Ex Parte DaCunha

Board of Patent Appeals and Interferences

Jul 10, 2007

10741269 (B.P.A.I. Jul. 10, 2007)

This opinion is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PITNEY BOWES, INC.
____________

Appeal 2007-2637
Application 10/741,269
Technology Center 1700
____________

Decided: July 10, 2007
____________

Before JAMESON LEE, RICHARD TORCZON, and ROMULO H.
DELMENDO, Administrative Patent Judges.

TORCZON, Administrative Patent Judge.

DECISION ON APPEAL
This appeal relates to methods for creating folded, scented inserts for
mail items created in a high-speed mail-processing system. The examiner
rejected claims 1 and 2 under 35 U.S.C. 103 as having been obvious. The
appellant (Pitney Bowes) seeks review of the rejection. We affirm.
First, the claim scope and meaning of contested limitations of claims
must be established.1 Next, the scope and content of the prior art must be

1 Abbott Labs. v. Andrx Pharm., Inc., 452 F.3d 1331, 1335-36, 79 USPQ2d
1321, 1324 (Fed. Cir. 2006) (scope and meaning); Aero Prods. Int'l, Inc. v.
Appeal 2007-2637
Application 10/741,269

determined, the differences between the prior art and the claims ascertained,
and the ordinary level of skill in the art resolved. Objective evidence of the
circumstances surrounding the origin of the claimed subject matter (so-
called secondary considerations) may also be relevant. Such secondary
considerations guard against the employment of impermissible hindsight.2
CLAIMS
Claim 13 defines the invention as follows—
1. A method for creating scented advertisement inserts from
rectangular sheets for inclusion as inserts into mail pieces, the
sheets having left, right, top and bottom edges, the method
comprising:
applying a scented adhesion to a left strip along the left
side of the sheets and to a right strip along the right side of the
sheets, the left strip and right strip being substantially along an
entire length of the left side and the right side;
making a first fold along the left side of the sheets
parallel to the left edge, the first fold covering the left strip
having the scented adhesion, the first fold being substantially
along the entire length of the left side;
making a second fold along the right side of the sheets
parallel to the right edge, the second fold covering the right
strip having the scented adhesion, the second fold being
substantially along the entire length of the right side;
Intex Rec. Corp., 466 F.3d 1000, 1012 n.6, 80 USPQ2d 1481, 1488 n.6 (Fed.
Cir. 2006) (appropriate to focus on disputed limitations).
2 Graham v. John Deere Co., 383 U.S. 1, 17, 36 (1966), cited with approval
in KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007). The
record on appeal does not contain objective evidence of secondary
considerations.
3 All claim language is reproduced from the claim appendix to the appeal
brief.
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after making the first and second folds, folding the sheets
substantially in half in a direction orthogonal to the first and
second folds and substantially bisecting the first and
second folds; and
stacking the sheets in preparation for feeding as inserts
into mail pieces.

An example of the claimed folding method is illustrated in Pitney
Bowes' FIG. 3:

Pitney Bowes' FIG. 3 shows a sheet 30 with top and bottom folds 31
enclosing scented portions 33 and an orthogonal middle fold 32. The
sheet 30 is said to produce the relatively even stack 34 shown in profile.
Claim 2 further limits the method of claim 1 by further including the
steps of:
inserting the stacked sheets into an automated sheet
feeding device; and
3
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Application 10/741,269

automatically feeding individual sheets onto collations of
documents passing below on an inserter chassis to form mail
pieces having scented advertisement inserts.

SCOPE AND CONTENT OF PRIOR ART
Claim 1 stands rejected over a patent to Olson.4 Claim 2 stands
rejected over the combination of Olson and a patent to Viens.5
Pitney Bowes notes that Viens discloses a conventional inserter
machine of the type that Pitney Bowes disclosed as the prior art in its
specification.6 Pitney Bowes describes7 such machines and their
conventional use as follows—
It is well known in automated mail production systems to
include advertising inserts into individualized mail pieces. It is
also known that such advertising inserts may include
advertisements for perfumes or cologne, and that such
advertisements may be comprised of folded sheets that release a
sample of advertised scent when the folded portion opened.
Inserter systems such as those applicable for use with the
present invention, may include machines such as the 8 series,
9 series, and APSâ„¢ inserter systems available from Pitney
Bowes Inc. of Stamford Connecticut.
In many respects, the typical inserter system resembles a
manufacturing assembly line. Sheets and other raw materials
(other sheets, enclosures, and envelopes) enter the inserter

