Ex Parte 7672499 et alDownload PDFPatent Trial and Appeal BoardMay 3, 201395001419 (P.T.A.B. May. 3, 2013) Copy Citation 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. 95/001,419 08/27/2010 7672499 985-P-1REEX 2038 41230 7590 05/03/2013 CUMMINS-ALLISON CORP. C/O NIXON PEABODY LLP 300 S. Riverside Plaza 16th Floor CHICAGO, IL 60606 EXAMINER LAROSE, COLIN M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/03/2013 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 ____________ AMRO-ASIAN TRADE, INC. Third Party Requester and Appellant v. CUMMINS-ALLISON CORP. Patent Owner and Respondent ________ Appeal 2012-008615 Inter partes Reexamination Control 95/001,419 United States Patent 7,672,499 B2 Technology Center 3900 ____________ Before ANTON W. FETTING, KEVIN F. TURNER, and JOSIAH C. COCKS, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 2 Third Party Requester Amro-Asian Trade, Inc., (hereinafter “Appellant”), appeals 1 under 35 U.S.C. §§ 134(b) and 315(b)(1) the Examiner‟s decision to not adopt Appellant‟s proposed rejections and confirm claims 3-6, 10, 12, 17, 22, 24, 25, 27, 31, 38, 41, 49, 50, 61, 66, 72- 87, 89, 91, and 97-110. 2 Patent Owner Cummins-Allison Corp., (hereinafter “Respondent”) is a party to the appeal under 35 U.S.C. § 315(a)(2) and disputes the Appellant‟s contentions. 3 Claims 1, 2, 7-9, 11, 13-16, 18-21, 23, 26, 28-30, 32-37, 39, 40, 43, 45-48, 51, 53-60, 62-65, 68-71, 88, 90, and 93-96 are withdrawn from consideration for failure to file a timely response in inter partes reexamination. 4 Additionally, Respondent indicates that claims 44, 52, 67, and 92 are to be cancelled from this Appeal. (Resp. Br. 1.) We have jurisdiction under 35 U.S.C. §§ 6, 134 and 315. We AFFIRM-IN-PART and enter NEW GROUNDS OF REJECTION. 1 See Third Party Requester‟s Appeal Brief filed October 6, 2011, hereinafter “App. Br.,” at 1; see also Third Party Requester‟s Rebuttal Brief filed March 26, 2012, hereinafter “Rebut. Br.” 2 See Right of Appeal Notice, mailed July 25, 2011, hereinafter “RAN;” see also Examiner‟s Answer, mailed March 9, 2012, hereinafter “Ans.” 3 See Patent Owner‟s Respondent Brief filed November 7, 2011, hereinafter “Resp. Br.” 4 Patent Owner failed to respond to the Examiner‟s rejection of claims 1, 2, 7-9, 11, 13-16, 18-21, 23, 26, 28-30, 32-37, 39, 40, 43, 45-48, 51, 53-60, 62- 65, 68-71, 88, 90, and 93-96 in a Non-Final Action, mailed February 14, 2011. In an Action Closing Prosecution, mailed May 26, 2011, hereinafter “ACP,” the Examiner withdrew these claims from consideration and limited further prosecution to claims 3-6, 10, 12, 17, 22, 24, 25, 27, 31, 38, 41, 49, 50, 61, 66, 72-87, 89, 91, and 97-110 found patentable, pending the outcome of this appeal, consistent with 37 C.F.R. § 1.957(c). (See ACP 2.) Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 3 STATEMENT OF THE CASE This proceeding arose from a request for inter partes reexamination filed by Seth M. Reiss on behalf of Amro-Asian Trade, Inc., on August 27, 2010, of United States Patent 7,672,499 B2 (“the '499 Patent”), issued to Donald R. Raterman et al. on March 2, 2010, based on U.S. Application No. 10/163,757, filed June 6, 2002. 5 THE INVENTION Respondent‟s invention generally relates to an apparatus for the automatic discrimination and counting of currency bills of different denominations using light reflectivity characteristics of indicia printed upon the currency bills at high speeds. (Col. 1, ll. 28-33; Abs.) Exemplary claim 72 on appeal reads as follows: 72. A high-speed U.S. currency processing device for receiving a stack of U.S. currency bills and rapidly processing all the bills in the stack, the device comprising: [a.] an input receptacle positioned to receive a stack of U.S. bills to be processed; [b.] at least one output receptacle positioned to receive bills after processing, a single one of the at least one output receptacle for receiving all denominated bills; [c.] a transport mechanism comprising a transport drive motor and transport rollers, the transport mechanism being adapted to transport the bills, one at a time, from the input receptacle to the output receptacle along a transport path, the transport mechanism 5 The '499 patent is related to United States Patent 7,536,046 B2 (“the '046 Patent”). The '046 patent was the subject of inter partes reexamination control number 95/001,220, which was appealed before this Board and resulted in issuance of Inter Partes Reexamination Certificate, mailed on Aug. 21, 2012. Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 4 being adapted to transport bills at a rate in excess of about 800 bills per minute; and [d.] a denomination discriminating unit comprising a detector positioned along the transport path between the input receptacle and the output receptacle and comprising a processor, the detector generating a characteristic information output signal in response to detected characteristic information, the characteristic information output signal being electrically coupled to the processor, the processor receiving the characteristic information output signal and generating a denomination signal in response thereto, the discriminating unit being adapted to denominate and total bills of a plurality of U.S. denominations at a rate in excess of about 800 bills per minute; [e.] wherein the device is configured to deliver any bill that has been denominated and totaled to the single output receptacle for receiving all denominated bills. 6 (Claims Appx.) POTENTIAL PRIOR ART REJECTIONS The prior art references relied upon by Appellant in the proposed rejections, upon which the non-adoption is appealed, are: Jones US 4,114,804 Sep. 19, 1978 O‟Maley US 4,179,685 Dec. 18, 1979 Nishito US 4,464,786 Aug. 7, 1984 Curl US 4,592,090 May 27, 1986 Takesako US 4,830,742 May 16, 1989 Hatanaka, Yoshihiro - Japanese Laid-Open Patent Application Publication Number S61-41439, publication date September 16, 1986 (English translation dated July 27, 2005), hereinafter “Exhibit Hatanaka.” 6 Claim 72 has been reformatted and modified using bracketed letters to facilitate understanding and reference to specific limitations. Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 5 Appellant additionally relies on various exhibits and declarations in rebuttal to the Examiner‟s decision to not adopt Appellant‟s proposed rejections, discussed below as necessary. Requester proposed rejections of the claims on the following bases, upon which the non-adoption is appealed: 7, 8 Proposed Rejection 1 1. Claims 3-6, 10, 12, 17, 22, 24, 25, 27, 31, 38, 41, 49, 50, 61, 66, 72- 87, 89, 91, and 97-110 under 35 U.S.C. § 103(a) as unpatentable over Hatanaka, Nishito, Curl, and Jones. (See RAN 2.) Proposed Rejection 3 3. Claims 3-6, 10, 12, 17, 22, 24, 25, 27, 31, 38, 41, 49, 50, 61, 66, 72- 87, 89, 91, and 97-110 under 35 U.S.C. § 103(a) as unpatentable over Takesako, Hatanaka, Jones, and Nishito. (See RAN 5-6.) 