Ex Parte Frontino et alDownload PDFPatent Trial and Appeal BoardOct 12, 201613105951 (P.T.A.B. Oct. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/105,951 05/12/2011 Louis J. Frontino 27997 7590 10/14/2016 Hultquist IP P.O. Box 14329 Research Triangle Park, NC 27709 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 801.0014 4291 EXAMINER ALAM, MIRZA F ART UNIT PAPER NUMBER 2689 NOTIFICATION DATE DELIVERY MODE 10/14/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): hip@hultquistip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LOUIS J. FRONTING and BOB M. DOBBINS 1 Appeal2015-006761 Application 13/105,951 Technology Center 2600 Before DEBRA K. STEPHENS, DANIEL N. FISHMAN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Decision rejecting claims 1-20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM.2 1 According to Appellants, the real party in interest is Ellenby Technologies, Inc. See Appeal Br. 1. 2 Throughout this Opinion, we refer to: (1) Appellants' Specification filed May 12, 2011 ("Spec."); (2) the Non-Final Office Action ("Non-Final Act.") mailed Sept. 24, 2014; (3) the Appeal Brief ("Appeal Br.") filed Feb. 23, 2015; (4) the Examiner's Answer ("Ans.") mailed May 14, 2015; and (5) the Reply Brief ("Reply Br.") filed July 9, 2015. Appeal2015-006761 Application 13/105,951 BACKGROUND Appellants' application relates to an electronic safe for receiving and securing cash with enhanced security. Spec. 1. Claims 1, 16, and 20 are independent claims. Claims 1, 16, and 20 are reproduced below with disputed limitations emphasized: 1. An electronic safe for accepting excess cash from cashiers and recognizing cash deposits comprising: at least one bill acceptor for accepting the cash deposits by cashiers identified as authorized users; a controller for controlling the operation of the at least one bill acceptor, and for receiving an indication of value of the cash deposits; a cassette for storing the cash deposits from the at least one bill acceptor; a camera for taking pictures of both legitimate and illegitimate attempts to access the electronic safe; a proximity sensor for detecting proximity to the electronic safe outside periods of legitimate use; and a vibration sensor for detecting improper movement of the electronic safe or an attempt at improper access to an interior of the electronic safe. 16. An electronic safe for accepting and recognizing cash deposits comprising: at least one bill acceptor for accepting the cash deposits from cashiers identified as authorized personnel; a controller for controlling operation of the at least one bill acceptor, and for receiving an indication of a value of the cash deposits; and a cassette for storing the cash deposits from the at least one bill acceptor; 2 Appeal2015-006761 Application 13/105,951 a primary power source for supplying power to the safe electronics and bill acceptors; a battery mounted within the electronic safe for power backup should the primary power source fail or be disconnected; and battery management electronics mounted within the electronic safe for managing the switching between the primary power source and the battery for power backup, wherein said battery provides sufficient power for extended operation upon external disabling of normal alternating current power. 20. A method of operating an electronic drop safe for accepting cash deposits from cashiers identified as authorized users, and recognizing the cash deposits comprising: detecting a person in proximity to the electronic drop safe utilizing a sensor; determining if a condition exists indicative of a potential threat situation utilizing a vibration sensor to detect a breaking into or a drilling into the electronic drop safe; itndertaking a secitrit}' roittine comprising one or more of· taking a picture with a security camera; switching over to an internal uninterruptable DC voltage battery supply; and reporting the potential threat utilizing wireless communication. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal includes: Keith III et al. ("Keith") Enright et al. ("Enright") Gromley et al. ("Gromley") us 5,975,275 US 2005/0073584 Al US 8,123,119 Bl 3 Nov. 2, 1999 Apr. 7, 2005 Feb.28,2012 Appeal2015-006761 Application 13/105,951 REJECTIONS Claims 1--4, 6, and 11-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Enright and Keith. Non-Final Act. 5-19. Claims 5 and 7-10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Enright, Keith, and Gromley. Non- Final Act. 19-23. Our review in this appeal is limited to the above rejections and issues raised by Appellants. We have not considered other possible issues that have not been raised by Appellants and which are, therefore, not before us. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). ISSUES 1. Did the Examiner err in finding that the combination of Enright and Keith teaches or suggests: a camera for taking pictures of both legitimate and illegitimate attempts to access the electronic safe; a proximity sensor for detecting proximity to the electronic safe outside periods of legitimate use; and a vibration sensor for detecting improper movement of the electronic safe or an attempt at improper access to an interior of the electronic safe, as recited in claim 1? 2. Did the Examiner improperly combine the teachings and suggestions of Enright and Keith? 4 Appeal2015-006761 Application 13/105,951 3. Did the Examiner err in finding that the combination of Enright and Keith teaches or suggests "battery management electronics mounted within the electronic safe for managing the switching between the primary power source and the battery for power backup, wherein said battery provides sufficient power for extended operation upon external disabling of normal alternating current power," as recited in claim 16? 