Ex Parte Bochonok et al

Patent Trial and Appeal BoardJul 31, 2013

11267609 (P.T.A.B. Jul. 31, 2013)

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. 11/267,609 11/04/2005 Steve Bochonok 47171-00420USD1 1011 41230 7590 08/01/2013 CUMMINS-ALLISON CORP. C/O NIXON PEABODY LLP 300 S. Riverside Plaza 16th Floor CHICAGO, IL 60606 EXAMINER SHAPIRO, JEFFREY ALAN ART UNIT PAPER NUMBER 3653 MAIL DATE DELIVERY MODE 08/01/2013 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 ____________ Ex parte STEVE BOCHONOK, MARK C. MUNRO and JOHN R. BLAKE ____________ Appeal 2011-008565 Application 11/267,609 Technology Center 3600 ____________ Before EDWARD A. BROWN, MICHAEL L. HOELTER and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008565 Application 11/267,609 2 STATEMENT OF THE CASE Steve Bochonok et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 47-64.1 Claims 1-46 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ invention relates to “a coin bin having a security feature for use in a coin processing device.” Spec. 2, ll. 5-7; figs. 11 and 17. Claims 47 and 59-63 are independent. Claims 47 and 59 are illustrative of the subject matter on appeal and are reproduced below: 47. A security feature for a coin bin comprising: a plurality of slats extending downwardly from a coin input area of the coin bin and toward an interior volume of an associated coin bin; at least one of the plurality of slats having a base portion extending downwardly from the coin input area in a first direction and an elongated portion extending downwardly from the base portion in a second direction different than the first direction, wherein a length of the elongated portion is greater than a length of the base portion. 59. A coin bin for holding coins from a coin processing device, comprising: a bottom member, a top member, and a plurality of side walls collectively defining an interior volume adapted to hold a plurality of coins; a coin input area disposed in the top member for receiving coins from the coin processing device; 1 We note that both the Examiner and Appellants agree that dependent claim 64 is subject to this appeal. Ans. 2, 19; App. Br. 2; Reply Br. 13-14. Appeal 2011-008565 Application 11/267,609 3 a security grate mounted on the top member, the security grate comprising at least one slat having a base portion extending downwardly from the coin input area in a first direction and an elongated portion extending downwardly from the base portion in a second direction different than the first direction and a bracket configured to hold the base portion and the elongated portion of the slat in fixed positions; and wherein a length of the elongated portion is greater than a length of the base portion. THE EVIDENCE The Examiner relies on the following references in rejecting the appealed claims: Frey US 1,946,736 Feb. 13. 1934 Noack US 5,080,251 Jan. 14, 1992 THE REJECTIONS The following rejections are before us for review: 1. Claims 47, 59 and 61-63 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Noack. 2 2. Claims 48-58, 62 and 64 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Noack. 3. Claim 60 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Noack and Frey. 2 Although the heading of this rejection does not include claim 61, the body of the rejection does discuss this claim. Ans. 3-4. Accordingly, for the purpose of this appeal, we have considered this omission a typographical error on the part of the Examiner. Appeal 2011-008565 Application 11/267,609 4 ANALYSIS Rejection 1 - Anticipation by Noack - Claims 47 and 63 Independent claim 47 recites “a plurality of slats extending downwardly from a coin input area of the coin bin” (emphasis added). App. Br., Clms. App’x. Independent claim 63 recites the same language. The Examiner finds that Noack teaches “a first slat (40) and a second slat (51), which are both downwardly extending away from the input area (25). Thus, a first and second slat is construed as plural slats.” Ans. 20. Appellants argue that Noack fails to teach or suggest “a plurality of slats extending downwardly from a coin input area of the coin bin,” as required by the claims. Reply Br. 14. Noack teaches that (1) “[a] plurality of webs, as web 42 as seen in FIG. 3, are provided integrally of wall 40 to give the wall support in its position below entry port 25” (Noack, col. 6, ll. 17-20); (2) “[a]s best seen in FIG. 3, the forward direction of extent of the downwardly, [but] forwardly inclined wall 40 is such that [it] spans approximately one-half of the extent of said housing which directly underlies the inlet port, indicated generally at 25” (Noack, col. 6, ll. 22-27); (3) “[t]he second barrier wall 50 is also disposed within housing 20k [sic] but in a lower portion 20a thereof below [the] first barrier wall 40 as seen in FIGS. 1 through 3” (Noack, col. 6, ll. 37- 39); and (4) “[s]uitable mounting apertures, as aperture 56 as seen in FIGS. 1 and 4, may be provided at opposite ends of the lower portion 20a of the housing 20 in order to pivotally mount the second barrier wall 50” (Noack, col. 7, ll. 17-21; see also fig. 3). Based on both Noack’s written and illustrated disclosure, only wall or slat 40 extends downwardly from the input area 25 of the bin 10. Hence, Noack fails to teach or suggest “a Appeal 2011-008565 Application 