7 Appellant does not appeal the Examiner‟s non-adoption of Proposed Rejection 2. See RAN 4-5. 8 Proposed rejections 2 and 3 both include dependent claim 42, however it appears that claim 42 is cancelled because it was omitted from Appellant‟s Claim Appendix. Respondent has not submitted a Claim Appendix, and so this decision presumes claim 42 as cancelled. Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 6 ISSUES 9 1. Did the Examiner err in not adopting the proposed rejection of claims 3-6, 10, 12, 17, 22, 24, 25, 27, 31, 38, 41, 49, 50, 61, 66, 72-87, 89, 91, and 97-110 rejected under 35 U.S.C. § 103(a) as unpatentable over Hatanaka, Nishito, Curl, and Jones? 2. Did the Examiner err in not adopting the proposed rejection of claims 3-6, 10, 12, 17, 22, 24, 25, 27, 31, 38, 41, 49, 50, 61, 66, 72-87, 89, 91, and 97-110 under 35 U.S.C. § 103(a) as unpatentable over Takesako, Hatanaka, Jones, and Nishito? FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. Hatanaka H1. Hatanaka is directed to a currency discriminator and counter machine which transports, totals, and discriminates banknotes deposited into a currency feeder one at a time to a stacker. (H0011 – H0012.) H2. Hatanaka describes an optional “dissimilar denomination rejection device 123” for banknotes determined by the denomination comparator device 114 as mismatches. (H0017.) 9 We have considered in this decision only those arguments that Appellant and Respondent actually raised in the Briefs. Arguments which Appellant and Respondent could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii). Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 7 H3. Hatanaka describes a pattern detection device which uses photoelectrical devices for discrimination. (H0014.) H4. Hatanaka describes that if denomination comparison device 114 detects a mismatch, the conveyer drive unit 120 is stopped. (H0014, last four lines; see also H0017.) H5. Alternatively, Hatanaka describes a: dissimilar paper currency rejector device 123 may be provided and a comparison signal RH [sic – „RF‟] may be inputted from the denomination comparison device 114 so that if there is a mismatch the applicable paper currency can be rejected to a rejection aperture, equipped seperately, rather than being conveyed to the paper currency stacking platform 23. Moreover, the conveyer drive unit 120 is stopped, even if conveyer drive is in process, if a stop signal is inputted from the stop button 109. (H0014 – H0015.) H6. Hatanaka states: 112 is an discriminator unit that discriminates the denomination of the paper currency by inputting a pattern detection signal from the pattern detection device 111. 113 is a denomination memory device that stores in memory the denomination data specified by the denomination specification key 103. 114 is a denomination comparison device that outputs a comparison signal after comparing the discriminated denomination [from] the discriminator unit 112 to the stored denomination [from] the denomination memory device 113. [sic] (H0014.) Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 8 H7. Hatanaka allows users to select a mode of counting between “[s]ingle denomination” or “[m]ixed denominations.” (H0016.) Jones J1. Jones is directed to high-speed currency counting machine which is able to test each bill‟s genuineness including fluorescence and magnetic characteristics at speeds of the order of 1250 bills per minute. (Abs.) J2. Jones discloses: [d]uring normal high-speed counting, each note passing through apparatus 10 is tested for certain properties of genuineness. Any note which does not satisfy all of the tests for genuineness will cause the machine to stop immediately and will light the „suspect‟ indicator lamp 65. At this time the suspect note will be the top-most note in the output stacker, i.e., the top-most note in stack 24, shown in FIG. 1. The suspect note may then be easily and quickly removed from the stacker for further detailed inspection while permitting substantially immediate reinitiation of the counting operation either after removal or after removal and replacement of the suspect note. Suspect notes are preferably included in the count since they are only „suspect‟ and may be quickly recognized by one having the requisite skill in currency handling as actually being genuine, or damaged, exceedingly worn (unfit), or in some other way defective. However, the suspect detection circuitry may be readily and simply modified to withhold the count of the „suspect‟ bill. Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 9 (Col. 5, l. 63 – col. 6, l. 14.) Curl C1. Curl was filed June 7, 1985, and is directed to an apparatus for scanning a banknote using photodetector(s) to create a waveform, characteristic of the surface of the banknote. (Abs.) C2. Curl relates to an: optical apparatus for scanning a sheet, and is particularly useful for analysing [sic] the surfaces of banknotes. The apparatus may respond to the overall condition of the note, for example the degree of soiling of the note, or it may be used for pattern recognition; for example to sort banknotes in accordance with their orientation and their denomination or Bank of Origin. (Col. 1, ll. 6-13.) C3. Curl states: [i]t is difficult to process the data in the time available betwen [sic] banknotes, when scanning at the rate of 20-30 notes per second (a common speed for banknote transport systems), with presently available digital processing systems. It is also very expensive. It is therefore an object of the present invention to provide a simple form of apparatus for scanning a sheet in which a waveform characteristic of the surface of the sheet may be produced easily, even if the sheet is worn or soiled. (Col. 1, ll. 40-47.) Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 10 C4. Curl‟s apparatus has two alternative modes. The first mode records a scanned banknote‟s waveform into memory, and the second mode compares a scanned banknote‟s waveform to the previously stored waveform to determine the stored waveform which produces the best match. (Col. 2, ll. 34-38; Col. 3, ll. 28-33; see also Col. 6, ll. 15-19.) C5. Curl describes that in compare mode, it is preferable to store two waveforms to represent the pattern on each side of the banknote. (Col. 2, ll. 44-46 and col. 8, ll. 46-55.) C6. Curl describes that based upon the determined best match, the transport system can either reject the banknote or divert it to one or more destinations. (Col. 9, l. 66 – Col. 10, l. 5.) C7. Curl states: [a]s an extension of the system, items 15 to 23 and 29 of the diagram of FIG. 1 can be duplicated, together with their control logic circuitry, so that the system can be programmed to recognise [sic] any one of a number of different document patterns, as stored in different memories 16. This pattern recognition can be conducted simultaneously. In this way it is possible to compare a banknote simultaneously with a number of possible banknotes, for example. By comparing the outputs from all of the integrators 18, 19 and deciding which one exhibits the lowest value, the stored pattern matching the input waveform most closely can be chosen, and the banknote can be routed accordingly. (Col. 7, ll. 23-35.) Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 11 C8.Curl describes diverting a detected banknote in accordance with a correlation of its color pattern using two or more stored color patterns. (Col. 7, ll. 63-67.) C9. Curl describes providing additional memory to store each waveform (i.e., pattern) when scanning banknotes with two strip scanners. (Col. 2, ll. 16-31.) C10. When using two detector heads for scanning, Curl states that “the signals from the two heads can each be compared with two standards representing the pattern on each side of the banknote, with reversals as appropriate, and a match against either pattern looked for on both detectors.” (Col. 8, ll. 35-55.) Nishito N1. Nishito is directed to a system for identifying currency notes, including U.S. currency, which uses a line sensor to generate a scanning signal corresponding to a notes pattern. (Abs. and col. 2, ll. 36-40; see Fig. 1.) Takesako T1. Takesako is directed to a bill sorting apparatus for sorting and stacking bills. (Col. 1, ll. 13-15.) T2. Takesako states that “[t]he bills in the feeder 12 are fed one by one in a horizontal state at a rate of, for instance 10 bills per second.” (Col. 2, ll. 26-28.) Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 12 T3. Takesako only describes operating at speeds of approximately 10 times per second while describing a bill sorting embodiment. In the bill sorting embodiment, Takesako‟s judging circuit 32 determines whether a judged bill is a reject bill or not a reject bill. Bills that are determined to be rejects are stacked in reject stacker 22 and bills that are judged to not be rejects are stacked in upper stacker 18. (Col. 15, ll. 42-57.) Emery Declaration E1. Stephen G. Emery is a consultant for Appellant who worked for De La Rue Systems, the assignee of the Reed patent between 1980 and 1985. (Emery Dec. ¶¶ 1-5.) E2. The Emery Declaration describes “Transport Speed” and states, “[m]any patents issued in the 1980‟s and before were devoted to improvements in performance of the feed, transport and stacking mechanisms, and transport rates of 20 bills per second or 1200 bills per minute were known in the art using both friction and vacuum designs.” (Emery Dec. ¶ 10.) E3. Emery additionally states: Therefore, as of 1981 bills could be denominated at 1200 bpm using at least a cross correlation of 800 samples per bill. Accordingly, I conclude that with increases in processing speeds available by 1991, the denomination algorithm used and the electronic system capability were not constraining factors on the overall throughput of discriminating machines. Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 13 (Emery Dec. ¶ 24.) E4. Emery states that it was clearly a design choice for De La Rue to choose a speed at which to denominate currency based on market demand because “De La Rue had the technology for higher speed sorting, had pioneered that technology, and owned IP to protect it, but nevertheless chose to make the 3100 series operate at 420 bills per minute transporting bills parallel to their long dimension. (Emery Dec. ¶ 25.) E5. Emery concludes that “[i]t would have been obvious to one of skill in the art as of the late 1980s to make a different choice given different market requirements.” (Emery Dec. ¶ 25.) ANALYSIS ISSUE 1 Proposed Rejection 1 Claims 3-6, 10, 12, 17, 22, 24, 25, 27, 31, 38, 41, 49, 50, 61, 66, 72-87, 89, 91, and 97-110 rejected under 35 U.S.C. § 103(a) as unpatentable over Hatanaka, Nishito, Curl, and Jones. Claims 3-6, 12, 22, 27, 38, 61, and 89 Appellant argues that the Examiner erred in concluding that the combination of Hatanaka, Nishito, Curl, and Jones does not render obvious a currency processing device which halts its transport mechanism when a bill cannot be denominated and wherein the undenominated bill is the last bill delivered to the single output receptacle, as generally recited by claims 3-6, 12, 22, 27, 38, 61, and 89. (App. Br. 9.) While Appellant acknowledges Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 14 that Hatanaka does not expressly disclose that a “mismatch” bill (i.e., unrecognized bill) is the last bill transported to the output receptacle, Appellant points out that “Hatanaka discloses that „if there is a mismatch, the applicable paper currency can be rejected to a rejection aperture, equipped separately, rather than being conveyed to the paper currency stacker platform 23.‟” (Rebut. Br. 4; citing Hatanaka at H0014, l. 51 – H0015, l. 1.) Based upon this disclosure, Appellant concludes that one of ordinary skill in the art would have found it obvious to “direct such a „mismatch‟ bill in the Hatanaka device to any discharge receptacle, for example, the discharge receptacle where counted bills have been collected, thus making the „mismatch‟ bill the last bill on the pile of bills, the counted bills being below the „mismatch‟ bill.” (App. Br. 9.) In response, the Examiner finds and Respondent agrees, that Appellant‟s proposed modification is based solely on conclusory statements and fails to provide a sufficient rationale necessary to support the legal conclusion of obviousness. (RAN 2-3; Resp. Br. 2-3.) Respondent additionally asserts that it is unclear whether the undenominated bill ever reaches the output receptacle or remains somewhere in Hatanaka‟s transport path, because Hatanaka is silent as to which bill is the “last bill” to be delivered to the output receptacle when the machine is halted upon the detection of a “mismatch.” (Resp. Br. 4.) Moreover, Respondent contends that because “there are a number of interrelated problems involved in quickly stopping a stream of bills while they are being denominated at speeds of 800 to 1000 bills per minute,” Appellant‟s conclusory statements fail to support a conclusion of Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 15 obviousness. (Resp. Br. 4.) Lastly, Respondent points out that “Hatanaka‟s „mismatch‟ bill does not appear to be a bill „whose denomination has not been determined,‟” as required by claims 3 and 22 or “at least some bills that the device has not denominated and which remain undenominated when delivered to the output receptacle,” as generally required by claims 4-6, 12, 