COMMISSIONER'S DECISION
Sufficiency of Disclosure; S.2; Obviousness: The amended disclosure was
sufficient to permit realization by a person skilled in the art. No
finding as to patentable subject matter, as the rejection was raised only
at the Final Action stage. The cited references are not appropriate,
some as to dates, some as to subject matter. Rejection withdrawn.
***************
This decision deals with Applicant's request that the Commissioner of
Patents review the Examiner's Final Action on application 239,565
(Class 354-42). It was filed on November 13, 1975, and is entitled
AUTOMATIC BANKING EQUIPMENT. The inventors are Donald E. Kinker and
Herbert Morello. The Examiner in charge issued a Final Action refusing
the application.
In reviewing the application, the Patent Appeal Board held a Hearing
at which the Applicant was represented by Mr. A. Davidson, the Patent
Agent. Mr. R. Faggetter of the Agent's Office also attended.
The application relates to a customer operated banking station as shown
in figure 1, reproduced below, which is at a location remote from the bank.
The station I has an entry slot 2 for insertion of a personalized, conven-
tional coded card, and a keyboard 4 for entry of information necessary in
carrying out a desired banking transaction. A display panel 5 displays
instructions for carrying out a selected banking operation. A deposit slot
6 and a delivery drawer means 7 are also provided. A receipt for the trans-
action may be delivered through slot 10. All the electronic and control
equipment components for the automatic operation of the station are stated
to be within the housing 12.
<IMG>
In the Final Action the Examiner rejected the application for containing
insufficient description to describe the inventive step. Further, the
Examiner rejected the application under Section 2 of the Patent Act, for
not being directed to patentable subject matter. He also rejected the
claims for being obvious in view of certain prior art.
In making his rejection under Section 36 (1) of the Act the Examiner stated
(in part):
...
Inclusion of United States patent numbers in the disclosure
does not overcome the objection wherein claims 1 to 9 are rejected
under Rule 25 of the Patent Rules as not being fully supported
by the disclosure.
Applicants' amendments entered do not make the specification
sufficient. There is insufficient description in that the
inventive step of the new structure resulting from the combination
is not delineated neither in the disclosure nor in the drawings.
The pictorial drawing would not be sufficient, even for one
skilled in the art.
Applicant's are required to provide evidence that an inventive
step was made and provide full disclosure for it as per Section
36(1) of the Patent Act. This has not been done. The specification
remains rejected under Section 36(1) of the Patent Act.
In response Applicant argued (in part) as follows:
In connection with the matter of a "full, clear, concise"
disclosure which is a requirement of Section 36(1) of the
Canadian Patent Act, said Canadian Statute is substantially
the same in its terms and requirements as 35 USC 112 of the
United States Patent Statutes.
Such requirements under said U.S. Statute have always been
satisfied by referring to prior patents by number. This
constitutes a full, clear and concise disclosure, and, thus,
avoids lengthy specifications to repeat in detail matters
that are known in the prior art, as contained in the patents
identified.
Further, materials in these prior art patents provide the
basis for the references to known components or elements in
broad general terms, such as the terms "cash dispenser and
delivery means", and "coded card means", etc.
...
Further, the Honourable Mr. Justice Thorson, President of the
Exchequer Court in May, 1947, in Mineral Separation North
American Corporation v. Noranda Mines, Limited, pointed out that
two things must be described in the disclosure of an application:
the invention and the use of it as contemplated by the inventor.
Applicants have disclosed their invention as being a novel com-
bination of old means and have shown how it can be used as an
improvement over the prior art. The Examiner has questioned the
sufficiency of the disclosure and in connection therewith
applicants point to remarks made in the Minerals Separation
decision (supra) by Thorson that the test as to whether a
specification complies with the requirements of the Statute is
whether a person skilled in the art, on reading the specification
in the light of common general knowledge existing at its date
and being willing to understand it, would be unerringly led to the
invention and be enabled to put it into full a se. Applicants
are certain that one skilled in the automatic banking art would
be aware of the prior art means that have been combined to form the
present invention and that, having been apprised of it, he would
quickly see the advantages offered by the present invention over
the automatic banking systems of the prior art.