11/267,609 5 plurality of slats extending downwardly from a coin input area of the coin bin,” as required by claims 47 and 63. Accordingly, the rejection of independent claims 47 and 63 as anticipated by Noack cannot be sustained. Claim 59 Independent claim 59 recites a coin bin including a security grate having at least one slat. App. Br., Clms. App’x. Appellants argue that Noack fails to teach or suggest a coin bin including a security grate having at least one slat. See App. Br. 13 and 24. Appellants’ Specification states, “a security grate for limiting access to a coin bin is disclosed. The security grate comprises a plurality of generally parallel upper slats and a plurality of generally parallel slats disposed below the upper slats.” Spec. 2, ll. 18-20. Appellants’ Specification further discloses that the security grate 410 provides a physical deterrent, as well as a visual deterrent, which discourages and prevents unauthorized entry into or tampering with the contents of the coin bin 400. Due to the aforementioned slats 411-416, and any variants thereof, providing multi-directional coin paths wherein coins are caused to move along a convoluted pathway, a person cannot view or access the coins contained within the coin bin 400 through the security grate 410. Thus, the security grates 410 provide a real barrier, as well as a psychological barrier, to prevent [] unauthorized persons from accessing coins contained within the coin bin 400. Spec. 19, l. 31 - 20, l. 6; fig. 17. In other words, consistent with Appellants’ Specification, the security grate is a distinct structural feature from the slats. Although we agree with the Examiner that Noack teaches a bin having slats Appeal 2011-008565 Application 11/267,609 6 40, 51 (see Ans. 3-4), we could not find any portion of Noack, and the Examiner has not pointed to any portion of Noack, that teaches that Noack’s bin includes a security grate having at least one slat. As such, Noack fails to teach or suggest all the limitations of independent claim 59. Accordingly, the rejection of independent claim 59 as anticipated by Noack cannot be sustained. Claim 61 Independent claim 61 requires a slat having a lower portion extending laterally beyond the coin input area. App. Br., Clms. App’x. The Examiner takes the position that Noack’s slats (40 and 51) extend laterally beyond the coin input area in a cantilevered fashion, as illustrated in Noack’s figure 3. The input area is (25). Slats (40, 51) are illustrated as being directed downwards in a cantilevered fashion, that is with one end fixed and the other end farthest away from the input area (25). Ans. 16-17. The Examiner has not specifically identified which slat 40 or 51 purportedly extends laterally beyond the entry port (coin input area) 25. Assuming arguendo in a first scenario that the Examiner considers slat 40 to extend laterally beyond the entry port (coin input area) 25, we note that Noack does not indicate that Figure 3 is drawn to scale, and, as such, Figure 3 of Noack cannot be relied upon to establish that slat 40 extends laterally beyond the entry port (coin input area) 25. See Hockerson-Halbertstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). Further, while Noack teaches that slat 40 extends below the entry port (coin input area) 25 (see Noack, col. 6, ll. 17-20), Noack fails to teach that slat 40 extends laterally beyond the entry port (coin input area) 25. In addition, the Appeal 2011-008565 Application 11/267,609 7 Examiner does not articulate sufficient technical reasoning to establish a reasonable basis for belief that Noack’s slat 40 necessarily extends laterally beyond the entry port (coin input area) 25. See Ans. 16-17. Assuming arguendo in a second scenario that the Examiner considers slat 51 to extend laterally beyond the entry port (coin input area) 25, as discussed supra, slat 51 does not extend downwardly from the entry port (coin input area) 25, as required by claim 61. Hence, the Examiner has failed to establish by a preponderance of the evidence that Noack teaches a slat having a lower portion extending laterally beyond the coin input area. Accordingly, the rejection of independent claim 61 as anticipated by Noack cannot be sustained. Claim 62 Independent claim 62 recites a coin bin including a security grate having a first and a second slat, wherein each slat extends downward from the coin input area. App. Br., Clms. App’x. As discussed supra, the Examiner has failed to point to any portion of Noack that teaches that the bin includes a security grate having at least one slat. In addition, as further discussed supra, although slat 40 (e.g., a first slat) extends downwardly from the input area 25, slat 51 (e.g., a second slat) does not extend downwardly from the coin input area 25. As such, Noack fails to teach or suggest all the limitations of independent claim 62. Accordingly, the rejection of independent claim 62 as anticipated by Noack cannot be sustained. Rejection 2 - Obviousness over Noack - Claims 48-58, 62 and 64 The Examiner’s rejection of claims 48-58, 62 and 64 over Noack (see Ans. 4-6) is based on the same unsupported findings discussed supra with respect to the disclosure of Noack. For the same reasons discussed supra, Appeal 2011-008565 Application 11/267,609 8 we do not sustain the Examiner’s