Ex Parte 6857568 et al

Patent Trial and Appeal Board

Dec 14, 2012

95001346 (P.T.A.B. Dec. 14, 2012)

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.
95/001,346 04/20/2010 6857568 2917.003REX0 6397
32692 7590 12/14/2012
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/14/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND 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.
95/001,346 04/20/2010 6857568 2917.003REX0 6397
32692 7590 12/14/2012
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/14/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

EVISIONWARE, INC.
Requester

v.

3M INNOVATIVE PROPERTIES COMPANY
Patent Owner and Appellant
____________________

Appeal 2013-000115
Reexamination Control 95/001,346
Patent 6,857,5681
Technology Center 3900
____________________

Before BIBHU R. MOHANTY, JOSIAH C. COCKS, and RAMA G.
ELLURU, Administrative Patent Judges.

ELLURU, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent under reexamination (“‘568 Patent”) issued to inventors
Fergen et al. on February 22, 2005 from Application 09/713,444 filed
November 15, 2000.
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A. STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for
inter partes reexamination filed on April 20, 2010 (“Req.”). 3M Innovative
Properties Company (“3M Company”), the owner of the ’568 Patent2,
appeals under 35 U.S.C. §§ 134(b) and 315(a) from a final rejection of
claims 1-28.3 We are informed that the ’568 Patent was the subject of
litigation which was subsequently settled. (App. Br. 2). United States
Patent No. 6,486,780 was also the subject of that litigation and is currently
the subject of an inter partes reexamination, with control no. 95/001,344.
(Id.). We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a).
We affirm.

References Relied on by the Examiner
Bowers et al. (“Bowers”) 5,963,134 Oct. 5, 1999
Becker, Uwe “Self-service in Cologne Public Library”, VINE, issue no.105
pp. 24-29. (“Becker I”)

The Rejections on Appeal
The Examiner rejected claims 1-17 and 22-28 under 35 U.S.C. §
103(a) as unpatentable over Becker I.
The Examiner rejected claims 18-21 under 35 U.S.C. § 103(a) as
unpatentable over Becker I and Bowers.

2 See Patent Assignment Abstract of Title, Reel 015631, Frame 0103,
which was entered into the record of this proceeding as “Title Report” on
May 14, 2010.

3 See 3M Company’s Appeal Brief filed February 6, 2012 (“App. Br.”).

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The Invention
The invention relates to a library self-service terminal that may be
used, for example, by borrowers to check circulating items out of and/or to
return circulating items to a library. (’568 Patent 1:11-13).
Claim 1 is illustrative and reproduced below (App. Br. 32; Claims
App’x.):
1. A self-service library terminal comprising:

a reader arranged to read identifications on books involved in
library loan transactions:

a payment apparatus arranged to receive payment from a
borrower;

a controller, wherein the controller is arranged to process
signals from the reader corresponding to the identifications read by the
reader, wherein the controller is arranged to interact with the payment
apparatus in order to process financial transactions related to the library loan
transactions, and wherein the controller is arranged to remind the borrower
of the borrower’s account status; and

