Ex parte Belec

Board of Patent Appeals and Interferences

Feb 26, 1999

08338707 (B.P.A.I. Feb. 26, 1999)

Application for patent filed November 14, 1994. 1
1
Paper No. 17
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ERIC A. BELEC,
MARY-JO F. BRIGANTE,
CHERYL L. PICOULT and
WILLIAM J. WRIGHT
______________
Appeal No. 97-1890
Application 08/338,7071
_______________
ON BRIEF
_______________
Before BARRETT, FLEMING and CARMICHAEL, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 5, all of the claims present in the
Appeal No. 97-1890
Application 08/338,707
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application. Appellants filed an after final amendment
amending claim 1. The Examiner in an advisory action, mailed
June 25, 1996, stated that upon the filing of an appeal, the
proposed amendment, filed June 10, 1996, will be entered. We
note that the amendment has been entered into the record and
thereby, amended claim 1 is properly before us for our
consideration.
Appellants’ invention relates to an asynchronous control
method and apparatus for insertion devices.
Independent claim 1 is reproduced as follows:
1. A method for controlling an insertion apparatus
having a plurality of operations arranged for transporting an
envelope and for transporting and inserting a collation into
the envelope, said method comprising the steps of providing
respective event signals in accordance with selected events
associated with the operations, providing a plurality of motor
profiles for operation of motors associated with the
operations, controlling respective pluralities of motors
associated with respective operations of the apparatus in
correspondence with selected ones of said plurality of motor
profiles for controlling driving of said motors in response to
receiving the event signals.
The references relied on by the Examiner are as
follows:
Kapp et al. 4,733,310 Mar. 22,
1988
Francisco 5,003,485 Mar.
26, 1991
Appeal No. 97-1890
Application 08/338,707
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Claims 1 through 5 stand rejected under 35 U.S.C. § 103
as being unpatentable over Francisco and Kapp.
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the brief and the answer for
the details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 1 through 3 are properly
rejected under 35 U.S.C. § 103. Thus, we will sustain the
rejection of these claims but we will reverse the rejection of
the remaining claims on appeal for the reasons set forth
infra.
At the outset, we note that Appellants state on page 4 of
the brief that claims 1 through 3 stand or fall together and
claims 4 through 5 stand or fall together. We note that
Appellants argue each of these groups of claims as a single
group in the brief. 37 CFR § 1.192 (c)(7)(July 1, 1996) as
amended at 60 Fed. Reg. 14518 (March 17, 1995), which was
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controlling at the time of Appellants' filing the brief,
states:
For each ground of rejection which appellant
contests and which applies to a group of two or more
claims, the Board shall select a single claim from
the group and shall decide the appeal as to the
ground of rejection on the basis of that claim alone
unless a statement is included that the claims of
the group do not stand or fall together and, in the
argument under paragraph (c)(8) of this section,
appellant explains why the claims of the group are
believed to be separately patentable. Merely
pointing out differences in what the claims cover is
not an argument as to why the claims are separately
patentable.

