Ex Parte Brown et al

Patent Trial and Appeal Board

Apr 15, 2014

11217979 (P.T.A.B. Apr. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHRIS BROWN and DAVID L. DRUMMOND
____________________

Appeal 2012-001671
Application 11/217,979
Technology Center 3600
____________________

Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-001671
Application 11/217,979

2
STATEMENT OF THE CASE
Chris Brown et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1, 2, 4-22, and 29-31 under 35
U.S.C. § 103(a) as unpatentable over Graushar (US 6,167,326; iss. Dec. 26,
2000) and Hendrickson (US 6,601,847 B2; iss. Aug. 5, 2003).1 App. Br. 4.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 1, 9, and 16 are independent. Claim 1 is illustrative of the
claimed subject matter and reads:
1. A method of combining mail streams,
comprising:
creating a first book on a production line,
wherein the first book is associated with a first
recipient address; and
depositing a second book via a book feeder
on the first book as the first book moves along the
production line, wherein the second book is
associated with a second recipient address.

ANALYSIS
Regarding claim 1, the Examiner found that Graushar discloses
depositing a second book via a book feeder on a first book. Ans. 4 (citing
Graushar, col. 3, ll. 21-34). The Examiner conceded that Graushar does not
explicitly disclose that a feeder section 40 deposits a second book directly on
top of a first book, but found that Graushar discloses that the feeder sections

1 Claims 3 and 23-28 were cancelled.
Appeal 2012-001671
Application 11/217,979

3
feed books in an order “such that a second book would in fact be on top of a
first book” when the books are bundled by a stacker 52. Id. at 5.
Appellants contend that Graushar discloses a stacker 52 that stacks
books that are received from a conveyor 46 after the books have already
been deposited onto conveyor 46. App. Br. 5. (citing Graushar, col. 3, ll. 50-
51, 62-65). Appellants also contend that Graushar discloses feeder sections
38, 40 that are separate structures from a stacker 52, and that one of ordinary
skill in the art would have known that a book feeder feeds books onto a line,
whereas a stacker merely stacks books after they have already been fed onto
the line. Id.
We understand the Examiner’s position to be that Graushar discloses
depositing a second book on top of a first book as books are fed by a
conveyor 46 into the stacker 52, such that the conveyor 46 corresponds to
“the book feeder” recited in claim 1. We disagree with this position.
In Appellants’ Specification, a “feeder” is described as a component
that feeds books onto a moving surface, whereas a “stacker” is described as
a different component that receives these books at the end of the moving
surface. See Spec., paras. [0029] and [0030], fig. 1A. The moving surface
transports the books that are fed onto it by the feeder. Graushar discloses
feeder sections 38, 40 that “selectively feed books onto a conveyor 46.”
Graushar, col. 3, ll. 50-51; fig. 2. Conveyor 46 transports the books that are
fed onto it by feeder sections 38, 40. Downstream from feeder sections 38,
40, the books are “directed to a stacker 52 . . . to produce the desired zip
code bundles.” Graushar, col. 3, ll. 62-65. Similarly to Appellants’
Specification, then, Graushar describes that a structure called a “feeder”
feeds books onto a moving surface (conveyor 46), and a structure called a
Appeal 2012-001671
Application 11/217,979

4
“stacker” receives these books at the end of conveyor 46. Graushar, col. 3,
ll. 50-51, 62-65; fig. 2. Graushar does not disclose that stacker 52 provides a
book feeding function like feeder sections 38, 40, but rather, discloses that
stacker 52 provides a book receiving function. Therefore, Graushar provides
evidence that one of ordinary skill in the art would recognize that a “book
feeder” is a structure that feeds books onto a conveyor upstream of a stacker,
and that both a “conveyor” and a “stacker” are different from a “book
feeder,” as claimed.
Additionally, claim 1 recites that depositing of a second book on a
first book occurs “as the first book moves along the production line.” The
Examiner has not provided any evidence that a first book is moving along a
production line when a second book is deposited on top of the first book in
Graushar’s stacker 52.
Thus, we agree with Appellants that one of ordinary skill in the art
would not understand the stacking of books in the stacker 52 of Graushar to
correspond to depositing of one book on top of another “via a book feeder”
as recited in claim 1.
The Examiner also relied on Hendrickson for suggesting modifying
the method of Graushar to provide depositing a second article directly on top
of a first article. Ans. 5-6. The Examiner found that Hendrickson discloses
depositing a second article on a first article with two different addresses for
the purpose of stacking mailpieces based on delivery points. Id. at 5 (citing
Graushar, col. 4, l. 65 – col. 5, l. 22). Appellants contend that Hendrickson
does not teach depositing “via a book feeder,” and instead describes stacking
of mail pieces in mail tubs 40-1, 40-2 that are located at a final destination of
Appeal 2012-001671
Application 11/217,979

5
a mail collating process. Reply Br. 3-4 (citing Hendrickson, col. 9, ll. 4-9,
20-26).
We agree with Appellants that the Examiner did not provide evidence
that Hendrickson teaches using a book feeder to deposit one book on top of
another. At most, Hendrickson teaches the stacking of articles at the end of
a production line, similar to the operation of stacker 52 in Graushar.
In view of the above, we reverse the rejection of claim 1 and its
dependent claims 2, 4-8, and 29.
Independent claim 9 is directed to an apparatus comprising a memory
having a plurality of instructions that enable a controller to “deposit [a] first
secondary book via a book feeder on [a] first primary book.” Independent
claim 16 is directed to a machine-accessible medium having instructions
that, when executed, cause a machine to “deposit [a] first secondary book
via a book feeder on [a] first primary book.” The Examiner’s findings
(Ans. 3-7) and Appellants’ contentions (App. Br. 8; Reply Br. 8-9) in
relation to claims 9 and 16 are similar to those discussed supra regarding
claim 1. Thus, we reverse the rejection of claim 9 and its dependent claims
10-15 and 30, and claim 16 and its dependent claims 17-22 and 31.

DECISION
We REVERSE the Examiner’s rejection of claims 1, 2, 4-22, and 29-
31.

REVERSED

mls