a display, wherein the controller is arranged to control the
display in order to remind the borrower that a loan is a chargeable loan.
B. ISSUES
1. Was the Examiner incorrect in concluding that Becker I teaches
or suggests the claimed structural limitations, including, for example, the
reader, payment apparatus/receiver, controller, display, and a connector?
2. Waa the Examiner incorrect in concluding that, in light of the
teachings of the prior art, it would have been obvious to incorporate all the
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features required by 3M Company’s claims into a self-service library
terminal?
C. PRINCIPLES OF LAW
A person of ordinary skill in the art is also a person of ordinary
creativity, not an automaton. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007).
“What matters in the § 103 nonobviousness determination is whether
a person of ordinary skill in the art, having all of the teachings of the
references before him, is able to produce the structure defined by the claim.”
Orthopedic Equip. Co., Inc. v. U.S., 702 F.2d 1005, 1013 (Fed. Cir. 1983)
(citations omitted).
There must be an articulated reasoning with rational underpinnings to
support the conclusion of obviousness. KSR, 550 U.S. at 418. The use of
known components of a system in known ways to achieve a predictable
result would have been obvious to one of ordinary skill in the art. Id. at 416.
A reference does not teach away if it merely expresses a general
preference for an alternative invention but does not “criticize, discredit, or
otherwise discourage” investigation into the applicant’s claimed invention.
DePuy Spine Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004)).
D. FINDINGS AND ANALYSIS
Obviousness Rejections: Claims 1-5 over Becker I
The Examiner rejected claims 1-5 over Becker I. The patentability of
dependent claims 2-5 is not argued apart from independent claim 1 and fall
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together with claim 1. Thus, we discuss claims 1-5 as a group. The
Examiner concluded that it would have been obvious to integrate the
components of a library computer system as taught by Becker I, including
the disclosed reader, payment apparatus, controller, and display, into a
library terminal for the advantage of modularity and improved performance.
We agree.
3M Company argues that Becker I only illustrates dummy terminals
connected to a central processing system. (App. Br. 12). 3M Company
maintains that there would have been no reason or motivation, and that
Becker I does not identify such motivation, to include a controller with the
features recited in claim 1 in each of the self-service terminals of Becker I.
(App. Br. 12). 3M Company further argues that Becker I does not disclose a
need to improve modularity and performance of the self-service concept and
even if there was such a disclosure, it is not a suggestion that each self-
service terminal of Becker I have its own controller. (Id.).
We are not persuaded by 3M Company’s argument. 3M does not
dispute that Becker I teaches various structural components of a library
computer system, e.g., a reader, payment apparatus/receiver, controller,
and/or display and makes obvious the structural limitations of a connector,
as required by claims 1-5. 3M Company’s argument that Becker I does not
specifically teach or suggest integrating a controller into Becker’s dummy
terminal is misplaced because that is not the basis of the Examiner’s
rejection. First, the Examiner concludes, and we agree, that Becker I makes
obvious integrating the entire disclosed library computer system into a self-
service terminal. Specifically, Becker I states the disclosed library system
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allowed many self-service procedure to become automated and controllable.
(Becker I, p. 26, col. 1, end of first ¶). Becker I emphasized that “the
performance of the self-service concept depends on the integration of the
end devices[] into the software of the central library application; and into
the databases containing the exact data on media type, borrower status, etc.”
(Becker I, p. 26, col. 1, last ¶) (Emphasis added). While Becker I’s use of
“integration” can be interpreted as merely connecting the end devices, such
as the dummy terminal, to the software of the central library application and
the databases, it also suggests combining the end devices with the software
and databases in one place, e.g., a self-service terminal, to improve
performance.
Second, 3M Company’s argument directed to an alleged lack of
motivation to modify Becker I’s dummy terminals based on the disclosure of
the computer system in Becker I is foreclosed by KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid requirement
of a teaching, suggestion or motivation to combine known elements in order
to show obviousness. KSR Int'l Co., 550 U.S. at 415. Rather, rejections
based on obviousness must be supported by “some articulated reasoning
with some rational underpinning” to combine known elements in the manner
required by the claim. Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)). The Examiner concludes a person of ordinary skill would
integrate the components of Becker I’s library system into a library system
