Ex Parte Frontino et al

Patent Trial and Appeal Board

Oct 12, 2016

13105951 (P.T.A.B. Oct. 12, 2016)

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;
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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?
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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
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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
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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
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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
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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.
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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).
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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.
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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).
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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
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