27, 38, 61, and 89, but rather a bill whose denomination does not match the denomination keyed in manually. (Resp. Br. 4-5.) We are not persuaded by Respondents‟ arguments and agree with the Appellant that the Examiner erred in determining that the combination of Hatanaka, Nishito, Curl, and Jones fails to render obvious the currency processing device recited by dependent claims 3-6, 12, 22, 27, 38, 61, and 89. In making this determination, we find that Hatanaka discloses a pattern detection device which uses photoelectrical devices for currency discrimination. (FF H1, H3.) Upon the detection of mismatch, Hatanaka discloses that its conveyer drive unit is stopped. (FF H4.) Hatanaka describes an optional “dissimilar denomination rejection device” for banknotes determined by the denomination comparator device to be mismatches (FF H2), but specifically discloses “that if there is a mismatch the applicable paper currency can be rejected to a rejection aperture, equipped seperately [sic], rather than being conveyed to the paper currency stacking platform 23.” (FF H5.) While Respondent asserts that it is unclear whether the undenominated bill ever reaches the output receptacle or remains somewhere in Hatanaka‟s transport path, we find Hatanaka‟s disclosure “that if there is a Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 16 mismatch the applicable paper currency can be rejected to a rejection aperture, equipped seperately [sic], rather than being conveyed to the paper currency stacking platform 23” (see FF H5) discloses or at the very least strongly suggests that the last “mismatched” or undenominated bill identified in Hatanaka, is transported to the same output receptacle as those bills which are already denominated when there is no optional “dissimilar denomination rejection device.” See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”) Moreover, we are not persuaded by Respondent‟s contention that Appellant‟s rationale for rendering the claims 3-6, 12, 22, 27, 38, 61, and 89 obvious is insufficient because they fail to address the “problems involved in quickly stopping a stream of bills while they are being denominated at speeds of 800 to 1000 bills per minute” (Resp. Br. 4), as these claims make no recitation regarding any denomination speed. 10 See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the specification can be examined for proper context of a claim term, limitations from the specification will not be imported into the claims). Even so, Appellant asserts that the rejection is based on the combination of Hatanaka, 10 Dependent claims 3-6, 12, 22, 27, 38, 61, and 89 ultimately depend on cancelled independent claims 1, 19, 26, 37, 55, and 88, respectively. Neither dependent claims 3-6, 12, 22, 27, 38, 61, and 89, nor the claims from which they depend, recite any limitation regarding a “discriminating unit being adapted to denominate and total bills of a plurality of U.S. denominations at a rate in excess of about 800 bills per minute,” such as that recited by pending independent claim 72. Independent claim 97 makes a similar recitation. Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 17 Nishito, Curl, and Jones, and points out that Jones demonstrates that halting the transport of bills during high speed operation was conventional at the time of the invention. (Rebut. Br. 3.) We agree with Appellant and find Jones discloses a high-speed currency counting machine which is able to test each bill‟s genuineness including fluorescence and magnetic characteristics at speeds of the order of 1250 bills per minute. (FF J1.) Jones describes that upon detection of a “suspect” note (e.g., worn, unfit, counterfeit), its counter machine immediately stops processing the suspect note and places the suspect note on top of the output stacker. (FF J2.) While we acknowledge that Jones‟s currency counter is not denominating bills, we find that Jones nevertheless demonstrates that it was known in the art at the time of the invention to be able to quickly stop a stream of bills, based upon some electrical detection, and place the “suspect” bill at the top of an output stack. See Syntex (U.S.A) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“What a reference teaches or suggests must be examined in the context of the knowledge, skill and reasoning ability of a skilled artisan.”) Also unpersuasive is Respondent‟s argument that “Hatanaka‟s „mismatch‟ bill does not appear to be a bill „whose denomination has not been determined,‟” as dependent claims 3-6, 12, 22, 27, 38, 61, and 89 generally require, but rather a bill whose denomination does not match the denomination keyed in manually. (Resp. Br. 4-5.) Initially, we note that it is unclear whether Respondent‟s position is that Hatanaka is not capable of denominating more than one denomination at a time, or that Hatanaka is denominating the “mismatched” bill, and as such, cannot render obvious the Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 18 claims because the claims generally require “[a] bill whose denomination has not been determined [to be] the last bill transported.” However, either interpretation is not persuasive. With respect to the former, we agree with Appellant that Hatanaka is capable of denominating more than one denomination. (Rebut. Br. 4-5.) As discussed supra, Hatanaka discloses a pattern detection device which uses photoelectrical devices for currency discrimination. (FF H1, H3.) Hatanaka describes using a comparison device which compares bills one at a time against known bill patterns stored in its denomination memory device. (FF H6.) Moreover, Hatanaka allows users to select a mode of counting between “[s]ingle denomination” or “[m]ixed denominations.” (FF H7.) Thus, we find Hatanaka is capable of denominating more than one denomination. With respect to the latter, to the extent Respondent attempts to draw a distinction between a bill whose denomination does not match a stored denomination and a “bill whose denomination has not been determined,” we do not find such a distinction to be persuasive. Given that Hatanaka‟s system discriminates the denominations of bills by comparing a pattern detection signal against stored denomination pattern data, one of ordinary skill in the art would have understood that a “mismatch” bill is a bill “whose denomination has not been determined,” as claims 3-6, 12, 22, 27, 38, 61, and 89 require. For the foregoing reasons, we are not persuaded by the Respondent of the deficiencies that it alleges with respect to the above-noted references. Having reviewed the rejections proposed by the Appellant, we are persuaded by that the Examiner erred in the nonadoption of proposed rejection 1 with Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 19 respect to claims 3-6, 12, 22, 