for the advantage of modularity and improved performance. In addition, as
the Examiner explains, the need for modularity and improved performance
of computer systems is self-evident and the need for modularity and
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improved performance of a self-service library system was within the level
of ordinary skill. Thus, the Examiner has provided an articulated reasoning
with rational underpinning to support the conclusion of obviousness. In
sum, it would have been obvious to a person of ordinary skill to use the
known components of the Becker I library computer system to achieve a
predictable result, a self-service terminal that integrates various components
of the Becker I library system. See id. at 416.
3M Company next argues that Becker I does not teach or suggest the
claimed “a payment apparatus.” (App. Br. 13). 3M Company contends that
Becker I does not teach the payment apparatus because Becker I’s self-
service terminal and cash stations are separate from each other and are not
part of a single “self-service library terminal.” (Id.). In addition, 3M
Company alleges that because Becker I discloses a separate cash station, the
limitation “a display, wherein the controller is arranged to control the
display in order to remind the borrower that a loan is a chargeable loan” is
not taught. (Id. at 15). 3M Company maintains that the Becker I system
would have been incapable of continuing to provide a reminder to a
borrower once the borrower left the self-service terminal and was in the
proximity of a cash station where, for example, the borrower could pay for a
chargeable loan. (Id.).
3M Company’s argument are directed to whether Becker I makes
obvious integrating Becker I’s self-service terminal with a cash station,
which is not the basis of the rejection. As discussed supra, we conclude that
it would have been obvious in light of the teachings of Becker I to integrate
the entire disclosed library computer system into a self-service terminal.
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Further, 3M Company contends that there are several reasons one of
ordinary skill in the art would not have combined Becker I’s self-service
terminal and cash stations into a unified self-service library terminal. (Id. at
13). A determination of obviousness, however, does not require that the
prior art must be optimized or improved over that which is expressly taught.
According to 3M Company, Becker I teaches away from the combination
because it notes that cash stations deal with time-consuming loans fees.
Thus, contends 3M Company, the combination would unnecessarily tie-up
the self-service terminal, leading to poor overall system performance and
reduced efficiency because many users who use the self-service terminal
need not use the cash station, or vice versa. (Id. at 13-14). A reference does
not teach away if it merely expresses a general preference for an alternative
invention but does not “criticize, discredit, or otherwise discourage”
investigation into the applicant’s claimed invention. DePuy Spine Inc. v.
Medtronic Sofamor Danek, 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting
In re Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004)). 3M Company has not
shown how a person of ordinary skill reviewing Becker I would be led in a
direction divergent from integrating the illustrated components of its library
computer system into a self-service terminal. While Becker I may teach
central processing, as 3M Company contends (Id. at 12), it would not have
deterred a person of ordinary skill from integrating processing, or any of the
other components of the Becker I system, into a self-service terminal.
Also, while Becker I does not expressly teach that the controller, i.e.,
Becker I’s processor, is arranged to control the display in order to “remind
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the borrower that a loan is a chargeable loan,” as recited in claim 1, Becker I
suggests this limitation. Becker I teaches that its computer system includes:
the necessary software parameter facilities for [decentralized]
and differentiated library systems. For example, loan fees can
easily be connected to material types as well as to borrower
categories, [which] is similar [to] reminder fees, loan periods,
subscriptions (registration and annual fees), etc. In addition,
the circulation procedure is completed by automatic and manual
traps and [specialized] reservation and disposition software.
(Becker I, p. 26, col. 1, first ¶).
Thus, we agree with the Examiner that it would have been obvious to
arrange the controller to control the display in order to remind the borrower
that the loan is a chargeable loan for the advantage of modularity and
improving the performance of the self-service library concept as taught by
Becker I.4
We also are not persuaded of error by 3M Company’s assertion that
the Examiner’s rejections of claims 1-5 are founded on impermissible
hindsight based on the present application’s own disclosure, (App. Br. 14-
20). Our review of the record establishes that the Examiner's case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of the Appellants' invention and does not include
knowledge gleaned only from the Appellants' disclosure. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was

