Ex Parte Chastain et al

Patent Trial and Appeal Board

Sep 17, 2012

11522717 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID P. CHASTAIN, ALLEN L. SIMERS,
JOSHUA A. SCHRIVER, JASON W. HARBERT, and
DAVID W. PURCELL
____________________

Appeal 2010-005495
Application 11/522,717
Technology Center 3600
____________________

Before: NEAL E. ABRAMS, CHARLES N. GREENHUT, and
REMY J. VANOPHEM, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005495
Application 11/522,717

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 8-
19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
The claims are directed to a separator card for mailpiece handling
equipment. Claim 8, reproduced below, is illustrative of the claimed subject
matter:
8. A system for separating batches of mail in a
mailpiece sorter, comprising:
card stock interposed between batches of
mail, the card stock having a ferromagnetic
symbology disposed on a face of the card stock,
the symbology indicative of at least one parameter;
an inductive proximity detector operative to
scan the ferromagnetic symbology on the card
stock and to produce an output signal indicative of
the at least one parameter;
a device for conveying the batches of mail
past the inductive proximity detector, and a
processor having stored therein a plurality of
predefined signature profiles each being indicative
of stored information pertaining to a mailpiece job
run, the processor, furthermore, responsive to the
output signal of the inductive proximity detector
for developing information concerning the
mailpiece job run for use by the mailpiece sorter.

REJECTION
Claims 8-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Applicants admitted prior art (“APA”) in view of Nelson
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Application 11/522,717

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(US 3,895,220 iss. Jul. 15, 1975) and Look1 (US-2008/0035730 A1 pub.
Feb. 14, 2008). Ans. 3.

OPINION
Appellants argue independent claims 8 and 14 as a group. We select
claim 8 as the representative claim, and claim 14 will stand or fall with claim
8. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner correctly found, and Appellants do not dispute, that the
APA discloses the basic invention of claim 8 except for the “ferromagnetic
symbology.” Ans. 3 (citing Spec. pp. 1-6 paras. 2-6). In the APA the
“ferromagnetic material is a uniform layer or coating applied to the card
stock.” Spec. p. 2, para. [0004]. The presence of such material is sensed by
a detector and interpreted by a processor. Id. As Appellants point out (App.
Br. 11-12), the purpose of the APA separator cards is to “distinguish
between batches of mail to be sorted, e.g., different customers.” Spec. 1,
para. [0003].
The Examiner correctly found that Nelson demonstrates that the use
of bars, “ferromagnetic symbology” was known in the art. Ans. 4 (citing
Nelson Fig. 1, cols. 4-6). Nelson suggests this type of encoding could be
used to sort mail by customer number or type. Nelson col. 2, ll. 58-61.
Substitution of Nelson’s bars for the uniform layer or coating of the APA
would predictably enable the communication of more detailed information to
the detector and processor, for example, information represented by the
number of bars as compared to merely the presence or absence of a

1 Incorrectly identified by the Examiner as 2008/0035739 (hereinafter
“Huang”) in the Final Rejection and Answer, but correctly identified on
PTO form 892 Notice of References Cited mailed Apr. 25, 2008.
Appeal 2010-005495
Application 11/522,717

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ferromagnetic material. See e.g., Nelson col. 3, ll. 55-68. Thus, we agree
with the Examiner that such substitution would have been obvious to one
having ordinary skill in the art. See e.g., KSR Int’l v. Teleflex Inc., 550 U.S.
398, 416 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results”).
Appellants contend that the Examiner mischaracterizes the function of
the APA card stock as one of sorting as compared to separating batches.
App. Br. 11-12. We disagree. While the mail within each batch may be
further sorted into individual containers, using the cards as a cue to divert
the batch to a particular set of mailpiece containers (Spec. p. 1, para. [0003])
is also properly characterized as sorting.
The APA already demonstrates it was known to use ferromagnetic
cards “between batches of mail.” Nelson need not also teach this same exact
location for the card stock in order to conclude the claimed subject matter
would have been obvious in view of the combined teachings of the APA and
Nelson. Contra App. Br. 12-13. The lack of a single reference disclosing a
particular subcombination of the claimed invention, does not, without more,
indicate that the Examiner erred in reaching a conclusion of obviousness
based upon a combination of prior art disclosures. See In re Keller, 642 F.2d
413, 425 (CCPA 1981). The fact that Nelson uses the symbology for sorting
each individual piece of mail provides a reasonable expectation that such
symbology could also function as a separator or cue to sort, or merely to
separate, batches of mail.
While the Examiner groups claims 8-19 as rejected based on the
combination of APA, Nelson and Look, the Examiner does not appear to
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rely on Look for any teachings related to independent claim 8, nor do
Appellants raise any issues relevant to Look and claim 8. Thus, the
Examiner’s citation of Look insofar as claim 8 is concerned is
inconsequential. See e.g., In re Bush 296 F.2d 491, 496 (C.C.P.A. 1961).
Accordingly, we sustain the Examiner’s rejection of claims 8 and 14.
With respect to dependent claims 9-13 and 15-19, Appellants contend
that neither Nelson nor Huang disclose geometric shapes. We are mindful
that the Examiner incorrectly indicated a “9” in place of a “0” in the Pre-
Grant Publication number. However, the Look reference was properly
identified on PTO form 892, Notice of References Cited, and was identified
by title (Ans. 3). Furthermore, paragraphs not present in Huang were cited
by the Examiner in Final Rej. 3; Ans. 4. Thus, despite the presence of an
incorrect numeral in the Final Rejection and Answer, the rejection, along
with the Notice of References Cited, would have put a reasonable applicant
on notice of the examiner's rejection. See e.g., In re Jung, 637 F. 3d 1356,
1362 (Fed. Cir. 2011). Appellants’ argument directed to Huang does not
apprise us of any error in that rejection.
Accordingly, we sustain the Examiner’s rejection of claims 9-13 and
15-19.
DECISION
The Examiner’s rejection of claims 8-19 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED
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