27, 38, 61, and 89, and as such, we cannot sustain the Examiner‟s decision to not adopt the proposed rejection of claims 3-6, 12, 22, 27, 38, 61, and 89 under 35 U.S.C. § 103(a) as unpatentable over Hatanaka, Nishito, Curl, and Jones. Our decision in that regard, and our entry of the rejections herein as proposed by Appellant, constitutes a new ground of rejection pursuant to 37 C.F.R. § 41.77 (a) and (b). Claims 10, 17, 24, 25, 31, 41, 49, 50, 66, 72-87, 91, and 97-110 Appellant argues that the Examiner erred in concluding that the combination of Hatanaka, Nishito, Curl, and Jones does not render obvious a currency processing device that denominates mixed U.S. currency at speeds in “excess of 800 bills per minute,” as generally required by claims 10, 17, 24, 25, 31, 41, 49, 50, 66, 72-87, 91, and 97-110. (App. Br. 13-14.) In particular, Appellant asserts that the Examiner was correct in determining that “„at the time the invention was made it was conventional to transport bills at speeds of 1200 bills per minute‟” (App. Br. 13; citing RAN 3), but erred in determining that the combination failed to render obvious denominating a plurality of U.S. denominations at a rate in excess of about 800 bills per minute. (App. Br. 13-14) Instead, it is Appellant‟s contention that “Curl is capable of denominating mixed denominations of bills at a speed in excess of 800 bills per minute” (App. Br. 14-20), and to the extent it may not denominate mixed U.S. currency denominations at such speeds, doing so would be obvious to one of ordinary skill in the art as the result of optimization through routine experimentation with updated newer technology. (App. Br. 15-17.) Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 20 In response, the Examiner maintains that Curl is only directed to transporting bills at speeds of 1200 bills per minute, and as such, finds that Curl fails to enable or otherwise teach performing the additional act of denominating mixed currency in speeds in excess of 800 bills per minute. (RAN 3-4.) Respondent agrees with the Examiner and further asserts that “Curl does not disclose denominating bills of any kind at that speed, much less mixed U.S. currency bills” (emphasis original). (Resp. Br. 7.) Moreover, Respondent contends that “Curl simply mentions, in the description of the prior art in the first column of the patent, that 20-30 notes per second was „a common speed for banknote transport systems.” (Resp. Br. 9; citing Curl at Col. 1, ll. 39-42.) Turning first to Appellant‟s argument that Curl teaches or suggests denominating bills of a plurality of U.S. denominations at a rate in excess of about 800 bills per minute, we cannot agree, as this argument is premised on Appellant‟s contention that Curl discloses a system which denominates mixed currency, including U.S. currency, at speeds of 20-30 notes per second (1200-1800 notes per minute). (See App. Br. 13-21; see also Rebut. Br. 8-9.) Specifically, Appellant asserts that “Curl discloses a simple scanning apparatus in which a waveform characteristic of the banknotes can easily be produced and compared with stored waveforms for the identification and matching of banknotes,” and as such, concludes that one of ordinary skill in the art would understand Curl‟s scanning system to be applicable to mixed U.S. currencies. (App. Br. 19.) To support this assertion, Appellant contends that because Curl describes that it can be programmed to recognize a number of different stored document patterns, it Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 21 is capable of simultaneously identifying currency of multiple denominations. (App. Br. 17-18.) We cannot agree. In making this determination, we find that while Curl does not specifically refer to denominating U.S. currency, one of ordinary skill in the art at the time of the invention would have appreciated Curl‟s teachings regarding its ability to compare a banknote‟s stored waveform (i.e., data characteristic of the surface of the banknote) to a scanned banknote to determine a “best match,” and based upon that determination, either reject the banknote or not. (FF C1, C4, C6.) However, we cannot extend this appreciation to the extent that one of ordinary skill in the art would understand Curl to teach or suggest denominating bills of a plurality of U.S. denominations, much less doing so at speeds in excess of about 800 bills per minute, as presently claimed. To that end, we cannot agree with Appellant‟s assertion that Curl teaches denominating mixed denominations because Curl is capable of comparing stored waveforms for the identification and matching of banknotes, and instead find that Appellant‟s interpretation of the teachings of Curl to be incorrect. In making this assertion, Appellant relies on a portion of the Curl reference which describes duplicating components, “so that the system can be programmed to recognize [sic] any one of a number of different document patterns, as stored in different memories 16.” (see App. Br. 17.) However, we do not find that this disclosure refers to different document patterns for different denominations, nor does Curl disclose that these different patterns are for different denominations. Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 22 Instead, we find that these additional memory store different pattern representations for a single denomination such as the pattern on each side of the banknote (e.g., top, bottom), the pattern based on the direction the banknote is fed through the scanner (e.g., reverse, standard), color patterns, or alternate patterns based on specific portions of the banknote scanned (e.g., two strip scanning, two head scanning). (FF C5, FF C8, C9.) Thus, Appellant has not persuaded us that the additional programing described by Curl would represent different denominations of currency as opposed to patterns representative of different sides, orientation, color, series, and Bank of Origin for the same denomination. Also unpersuasive is Appellant‟s allegation that Curl denominates a plurality of U.S. currency because “[t]he Curl „invention relates to optical apparatus for scanning a sheet, and is particularly useful for analyzing the surfaces of banknotes . . . by pattern recognition; for example to sort banknotes in accordance with their orientation, denomination, and/or [sic] Bank of Origin‟” (emphasis omitted). (App. Br. 20; citing Curl at Col. 1 ll. 6-13). In fact, we find this allegation to be particularly unpersuasive due to the fact that Appellant has misquoted this portion of Curl. Contrary to Appellant‟s reproduction, Curl states that its system “sort[s] banknotes in accordance with their orientation and their denomination or Bank of Origin” (emphasis added). (FF C3.) As such, Appellant‟s statement that Curl sorts