4 See page 33 of the Action Closing Prosecution (“ACP”) mailed
August 25, 2011.
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within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's disclosure,
such a reconstruction is proper.).
Accordingly, for the reasons discussed supra, we conclude that in
light of the teachings of Becker I claim 1 would have been obvious. We
sustain the Examiner’s rejection of claim 1 as unpatentable over that
reference.
Claims 2-5 are not separately argued apart from claim 1. (App. Br.
16). We also sustain the rejections of claims 2-5 over Becker I.
Obviousness Rejections: Claims 6-11 and 27-28 over Becker I
In addition to making the arguments already discussed, which we do
not find persuasive, 3M Company makes additional arguments with respect
to claims 6-8 and 27-28 that are similar. In essence, 3M Company argues
that the identified limitations are not expressly taught by Becker I and the
Examiner has failed to produce relevant references that teach or suggest the
identified limitations. However, we agree that these requirements were well
known to persons of skill in the art at the time of the invention and it would
have been obvious to modify the Becker I system to include them. 3M
Company also contends that there was no motivation to make the suggested
modifications. However, as noted supra, there is no rigid requirement to
show obviousness, and we conclude that the Examiner has provided an
articulated reasoning with rational underpinning to support the conclusion of
obviousness with respect to the disputed claims. We are not persuaded by
3M Company’s positions.
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Claims 6 and 7: Specifically, 3M Company argues that Becker I’s
disclosure that a borrower can get information on his/her outstanding
charges is not a teaching of “remind[ing] a borrower of an overdue book
chargeable to the borrower,” as required by claim 6. (App. Br. 15). In
addition, 3M maintains that Becker I does not teach “allow[ing] the
borrower to continue a present loan transaction even though the borrower
has not paid for overdue book,” as required by claim 6, because Becker I
does not disclose any issue relating to the borrower exceeding the charge
limit. (App. Br. 15-16). 3M Company makes the same arguments with
respect to claim 7 which recites similar language. (App. Br. 16).
We agree that Becker I does not specifically teach that its central
processor is arranged to control the display in order to: (1) remind the
borrower of an overdue book chargeable to the borrower, and (2) allow the
borrower to continue a present loan transaction even though the borrower
has not paid for an overdue book. However, as discussed above with respect
to claim 1, Becker I teaches that its disclosed system offers the necessary
software parameter facilities for decentralized and differentiated library
systems, including parameters for loan fees, reminder fees, loan periods, etc.
(Becker I, p. 26, col. 1, first ¶). Thus, there is support in the record for the
Examiner’s conclusion that it would have been obvious to one of ordinary
skill in the art to arrange the claimed controller such that it: (a) reminds the
borrower that the loan is a chargeable loan, and; (2) allows the borrower to
continue a present loan transaction even though the borrower has not paid
for an overdue book for the advantage of modularity and improving the
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performance of the self-service library terminal concept as taught by Becker
I. (ACP, pp. 36, 39).
Claim 8: With respect to claim 8, 3M Company argues that Becker I
does not teach “remind[ing] the borrower of a hold reserved for the
borrower” because Becker I does not mention “holds” or creating or entering
holds in the system. (App. Br. 16-17). 3M Company contends that even if
a hold request is entered electronically into a library central system by
library staff, the individual would “most likely” go directly to a library desk
to pick up the held item where the item is “most likely” checked out by staff.
We agree with the Examiner’s undisputed finding that it was well-
known that library circulation systems reserve, i.e., “hold” items, for
borrowers and maintain records pertaining to these held items. (ACP, p. 41).
Indeed, that finding has underlying support in Becker I which conveys that
“self-service procedures” involve presenting reminder information to a user.
(E.g., Becker, p. 26, col. 1) Thus, in our view, a person of ordinary skill in
the art, who is also one of ordinary creativity, KSR, 550 U.S. at 421, would
have readily recognized a benefit to the borrower in displaying any type of
various known library account information, as taught by Becker I, including
reminders relating to a hold reserved for the borrower. 3M Company’s
argument that a borrower would “most likely” go directly to a library desk,
presumably instead of a self-service terminal, to pick up a held items
