Ex Parte Blake et al

Patent Trial and Appeal BoardSep 17, 2012

10797839 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/797,839 03/10/2004 John R. Blake 247171-000390USPT 5664 41230 7590 09/17/2012 CUMMINS-ALLISON CORP. C/O NIXON PEABODY LLP 300 S. Riverside Plaza 16th Floor CHICAGO, IL 60606 EXAMINER MCCLAIN, GERALD ART UNIT PAPER NUMBER 3653 MAIL DATE DELIVERY MODE 09/17/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN R. BLAKE, GARY W. COOPER, PATRICK J. FINN, MARK C. MUNRO, and MARK A. FLADELAND ____________ Appeal 2010-006869 Application 10/797,839 Technology Center 3600 ____________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and JAMES P. CALVE, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the rejection of claims 1-5, 7-16, 25-27, 30, 31, 33, and 34. App. Br. 2. Claims 6, 17-24, 28, 29, and 32 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-006869 Application 10/797,839 2 CLAIMED SUBJECT MATTER Claim 1 is representative of the claimed subject matter on appeal: 1. A coin processing device, comprising: a housing; a coin sorter disposed within the housing, the coin sorter comprising: an input hopper for receiving coins of a plurality of denominations to be sorted, a rotatable disk for imparting motion to the plurality of coins, and a stationary head having a lower surface generally parallel to and spaced slightly away from the rotatable disk, the lower surface having a plurality of shaped regions for controlling movement of the coins and guiding coins to a plurality of exit channels for discharging coins, the plurality of coin exit channels corresponding to a plurality of coin denominations to be processed, a coin receptacle station disposed within the housing for holding a plurality of coin receptacles, each of the plurality of receptacles for holding coins of a single denomination, the coin receptacle station being moveable between a first position and a second position, the coin receptacle station being disposed entirely within the housing for receiving coins when in the first position, the coin receptacle station having a manifold including a plurality of coin paths for guiding coins from the exit channels to the coin receptacles when the coin receptacle station is in the first position, the coin receptacle station extending out of the housing when in the second position; and a dampening mechanism configured to exert a damping force on the coin receptacle station during movement of the coin receptacle from the first position to the second position and from the second position to the first position. REJECTIONS Claims 26 and 27 are rejected under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. Appeal 2010-006869 Application 10/797,839 3 Claims 26 and 27 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1, 2, and 4 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hino (US 2002/0162724 A1; pub. Nov. 7, 2002) and Brustle (US 2001/0008358 A1; pub. Jul. 19, 2001). Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hino, Brustle, and Jones (US 6,318,537 B1; iss. Nov. 20, 2001). Claims 5, 7-9, 27, 33, and 34 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hino and Lense (US 4,387,942; iss. Jun. 14, 1983). Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hino and Lense. Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hino and Muellner (US 4,450,968; iss. May 29, 1984). Claims 27 and 33 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hino and Muellner. Claims 14-16 and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hino, Lense, and Siemens (US 2002/0011393 A1; pub. Jan. 31, 2002). Claims 14-16 and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hino, Muellner, and Siemens. Claims 10, 12, 13, and 30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hino, Lense, and Jones. Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hino, Muellner, and Jones. Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hino, Lense, and Jones, and Hino, Muellner, and Jones. Appeal 2010-006869 Application 10/797,839 4 ANALYSIS Claims 26 and 27 for lack of written description The Examiner found that the Specification does not provide a written description of the limitation “moving, only subsequent to the opening of the door of the housing, a coin receptacle platform from the first position” in claim 26 because the claims and Specification do not specify that the coin receptacle platform is only moved subsequent to opening of the door of the housing (Ans. 3) and the disclosure does not indicate that every other movement is excluded from all possible movements (Ans. 19-20). The Specification discloses that to access a coin receptacle station 304 within the housing 302 (i.e., in the first position) “the