Ex Parte Edel

Patent Trial and Appeal Board

Dec 30, 2013

12334749 (P.T.A.B. Dec. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EDDY EDEL
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Appeal 2012-000391
Application 12/334,749
Technology Center 3700
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Before EDWARD A. BROWN, JAMES P. CALVE, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Eddy Edel (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 5-11. App. Br. 5.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claim 5 is the sole independent claim on appeal and reads:
5. A method comprising:
feeding an envelope past a print engine with
a flap of the envelope in an open position; and
printing information on the flap and on a
front face of the envelope in a single pass of the
envelope past the print engine.

REJECTIONS
Claims 5-9 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Krasuski (US 2001/0032033 A1; pub. Oct. 18, 2001).
Claims 5-11 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Muscoplat (US 5,409,441; iss. Apr. 25, 1995).
Claim 5 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Wooley (US 4,443,211; iss. Apr. 17, 1984).
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krasuski and Official Notice.
Claims 8-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wooley and Official Notice.

1 Claims 1-4 and 12-15 stand withdrawn from consideration. Id.
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ANALYSIS
Rejection of claims 5-9 under 35 U.S.C. § 102(b) over Krasuski
Regarding claim 5, the Examiner found that Krasuski discloses
feeding an envelope 22 past a printing module 34 and a control module 38
for controlling printing based on instructions received from the computer 10.
Ans. 4-5 (citing Krasuski, para. [0024]; figs. 2, 3). According to the
Examiner, “Krasuski implies that as the user desired, the step of printing on
the surface of the envelope can be performed in any desired location
including the front face and the flap of the envelope.” Id. at 5 (emphases
added).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed.
Cir. 1987).
In contrast to the Examiner, Appellant contends that Krasuski does
not disclose either of the claimed “feeding” and “printing” steps. App. Br.
11-12. Regarding the “feeding” step, the Examiner found that because
Krasuski discloses that the envelope is printed (step 104) before inserting a
document into the envelope (step 120), and the envelope is sealed (step 122)
after step 120, “the evidence clearly suggests that it is more likely than not
that the flap is in an open position when it is printed.” Ans. 8 (citing
Krasuski, fig. 3). The Examiner also stated “the evidence clearly suggests
that it is more likely than not that the envelope’s flap is in an open position
when it passed the printer and before it is closed (sealed) after the step of
insertion of the document into the envelope.” Id.
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Although Krasuski does not expressly describe that the envelope is
closed at the time of printing, the Examiner did not make a finding that
Krasuski expressly describes that the envelope is open when printed. We
agree with Appellant that the Examiner’s findings do not show that the
envelope necessarily is open when printed. App. Br. 13. As noted by
Appellant, the flap of the envelope could instead be closed at the time of
printing and then opened immediately prior to document insertion. Id.
Accordingly, we agree with Appellant that the Examiner’s finding that
Krasuski discloses “feeding an envelope past a print engine with [the] flap of
the envelope in an open position” is not supported by a preponderance of the
evidence.
Regarding the claimed “printing” step, the Examiner stated Appellant
admitted that it is well known in the art that “‘[i]n some applications, it may
be desired to print information both on the front face of the envelope and on
the envelope flap. For example, addressee information may be printed on
the front face and a return address may be printed on the flap.’” Id. at 9
(citing Spec., para. [0004]). The Examiner also found Krasuski discloses
“printing all the necessary information on the envelope” (id. (citing
Krasuski, para. [0006])) and that “it is possible to print the sender’s name
and address or an advertising logo” (id. (citing Krasuski, para. [0028]).
According to the Examiner, these passages “clearly anticipate and suggest
the printing on the envelope including printing information (‘all the
necessary information’ on the flap of the envelope (‘is possible to print the
sender's name and address’).” Id.
We agree with Appellant that Krasuski’s disclosure that “all necessary
information” is printed on the envelope does not mean that the information
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is necessarily printed on both the front face and flap of the envelope in a
single pass of the envelope past the print module 34 of printer 14. App. Br.
13. Indeed, Krasuski does not expressly describe printing any information
on an envelope flap. Accordingly, we also agree with Appellant that the
Examiner’s finding that Krasuski discloses “printing information on the flap
and on a front face of the envelope in a single pass of the envelope past the
print engine,” as claimed, also is not supported by a preponderance of the
evidence.
Accordingly, the Examiner has not shown that each of the claimed
limitations is expressly or inherently described by Krasuski. As noted supra,
the Examiner stated “Krasuski implies that as the user desired, the step of
printing on the surface of the envelope can be performed in any desired
location including the front face and the flap of the envelope.” Ans. 5
(emphases added). To the extent the Examiner’s position is that Krasuski’s
system is capable of meeting the steps recited in claim 5, this position is
insufficient to establish inherency of the claimed method. Rather, Krasuski
must necessarily meet the claimed limitations. See In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (“Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.”) (Internal citation and
quotations omitted). The Examiner’s speculation about the possibilities of
Krasuski performing in a certain manner does not provide a sound basis for
finding that Krasuski is configured to even be capable of performing these
steps.
Regarding the Examiner’s apparent reliance on description found in
Appellant’s Specification (Ans. 9), the ground of rejection stated in the
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Examiner’s Answer (id. at 5) is based on Krasuski alone. The Examiner did
not indicate that Appellant’s Specification is relied on as a reference in this
anticipation rejection.2 Moreover, the description does not establish that
Krasuski’s method necessarily “print[s] information on the flap and on a
front face of the envelope,” much less “in a single pass of the envelope past
the print engine,” as claimed.
Hence, we do not sustain the anticipation rejection of claim 5, or its
dependent claims 6-9, over Krasuski.