4 Craig W. Olson, "Publication reference-aid system [sic, and] apparatus
therefor", U.S. Patent 5,911,442 (issued 15 June 1999) (Olson).
5 Wilfred S. Viens, "Apparatus and method for conveying a product", U.S.
6,629,690 (issued 7 October 2003) (Viens).
6 Br. 11. Viens itself also describes the insertion of pre-folded advertising
inserts into multi-page products as part of the prior art. Viens 1:12-24.
7 Specification (Spec.) 1:10-3:9.
4
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system as inputs. Then, a plurality of different modules or
workstations in the inserter system work cooperatively to
process the sheets until a finished mail piece is produced. The
exact configuration of each inserter system depends upon the
needs of each particular customer or installation.
As seen in Fig. 1, a typical inserter system prepares mail
pieces by gathering collations 13 of documents on a
conveyor 15. Above the conveyor 15, feeders 1 feed documents
onto the conveyor to form the collations 13. Feeders 1
hold a stack 10 of inserts. The stack 10 is supported by a
guide 11 and a feeding mechanism 12. Further details of an
exemplary feeder 1 are provided in copending U.S. Patent
Application 10/004242 filed Oct. 25, 2001, titled
REMOVABLE SHEET FEEDER WITH JAM CLEARANCE
FOR USE IN AN ENVELOPE INSERTING MACHINE,
assigned to the assignee of the present application, which is
hereby incorporated by reference in its entirety.
The collations 13 are then transported on the conveyor 15
to an insertion station 16 where they are automatically stuffed
into envelopes. After being stuffed with the collations 13, the
envelopes are removed from the insertion station 16 for further
processing. Such further processing may include automated
closing and sealing the envelope flap, weighing the envelope,
applying postage to the envelope, and finally sorting and
stacking the envelopes.
A prior art method of preparing folded scented inserts is
depicted in Fig. 2. Parallel folds 22, at opposite sides of the
insert 20, are formed to enclose the scented portions 23. The
entire insert 20 is also typically folded in half along fold 21,
parallel to the folds 22 for the scented portion. After the
insert 20 is folded in half, the portion near fold 21 has a
thickness of two times the sheet thickness. However, at the
opposite side of insert 20, having the folded scented
portions 23, the total thickness of the insert is four times the
sheet thickness.
The consequences of one side of the insert 20 being twice
as thick as the other are depicted in stack 24 of Fig. 2. When
inserts 20 are stacked, the stacking will be uneven, and the side
of the stack having the scented portions will tend to be higher.
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Thus, the stack 24 will be more likely to lean and tip over. A
traditional method for solving this problem is to use small
stacks 24, or to provide additional framework on feeder 10 to
hold up a lopsided stack 24.

Although the specification refers to Pitney Bowes machines for examples of
the prior art, the Viens technology appears to be a non-Pitney Bowes
example of such conventional technology.8
The examiner relies on Olson to teach the folding limitations of
claim 1.9 Olson discloses a reference marker for use with publications and
similar articles.10 The examiner explains Olson's folding with reference to
Olson's FIGS. 44 and 45. These figures illustrate a portfolio embodiment of
Olson's invention. Olson's FIG. 44 is shown below (indicia added):

8 The Viens patent is listed as assigned to Gunther International, Ltd.
9 Examiner's Answer (Ans.) 3-4.
10 Olson 1:21-31.
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Olson's FIG. 44 shows an embodiment with top and bottom
folds 26A11 and an orthogonal middle fold. Olson has adhesive layer
means 22. Olson explains that the adhesive or the substrate may be
scented.12 Olson's FIG. 45 (below, indicia added) shows the article after the
folding is completed.

11 The figures are a bit confusing because several fold lines are
labeled "26A". For clarity, the fold lines on which the examiner relies are
indicated with arrows.
12 Olson 36:35-40.
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According to the examiner, if the frame of reference is rotated 90°
such that Olson's top and bottom edges become left and right edges, then the
requirement for left and right folds with an orthogonal middle fold is met.
Pitney Bowes argues that Olson is not analogous art.13 The examiner insists
that Olson is relevant since it can be "advertising specialty".14
Art is considered analogous if it satisfies either of two separate tests.
First, is the art from the same field of endeavor, regardless of the problem
addressed? Second, if not, then is the reference reasonably pertinent to the
particular problem with which the inventor is involved?15 Olson could be
considered to be from the same field broadly conceived (mass-production

13 Br. 9.
14 Olson 13:54-60.
15 In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir.
2004).
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paper folding), but we consider it more apt to treat Olson as reasonably
pertinent to the problem facing Pitney Bowes.
The problem facing Pitney Bowes (creating a stable stack of folded
inserts) is not a problem that Olson addresses directly. To solve its problem,
however, Pitney Bowes turned to mechanisms and techniques in the paper-
folding art.16 Olson discloses a variety of folded paper items intended for
mass production. Consequently, Olson is at least reasonably pertinent to one
trying to determine options available for mass-production paper-folding.
Olson is mainly good for showing that the art has identified several
paper folding options. Not surprisingly, two middle folds (orthogonal and
parallel) dominate the art of folding (approximately) rectangular paper.
Olson illustrates both.17 Indeed, the embodiment on which the examiner
relies illustrates a middle fold that is both parallel and orthogonal, depending
on which side folds are used for reference.
DIFFERENCES
Pitney Bowes is correct that Olson is not directed to folding mailing
inserts. The Olson embodiment on which the examiner relies is a pocket
portfolio. Moreover, the particular embodiment on which the examiner
relies does not show adhesive along the entire edge (and indeed it would be
counterproductive for the pocket portion).18