4. Did the Examiner err in finding that the combination of Enright and Keith teaches or suggests "undertaking a security routine comprising one or more of: taking a picture with a security camera; switching over to an internal uninterruptable DC voltage battery supply; and reporting the potential threat utilizing wireless communication," as recited in claim 20? DISCUSSION After review of Appellants' arguments and the Examiner's findings and reasoning, we determine that Appellants have not persuaded us of error in the Examiner's rejection of claims 1-20. Accordingly, we sustain the rejections for reasons set forth by the Examiner in the Non-Final Office Action and the Answer. See Non-Final Act. 4--32; Ans. 2-14. We add the following for emphasis and completeness. 35 U.S. C. § 103: Claims 1-3 Issue 1 The Examiner relies on Enright to teach or suggest each of the disputed limitations of claim 1. Non-Final Act. 5-7. Appellants note that Enright teaches a camera but contend Enright is teaching use of the camera 5 Appeal2015-006761 Application 13/105,951 to protect the user from fraud whereas the present application is teaching use of the camera to protect the safe from improper access. Appeal Br. 12. We are not persuaded by Appellants' contention. We agree with the Examiner's finding that Enright teaches or suggests a camera for taking pictures of attempts to access the electronic safe as claimed. Non-Final Act. 5-7 (citing Enright i-fi-124 and 104). Furthermore, we determine Appellants fails to structurally distinguish the claimed camera from the camera taught by Enright. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). See also Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009) ("Absent an express limitation to the contrary, any use of a device that meets all of the limitations of an apparatus claim written in structural terms infringes that apparatus claim") and Roberts v. Ryer, 91 U.S. 150, 157 (187 5) ("The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not."). Here, Appellants provide insufficient evidence to substantiate why the claimed camera is structurally different from the camera taught by Enright; rather, Appellants focus on what the claimed camera does. Next, the Examiner finds Enright teaches a proximity sensor as claimed because in Enright, the presence of a person in front of a banking machine may be sensed through image analysis (i.e., using a camera as the proximity sensor). Ans. 5 (citing Enright i-f 104). The Examiner, thus, finds "in front of," as used in Enright, suggests "proximity to" as claimed. Appellants contend Enright does not teach using proximity sensing to detect the presence of a person in a time period when no person should be at the 6 Appeal2015-006761 Application 13/105,951 safe. Appeal Br. 12-13. We find Appellants' contentions unpersuasive because we agree with the Examiner's finding that Enright teaches detecting the presence of a person using a camera and other sensors anytime there is a person in front of the banking machine. Ans. 5 (citing Enright if 104 ). Thus, Appellants fail to demonstrate that Enright' s proximity sensor fails to detect proximity outside of periods of legitimate use. Indeed, Appellants' claims do not recite detection only during a time period when no person should be at the safe. Appellants further argue that the Examiner's reliance on Enright to teach the claimed proximity sensor is "effectively a finding of inherency." Appeal Br. 13. We find this argument unpersuasive because the Examiner does not rely on inherency to teach the claimed proximity sensor. Initially, we note "proximity sensor" has not been defined explicitly in Appellants' Specification. Absent Appellants clearly setting forth a definition of the claim term in the specification, the term may be given its broadest reasonable interpretation. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Rather than relying on inherency, the Examiner relies on Enright's discussion of a camera performing proximity sensing to teach the claimed proximity sensor. Ans. 5 (citing Enright if 104). We are unpersuaded the Examiner's interpretation of the claimed "proximity sensor" is unreasonably broad in light of the Specification. Appellants additionally contend that Enright fails to teach a vibration sensor as claimed because "[t]he use of a vibration sensor in Enright is also for the purpose of determining if a fraud against the user of the A TM is being attempted by the installation of an improper device by a third person" rather than for detecting "an attempt at improper access to an interior of the 7 Appeal2015-006761 Application 13/105,951 electronic safe," as claimed. Appeal Br. 13. We agree with the Examiner's findings that the claimed vibration sensor is suggested by Enright' s oscillation sensors that detect vibration resulting from improper access to an interior of the electronic safe, such as by attempting to access the interior of the machine using a bill trap device. Non-Final Act. 6 (citing Enright i-f 92). Moreover, Appellants fail to provide sufficient evidence to substantiate why the claimed vibration sensor is structurally different from the oscillation sensor taught by Enright, but instead focus on what the claimed vibration sensor does. Hewlett-Packard Co., 909 F.2d at 1468. Accordingly, Appellants' contentions are unpersuasive. Issue 2 Appellants argue that the Examiner's rationale for modifying Enright based on Keith "appears clearly contrary to the intended purposes of Enrighf s ATM for use by individual users'' because "[a] typical ATM at a bank branch is of no use to a cashier that needs to drop excess cash as it is received at the store where the cashier works." Appeal Br. 14 (emphasis added). Appellants do not persuade us the Examiner's rationale to combine is erroneous. "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the 8 Appeal2015-006761 Application 13/105,951 teachings of references does not involve an ability to combine their specific structures."). Instead, "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, the Examiner indicates that Enright and Keith are analogous art and proposes improving Enright's ATM (which also receives deposits, see Enright i-f 3) in view of Keith's drop safe. Final Act. 6; Ans. 6-7. Appellants have not persuaded us the Examiner's articulated reasoning lacks some rational underpinning. Furthermore, we are not persuaded that Enright's ATM would no longer operate if modified to include features from Keith's drop safe. We, therefore, find Appellants' argument that the cited combination would render Enright unsatisfactory for its intended purpose or change the principle of operation unpersuasive. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 1. Claims 2 and 3, which depend from claim 1, are not separately argued. See Appeal Br. 12-25. Therefore, we likewise sustain the rejections of these claims under 35 U.S.C. § 103(a). 35 U.S.C. § 103: Claims 16--19 Issue 3 The Examiner relies on Keith to teach or suggest "battery management electronics," as recited in claim 16. Non-Final Act. 11-17; Ans. 11-12. Appellants contend Keith does not mention battery management electronics needed to achieve a battery backup function. 9 Appeal2015-006761 Application 13/105,951 Appeal Br. 19-20. Specifically, Appellants contend "Keith specifically notes that acceptors 52 and 53 are 'unavailable' so that full functionality is not supported by Keith's battery back-up." Reply Br. 3. We find Appellants' arguments unpersuasive because we agree with the Examiner's finding that Keith "teaches the drop safe 16 has a backup battery to permit operation of the processor for a reasonable time and to open the drop safe during power outages, backup power supply take over when AC power failure happened by smart power management." Ans. 11- 12. Moreover, with respect to the unavailability of acceptors 52 and 53, we find Appellants inaccurately characterize Keith. More specifically, contrary to Appellants' contention that Keith's acceptors 52 and 53 are unavailable during a power outage, Keith indicates that the "backup power source allows cashiers to enter information concerning envelope drops during a power outage, when AC line power is unavailable to operate acceptors 52 and 53." Keith col. 13, 11. 46-54. Thus, because Keith teaches that acceptors 52 and 53 operate on battery backup when there is no AC line power, Appellants' arguments are not persuasive. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 16. We also do not find the arguments persuasive for claims 17-19, which depend from claim 16. See Appeal Br. 20-21. Rather, we adopt the Examiner's findings and explanations and likewise sustain the rejections of these claims under 35 U.S.C. § 103(a). 10 Appeal2015-006761 Application 13/105,951 35 U.S.C. § 103: Claim 20 Issue 4 Appellants contend "Enright and Keith individually and collectively do not teach [undertaking a security routine by] switching over to an internal uninterruptable DC voltage battery supply or reporting the potential treat [sic] utilizing wireless communications." Appeal Br. 22. We find Appellants' arguments unpersuasive because we agree with the Examiner's finding that Enright teaches taking pictures with a camera as a security routine. Non-Final Act. 18. We further note claim 20 only requires that the security routine comprise one or more of the three independent steps of taking a picture, switching over to a DC voltage, or reporting the potential threat. Appeal Br. 31-32. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 20. 35 U.S.C. § 103: Claims 5 and 7-10 Appellants argue that "[ t ]he relied upon portions of Gromley do not make obvious claim 5 of the present application as Gromley clearly refers not to an electronic safe, but rather 'safety deposit boxes"' and also does not refer to authorized service person as claimed. Appeal Br. 23. Appellants further argue "reliance on 'other devices' at Gromley ... is an inappropriate attempt to rely upon inherency." Id. We find Appellants' argument unpersuasive because we agree with the Examiner's finding that Gromley's teaching of providing user access to an electronically locking safe deposit box suggests the claimed features. 11 Appeal2015-006761 Application 13/105,951 Ans. 13-14. We also disagree that the Examiner's rejection of claim 5 relies upon a finding of inherency. Appellants present additional arguments with respect to dependent claims 7-10. Appeal Br. 24-25. Such conclusory arguments, however, amounting to little more than a paraphrasing of the claim language and a general denial, are unpersuasive to rebut the prima facie case produced by the Examiner. Cf 37 C.F.R. § 41.37(c)(iv) ("A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). We, therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of claims 5 and 7-10. 35U.S.C.§103: Claims 4, 6, and 11-15 Appellants present additional arguments with respect to the remaining dependent claims. Appeal Br. 15-19. We do not find these arguments persuasive. Rather, we find that the Examiner has provided a complete response to Appellants' arguments supported by a preponderance of evidence. Non-Final Act. 9-11; Ans. 7-11. We also disagree that the Examiner's rejection of claim 4 and 12 relies upon a finding of inherency. As such, we adopt the Examiner's findings and explanations provided therein (id.) and we sustain the Examiner's rejection of the remaining dependent claims under 35 U.S.C. § 103(a). 12 Appeal2015-006761 Application 13/105,951 DECISION We affirm the Examiner's decision rejecting claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation