WINCOR NIXDORF INTERNATIONAL GMBH

Patent Trials and Appeals Board

Apr 28, 2021

2020002916 (P.T.A.B. Apr. 28, 2021)

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.
14/696,828 04/27/2015 Hermann Hoeschen 025018-0036 9275
115462 7590 04/28/2021
Diebold, Incorporated
c/o Black, McCuskey, Souers & Arbaugh, LPA
220 Market Avenue, South, Suite 1000
Canton, OH 44702
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
04/28/2021 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):
ip@bmsa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte HERMANN HOESCHEN and STEFAN MOOCK1
________________

Appeal 2020-002916
Application 14/696,828
Technology Center 3600
________________

Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR. and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–3, 5, 13, and 16–18. Appeal Br. 8. We have jurisdiction
under 35 U.S.C. § 6(b). The Board conducts a limited de novo review of the
appealed rejections for error based upon the issues identified by Appellant,
and in light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We REVERSE.

1 Appellant identifies WINCOR NIXDORF INTERNATIONAL GMBH as
the real party in interest. Appeal Brief, 2, filed October 18, 2019 (“Appeal
Br.”).
Appeal 2020-002916
Application 14/696,828
2
CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
A method of operating a device (10) for handling
banknotes detects multi-sheet withdrawals using a multi-sheet
withdrawal sensor (30). If a multi-sheet withdrawal has been
detected, at least the banknotes of the multi-sheet withdrawal are
supplied to an input and/or output tray (22). Next, the banknotes
are further separated.
The denomination and/or number of the banknotes of the
multi-sheet withdrawal is determined. The determined number
and/or denomination is taken into account in the framework of
the inventory management of the cash cassettes (16).
Spec., Abstr.
Independent claim 1, reproduced below, illustrates the subject matter
of the appealed claims:
1. A method of operating an automated teller machine
(ATM) comprising:
receiving a deposit of a first plurality of banknotes in an
input and output tray of the ATM from a customer;
separating the first plurality of banknotes deposited in the
input and output tray during said receiving with a separating unit
of the ATM;
taking a second plurality banknotes out from one or more
cash cassettes of the ATM in accordance with a disbursement
request from an operator of the ATM;
detecting, with at least one multi-sheet withdrawal sensor
of the ATM, a multi-sheet withdrawal among at least some of the
second plurality of banknotes taken from the one or more
cassettes of the ATM during said taking from the one or more
cash cassettes;
transporting at least the multi-sheet withdrawal of the
second plurality of banknotes, taken from the one or more
cassettes of the ATM during said taking, to the input and output
tray when the multi-sheet withdrawal has been detected during
said detecting; and
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Application 14/696,828
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separating, with the separating unit, the banknotes of the
multi-sheet withdrawal after the multi-sheet withdrawal was
transported to the input and output tray during said transporting.

STATEMENT OF THE REJECTION2
Claims 1–3, 5, 13, and 16–18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ichikawa (US 2005/0091159 A1; published Apr. 28,
2005) and Aoji (US 2013/0140133 A1; published June 6, 2013). Final
Action 2–8, mailed July 12, 2019 (“Final Act.”).

DETERMINATIONS AND CONTENTIONS
The Examiner finds that Ichikawa discloses a method of operating an
automated teller machine that corresponds to most of the limitations of
claim 1. Final Act. 3. The Examiner further finds that Aoji teaches the
elements of claim 1 that are missing from Ichikawa and that motivation
existed to combine these references’ teachings. Id. at 4–5.
In setting forth the rejection, the Examiner initially finds that
Ichikawa discloses an input and output tray, as claimed. Final Act. 3 (citing
Ichikawa ¶¶ 35–37, 50, Figs. 3, 4). Then, the Examiner alternatively finds
that Ichikawa does not teach the claimed input and output tray, but that Aoji
discloses the input and output tray. Final Act. 4 (citing Aoji ¶¶ 52–54, 57,
72–74, 97–99; Figs. 4, 10). The Examiner subsequently clarifies the
rejection’s basis, interpreting only Aoji, but not Ichikawa, as disclosing an
input and output tray. Advisory Action mailed Aug. 23, 2019.

2 The Final Rejection additionally lists claim 4 as being rejection as obvious
(Final Act. 2), but the Examiner subsequently acknowledges that Appellant
had canceled claim 4. Advisory Action mailed August 23, 2019 (citing
Amendment, 4, filed August 12, 2019).
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Application 14/696,828
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More specifically, the Examiner does not interpret the claimed input
and output tray as corresponding to either Ichikawa’s bill depositing and
payment slot 20 or Aoji’s bill receiving and dispensing port 20. Rather, the
Examiner interprets Aoji’s bill storage box 74 as corresponding to the
claimed input and output tray. Examiner’s Answer, 4, mailed Jan. 31, 2020
(citing Aoji ¶¶ 97–99, Figs. 4, 10). The Examiner reasons that storage box
74 “is a bill storage box with the ability to receive all bills processed through
the bill discriminating unit and conveying paths, along with providing bills
to a bill receiving and dispensing port [20].” Id.
Appellant argues, inter alia, that the Examiner’s interpretation of the
claimed input and output tray is unreasonably broad and not consistent with
the interpretation that those skilled in the art would reach. Appeal Br. 8–13.
Appellant further contends that a person of ordinary skill in the art would
interpret an input and output tray, as claimed, to refer to the bill depositing
and payment slot 20 of Ichikawa and the bill receiving and dispensing port
20 of Aoji. Id. at 13.

ANALYSIS
We agree with Appellant that the Examiner’s interpretation of the
claimed input and output tray is unreasonably broad. Claim 1 requires an
input and output tray of an ATM to be capable of “receiving a deposit of . . .
banknotes . . . from a customer.” Claim 1 also requires transporting
banknotes from one or more cash cassettes of the ATM to the input output
tray. As such, a reasonable interpretation of claim 1 requires that the input
and output tray be an ATM component associated with the customer
interface through which the customer deposits and receives banknotes from
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the ATM. More importantly, claim 1 at least further requires that the input
and output tray be distinct from the ATM’s cash cassettes.
Appellant’s Specification describes the ATM’s cash cassette 74 as the
primary storage compartment from which banknotes are taken when a
customer makes a withdrawal. E.g., Spec. ¶ 1. Aoji’s bill storage box 74
more reasonably corresponds to the claimed cash cassettes than to the
claimed input and output tray. E.g., Aoji ¶ 42, Figs. 2, 4.
For these reasons, Appellant’s arguments persuade us that the
Examiner committed reversible error in rejecting independent claim 1. We,
therefore, reverse the obviousness rejection of this claim. We, likewise,
reverse the obviousness rejection of claims 2, 3, 5, 13, and 16–18.

DECISION SUMMARY
In summary:

REVERSED

Claims
Rejected
35 U.S.C.
§
Reference(
s)/Basis
Affirmed Reversed
1–3, 5, 13,
16–18
103 Ichikawa,
Aoji
1–3, 5, 13,
16–18