Ex Parte 7672499 et al

Patent Trial and Appeal Board

May 3, 2013

95001419 (P.T.A.B. May. 3, 2013)

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93-96 are withdrawn from consideration for failure to file a timely response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

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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.
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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.
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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
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Patent 7,672,499 B2

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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).
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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.)
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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.
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(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.)
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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.)
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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.)
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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.
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(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
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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
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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
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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.
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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
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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
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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.)
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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
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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.
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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
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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
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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
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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.
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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.)
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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
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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
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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
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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
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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
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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.
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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).
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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
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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