...
In making his rejection under Section 2 of the Patent Act, the Examiner said
(in part) as follows:
...
The essential equipment required to fulfil the concept outlined
by the applicants foregoing statement would be: a keyboard, computer and
a CRT monitor; all known and old in prior art. Therefore, in the
absence of any supporting evidence in the disclosure or drawings to
the contrary for this "programmable display means" it must follow then
that anything novel in applicants' alleged invention must be
done to the operation of the computer and its attendant program.
Reprogramming a computer is not patentable subject matter under
Section 2 of the Patent Act. Applicants' attention is directed
to the Commissioner's decision contained in C.P.O.R. dated
August 1, 1978 which included the position: "claims to a com-
puter programmed in a novel manner, expressed in any and all modes,
where the novelty lies solely in the program or algorithm, are
not directed to patentable subject matter under Section 2 of
the Patent Act.
...
The Applicant's response to the rejection under Section 2 of the Act is
(in part) as follows:
...
Claim 1 does not call for and is not intended to call for any
computer programming. That is old and known in the arts of the
use of computers in various equipment, systems, etc. as well as in
the automatic banking system art.
In applicants' new concept, the customer is the programmer. He
programs what happens. He is given an option at each state in the
operation of the remote banking unit. He can select the procedure
from directions, etc. displayed at the video display unit where all
directions, data, etc. are displayed at on a place.
The customer is instructed by the directions displayed what to do
next based on the messages given him at the single display panel.
The display at the same single display panel shows what he has done
so that he can check his own accuracy in entering into the equipment,
the PIN, or the amount of cash he wishes to withdraw, while at the
same time he is addressed at the single display panel by his own name
which has been read by the card reader from his card which he has
entered into the equipment for actuation of the equipment and
verification of the fact that he is an authorized holder and user of
the particular card.
...
Fundamentally, the gist of the new concept is to bring displays of
information or data to be used by the customer, originating at differ-
ent locations in the equipment, all to one display panel, rather
than individually and separately to a variety or plurality of
different, separated display locations.
...
In the Manual of Patent Office Practice, Item 8.02.02 states that
invention exists in a new combination of old means. Applicants
maintain, for reasons set out above, that present claims 1 to 8 are
directed to a novel combination of old means that is useful and
patentable.
The issues before the Board are whether or not; the disclosure is sufficient
under Section 36(1) of the Patent Act, the application is directed to
patentable subject matter under Section 2 of the Act, and the claims are
obvious in view of prior art. Claim 1 reads:
In automatic multiple-transaction banking equipment of a type in
which a remote vault-like unit has manual entry keyboard means,
card entry means, card reader means, cash dispenser and delivery
means, and customer accessible cash drawer means; in which the unit
is activated by the entry of coded card means into the card entry
means and card reader means; in which the cash dispenser and
delivery means is actuated by such coded card means and is opera-
tive to deliver to said cash drawer means a selected amount of cash
determined by transaction data keyed in at the keyboard means by an
authorized identified customer for removal by such customer whose
identity has been verified and the transaction authorized by the
entry of coded means into the unit; in which the coded means includes
data contained on the coded card means and also customer verifying
and transaction data keyed in at the keyboard means; and in which
the coded card means has the identity of the customer encoded thereon; the
combination of programmable display means including a single display
panel, and means for selectively presenting at the single display
panel one of a series of successive message instructions for a selected
one of a plurality of different banking transactions which at least
includes a cash dispensing transaction; the message instructions for
any selected banking transaction comprising instructions to the
customer for the entry of customer verifying and transaction data at
the keyboard means to conduct the selected transaction; the programm-
able display means also including means for displaying at the single
display panel concurrently kith the display of banking transaction
message instructions, the identity of the customer encoded on the
coded card means and read by the card reader means; the programmable
display means also including means for displaying at the single
display panel at least portions of the transaction data keyed in at
the keyboard means, concurrently with the display of at least certain
of said banking transaction message instructions; whereby the
concurrent display at the single display panel of banking transaction
message instructions and certain transaction data permits customer
errors to be detected and corrected.