16 Spec. 5:10-11.
17 Compare the book jacket folds (Olson FIGS. 30, 32, and 34) with the
portfolio fold (FIG. 45). For non-orthogonal shapes, even non-orthogonal
folds are illustrated (e.g., Olson FIG. 51).
18 But see, e.g., Olson FIG. 29, showing adhesive strips 22 co-extensive with
the sides of the illustrated book jacket.
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While Viens is said to represent the conventional prior art, the
conventional prior art approach as Pitney Bowes describes it, produces a
relatively uneven stack as shown in Pitney Bowes' FIG. 2:

Pitney Bowes' FIG. 2 shows a sheet 20 with end folds 22 enclosing
scented portions 23 and a parallel middle fold 21. The sheet 20 is said to
produce the relatively uneven stack 24 shown in profile. While Viens
teaches using folded inserts,19 the examiner has not pointed us to a teaching
for any orthogonal folds.
LEVEL OF SKILL
We look to the evidence of record—the applicant's disclosure, the
cited references, and any declaration testimony—in resolving the ordinary

19 Viens 4:45-5:12.
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level of skill in the art.20 We focus on what such a person knew and could
do at the time of filing.21
We have already discussed what the specification says those in the art
knew about folding paper inserts. The specification indicates that
appropriate mechanisms and techniques for making the claimed folds are
"well known in the art."22 The only other direct evidence of skill in the
specification is its closing assurance that those of skill would readily
apprehend variations on the embodiments disclosed.23
Olson demonstrates the wide range of creativity those skilled in the
paper fabrication art bring to folding paper. Olson's folds are parallel,
orthogonal, and diagonal; simple and compound; solid and perforated; and
fixed with plain, scented, and flavored adhesives. Olson expects far more
from practitioners in the art than the claimed invention demands.
Viens presupposes considerable electro-mechanical skill in this art.
For instance, Viens expects designers to pick appropriate sensors,24 and to
understand the importance of maintaining stack balance and to adjust the
system to maintain stack neatness.25 Viens closes with the observation that

20 Ex parte Jud, 2006 WL 4080053 at *2 (BPAI) (rehearing with expanded
panel). We have not been directed to any testimony in this appeal.
21 DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1362-63,
80 USPQ2d 1641, 1646-47 (Fed. Cir. 2006); Custom Accessories, Inc. v.
Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed.
Cir.1986).
22 Spec. 5:10-11.
23 Spec. 6:1-5.
24 Viens 6:18-23.
25 Viens 10:51-60.
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the high-speed, adjustable system is event-driven and relies on sensors and
computer controls to ensure proper position and function during operation.26
From the facts above, we infer that those skilled in the art possessed
considerable mechanical sophistication, appreciated the range of
mechanisms and techniques available to fold paper, and were competent to
implement a wide range of folding designs within a high-speed insertion
system.
ANALYSIS
Claim grouping
Although Pitney Bowes nominally argues claims 1 and 2 separately,
the additional limitations in claim 2 appear to be in the admitted prior art.
Moreover, the focus of the argument for claim 2 repeats putative
deficiencies of Olson in meeting claim 1, deficiencies that Viens is said not
to remedy.27 Consequently, we treat claim 2 as standing or falling with
claim 1.
Combining Olson with the mailing insertion prior art
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.28
When there is a design need to solve a problem and there are a finite number
of identified, predictable solutions, a person of ordinary skill has a good

26 Viens 12:61-13:16.
27 Br. 11.
28 Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161,
82 USPQ2d 1687, 1690-91 (Fed. Cir. 2007), citing KSR Int'l, 127 S. Ct.
at 1739, 82 USPQ2d at 1395.
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reason to pursue the known options within his or her technical grasp. If this
leads to the expected success, it is likely the product not of innovation but of
ordinary skill and common sense. The fact that a combination was obvious
to try might show that it was obvious under §103.29 In the mass-produced,
folded, orthogonal paper art, there is a small number (2) of common mid-
line folds (orthogonal and parallel). Those skilled in the art of high-speed
mailing inserts would have been aware of the folding options available and
the mechanisms for implementing those options. Given the small number of
common, practical mid-line fold options, it does not take much reason to try
one or the other. The never-ending search for aesthetic variation could be
reason enough.
HOLDING
The rejection of claims 1 and 2 under § 103 is—
AFFIRMED

LP

Michael J. Cummings
PITNEY BOWES INC.
INTELLECTUAL PROPERTY AND TECHNOLOGY LAW DEPT.
35 WATERVIEW DRIVE
P.O. BOX 3000
SHELTON, CT 06484

29 KSR Int'l, 127 S. Ct. at 1742, 82 USPQ2d at 1397.
13