Ex parte Satchell, Appeal 2008-0071

• Decision Date: 06 November 2008
• Docket Number: Application 09/686,626,Appeal 2008-0071
• Parties: Ex parte JAMES A. SATCHELL, JR. and JOHNSON A. ASUMADU Technology Center 2100
• Court: Patent Trial and Appeal Board

Ex parte JAMES A. SATCHELL, JR. and JOHNSON A. ASUMADU Technology Center 2100

Appeal 2008-0071

Application 09/686,626

United States Patent and Trademark Office, Patent Trial and Appeal Board

November 6, 2008

Before FRED E. McKELVEY, Senior Administrative Patent Judge, HOWARD B. BLANKENSHIP and ALLEN R. MACDONALD, Administrative Patent Judges.

DECISION ON APPEAL

BLANKENSHIP, Administrative Patent Judge.

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 31-41, 60-127, and 129-134. We have jurisdiction under 35 U.S.C. § 6(b).

We affirm the rejection of claims 31-41, 60-113, 127, and 129-134, but do not reach the rejection of claims 114-126. We enter new grounds of rejection against claims 1-12 and 114-126.

I. The Instant Reissue

This proceeding concerns the reissue of U.S. Patent 5, 822, 216 ('"216 patent"), "Vending Machine and Computer Assembly."

Applicants filed the '216 patent application on September 18, 1996 with the patent issuing October 13, 1998. The patent is said to be a "continuation-in-part" of application 08/429, 583 ("parent application"), filed August 17, 1995, now abandoned.

The '216 patent describes a vending machine (Fig. 1) having a computer assembly, video display screen, and access to an internet site via a modem. See '216 patent Abstract.

Appellants filed the instant reissue application on October 12, 2000. The initial papers included a declaration by the inventors directed to a broadening reissue.

Patent claims 1-12 are present and not rejected by the Examiner.^[1]Proposed new claims 31-41, 60-127, and 129-134 are also present, which are the subject of this appeal.

All of the proposed claims include language referencing an Internet (or "internet") connection. Reissue claims 114, 127, and 130 are reproduced below (underlining deleted).

114. A method of providing a customer with access to the Internet via a vending machine, said method comprising:

1.) providing a vending machine to vend at least one physical item selected by a customer for purchase;

2.) said purchase of said at least one item permits the customer to be operatively connectable via the Internet to websites;

3.) allowing access to the websites by said customer, said access comprising at least one of inserting money or credit card information into the vending machine and customer input of data to the computer.

127. A method of attracting greater patronage to a vending machine, said method comprising:

providing a vending machine with a connection to the internet/worldwide web; and

permitting a customer access to websites on said internet/worldwide web through interaction with said vending machine, wherein at least part of said access is located on a door of the vending machine.

130. A method of manufacturing vending machines wherein a vending machine is provided to dispense an article to be purchased by a consumer, the improvement comprising incorporating an interactive consumer accessible internet communication system into the vending machine to permit the customer access to websites.

II. Prior Art

The Examiner relies on the following U.S. patents as evidence of unpatentability:

Lockwood

US Re. 32, 115

Apr. 15, 1986

Bradt

US 4, 839, 505

Jun. 13, 1989

Brandes

US 5, 090, 589

Feb. 25, 1992

Huegel

US 5, 239, 480

Aug. 24, 1993

Brown

US 5, 445, 295

Aug. 29, 1995

Small

US 5, 513, 117

Apr. 30, 1996

Kolls

US 5, 637, 845

Jun. 10, 1997

Sokal

US 5, 953, 504

Sep. 14, 1999

The Board cites the following additional U.S patent:

Mills

US 1, 697, 537

Jan. 1, 1929

III The Examiner's Rejections

Claims 114-127, 129, and 130 are rejected under 35 U.S.C. § 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for patent upon which the present reissue is based.

Claim 130 is rejected under 35 U.S.C. § 102(e) as being anticipated by Sokal.

Claim 130 is rejected under 35 U.S.C. § 102(e) as being anticipated by Kolls.

Claim 130 is rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Huegel.

Claim 130 is rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Lockwood.

Claims 31-41, 60-64, 66, 68, 69, 71-108, 110-112, 127, and 129-134 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bradt and Sokal.^[2]

Claims 65 and 70 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bradt, Sokal, and Brown.