Rejection of claims 10 and 11 under 35 U.S.C. § 103(a) over Krasuski
and Official Notice
Claims 10 and 11 depend from claim 5. The Examiner’s reliance on
Official Notice for the rejection of claims 10 and 11 (Ans. 5-6) does not cure
the deficiencies of the anticipation rejection of claim 5 based on Krasuski, as
discussed supra. Hence, we do not sustain the obviousness rejection of
claims 10 and 11 over Krasuski and Official Notice.

Rejection of claims 5-11 under 35 U.S.C. § 102(b) over Muscoplat
Regarding claim 5, the Examiner found that Muscoplat discloses
feeding an envelope 4 past a printing station 8, 9, 10, and that Figures 19-20
disclose that the step of printing on the surface of the envelope is performed
on the front face and the flap. Ans. 6.

2 The Examiner does not cite Appellant’s Specification as an additional
reference in this anticipation rejection for any one of the purposes discussed
in the Manual of Patent Examining Procedure (MPEP) § 2131.01 (8th ed.,
Rev. 9, Aug. 2012).
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In contrast, Appellant contends that Muscoplat teaches printing on a
web, not on an envelope, as claimed. App. Br. 15. In particular, Appellant
contends that “an envelope is an article having an enclosure and for
accepting an insert and a flap movable about a hinge to secure the insert
within the enclosure.” Id. Appellant also contends that Muscoplat discloses
printing information on one side of a web of paper stock, cutting the web
into a two-dimensional pattern, and folding the web to define a pocket for
accepting an insert. Id. Appellant also contends that Figures 14-17 of
Muscoplat show the web being printed on one side, and including a portion,
that, subsequent to folding, becomes the front face of the envelope and the
envelope flap. Id.
Muscoplat states “[a]s seen in FIG. 1, web supply roll 2 is converted
into the face 3 of envelope 4.” Muscoplat, col. 26, ll. 46-47; fig. 1.
Muscoplat also states “[t]he stock 5 which makes up web 2 follows a path
. . . through consecutive print stations 8, 9[,] and 10.” Id. at col. 26, ll. 51-
53; fig. 1. Figure 1 of Muscoplat shows an envelope 4 located downstream
from print stations 8, 9, and 10.
In response, the Examiner appears to acknowledge that the meaning
of “envelope” provided by Appellant is supported by the Specification, but
states that the meaning is not explicitly claimed. Ans. 10. The Examiner
also states that “[n]or were the words that are used in the claims defined in
the specification to require these limitations.” Id. at 10-11. Hence,
Appellant and the Examiner disagree about the proper meaning of the claim
term “envelope.”
The Patent and Trademark Office gives claims their broadest
reasonable interpretation consistent with the specification, reading claim
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language as it would be interpreted by one of ordinary skill in the art. See In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
While Appellant does not identify a specific definition of “envelope” in the
Specification, we note that the Specification describes:
The envelope 400 may be entirely conventional,
including: a pouch 402, in which mail piece
contents may be inserted; a front face 404, on
which recipient address information and/or other
information may be printed; a flap 406, for sealing
the pouch 402, and on which return address
information or other information may be printed;
and a rear face 408.
Spec., para. [0037]; emphasis added. This description of the envelope 400