rejection of claims 48-58, 62 and 64 as being unpatentable over Noack. Rejection 3 - Obviousness over Noack and Frey - Claim 60 Independent claim 60 recites a coin processing machine including a pivotal lid “comprising an aperture corresponding to the coin input area.” App. Br., Clms. App’x. The Examiner finds that Noack discloses the limitations of claim 60, including a pivotable cover 26, except that the pivotable cover 26 does not have an aperture. Ans. 5. The Examiner further finds that “Frey discloses a pivotable lid (11) with a coin slot (19) for the purpose of allowing coins to be inserted into the device while keeping the deposited coins secure.” Id. The Examiner concludes that “it would have been obvious to one of ordinary skill in the art to have added a coin slot, as taught by Frey, in Noack’s pivotable cover for the purpose of allowing entry of items such as coins or discs or other items without opening the pivotable cover.” Id. at 6. The Examiner also takes the position that “the claim limitation ‘a pivotable lid . . . comprising an aperture . . .’ is construed to be met by Frey's teaching of a coin slot.” Id. at 18. Appellants contend that “[o]ne of ordinary skill in the art would readily and unquestionably understand that the claimed aperture is not a coin slot of the form shown in Frey.” App. Br. 33. According to Appellants, the coin slot 19 of Frey is “a slot able to only pass a single coin at a time with the coin in a predetermined orientation.” Id. at 32. Appellants further contend that “the coin bin and the associated coin input region or aperture [of the subject invention] are sized to accommodate a flow of bulk coins,” and that “the recited aperture is ‘an aperture corresponding to the coin input area.’” Id. at 33. Appeal 2011-008565 Application 11/267,609 9 Claims are to be given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellants’ Specification does not expressly define the phrase “an aperture corresponding to the coin input area;” however, the Specification does disclose that “[t]he pivotal lid [128] includes two apertures 190 corresponding to the two coin input areas 202, 204 of the coin bin 100.” Spec. 11, ll. 30-31; see also fig. 11. In light of Appellants’ disclosure, we construe the phrase “an aperture corresponding to the coin input area” to mean that the aperture is equivalent in size (corresponds) to the coin input area. Frey discloses that coin slot 19 “communicate[s] . . . with the interior of the coin compartment 17.” Frey, p. 1, col. 2, ll. 96-98; figs. 1-2. Frey fails to disclose that the coin slot (aperture) 19 is equivalent in size (corresponds) to the coin compartment (coin input area) 17. Moreover, the Examiner does not articulate sufficient technical reasoning to establish a reasonable basis for belief that Frey’s coin slot (aperture) 19 is equivalent in size (corresponds) to the coin compartment (coin input area) 17. See Ans. 5- 6, 18. As such, since the Examiner’s finding that Frey discloses the claimed aperture is not supported by a preponderance of the evidence, the combination of Noack and Frey does not support the rejection. The Examiner appears to present an alternate rationale for the rejection in the Examiner’s Answer. See Ans. 19. In this case, the Examiner takes the position that “[i]t can also be argued that Frey is only need[ed] to teach a pivotable cover with an aperture in it, and that Noack and Frey both Appeal 2011-008565 Application 11/267,609 10 teach the range of single or bulk input volume allowed by the slot.” Id. According to the Examiner, [e]ven if it is construed that Appellant[s’] definition from the specification can be wholly imported as a limitation from the specification or disclosure, it is considered obvious to one of ordinary skill to have made the aperture large enough to allow entry of as many or as few items as required by the amount of volume desired to be allowed into the bin at anyone time. Note also Noack’s teaching and disclosure of a bulk input aperture. Id. We are not persuaded by the Examiner’s alternative position. Noack discloses that (1) “[a] closure lid [26] is provided adjacent the entry port [25] for closing the port prior to disposal in a substantially permanent manner to facilitate the entrapment of disposed materials within the container during the disposal process” (Noack, col. 2, ll. 47-51); and (2) “the closure lid 26 is provided for closing the entry port, indicated generally 25, to facilitate disposal of the container with the contents securely sealed therein” (Noack, col. 5, ll. 37-40; figs. 3, 5). Based on Noack’s disclosure, we find that modifying Noack’s pivotable lid 26 to include an aperture corresponding to the coin input area 25, as suggested by the Examiner, would prevent the disposed materials from being securely sealed/entrapped within the container during the disposal process. “A reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Consequently, the modification proposed by the Examiner would not have been obvious to Appeal 2011-008565 Application 11/267,609 11 the person of ordinary skill in the art. Accordingly, for the foregoing reasons, we do not sustain the Examiner’s rejection of independent claim 60 as being unpatentable over Noack and Frey. DECISION We REVERSE the decision of the Examiner as to claims 47-64. REVERSED mls