banknotes in accordance with their orientation, denomination, and/or Bank of Origin is false and misleading. Notwithstanding, Appellant‟s reliance on this portion of Curl, as it appears in Curl, fails to persuade us that Curl Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 23 denominates a plurality of U.S. denominations rather than a single denomination. Moreover, we are not persuaded by Appellant‟s contention that in order “to sort banknotes” according to their “orientation, denomination and/or Bank of Origin,” “each bank note must be transported and identified one at a time prior routing the bill [sic]” (emphasis omitted). (App. Br. 20.) In particular, we find Appellant‟s contention to be unsupported by Curl‟s disclosure, and as such, Appellant fails to persuade us that one of ordinary skill in the art would have understood Curl‟s disclosure to identify every banknote, one at a time, prior to routing the bill. Instead, as discussed supra, Curl‟s system compares a scanned banknote‟s pattern against a known banknote‟s stored pattern to determine a “best match.” (FF C4, C5.) That is, after a pattern recognition process is performed, Curl only determines whether a scanned banknote exhibits the stored pattern‟s characteristics or not. (FF C7.) Thus, while Curl may analyze every banknote, it does not disclose identifying every banknote by its denomination as Appellant contends. Accordingly, Appellant has failed to persuade us that one of ordinary skill in the art would understand Curl to teach or suggest denominating a plurality of U.S. denominations, as presently claimed. Finally, while we acknowledge that Curl describes scanning banknotes at a rate of 20-30 notes per second, using optical pattern recognition (FF C1, C2, C5), we cannot agree with Appellant that this disclosure teaches or suggests denominating bills of a plurality of U.S. denominations at speeds in excess of about 800 bills per minute, because as discussed supra, Appellant has failed to demonstrate that Curl denominates Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 24 bills of a plurality of U.S. denominations at all. Specifically, Appellant has failed to persuade us that Curl describes anything more than determining whether a scanned banknote matches (or does not match) a stored banknote for a single denomination. Moreover, even though Curl refers to a scanning rate of 20-30 notes per second (FF C3), there is no evidence elsewhere in the reference that Curl is actually operating at this speed, but instead it is simply describing this speed as a common speed for banknote transport systems. (See FF C3.) Furthermore, as discussed supra, we do not find Curl to be specifically related to denominating or transporting bills of a plurality of U.S. denominations, and as such, cannot find this “common speed for banknote transport systems” to be necessarily applicable to a transport system designed for transporting U.S. currency. As such, we find that one of ordinary skill in the art at the time of the invention would appreciate Curl as disclosing a commonly known transport speed for transporting banknotes at a rate of 1200-1800 bills per minute, and at best, supports an inference that Curl denominates a single denomination, using two waveforms from a single denomination at these speeds. (FF C5.) Accordingly, we find that Appellant has failed to persuasively demonstrate that Curl, individually or when combined, discloses, teaches, or suggests “denominating mixed U.S. currency at speeds in excess of 800 bills per minute as required by claims” 10, 17, 24, 25, 31, 41, 49, 50, 66, 72-87, 91, and 97-110. (See App. Br. 21.) Additionally, Appellant alleges that denominating bills of a plurality of U.S. denominations at speeds in excess of about 800 bills per minute would have been “obvious to try” based on “updated technology in the form Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 25 of newer and faster microprocessors, newer and more sensitive scan heads, and new and more efficient light detectors to increase processing and denomination speed.” (App. Br. 15-16.) Specifically, Appellant contends that “[t]o the extent that there is any question whether the speeds recited in the Curl patent correspond to mixed denomination embodiments, faster processors and motors would be expected to address any such shortcomings.” (App. Br. 15.) We are not persuaded by Appellant‟s arguments as they are incorrectly premised on Curl‟s ability to denominate mixed U.S. currency. As discussed supra, we do not find the apparatus disclosed in Curl to be capable of denominating a plurality of U.S. denominations at all. Accordingly, the addition of updated technology alone would fail to cure this deficiency, and as such, we find Appellant‟s argument to be unpersuasive. Notwithstanding the above, to support a conclusion of obviousness based on an “obvious to try” rationale, Appellant must show that there was a “design need” or “market pressure to solve a problem.” 11 On this record, however, Appellant has failed to persuade us that a person of ordinary skill would have been motivated to modify the combination of prior art references to arrive at a currency processing device that denominates bills of a plurality of U.S. denominations at speeds in excess of about 800 bills per minute in light of Curl‟s disclosure, based on a “design need” or “market pressure to 11 A claim may be obvious “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 402-03. Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 26 solve a problem.” In fact, Appellant provides evidence which supports a lack of need, and an absence of market pressure for a device capable of denominating mixed U.S. currency at a rate in excess of about 800 bills per minute in May of 1992, the time of the invention. 12 Specifically, Appellant‟s Emery Declaration states that while “bills could be denominated at 1200 bpm using at least a cross correlation of 800 samples per bill,” De La Rue, the assignee of the Curl reference, chose to build its 3100 series banknote sorting machines to denominate at a speed of 420 bills per minute “based on the requirements of the target market at that time.” 13 (FF E3, E4) Based upon this evidence, Appellant has failed to persuade us of the presence of “design need” or “market pressure to solve a problem,” which would motivate a person of ordinary skill in the art to pursue the known options within his or her technical grasp. Accordingly, Appellant‟s argument is unpersuasive. In conclusion, the fact remains that the combination of Hatanaka, Nishito, Curl, and Jones fails to teach or suggest denominating bills of a plurality of U.S. denominations at speeds in excess of about 800 bills per minute, as presently claimed. For these reasons, and the reasons discussed supra, we are not persuaded that the Examiner erred in the nonadoption of proposed rejection 1 with respect to claims 10, 17, 24, 25, 31, 41, 49, 50, 66, 72-87, 91, and 97-110. 