depicted in FIG. 4 is consistent with Appellant’s definition of “envelope.”
The Examiner did not make a finding that Muscoplat discloses
printing information on both a flap and a front face of an “envelope.” While
Figure 1 of Muscoplat shows an envelope 4 with a flap 903 (and which also
includes a “front face”), it shows that a side of the web is printed by the print
stations 8, 9, and 10. Figure 1 of Muscoplat does not show printing
information on the flap 903 and on a front face of envelope 4.
Figures 19 and 20 of Muscoplat referenced by the Examiner show an
envelope 261 with printing on the flap 267 and on the front face. However,
the Examiner did not show by a preponderance of the evidence that the
information is printed on the flap 267 and front face when the flap 267 and
front face form part of the envelope 261. See figs. 14-18; col. 33, l. 23 to
col. 36, l. 41.
Hence, we do not sustain the anticipation rejection of claim 5, or its
dependent claims 6-11, over Muscoplat.
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Rejection of claim 5 under 35 U.S.C. § 102(b) over Wooley
The Examiner found that Wooley discloses a method comprising
feeding an envelope (EG) past a printing station (20). Ans. 7. The
Examiner also found that Wooley discloses “‘ . . . a printing roller (not
shown) which effects the transfer of the desired indicia onto the envelope
blank’ ” and determined that the printing station provides printing images (or
information) onto the envelope including the front face and the flap. Id.
(citing Wooley, col. 3, ll. 15-18).
Appellant acknowledges that Wooley describes printing on an
envelope; however, Appellant contends that Wooley does not teach printing
on an envelope flap. App. Br. 16. In response, the Examiner stated that
Figure 3 of Wooley shows that the flap of envelope (EG) is in an open
position when the envelope is positioned at printing station 20. Ans. 11.
The Examiner also determined that Wooley teaches that “the desired indicia
(any printing information, [anywhere] on the envelope one wished) on the
envelope including printing information on the flap of the envelope.” Id. at
12.
We agree that the Examiner did not identify any explicit description in
Wooley that information is printed on the envelope flap, much less that
shows “printing information on the flap and on a front face of the envelope
in a single pass of the envelope past the print engine.” The Examiner also
did not show by a preponderance of the evidence that Wooley necessarily
(inherently) meets the claimed limitations. For reasons discussed supra, the
Examiners’ finding regarding description in Appellant’s Specification
pertaining to printing on envelopes (Ans. 11) cannot be relied on to cure
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deficiencies of Wooley, as the stated anticipation rejection is based singly on
Wooley. Hence, we do not sustain the anticipation rejection of claim 5 over
Wooley.

Rejection of claims 8-11 under 35 U.S.C. § 103(a) over Wooley
and Official Notice
Claims 8-11 depend from claim 5. The Examiner’s reliance on
Official Notice for the rejection of claims 8-11 (Ans. 7-8) does not cure the
deficiencies of the anticipation rejection of claim 5 based on Wooley, as
discussed supra. Hence, we do not sustain the obviousness rejection of
claims 8-11 over Wooley and Official Notice.

DECISION
We REVERSE the rejections of claims 5-11.

REVERSED

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