Ex Parte Doery

Board of Patent Appeals and Interferences

Dec 29, 2010

11254516 (B.P.A.I. Dec. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL S. DOERY
____________

Appeal 2009-009269
Application 11/254,516
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, 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.

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Application 11/254,516

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STATEMENT OF THE CASE
Michael Doery (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 3, 7, 9, 11, 12, 14 and 15. Claims 2,
4-6, 8, 10, 13 and 16-19 have been canceled. We have jurisdiction over this
appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a vertical mail piece stacker system.
Spec. [001] and fig. 1.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A stacker system for receiving mailpieces from a
conveyor system having at least one guide rail for directing the
mailpieces into the stacker system, the stacker system
comprising:
a back wall and a side wall, the back wall spaced relative
to the guide rail of the conveyor system to allow each mailpiece
to drop freely therebetween without contacting the guide rail;
a platform adapted to support a stack of mail pieces, said
platform mounted adjacent said back wall and said side wall,
said platform moveable in a vertical direction and defining an
acute angle relative to the back wall for registration of the
mailpieces along an edge;
a support means adapted to maintain the vertical position
of each uppermost mailpiece relative to the guide rail and to
incrementally lower the vertical position of the platform in
response to the weight of additional mailpieces stacked on the
platform.

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THE REFERENCES
The Examiner relies upon the following as evidence of
unpatentability:
Guerrero US 5,415,390 May 16, 1995
Beauchamp US 6,631,902 B1 Oct. 14, 2003
Caporali US 6,648,284 B2 Nov. 18, 2003

THE REJECTIONS
The following rejections are before us for review:
The Examiner rejected claims 1, 7 and 11 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
The Examiner rejected claims 1, 3, 7, 9 and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Beauchamp and Caporali.
The Examiner rejected claims 11, 12 and 15 under 35 U.S.C. § 103(a)
as unpatentable over Beauchamp, Caporali and Guerrero.

THE ISSUES
1. Does the originally filed application support the limitation “to allow
each mailpiece to drop freely therebetween without contacting the
guide rail,” as called for by each of independent claims 1 and 11?
2. Does the originally filed application support the limitation of a
“tunable spring including an adjustment mechanism for altering a
spring rate property of the spring,” as called for by dependent claim
7?
3. Would the combined teachings of Beauchamp and Caporali have
prompted a person of ordinary skill in the art to modify the media
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storage bin of Beauchamp with the insert orientation block of
Caporali?

SUMMARY OF DECISION
We AFFIRM.

