09953286 (B.P.A.I. Jul. 26, 2010)

Ex Parte Deshayes et al

Board of Patent Appeals and InterferencesJul 26, 2010

09953286 (B.P.A.I. Jul. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte XAVIER DESHAYES and CLAUDE TETARD ____________ Appeal 2009-013904 Application 09/953,286 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and STEPHEN C. SIU Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013904 Application 09/953,286 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-3 and 5-9 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Oral arguments were presented on July 15, 2010. SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellants’ claimed invention is directed to a high-rate franking machine for printing postal indicia with first and second printing modules in which a printing module can be set back from the conveying path (Spec. 1:25-2:4). Claim 1, reproduced below, is representative of the subject matter of appeal. 1. High-rate franking machine comprising: means for transporting a mailpiece along a mailpiece-conveying path; means for printing postal indicia on the mailpiece, said printing means comprising first and second printing modules alternately moveable from a printing position along the conveying path at which printing of the postal indicia occurs and an off-set position displaced from the conveying path to permit cleaning of the print module, wherein when positioned in the printing position, the respective print module prints the entire postal indicia. Appeal 2009-013904 Application 09/953,286 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Harvey US 6,026,385 Feb. 15, 2000 Fowlkes US 6,361,163 B1 Mar. 26, 2002 The following rejections are before us for review: 1. Claims 1-3 and 5-9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fowlkes and Harvey. THE ISSUES At issue is whether the Appellants have shown that the Examiner erred in making the aforementioned rejections. This issue turns on whether Fowlkes discloses first and second printing modules which are alternately moveable to “an off-set position displaced from the conveying path to permit cleaning of the print module”. FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence:2 FF1. Fowlkes has disclosed an inkjet printer for printing an image on a first receiver and a second receiver (Title). 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2009-013904 Application 09/953,286 4 FF2. Fowlkes at Fig.7 discloses an embodiment with first print head 70a and second print head 70b associated with a respective first platen 180a and second platen 180b. A connecting reservoir 120 includes conduits 125a and 125b for supplying ink to the print heads 70a and 70b respectively. The conveying path would be that of the web 30 (Fig. 7 and Col. 7:20-40). FF3. Fowlkes at 7:40-44 states: “An advantage of this third embodiment of the invention is that if one print head (i.e., either print head 70a or print head 70b) malfunctions and is taken out of service, the other print head may be used to print on receivers 30/40 and suitably operating controller 220”. FF4. Fowlkes at Col. 7:40-44 does not explicitly state that either print head 70a or 70b can be moved to an off-set position displaced from the conveying path to permit cleaning of the print module. 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 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 407 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the Appeal 2009-013904 Application 09/953,286 5 inquiry that controls.”) In KSR, the Supreme Court emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” id. at 415-16. ANALYSIS The Appellants argue that the rejection of claim 1 is improper because Fowlkes fails to show printing modules moveable from “an off-set position displaced from the conveying path” (Br. 11). In contrast, the Examiner has determined that Fowlkes at Col. 7:40-44 discloses that if one print head malfunctions that the other print head may be used to print and that one of ordinary skill in the art “would find it obvious that the print head could be moved away from the printing path (i.e. to an offset position displaced from the conveying path) when it malfunctions or needs to be taken out of service for whatever reason” (Ans. 7). We agree with the Appellants. Claim 1 includes a limitation requiring: first and second printing modules alternately moveable from a printing position along the conveying path at which printing of the postal indicia occurs and an off-set position displaced from the conveying path to permit cleaning of the print module (claim 1, emphasis added). Thus, the claim requires in part first and second printing modules alternately moveable to an off-set position displaced from the conveying path. While Fowlkes does disclose that if one print malfunctions and is taken out of service that the other print head may be used to print on receivers 30/40 (FF3) there is no specific disclosure that the printing heads are alternatively moveable to an off-set position displaced from the Appeal 2009-013904 Application 09/953,286 6 conveying path (FF4) as the claim requires. In Folkes the malfunctioning print head could possibly remain in the same position while the other print head printed and to assert that the malfunctioning print was necessarily off- set from the conveying path would be only conjecture that has not been actually disclosed by the reference (FF4). The Examiner has also asserted that one of ordinary skill in the arts would find it obvious that the print head could be moved away from the printing path when it malfunctions or needs to be taken out of service. Given the structure of the assembly in Fowlkes Fig. 7 it is unclear that such a modification would have been obvious given the extent to which the structural assembly has been disclosed. Fowlkes Fig. 7 shows that print heads 70a and 70b that they are attached to the conduits 125a and 125b which have a relatively short length and it is unclear that they are even long enough to allow the prints heads to be moved from the conveying path in the cited reference. For these reasons the rejection of claim 1 and its dependent claims is not sustained. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting claims 1-3 and 5-9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fowlkes and Harvey. DECISION Examiner’s rejection of claims 1-3 and 5-9 is reversed. Appeal 2009-013904 Application 09/953,286 7 REVERSED MP SUGHRUE MION, PLLC 2100 PENNSYLVANIA AVENUE, N.W. SUITE 800 WASHINGTON DC 20037