operator opens the door 321 and moves the coin receptacle station 304 from an operating position, wherein the coin receptacle station 304 is entirely contained within the housing 302, to an accessible position extending out of the housing 302 as shown in FIGS. 4a-c.” Spec. para. [0038]. The Examiner has not adequately explained why this disclosure does not describe the limitation at issue in claim 26. See App. Br. 19-20. The rejection of claim 27 because “it was not specified that the door was ‘only’ moved ‘from the first operable position to said second inoperable position [and back]’” (Ans. 3-4) is not sustained because claim 27 does not recite a door movable between first and second positions. To the extent that the Examiner mistakenly referred to door instead of platforms that are “moveable between a first operable position and a second inoperable position,” the Specification discloses that individually moveable platforms 504 are connected to tracks 506 and physically constrained to slide from a first operable position to a second inoperable position along a corresponding track. Spec., para. [0048-0049]; figs. 6-8; see App. Br. 21-22. Appeal 2010-006869 Application 10/797,839 5 Claims 26 and 27 as being indefinite The Examiner rejected claim 26 as indefinite because “it is unclear if there are or not [sic] other mechanisms for opening the door” and claim 27 because “it is unclear if there are other movements of the platforms along the tracks.” Ans. 4. We agree with Appellants that claims 26 and 27 are not indefinite for the reasons set forth in the Appeal Brief. App. Br. 23-25. Claims 1, 2, and 4 as unpatentable over Hino and Brustle The Examiner found that Hino discloses a coin processing device but lacks a damping mechanism. Ans. 4-5. The Examiner found that Brustle shows a similar device with a damping mechanism and determined that it would have been obvious to modify Hino to “include Brustle’s similar device having a dampening mechanism” “for the purpose of disposing the dampening mechanism and coin receptacle station into the housing.” Ans. 5-6. In addressing whether Brustle is analogous art the Examiner stated: Secondary references that are used in the 103(a) art rejections are analogous if they (a) point to a similar field of Appellants' endeavor or, if not then (b) be reasonably pertinent to the particular problem with which the Appellants were concerned. All the rejections argued below use secondary (etc) references that either meet requirements (a) or (b) above. Ans. 22-23. The Examiner reasoned that Brustle does not have to disclose a coin structure if it is being used for a movement structure of the claimed combination of coin sorter, receptacle, and movement structures since “the (b) particular problem is in the, say, drawer art.” Ans. 23. The Examiner has not established that Brustle is analogous art that can be relied on as a reference for an obviousness determination. App. Br. 26-27. The Examiner’s statement that references are analogous art if they Appeal 2010-006869 Application 10/797,839 6 are from the same field of endeavor or reasonably pertinent to the problem solved by Appellants does not establish that Brustle is analogous art under either basis. The statement that Brustle discloses movement structure that relates to a particular problem in the drawer art does not establish that Brustle is from the same field of endeavor or is reasonably pertinent to any problem solved by Appellants. Nor has the Examiner addressed Appellants’ arguments that Brustle is from a different field of endeavor (furniture and drawers) than the claimed coin receptacle station and does not relate to the problem of designing a platform and damper assembly that simplify and alleviate the burden of supporting and moving voluminous coins of unwieldy bulk and weight (e.g., hundreds of pounds of coins).1 App. Br. 27- 29. As such, we cannot sustain the rejection of claims 1 and 2. Claim 3 as unpatentable over Hino, Brustle, and Jones The Examiner found that Hino and Brustle disclose a coin processing device and damping mechanism as set forth in the rejection of claim 1. Ans. 6. The Examiner found that Jones discloses a similar device as Hino with coin bags 52 and coin bag holders 58. Ans. 7. Jones does not cure the deficiencies of Hino and Brustle as to claim 1, from which claim 3 depends. App. Br. 32. As such, we cannot sustain the rejection of claim 3. 1 The PTO determines the field of endeavor by reference to explanations of the invention’s subject matter in the application including the embodiments, function, and structure of the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The Examiner must have a basis in the application and claimed invention to limit or expand the scope of the field of endeavor. Id. at 1326. A reference is reasonably pertinent to a claimed invention if it has the same purpose as the claimed invention, relates to the same problem the invention attempts to solve, and the facts support use of that reference in an obviousness rejection. