Ex parte Etter et al.

Board of Patent Appeals and Interferences

May 3, 2000

08400335 (B.P.A.I. May. 3, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEFAN ETTER, BEAT STULZ, THOMAS NIETLISPACH,
CHRISTIAN GILLIERON and CHRISTIAN MOY
____________
Appeal No. 1999-0709
Application No. 08/400,335
____________
ON BRIEF
____________
Before FRANKFORT, NASE, and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 15-23. Claims
1-14 and 24-86, the only other claims pending in this application, stand withdrawn from further
consideration under 37 CFR ß 1.142(b) as being directed to a non-elected invention.
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Application No. 08/400,335
BACKGROUND
The appellants' invention relates to a tamper-resistant postage meter. An understanding
of the invention can be derived from a reading of exemplary claim 15, which appears in the
appendix to the appellants' brief.
The prior art references of record relied upon by the examiner in rejecting the appealed
claims are:
Hubbard 4,246,643 Jan. 20, 1981
Miller et al. (Miller) 4,864,505 Sep. 5, 1989
The following rejection is before us for review.
Claims 15-23 stand rejected under 35 U.S.C. ß 103 as being unpatentable over
Hubbard in view of Miller.
Reference is made to the brief (Paper No. 13) and the answer (Paper No. 14) for the
respective positions of the appellants and the examiner with regard to the merits of this
rejection.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants' specification and claims, to the applied prior art references, and to the respective
positions articulated by the appellants and the examiner. For the reasons which follow, we
cannot sustain the examiner's rejection.
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Application No. 08/400,335
Hubbard, the primary reference relied upon by the examiner, discloses a postal meter
comprising postage printing wheels 166 (Figure 5) having a plurality of raised heads for the
numerals 0-9 formed on the outer circumference thereof, with the bottom circumferential
regions thereof forming a printing face 186 which faces a letter receiving slot 20, and postage
setting wheels 164 for adjusting the angular positions of the postage printing wheels. The
position of each of the setting wheels, and thus the postage setting, is monitored by means of an
adjacent encoder disc, such as disc 176. The printing wheels are carried by a print system
support 32. An inking roller 74 is also connected to the print system support via a linkage
comprising a first arm 76 and a second arm 82, a web 84 and a shield 62, 64, 66. The
printing cycle is commenced by depressing a cover member 38, thereby forcing a roller 88
downward, which causes the second arm 82 to pivot in a counterclockwise direction from the
position shown in Figure 8 to that shown in Figure 9 to draw the first arm 76 and inking roller
74 across the printing face. The depression of the cover member 38 also actuates a switch 98
to cause it to generate an "inking complete" signal for use by a microcomputer module 26
contained in the meter. Upon receipt of an "inking complete" signal, the microcomputer reads
and decodes the encoding disc associated with each of the postage printing wheels. A
descending register keeps an accounting of the remaining postage balance. If the postage
balance is not sufficient to print the requested postage amount, the microcomputer will energize
an indicator to notify the user of that fact. Under these conditions, the user will be unable to
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Application No. 08/400,335
force the print system support 32 past the position shown in Figure 9 in which a release lever
44 pivotally attached thereto and biased to the left by a spring 50 contacts the upper surface of
a detent block 28. If, on the other hand, the postage balance is sufficient, and if a letter is
detected in the letter receiving slot 20, the microcomputer generates a control signal to energize
a solenoid 42 to draw the release lever 44 to the right against the force of the spring 50, so that
the release lever 44 clears the detent block 28, as shown in Figure 10. Under these
circumstances, continued downward pressure on the cover member 38 forces the printing
wheels into the letter receiving slot to print postage on the face of the letter in that slot (column
7, lines 37-65).
The examiner concedes that Hubbard lacks "a rotor rotatable relative to the main body
for imprinting postage indicia on a mail piece through rotation thereof" as required by each of
the appellants' independent claims 15, 22 and 23. However, the examiner contends that
[ i]t would have been obvious to one of ordinary skill in the art at the time the
invention was made to provide the postage meter of Hubbard with the rotating
print drum and necessary supporting structure as taught by Miller so as to
enhance the printing efficiency of the postage meter. The mere application of
one type of print drum over another based upon their well known properties and
intended use by those having ordinary skill in the art would involve no
unobviousness [answer, page 4].
The test of obviousness is "what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). However, obviousness "cannot be established by combining the
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Application No. 08/400,335
teachings of the prior art to produce the claimed invention, absent some teaching or suggestion
supporting the combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). To this end, the requisite motivation must stem
from some teaching, suggestion or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and not from the appellants' disclosure.
See, e.g., Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434,
1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
While we appreciate that Miller discloses a postage meter comprising a rotatable print
drum 126 for imprinting postage on an envelope 16 through rotation thereof and that Hubbard
and Miller teach that linearly moving and rotary print heads are both well known print systems
for use in postage meters, it is not apparent to us why one of ordinary skill in the art would
have been led by the combined teachings of these references to make the modification proposed
by the examiner. Specifically, the mounting of the depressible cover member 38 relative to the
print system support 32, the "inking complete" switch 98, the release lever 44, the solenoid 42
and the detent block 28 of Hubbard are particularly designed to cooperate in the context of a
linearly actuated and linearly moving printing face. Thus, we are at a loss to understand why
or, for that matter, how, one of ordinary skill in the art would have replaced the linearly
moving arrangement of Hubbard with a rotary arrangement of the type taught by Miller while
still maintaining all of the necessary cooperation between the above-noted elements of Hubbard.
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Application No. 08/400,335
Accordingly, we shall not sustain the examiner's rejection of independent claims 15, 22
and 23, or claims 16-21 which depend from claim 15.
CONCLUSION
To summarize, the decision of the examiner to reject claims 15-23 under 35 U.S.C.
ß 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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Application No. 08/400,335
OPPEDAHL & LARSON
P.O. BOX 5270
FRISCO, CO 80443-5270