12 The earliest possible priority date for all claims of the '499 patent that recite limitations regarding denominating bills at a rate in excess of 800 bills per minute is May 19, 1992. (See Request 26-27.) 13 The Emery Declaration makes reference to the De La Rue 3110 Mkll Brochure from 1987. (Emery Dec. FN 9.) Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 27 Accordingly, we sustain the Examiner decision to not adopt the proposed rejection of claims 10, 17, 24, 25, 31, 41, 49, 50, 66, 72-87, 91, and 97-110 under 35 U.S.C. § 103(a) as unpatentable over Hatanaka, Nishito, Curl, and Jones. ISSUE 2 Proposed Rejection 3 Claims 3-6, 10, 12, 17, 22, 24, 25, 27, 31, 38, 41, 49, 50, 61, 66, 72-87, 89, 91, and 97-110 under 35 U.S.C. § 103(a) as unpatentable over Takesako, Hatanaka, Jones, and Nishito. Claims 3-6, 12, 22, 27, 38, 61 and 89 The Examiner refuses to adopt the proposed rejection of claims 3-6, 12, 22, 27, 38, 61 and 89 under 35 U.S.C. § 103(a) as unpatentable over Takesako, Hatanaka, Jones, and Nishito for the same reasons as the Examiner‟s nonadoption of claims 3-6, 12, 22, 27, 38, 61 and 89, supra with respect to proposed rejection 1 under 35 U.S.C. § 103(a) as unpatentable over Hatanaka, Nishito, Curl, and Jones. (RAN 5-6.) As discussed supra, we are unpersuaded of deficiencies in Hatanaka and Jones which formed the basis for the Examiner‟s refusal to adopt the claims rejections based on Takesako, Hatanaka, Jones, and Nishito. In light of Appellant‟s arguments, and taken with the Petition as a whole, we are persuaded that the Examiner erred in not adopting the proposed rejection of claims 3-6, 12, 22, 27, 38, 61, and 89 under 35 U.S.C. § 103(a) as unpatentable over Takesako, Hatanaka, Jones, and Nishito under 35 U.S.C. § 103(a). Our decision in that regard, and our entry of the rejections herein as Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 28 proposed by Appellant, constitutes a new ground of rejection pursuant to 37 C.F.R. § 41.77(a) and (b). Claims 10, 17, 24, 25, 31, 41, 49, 50, 66, 72-87, 91, and 97-110 Appellant argues that that Takesako teaches a currency device that counts and denominates bills at a rate of 600 bills per minute, and based upon this teaching, Appellant asserts that it would be “nothing more than a „design choice,‟” to denominate mixed U.S. currency at a rate in excess of 800 bills per minute, as required by each of the above-noted claims. (emphasis omitted) (App. Br. 26-27; Rebut. Br. 10-11.) Specifically, Appellant contends that Takesako‟s denominating rate is “indicative, not definitive,” and there is no reason that the device could not operate at speeds over 800 bills per minute. (App. Br. 26; Rebut. Br. 11.) Additionally, Appellant alleges that increasing the denominating speed of the Takesako device to over 800 bills per minute would be “obvious to try” based on trying a finite number of solutions using updated computer technology. (App. Br. 28; see also Rebut. Br. 13.) In response, the Examiner acknowledges that Jones demonstrates that it was known to transport bills at speeds in excess 800 bills per minute, but maintains that Takesako‟s teaching of 600 bills per minute fails to render the invention obvious because denominating speeds of 600 bills per minute is a substantial difference from the claimed 800 bills per minute. (RAN 7.) Respondent agrees with the Examiner and asserts that Appellant fails to offer any evidence which supports their conclusory argument that increasing Takesako‟s denominating speed from 600 bills per minute to 800 bills per Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 29 minute would be obvious based simply on the addition of updated electronics. (Resp. Br. 10-13.) Additionally, Respondent points out that Jones discloses a high-speed transport system for counting bills, which is not the same as denominating bills of mixed U.S. currency. (Resp. Br. 15.) We are not persuaded by Appellant‟s arguments. Appellant provides no meaningful explanation as to why, based simply on the teachings of Takesako, it would have been a “matter of design choice” for a person of ordinary skill in the art to increase Takesako‟s denominating speed from 600 bills per minute to 800 bills per minute. Nor has Appellant sufficiently established why increasing Takesako‟s denominating speed would be an arbitrary or routine design choice. Instead, Appellant merely asserts that employing faster processors and other components disclosed by the combination would succeed in increasing Takesako‟s denominating speed. (App. Br. 27-28; See also Rebut. Br. 13.) As such, we agree with the Examiner that Appellant‟s assertions are conclusory and fail to provide an articulated reasoning with rational underpinnings necessary to support a conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Moreover, Appellant has failed to persuade us that it would have been “obvious to try,” with a reasonable expectation of success, to “increase[e] the denominating speed of the Takesako device to over 800 bills per second [sic],” based upon Takesako‟s ability to denominate bills at 600 bills per minute. In fact, Appellant has failed to persuade us that Takesako is even capable of denominating a plurality of U.S. denomination at a speed of 600 bills per minute. Contrary to Appellant‟s position, we find that Takesako Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 30 only describes sorting bills at a speed of about 600 bills per minute. (FF T3.) Specifically, we find that in Takesako‟s bill sorting embodiment, judging circuit 32 determines whether a judged bill is a reject bill or not a reject bill and sorts these bills into a corresponding reject stacker 22 or non- reject upper stacker 18. (FF T3.) Thus, one of ordinary skill in the art at the time of the invention would have appreciated that Takesako discloses sorting one denomination from a plurality of bills at a speed of 600 bills per minute, which is not the same as denominating a plurality of bills at this speed. However, assuming arguendo that Curl is capable, as Appellant‟s allege, of denominating a plurality of bills at a speed of 600 bills per minute, Appellant has failed to demonstrate, as discussed supra, that there was a “design need” or “market pressure to solve a problem” such that a person of ordinary skill in art at the time of the invention would have had adequate reason to pursue the known options in order to increase Takesako‟s alleged denominating speed from 600 bills per minute to 800 bills per minute, as the claims require. In addition, Respondent has persuaded us that this increase is speed is not just “a putative