supports a determination that the proposed modification was obvious, even
assuming 3M’s attorney argument that it may not likely be utilized by a
borrower. A determination of obviousness does not require that the prior art
must be optimized or improved over that which is expressly taught. Thus,
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we agree that it would have been obvious to modify Becker I’s self-service
terminal to control the display to remind the borrower of a hold reserved for
the borrower for the advantage of notifying the borrower of his reserved
items. (Id.)
Claim 9: 3M Company argues that Becker I does not teach “a
connector, wherein the connector is arranged to couple the self-service
library terminal over a link to a circulation system, and wherein the
controller is arranged to store loan transactions during periods when the link
to the circulation system is down so that the loan transactions can be later
transferred to the circulation system,” as required by claim 9. (App. Br. 18).
3M Company maintains that because Becker I teaches a central processing
system, the dummy terminals do not operate when the central system is
unavailable, and thus, would not be capable of storing loan transactions
when the central system was not available as they lack their own controller.
(App. Br. 18).
The Examiner also found that it was well-known to one of ordinary
skill in the art to store transactions in a terminal that processes transactions
so the transactions could be transferred to a larger system at a later time, for
example, when the system was running again. (ACP, p. 44). 3M Company
does not challenge that finding, but instead argues that Becker I does not
teach this limitation. We think that a skilled artisan would have appreciated
that known transaction storing techniques may be readily applied to various
systems that would reasonably have been expected to benefit from such
techniques, such as the self-service library system of Becker I. The library
system as well as the borrower would benefit from storing information
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related to loan transactions that occurred via the self-service terminal,
particularly when the link to the larger system has failed so that the
information can later be transferred to the larger system. Thus, we agree
with the Examiner that it would have been obvious to one of ordinary skill in
the art to modify Becker I’s self-service terminal by using a connector to
connect the self-service library terminal over a link to store loan transactions
during periods when the link to the circulation system is down for the
advantage of storing the loan transaction data. (Id.).
Claim 10: According to 3M Company, Becker I does not teach claim
9’s requirement of “control[ling] the display in order to remind the borrower
of a new charge … [and] to remind the borrower that the borrower can
accept or reject the new charge.” (App. Br. 18-19). 3M Company contends
that because Becker I discloses a cash station separate from a self-service
terminal, a reminder displayed on Becker I’s self-service terminal would
have been ineffective because it would have been incapable of continuing to
provide a reminder to a viewer once the viewer left the self-service terminal.
(App. Br. 19). Furthermore, argues 3M Company, there would have been no
reason for a self-service terminal to give a borrower the choice of accepting
or rejecting a new charge when the borrower could not have been able to
make a payment at the self-service terminal given that Becker I teaches that
the self-service terminals and cash stations are separate. (Id.).
As found by the Examiner and uncontested by 3M Company, it was
well known to one of ordinary skill in the art to control displays to show
reminders. (ACP, p. 46). Indeed, that finding has underlying support in
Becker I, which conveys that “self-service procedures” involve presenting
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reminder information to a user. (E.g., Becker, p. 26, col. 1). Thus, in our
view, a person of ordinary skill in the art, who is also one of ordinary
creativity, KSR, 550 U.S. at 421, would have readily recognized a benefit to
the borrower in displaying any type of various known library account
information, as taught by Becker I, including reminders relating to a new
charge and accepting or rejecting a new charge. Thus, we agree with the
Examiner that it would have been obvious to one of ordinary skill in the art
to control the display to remind the borrower of a new charge and to remind
the borrower that he can accept or reject the new charge for the advantage of
modularity and improving the performance of the self-service library
concept as taught by Becker I. (ACP, p. 46).
Claim 11: 3M Company argues that Becker I does not teach “a book
receiving area, wherein the controller is arranged to control the reader so as
to project a visible indicator onto the book receiving area and so as to