We turn first to the issue of sufficiency of disclosure. It is stated on
page 11 of the original disclosure that the video controller and its character
generator in the station operate in the manner of prior patents.
The Agent, Mr. Davidson, argued at the Hearing that a person skilled in
the art, when told to connect a single display unit capable of displaying
information from three sources, would be able to do that from the disclosure
as amended. He said that the invention was in the idea of putting the
various parts together in order to realize the advantages that would flow
from his combination. To bolster his point of view, the Agent referred
to United States patent 3,772,676 to Conley, November 13, 1973, which had
been inserted by amendment of page 11, to illustrate that the original
reference to prior patents did find support in patent form. In that
patent we see that a computer with a memory for storing sets of instruct-
ions is connected with other components including a single display unit
which receives signal s from three sources. The Agent further argued that
by referring in the specification to certain specific prior patents there
is provided a full, clear and concise disclosure of his invention.
Although Applicant's original disclosure is sketchy in its description of
how the components could be connected to present an integrated system, we
are persuaded by his arguments that the amended disclosure may be sufficient
to establish that a person skilled in the art would be able to realize
Applicant's invention.
We turn next to the rejection under Section 2 of the Patent Act. The Agent
presented arguments at the Hearing supporting the comments in his response
that the application is not open to such a rejection. Although not brought
out at the Hearing, we make the observation that the issue of patentable
subject matter was raised for the first time in the Final Action. Such
being the case, we find it would be inappropriate for the Board to make any
comments on this rejection because the issue has not received that consider-
ation prescribed by the Patent Rules.
We will consider now the rejection based on prior art. At the Hearing the
Agent indicated he was prepared to discuss the patents which were cited
in the Office Action prior to the Final Action. His primary argument was
that none of the patents shows the use of a single display panel showing
a plurality of images in the remote banking transaction field. He discussed
the United States Patent to Voss 3,845,277 October 29, 1974, in relation
to its showing of three separate displays on the face of the machine, and
he argued that it would not be obvious to a person skilled in the art to
proceed from that patent to Applicant's kind of single display panel.
We can do no more than accept this argument because on review we find
that this patent and the United States patents, 3,833,885 September 3,
1974 and 3,832,790 September 3, 1974, issued less than two years before
Applicant's Canadian filing date. These three patents will not be con-
sidered further with respect to the requirements of Section 28 of the
Patent Act, although United States Patents 3,641,497 February 8, 1972
to Constable and 3,760,158 September 18, 1973 to Whitehead et al, do bear
appropriate dates for consideration under that Section. The Constable
patent relates to a money dispensing system which reacts to a customer's
credit card, and the keyed entry of a personal identification number, but
does not disclose a display screen. The Whitehead et al patent relates to
dispensing sums of money in mixed denominations, and includes means in
coded form to initiate dispensing, and also includes visual display means.
In our view however these patents are not sufficient to sustain a rejection
on the ground of obviousness of Applicant's combination.
In summary we are satisfied that the disclosure of the application is
sufficient in view of the amendments and arguments, and that the cited
art is not appropriate to sustain a rejection of the claims on the ground
of obviousness. In view of our observation concerning the rejection under
Section 2 of the Act we make no finding thereon.
We recommend that the rejection of the disclosure for being insufficient,
and the claims for being obvious, be withdrawn, and the application be
returned to the Examiner.
M.G. Brown S.D. Kot
Acting Chairman Member
Patent Appeal Board
I concur in the findings and the recommendation of the Patent Appeal
Board. Accordingly, I withdraw the Final Action and remand the applica-
lion to the Examiner.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 25th. day of November, 1983
Agent for Applicant
A.E. MacRae & Co.
Box 806, Station B,
Ottawa, Ont.