We will, therefore, consider the Appellants' claims 1 through
3 as a group standing or falling together and claims 4 and 5
as a group standing or falling together. In addition, we will
treat claims 1 and 4 as representative claims of their
respective group.
On pages 2 and 3 of the brief, Appellants argue that
Francisco describes asynchronous control between stations, not
with each station as in the Appellants' invention. On page 6
of the answer, the Examiner points out that the claims are not
limited to control within a single station and that
Appellants' claim language reads on Francisco.
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As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
the claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). Turning to Appellants' claim 1,
we note that the claim recites "[a] method for controlling an
insertion apparatus having a plurality of operations arranged
for transporting an envelope and for transporting and
inserting a collation into the envelope ... comprising the
steps of providing respective event signals in accordance with
selected events associated with the operations." We find that
Appellants' claim 1 does not preclude the asynchronous control
between stations as disclosed by Francisco.
On page 3 of the brief, Appellants argue that Kapp does
not disclose a motor profile. In particular, Appellants
submit that a motor control which can be turned on and off in
a sequence of up to eight steps and has a reverse direction is
not a motor profile. Appellants simply state that the control
in Kapp is not what is claimed in the instant application, but
does not provide any explanation as to why Appellants' motor
profile as claimed is distinguished from the Kapp's motor
multiple modes control for a motor.
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Turning to Appellants' claim 1, we note that the claim
recites "providing a plurality of motor profiles for operation
of motors associated with the operation." Turning to
Appellants' specification, we note that Appellants have
provided little detail as what is meant by a motor profile.
For example, on page 10 of the specification, Appellants
disclose that upon an event of the envelope having cleared, a
deceleration motor profile is selected. On page 11 of the
specification, Appellants disclose that backstop software
program module 214 provides commands in accordance with a
selected profile to the backstop motor M6. Appellants do not
provide a special definition of the motor profiles or provide
any disclosure that would demonstrate that motor multiple
modes or motor sequences are not motor profiles. Thus, we
find that Appellants' claim term, "motor profiles" as read in
light of Appellants' specification is broad enough to include
Kapp's disclosed motor sequences and motor modes.
On page 4 of the brief, Appellants argue that Kapp does
not disclose control means for asynchronously controlling the
transport of an envelope with respect to a collation or a
method of controlling an insertion apparatus having a
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plurality of operations. However, the Examiner is not relying
on Kapp for these teachings but instead relies on Francisco.
On pages 4 and 5 of the answer, the Examiner shows that
Francisco teaches the method steps of claim 1 except for an
express teaching of providing a plurality of motor profiles
and controlling the motors in correspondence with selected
ones of the plurality of motor profiles. The Examiner shows
that Kapp teaches a microprocessor that provides and selects
motor profiles to control motors in the envelope path. The
Examiner argues that it would have been obvious to one of
ordinary skill in the art to modify the Francisco method of
controlling an insertion apparatus to have a plurality of
operations arranged for transporting an envelope and for
transporting and inserting a collation into the envelope by
providing a plurality of motor profiles and controlling the
respective plurality of motors in correspondence with selected
ones of the plurality of motor profiles in order to obtain
Kapp's benefit of overcoming motor failure and system jams as
recited in Appellants’ claim 1. We agree.
We note that the Appellants have not argued why the
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Examiner’s reasoning for combining Francisco and Kapp is
improper. Appellants have argued that the references do not
meet the Appellants invention. As stated by our reviewing
court in In re Baxter Travenol Labs., 952 F.2d 388, 391, 21
USPQ2d 1281, 1285 (Fed. Cir. 1991), “[i]t is not the function
of this court to examine the claims in greater detail than
argued by an appellant, looking for nonobvious distinctions
over the prior art.” 37 CFR § 1.192(a)as amended at 60 Fed.
Reg. 14518, March 17, 1995, which was controlling at the time
of Appellants filing the brief, states as follows:
The brief . . . must set forth the authorities and
arguments on which the appellant will rely to
maintain the appeal. Any arguments or authorities
not included in the brief may be refused
consideration by the Board of Patent Appeals and
Interferences.
Also, 37 CFR § 1.192(c)(8)(iv) states:
For each rejection under 35 U.S.C. 103, the argument
shall specify the errors in the rejection and, if
appropriate, the specific limitations in the
rejected claims which are not described in the prior
art relied on in the rejection, and shall explain
how such limitations render the claimed subject
matter unobvious over the prior art. If the
rejection is based upon a combination of references,
the argument shall explain why the references, taken
as a whole, do not suggest the claimed subject
matter, and shall include, as may be appropriate, an
explanation of why features disclosed in one
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Application 08/338,707
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reference may not properly be combined with features
disclosed in another reference. A general argument
that all the limitations are not described in a
single reference does not satisfy the requirements
of this paragraph.
Thus, 37 CFR § 1.192 provides that this board is not under any
greater burden than the court which is not under any burden to
raise and/or consider such issues.
We have addressed all of these arguments and found that
Appellants have not shown that the Examiner has erred in
making the rejection. Therefore, we will sustain the Examiner
rejection of claims 1 through 3 under 35 U.S.C. § 103.
On page 4 of the brief, Appellants further argue that
neither Francisco nor Kapp, alone or in combination, discloses
or suggests control means for asynchronously controlling the
transport of an envelope wherein the timing of the envelope
transport is related to the collation transport only by way of
determined events occurring in the transport of each collation
and envelope, as set forth in claim 4. Appellants have not
provided any arguments as to why Francisco fails to teach this
limitation. However, we note that the Examiner relies on
Kapp's teaching this actuating of the motors along the
transport path as evidence that this limitation is known in
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Application 08/338,707
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the art.
Upon a closer review of Kapp, we fail to find that Kapp
teaches that the time of the envelope transport is related to
the collation transport only by way of determined events
occurring in the transport of each collation and envelope.
Kapp teaches a paper feeder apparatus having only one tray
which is capable of accommodating papers of different sizes as
well as envelopes using different storage trays which are to
be inserted by the operator for each respective use. See
column 2, line 50, through column 3, line 11. Kapp does not
teach an apparatus that provides both kinds of transports in
the same apparatus much less providing the timing as recited
in Appellants' claim 4. There-fore, we will not sustain the
Examiner's rejection of claims 4 and 5.
In view of the foregoing, the decision of the Examiner
rejecting claims 1 through 3 under 35 U.S.C. § 103 is
affirmed; however, the decision of the Examiner rejecting
claims 4 and 5 through 23 under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 97-1890
Application 08/338,707
11
AFFIRMED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Charles R. Malandra, Jr.
Pitney Bowes Incorporated
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