change the visible indicator between first and second visible states,” as
required by claim 11. (App. Br. 19). 3M Company maintains that
modifying the Becker I self-service terminal would require incorporating
projection optics, such as a number of lenses, and even if the laser for
reading a barcode as illustrated by Becker I is a visible laser, the suggested
modification would require the addition of a second laser emitting at a
different color with supporting electronics. (Id. at 20). 3M argues that
adding projection optics and a second laser would have increased the size
and cost of the device. (Id.).
Becker I teaches that in order for a book to be issued, it must be
placed in the left corner of a steel surface plate below the screen of the self-
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service terminal. (Becker I, p. 26, last ¶). A green screen message comes up
after successful issuing or returning and red screen messages indicate failed
issue attempts. (Id.). The green and red light indicators correspond to the
“visible indicator” and the red and green states correspond to the “first and
second visible states,” recited in claim 11. We further agree that whether the
green light/red light appears on a screen, or is projected onto the book
receiving area of the device as claimed is a design choice. (ACP, p. 48).
Thus, we agree with the Examiner that it would have been obvious to one of
ordinary skill in the art to modify the Becker I self-service terminal to
project the green/red visual indicators on the book receiving area for the
advantage of making the two visible states, i.e. red and green lights, more
readily apparent to the borrower. (Id. 48-49). That such modification may
increase the size and cost of the self-service, as asserted by 3M Company
(App. Br. 20), does not obviate the conclusion of obviousness. First, that the
modifications increase the cost of the device is mere attorney argument
which does not find adequate underlying support. Such argument cannot
take the place of evidence lacking in the record. Estee Lauder Inc. v.
L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Second, even if the
assertion is true, a determination of obviousness does not require that the
prior art must be optimized or improved over that which is expressly taught.
Claims 27 and 28 are not separately argued from claim 8. (App. Br.
18). For the reasons discussed supra, we do not find these arguments
persuasive.
Accordingly, we sustain the rejections of claims 6-11, 27, and 28 as
unpatentable over Becker I.
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Obviousness Rejections: Claims 12-17 and 22-26 over Becker I
3M Company reasserts the same arguments with respect to claims 12
and 15-17 as those for claim 1. (App. Br. 20-23). In addition, 3M
Company asserts the same arguments with respect to claim 15 as those for
claim 6 (Id. at 23-24), the same arguments against claim 16 as those for
claim 9 (Id. at 24), and the same arguments against claim 17 as those for
claim 11 (Id.). Claims 13-14 depend from claim 12 and are not separately
argued. (App. Br. 23). Claims 23-26 depend from claim 15 and are not
separately argued. (App. Br. 24). With respect to claim 22, 3M Company’s
arguments are essentially the same as those which were advanced in
connection with claim 1. (App. 24-27).
For the reasons discussed supra, we are not persuaded by any of these
arguments. We sustain the rejections of claims 12-17 and 22-26 over
Becker I.
Obviousness Rejections: Claims 18-21over Becker I and Bowers
3M Company asserts the same arguments with respect to claims 18-21
as those for claim 1 or otherwise discussed supra. (App. Br. 24-31). For the
reasons discussed supra, we do not find these arguments persuasive. We
sustain the rejections of claims 18-21 over Becker I and Bowers.
E. CONCLUSION
1. The Examiner was not incorrect in concluding that Becker I
teaches or suggests the claimed structural limitations, including, for
example, the reader, payment apparatus/receiver, controller, display, and a
connector.

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2. The Examiner was not incorrect in concluding that, in light of
the teachings of the prior art, it would have been obvious to incorporate all
the features required by 3M Company’s claims into a self-service library
terminal.
F. ORDER
The rejection of claims 1-17 and 22-28 under 35 U.S.C. § 103(a) as
unpatentable over Becker I is affirmed.
The rejection of claims 18-21 under 35 U.S.C. § 103(a) as
unpatentable over Becker I and Bowers is affirmed.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
Appeal 2013-000115
Reexamination Control 95/001,346
Patent 6,857,568

19
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).

AFFIRMED

Appeal 2013-000115
Reexamination Control 95/001,346
Patent 6,857,568

20
PATENT OWNER:

3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427

THIRD PARTY REQUESTER:

ROBERT E. SOKOHL
STERNE KESSLER GOLDSTEIN & FOX, P.L.L.C.
1100 NEW YORK AVE., N.W.
WASHINGTON, DC 20005

lb