing evidence indicates, albeit
circumstantially, that one of ordinary skill in the art lacked the skill
necessary to recognize the capacity of an optical sensing system such as that
described by Dragne to address the problem of providing a vend sensor in a
transparent front vending machine capable of spanning a vend space large
enough to accommodate relatively large products, yet capable of sensing
whether relatively small or relatively light products have been dispensed into
that space. Conversely, the objective evidence demonstrates industry
recognition of the inventive nature, or at least the commercial value, of the
subject matter after the fact. Based on my review of the record as a whole, I
am not persuaded that the combination proposed by the Examiner would
Appeal 2015-001737
Reexamination Control 95/000,604
Patent US 6,794,634 C2
33
have been obvious; or that claims 1–79 were properly rejected. Therefore, I
dissent.

Patent Owner:
Peter W. Gowdey
Davidson Berquist Jackson & Gowdey, LLP
8300 Greensboro Dr. Suite 500
McLean, VA 22102
Third Party Requester:
Daniel E. Venglarik
Munck Carter LLP
600 Banner Place Tower
12770 Coit Road
Dallas,TX 75251