Ex Parte Caporali

Board of Patent Appeals and Interferences

Jan 11, 2010

10718362 (B.P.A.I. Jan. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL E. CAPORALI
____________

Appeal 2009-003089
Application 10/718,362
Technology Center 3600
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Decided: January 11, 2010
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael E. Caporali (Appellant) seeks our review under 35 U.S.C.
§ 134 (2002) of the Examiner’s decision rejecting claims 1-13 and 15-27.
We have jurisdiction under 35 U.S.C. § 6(b) (2002). We REVERSE.
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THE INVENTION
Appellant’s claimed invention is an insert for mail sorting. Spec. 1.
Claims 1 and 9, reproduced below, are representative of the subject matter
on appeal.
1. A mail sorting bin insert, constructed to be disposed
within a mail sorting bin, the insert comprising:
a bottom defining a substantially planar surface having a
length and a width, wherein at least one of the length and the
width substantially corresponds to at least one of a length and
width of the mail sorting bin; and
at least one support projecting upright from the bottom,
wherein the support is sized and configured to support flat mail
in a substantially vertical orientation, and wherein each support
is constructed such that a maximum height of the support
approximates a maximum height of the mail sorting bin.

9. A mail sorting bin insert, constructed to be disposed within
a mail sorting bin, the insert comprising at least one substantially
rigid substantially vertical section projecting from a substantially
horizontal section, wherein the insert is sized and configured to
receive flat mail from an automatic mail sorter, and wherein each
substantially vertical section has a height of approximately 11
inches when the insert is disposed within the mail sorting bin.

THE EVIDENCE
The Examiner relies upon the following evidence:
Ashbrook US 1,659,509 Feb. 14, 1928
Henig US 3,754,646 Aug. 28, 1973
Lambert US 3,908,821 Sep. 30, 1975
Pippin US 6,715,614 B2 Apr. 6, 2004

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THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 1, 2, 4-10, 12, 13, and 15-27 under
35 U.S.C. § 103(a) as being unpatentable over Ashbrook and Pippin.
2. The Examiner rejected claims 1-13 and 15-27 under 35 U.S.C.
§ 103(a) as being unpatentable over Lambert and Pippin.
3. The Examiner rejected claims 1-13 and 15-27 under 35 U.S.C.
§ 103(a) as being unpatentable over Henig and Pippin.

ISSUE
The Examiner found that each of Ashbrook, Lambert, and Henig
disclose an insert substantially as called for in each of independent claims 1,
9, 19, and 20, except that these references do not disclose that the support is
constructed such that a maximum height of the support approximates a
maximum height of a mail sorting bin (claims 1 and 19) and do not disclose
that the vertical section has a height of approximately 11 inches when the
insert is disposed within the mail sorting bin (claims 9 and 20). See e.g.,
Ans. 3-5. The Examiner found that Pippin discloses supports constructed
such that a maximum height of the support approximates a maximum height
of the mail sorting bin for the purpose of maintaining sequence order and
facilitating delivery and also discloses dimensioning the insert with a height
of approximately 11 inches such that it fits closely within letter trays used by
the U.S. Postal Service for allowing storage and use of the insert with flats
tubs or letter trays. See e.g., Ans. 3, 5. The Examiner concluded that it
would have been obvious to modify the vertical supports of the devices of
Ashbrook, Lambert, and Henig, so that the maximum height of the support
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approximates a maximum height of the mail sorting bin, as taught by Pippin,
for the purpose of maintaining sequence order and facilitating delivery, and
it would have been obvious to dimension the insert to have a height of
approximately 11 inches such that it fits closely within letter trays used by
the U.S. Postal Service for the purpose of allowing storage and use of the
insert with flats tubs or letter trays. See e.g., Ans. 4, 6.
Appellant contends that there is simply no motivation to use either the
envelope holder of Ashbrook, the record keeping tray of Lambert, or the
receptacle of Henig, with the flats tub of Pippin or to modify these prior art
devices to have a support or vertical section sized as called for in claims 1, 9,
19, and 20. See e.g., App. Br. 8, 22, 35.
The issue presented by this appeal is:
Has Appellant shown the Examiner erred in concluding that it would
have been obvious to one having ordinary skill in the art to modify the
devices of Ashbrook, Lambert, and Henig to have either supports with a
maximum height that approximates a maximum height of a mail sorting bin
or vertical sections with a height of approximately 11 inches in view of the
teachings of Pippin?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Ashbrook discloses a device for holding envelopes, the device
having channel shaped pockets 6 that are shorter than the height of
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standard envelopes so that the envelopes may readily be grasped
and removed. Ashbrook 1, ll. 3-6, and ll. 24-26; fig. 1.
2. Lambert discloses a record keeping tray including a separator
insert assembly for segregating and storing canceled checks
according to categories. Lambert, col. 1, ll. 25-28 and ll. 33-35.
3. Henig discloses a receptacle for use in retaining groups of letters in
proper form during sorting and handling and for their subsequent
removal as a group or stack ready for banding or tying. Henig, col.
1, ll. 5-7 and ll. 41-44; Henig, at col. 4, ll. 59-62. Henig’s notches
7 are considerably shorter than the height of the letters held in the
receptacle so that the notches 7 do not interfere with removal of the
letters as a group or stack. Henig, figs. 1, 2, 2A.
4. Pippin discloses a multi-bag storage device 30 preferably having a
depth of at least twelve inches and having dimensions that permit it
to fit closely within existing letter trays 50 used by the U.S. Postal
Service for storage. Pippin, col. 6, ll. 10-14; col. 8, ll. 23-26;
fig. 4.

PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject
matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
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between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 406-07 (“While the sequence of these questions might be reordered
in any particular case, the [Graham] factors continue to define the inquiry
that controls.”)
The Supreme Court stated that when the claimed subject matter
“involve[s] more than the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement,” then an explicit analysis must be provided to
articulate “an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.” KSR, 550 U.S. at 417-18. “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418.

ANALYSIS
Claim Construction
The Examiner construed the support/vertical section size limitations
of claims 1, 9, 19, and 20 as purely functional limitations, and thus
determined that it “is not actually necessary to place the insert in a bin or
change it physically to meet the limitations of the claim.” See e.g., Ans. 22-
23. We disagree with the Examiner’s treatment of these limitations as
purely functional. While the mail sorting bin is not positively recited in
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claims 1 and 19, these claims recite that the support is “constructed such that
a maximum height of the support approximates a maximum height of the
mail sorting bin.” This claim language imparts a structural limitation on the
height of the support, requiring it to be of a specific height that approximates
the height of a mail sorting bin. Claims 9 and 20 similarly recite claim
language that imparts a structural limitation on the height of the support,
requiring it to be approximately 11 inches when the insert is disposed within
the mail sorting bin. While we acknowledge that the dimensions of the mail
sorting bin are not recited in any of the independent claims, this omission
does not somehow transform these structural limitations of the claims into
functional limitations.
Prior Art Rejections
For the reasons provided below, the Examiner’s stated rationales for
modifying the heights of the vertical supports in the devices of Ashbrook,
Lambert, and Henig to meet the claims are inadequate. The Examiner
determined that it would have been obvious to modify the height of the
support in Ashbrook’s envelope holder “for the purposes of maintaining
sequence order and facilitating delivery and allowing storage and use of the
insert with flats tubs or letter trays.” Ans. 4 (claim 1), See also Ans. 5 (claim
9), Ans. 7 (claim 19), Ans. 8 (claim 20). The Examiner’s rationale,
however, fails to provide an articulation of an adequate reason why a person
having ordinary skill in the art would have been led to look to the teachings
of Pippin so as to use the envelope holder of Ashbrook for postal mail
sorting and delivery. Further, the mail sorting bin of Pippin has a maximum
height of at least 12 inches. Fact 4. The channel-shaped pockets 6 of
Ashbrook’s envelope holder are shorter than the height of standard
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envelopes so that the envelopes can be “readily grasped and removed”. Fact
1. Modifying the vertical supports of Ashbrook’s envelope holder to make
them the same height as the bin of Pippin, as called for in claims 1 and 19, or
to make them approximately 11 inches, as called for in claims 9 and 20,
would make the vertical supports taller than the height of standard envelopes
and thus destroy the purpose of envelope holder of Ashbrook by not
allowing the envelopes to be readily grasped and removed.
The Examiner determined that it would have been obvious to modify
the height of the vertical supports in the record keeping tray of Lambert “for
the purpose of maintaining sequence order and facilitating delivery,” Ans.
10 (claim 1) and “for the purpose of storing and using the insert with flats
tubs or letter trays, Ans. 11 (claim 9). See also Ans. 13 (claim 19), Ans. 14
(claim 20). The Examiner’s rationale, however, fails to provide an
articulation of an adequate reason why a person having ordinary skill in the
art would have been led to look to the teachings of Pippin so as to use the
canceled check record keeping tray of Lambert for postal mail sorting and
delivery.
The Examiner determined that it would have been obvious to modify
the height of the support in Henig’s receptacle “for the purpose of
maintaining sequence order and facilitating delivery,” Ans. 16 (claim 1), and
“for the purpose of storing and using the insert with flats tubs or letter trays,”
Ans. 17 (claim 9). See also Ans. 20 (claims 19 and 20). Henig discloses
using its receptacle to arrange and orient letters so as to be removable as a
group or stack ready for banding or tying. Fact 3. As such, Henig’s notches
7 are considerably shorter than the height of the letters held in the receptacle
so that the notches 7 do not interfere with removal of the letters as a group or
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stack. Fact 3. We find no reason why a person having ordinary skill in the
art would have been led to increase the height of the notches 7 of Henig to
be 11 or 12 inches tall, since a notch of such height would create a divider
between each letter that is taller than the height of the letter and would thus
destroy the intended use of Henig’s receptacle. Further, the Examiner’s
rationale fails to provide an articulation of an adequate reason why a person
having ordinary skill in the art would have been led to look to the teachings
of Pippin so as to adapt the receptacle of Henig so that it would match the
height of a mail sorting bin used for postal mail sorting and delivery.

CONCLUSION
Appellant has shown the Examiner erred in concluding that it would
have been obvious to one having ordinary skill in the art to modify the
devices of Ashbrook, Lambert, and Henig to have either supports with a
maximum height that approximates a maximum height of a mail sorting bin
or vertical sections with a height of approximately 11 inches in view of the
teachings of Pippin.

DECISION
The decision of the Examiner to reject claims 1-13 and 15-27 is
REVERSED.

REVERSED

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