Claims 67 and 113 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bradt, Sokal, and Small.

Claim 109 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Bradt, Sokal, and Brandes.

IV. Appellants' Contentions

1.Appellants contend that none of the claims rejected under 35 U.S.C. § 251 improperly recapture subject matter surrendered during prosecution of the '216 patent because each of the rejected claims are directed to the statutory class of "process," while each of the claims presented in the '216 patent application were directed to the statutory class of "apparatus."

2.Appellants contend (1) they have antedated Sokal, and (2) the patent is thus not prior art.

3.Appellants contend the Examiner erred in finding that Sokal anticipates claim 130 because Sokal does not describe a vending machine that dispenses articles for purchase.

4.Appellants contend the Examiner erred in finding that Kolls anticipates claim 130 because Kolls does not describe access to websites.

5.Appellants contend the Examiner erred in finding or concluding that claim 130 is anticipated by, or obvious over, Huegel because the Examiner has not shown that the reference describes access to websites, nor why one of ordinary skill in the art would have found it obvious to permit customer access to websites.

6.Appellants contend the Examiner erred in finding or concluding that claim 130 is anticipated, or obvious over, Lockwood because the Examiner has not shown that the references describes access to websites, nor has the Examiner shown motivation to establish a prima facie case of obviousness.

7.Appellants contend the Examiner erred in rejecting claims 31-41, 60-64, 66, 68, 69, 71-108, 110-112, 127, and 129-134 as obvious over the combination of Bradt and Sokal because:

(A) Bradt teaches a conventional vending machine with no access to the Internet.

(B) Sokal does not contain a door, or retrofit door.

(C) The Examiner has not shown that combining two old elements (a vending machine and a stand-alone terminal) was suggested by Bradt and Sokal, or cited any knowledge generally available to those skilled in the art that would lead an individual to combine the relevant teachings of the references.

(D) Dependent claim 38 recites that camera generated video signals and microphone generated audio signals are recorded alone or in combination with already recorded audio and visual signals by the mechanism of claim 37, and no such teachings are found in the combination of Bradt and Sokal.

(E) Dependent claim 39 requires "at least one audio-video mechanism connected to said computer for recording said audio and video signals," and the features are simply lacking and without motivation in the combination of Bradt and Sokal.

8. Appellants contend the Examiner erred in rejecting claims 65 and 70 as obvious over Bradt, Sokal, and Brown because Brown does not cure the deficiencies in the basic rejection over Bradt and Sokal, and Brown is limited to telephone communication lines for internal communication.

9. Appellants contend the Examiner erred in rejecting claims 67 and 113 as obvious over Bradt, Sokal, and Small because Small does not correct the deficiencies in the basic rejection over Bradt and Sokal, and Small's machine does not comprise a door having a trackball or mouse.

10. Appellants contend the Examiner erred in rejecting claim 109 as obvious over Bradt, Sokal, and Brandes because Brandes does not teach, suggest, or motivate one skilled in the art to provide a door of a vending machine with customer access to the Internet.

V. The Examiner's Findings and Conclusions

1. The Examiner concludes that claims 114-127, 129, and 130 are not permitted under 35 U.S.C. §251 because the claims omit "retrofitting door" aspects of the invention that relate to subject matter surrendered during prosecution of the '216 patent.

2. The Examiner concludes that Sokal is prior art with respect to Appellants because Appellants have not established reduction to practice [constructive or actual] prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to the date to a subsequent reduction to practice or to the filing of the application.

3. The Examiner finds that claim 130 is anticipated by each of Sokal and Kolls.

4. The Examiner finds and concludes that claim 130 is anticipated by, or obvious over, Huegel because, inter alia, remote sites described by Huegel are obviously if not inherently "websites."

5. The Examiner finds and concludes that claim 130 is anticipated by, or obvious over, Lockwood because, inter alia, computer sites that are remotely accessed in Lockwood are obviously if not inherently "websites."

6. The Examiner finds that the combination of Bradt and Sokal would have suggested modifying Bradt with Internet access as taught by Sokal.

7. The Examiner finds that Sokal describes apparatus for video conferencing and for downloading information, and thus teaches local storage of audio/video information.

8. The Examiner finds that Brown teaches the alternatives of headphones or speakers in a vending machine.

9. The Examiner finds that Small...