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Appeal 2010-006869 Application 10/797,839 7 Claims 5, 7-9, 27, 33, and 34 as unpatentable over Hino and Lense Independent claims 5 and 27 recite a coin processing machine with similar features as claim 1 further including a coin reception station with a plurality of individually moveable platforms that move along a track. The Examiner found that Hino discloses such a coin processing machine except for individually moveable platforms moving on a track. Ans. 7-8. The Examiner relied on Lense to disclose a track 26. Ans. 8. The Examiner found that Lense, which discloses a cabinet drawer assembly, is analogous art for the reasons set forth for Brustle. Ans. 24. The Examiner’s statement of the two bases of analogous art does not establish that Lense is analogous art under either basis or address Appellants’ arguments that Lense is not from the same field of endeavor and is not reasonably pertinent to the problem that was solved. App. Br. 32-35. As such, we cannot sustain the rejection of claims 5 and 27 or their dependent claims 7-9, 33, and 34. Claim 25 as unpatentable over Hino and Lense/Muellner Independent claim 25 recites a method of processing coins with a coin processing machine. The Examiner found that Hino discloses such a method except for sliding the moveable coin receptacle along a track from a first to a second position, and that Lense discloses a similar device with a track. Ans. 9. The Examiner found that Lense is analogous art for the reasons set forth for Brustle. Ans. 24. The Examiner also found that Muellner discloses a nestable shopping cart anti-reversing apparatus that is a similar device and analogous art for the same reasons as Brustle. Ans. 24. The Examiner has not provided an adequate basis for finding that either Lense or Muellner is analogous art, nor has the Examiner addressed Appellants’ arguments that Appeal 2010-006869 Application 10/797,839 8 Lense and Muellner are not analogous art. See App. Br. 38. As such, we cannot sustain the rejection of claim 25. Claims 27 and 33 as unpatentable over Hino and Muellner The Examiner relied on Muellner to disclose a plurality of individual moveable platforms and a track. Ans. 11-12. We agree that the Examiner has not established that Muellner is analogous art. App. Br. 44. As such, we cannot sustain the rejection of claim 27 or its dependent claim 33. Claims 14-16 and 26 as unpatentable over Hino, Lense/Muellner & Siemens Claims 14-16 and 26 depend respectively from independent claims 5 and 25 and recite a movable coin receptacle platform. The Examiner relied on Siemens to disclose a platform that moves relative to a door. Ans. 12-13. We agree that Siemens does not cure the deficiencies of Hino, Lense, or Muellner as to claims 5 and 25. App. Br. 45. As such, we cannot sustain the rejection of claims 14-16 and 26. Claims 10, 12, 13, and 30 as unpatentable over Hino, Lense, and Jones The Examiner relied on Jones to disclose the coin receptacles and coin bags of claims 10, 12, 13, and 30. Ans. 15. We agree that Jones does not cure the deficiencies of Hino and Lense as to claims 5 and 27 from which claims 10, 12, 13, and 30 depend. App. Br. 45. As such, we cannot sustain the rejection of claims 10, 12, 13, and 30. Claim 30 as unpatentable over Hino, Muellner, and Jones The Examiner relied on Jones to disclose the coin bags of claim 30. Ans. 16. We agree with Appellants that Jones does not cure the deficiencies of Hino and Muellner as to claim 27 from which claim 30 depends. App. Br. 45. As such, we cannot sustain the rejection of claim 30. Appeal 2010-006869 Application 10/797,839 9 Claim 31 as being unpatentable over Hino, Lense/Muellner, and Jones The Examiner relied on Jones to disclose at least one coin bag disposed on each moveable platform as called for in claim 31. Ans. 17, 18. We agree with Appellants that Jones does not cure the deficiencies of Hino and Lense or Muellner as to claim 27 from which claim 31 depends.2 App. Br. 45. As such, we cannot sustain the rejection of claim 31 as unpatentable over Hine, Lense/Muellner, and Jones. DECISION We REVERSE the rejections of claims 1-5, 7-16, 25-27, 30, 31, 33, and 34. REVERSED mls 2 Claim 31 depends from claim 28, which was cancelled. For purposes of this appeal, however, we will treat claim 31 as depending from claim 27 because claim 28 depended from claim 27 before it was cancelled.