incremental increase in the denominating speed from 600 to 800 bills per minute,” as Appellant asserts (App. Br. 25), but is instead the result of a multiple factors working in concert. (See Resp. Br. 14-16.) In particular, Respondent has persuaded us that the claimed invention‟s ability to denominate bills of a plurality of U.S. denominations at a rate in excess of 800 bills per minute is not solely based on microprocessor speed or transport speed, such that a simple substitution of the microprocessor in Takesako with a faster microprocessor or the addition of a faster transport system Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 31 would result in the claimed denominating speed, but rather a combination of electrical, mechanical, and software components working in conjunction. (See Resp. Br. 14-16.) While Appellant contends that it has provided four experts‟ declarations to support their contention that increasing the denominating speed of Takesako was not the result of any inventive part, “but rather the application of faster microprocessors and the like to known and previously existing currency denominating apparatus” (App. Br. 26), Appellant‟s Briefs fail to specifically point out where this support lies, and as such, Appellant‟s contention is not persuasive. Accordingly, we do not find Appellant‟s arguments to constitute the required articulated reasoning with rational underpinnings necessary to support a conclusion of obviousness, and as such, fail to persuade us that increasing the denominating speed of Takesako from 600 to 800 bills per minute would be obvious because doing so would be “obvious to try” based on a finite number of solutions employing updated computer technology. To the extent Appellant asserts that a speed limitation should not be permitted to support a conclusion of nonobviousness (App. Br. 24-25), we do not find such an argument to be persuasive. While we acknowledge that claims 10, 17, 24, 25, 31, 41, 49, 50, 66, 72-87, 91, and 97-110 are directed to apparatus claims, we find that their functional language must be considered for what it conveys to one of ordinary skill in the art. In order to satisfy the functional limitations in an apparatus claim, the prior art apparatus must be capable of performing the claimed function. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Thus, functional and Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 32 intended use language must be evaluated to the extent it conveys structural requirements. See, e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (“The functional language is, of course, an additional limitation in the claim”). In conclusion, the fact remains that the combination of Takesako, Hatanaka, Jones, and Nishito fails to teach or suggest denominating “bills of a plurality of U.S. denominations at a rate in excess of about 800 bills per minute,” as required by claims 10, 17, 24, 25, 31, 41, 49, 50, 66, 72-87, 91, and 97-110. Accordingly, for these reasons, and the reasons discussed supra, we are not persuaded that the Examiner erred in the nonadoption of proposed rejection 3 with respect to claims 10, 17, 24, 25, 31, 41, 49, 50, 66, 72-87, 91, and 97-110. CONCLUSIONS We conclude that the Examiner erred in not adopting the proposed rejection of claims 3-6, 12, 22, 27, 38, 61, and 89 rejected under 35 U.S.C. § 103(a) as unpatentable over Hatanaka, Nishito, Curl, and Jones. However, we conclude that the Examiner did not err in not adopting the proposed rejection of claims 10, 17, 24, 25, 31, 41, 49, 50, 66, 72-87, 91, and 97-110 rejected under 35 U.S.C. § 103(a) as unpatentable over Hatanaka, Nishito, Curl, and Jones. We conclude that the Examiner erred in not adopting the proposed rejection of claims 3-6, 12, 22, 27, 38, 61, and 89 rejected under 35 U.S.C. § 103(a) as unpatentable over Takesako, Hatanaka, Jones, and Nishito. Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 33 However, we conclude that the Examiner did not err in not adopting the proposed rejection of claims 10, 17, 24, 25, 31, 41, 49, 50, 66, 72-87, 91, and 97-110 rejected under 35 U.S.C. § 103(a) as unpatentable over Takesako, Hatanaka, Jones, and Nishito. DECISION The Examiner‟s refusal to adopt the rejections of claims 3-6, 12, 22, 27, 38, 61, and 89 is reversed. The Examiner refusal to adopt the rejections of claims 10, 17, 24, 25, 31, 41, 49, 50, 66, 72-87, 91, and 97-110 is affirmed. AFFIRMED-IN-PART; 37 C.F.R. § 41.77(b) This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.77(b) which provides that “[a]ny decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Correspondingly, no portion of the decision is final for purposes of judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer issuing any decision on such request for rehearing until such time that a final decision on appeal has been issued by the Board. For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)-(g). The decision may become final after it has returned to the Board. 37 C.F.R. § 41.77(f). Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 34 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record . . . . Any request to reopen prosecution before the examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.” Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) is unlikely to be granted. Furthermore, should the patent owner seek to substitute claims, there is a presumption that only one substitute claim would be needed to replace a cancelled claim. A requester may file comments in reply to a patent owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in scope to the issues raised by the Board‟s opinion reflecting its decision to reject the claims and the patent owner's response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 35 appropriate if it is presented to address an amendment and/or new evidence properly submitted by the patent owner, and is presented with a brief explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier. Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all patent owner responses and requester comments, is required. The examiner, after the Board‟s entry of a patent owner response and requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the Board‟s rejection is maintained or has been overcome. The proceeding will then be returned to the Board together with any comments and reply submitted by the owner and/or requester under 37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f). Appeal 2012-008615 Reexamination Control No. 95/001,419 Patent 7,672,499 B2 36 cc: PATENT OWNER: CUMMINS-ALLISON CORP. C/O NIXON PEABODY LLP 300 S. RIVERSIDE PLAZA 16TH FLOOR CHICAGO, IL 60606 THIRD PARTY REQUESTER SETH M. REISS 3770 LURLINE DRIVE HONOLULU, HI 96816 alw Copy with citationCopy as parenthetical citation