OPINION
Issue (1)
Each of claims 1 and 11 requires “each mailpiece to drop freely
therebetween without contacting the guide rail.” Br., Claims Appendix. The
Examiner takes the position that Appellant’s Specification does not support
the limitation “without contacting the guide rail.” Ans. 3-4. Appellant
argues that the language “without contacting the guide rail” is
“understandable in view of the specification and drawings” and that, “[t]he
drawings clearly show that the mailpieces are allowed to drop freely without
contacting the guide rail.” Br. 10. The Examiner responds that according to
the “as-filed disclosure” of Appellant’s Specification, “the guide rail in the
stacker system per the time of filing . . . contacted the trailing edge of the
mail piece.” Ans. 8. See also Spec. [0020], [0026] and [0031].
We do not agree with Appellant’s position for the following reasons.
At the outset, we note that we could not find any portion of Appellant’s
Specification, and Appellant has not pointed to any portion, that describes
the mailpieces being dropped “without contacting the guide rail.”
Furthermore, we agree with the Examiner that Appellant’s Specification
discloses, “[g]uide bars or strips 32 and 34 [that] help guide the portion of
the mail piece trailing the lead edge of the mail piece” Ans. 8. See also
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Spec. [0020]. Moreover, regarding Appellant’s drawings, Figures 1-5 do not
specify any dimensions. Since Appellant’s Specification does not indicate
that figures 1-5 are drawn to scale, the drawings cannot be relied upon to
establish that each mailpiece drops freely without contacting the guide rail,
as Appellant contends. See Hockerson-Halbertstadt, Inc. v. Avia Group
Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000) (patent drawings not designated as
being drawn to scale cannot be relied upon to define precise proportions of
elements if the specification is completely silent on the issue). Accordingly,
we agree with the Examiner that Appellant’s Specification does not convey
with reasonable clarity to a person of ordinary skill in the art that each
mailpiece drops freely “without contacting the guide rail,” as called for by
claims 1 and 11.
Therefore, the rejection of claims 1 and 11 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is sustained.
Issue (2)
Claim 7 requires a “tunable spring including an adjustment
mechanism for altering a spring rate property of the spring.” Br., Claims
Appendix. The Examiner takes the position that although the Specification
describes an adjustment mechanism, it does not support the limitation “for
altering a spring rate property of the spring.” Ans. 4-5. Appellant argues
that because paragraph [0024] of the Specification states that the “spring
may be tuned” any person skilled in the art would understand that “tuning”
means that “the spring rate may be modified.” Br. 11, see also Spec. [0024].
The Examiner responds that the Specification merely describes the way the
spring can be tuned, namely, “‘[b]y either changing the spring arrangement
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for the different mail pieces (adding, removing or substituting different
springs or providing an adjustment mechanism) or selecting a spring that is
an accommodation,’” but fails to disclose altering the spring rate property of
the spring. Ans. 9 citing Spec. [0024].
To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that Appellant was in
possession of the claimed invention as of the filing date. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). In this case, we agree
with the Appellant that “tuning” (modifying) the spring to accommodate
different mail piece widths by adding, removing or substituting different
springs or by providing an adjustment mechanism also alters a spring rate
property of the spring. Hence, we find that the Specification conveys with
reasonable clarity to a person of ordinary skill in the art the claimed “tunable
spring including an adjustment mechanism for altering a spring rate property
of the spring.” Therefore, the rejection of claim 7 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
cannot be sustained.
Issue (3)
Appellant argues the rejection of claims 1, 3, 7, 9 and 14 under 35
U.S.C. §103(a) together as a group. Br. 11-13. Therefore, we select claim 1
as the representative claim, and claims 3, 7, 9 and 14 stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that it would not have been obvious to combine the
media storage bin disclosed in Beauchamp with the insert orientation block
disclosed in Caporali, because Beauchamp “does not teach or suggest that
media items should be registered while being stacked” and because “there is
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no sidewall” in Beauchamp and thus “registration along two edges or
towards a corner of the rectangular media item cannot be taught by
Beauchamp.” Br. 12. This argument is not persuasive because Appellant
appears to attack the teachings of Beauchamp and Caporali individually,
rather than the combination thereof. Nonobviousness cannot be established
by attacking the references individually when the rejection is predicated
upon a combination of prior art disclosures. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted).
Appellant further argues that the combination of Beauchamp and
Caporali is improper, because Beauchamp would “become inoperative.”
Br. 12. Specifically, Appellant argues that if the insert 110 of Caporali were
incorporated along the platform 43 of Beauchamp “a Z-shaped drop profile .
. . between mailpieces 55, 57 and 58 could not occur” and “sufficient time
and separation would not be available to dry the printed ink.” Br. 13.
At the outset, we note that Appellant has not provided any evidence to
show that the insert block of Caporali is not capable of working with the
device of Beauchamp. “An attorney’s arguments in a brief cannot take the
place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(citation omitted). In this case, we agree with the Examiner that, “[t]he
envelope momentarily engages the flap to slow the envelope’s descent and
allow the ink to dry.” Ans. 10. See also Beauchamp, col. 3, ll. 37-47, and
fig.1. Hence, we conclude that the combination of Beauchamp and Caporali
would not cause Beauchamp to become inoperable, as Appellant contends.
Lastly, Appellant argues that the Examiner uses the teachings and
advantages of the present invention to recognize that the combination of
Beauchamp and Caporali has merit. Br. 13. In other words, Appellant
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argues that the Examiner’s conclusion of obviousness is based on hindsight.
Br. 14. However, it must be recognized that
[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from the
applicant’s disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this case, we
agree with the Examiner that Beauchamp discloses a media storage bin 10
that receives pieces of media 22 and retains the pieces of media in an orderly
stacked condition. Ans. 5-6; Beauchamp, Abst.; col. 2, ll. 37-50; and figs. 1-
2. However, Beauchamp does not disclose a “side wall” or a “platform
oriented to form an acute angle with any of the walls.” Ans. 6. Caporali
discloses an acute angled insert orientation block (platform) 110 that
facilitates stacking of mail pieces within an existing sorting or storage bin
10, which has a side wall 16, whereby the mail pieces may drop and settle to
a registered corner. Ans. 6; Caporali, Abst.; col. 5, ll. 35-66 and figs. 1-5.
Hence, both Beauchamp and Caporali disclose storage bins that receive mail
pieces and maintain these mail pieces in an orderly manner. As such,
modifying the media storage bin of Beauchamp to include the insert
orientation block of Caporali would not have been uniquely challenging to a
person of ordinary skill in the art because it is no more than “the mere
application of a known technique to a piece of prior art ready for the
improvement.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We agree with the Examiner that, “[t]he envelopes [of Beauchamp] may still
drop spaced apart then settle into a registered corner” as suggested by the
combination of Beauchamp and Caporali. Ans. 10. Hence, we agree with
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the Examiner that it would have been obvious to a person of ordinary skill to
modify Beauchamp with the teachings of Caporali for “automatically
justifying mail pieces along the two upstanding walls.” Ans. 6.
Accordingly, the rejection of claim 1 and of claims 3, 7, 9 and 14, which
stand or fall with claim 1, is sustained.
With respect to the rejection of claims 11, 12 and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Beauchamp, Caporali and Guerrero,
Appellant relies on the same arguments as the arguments presented in regard
to the rejection of claim 1 over Beauchamp and Caporali. Br. 13-14.
Accordingly, for the reasons presented supra, the rejection of claims 11, 12
and 15 over the combined teachings of Beauchamp, Caporali and Guerrero
is likewise sustained.

CONCLUSIONS
1. The originally filed application does not support the limitation “to
allow each mailpiece to drop freely therebetween without contacting
the guide rail,” as called for by each of independent claims 1 and 11.
2. The originally filed application does support the limitation of a
“tunable spring including an adjustment mechanism for altering a
spring rate property of the spring,” as called for by dependent claim 7.
3. The combined teachings of Beauchamp and Caporali would have
prompted a person of ordinary skill in the art to modify the media
storage bin of Beauchamp with the insert orientation block of
Caporali.

Appeal 2009-009269
Application 11/254,516

10
DECISION
The Examiner’s decision to reject claims 1, 3, 7, 9, 11, 12, 14 and 15
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

NLK

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