Ex Parte Hanson et al

Board of Patent Appeals and Interferences

Nov 25, 2008

10630940 (B.P.A.I. Nov. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BRUCE H. HANSON and MICHAEL WISNIEWSKI
____________

Appeal 2008-2403
Application 10/630,940
Technology Center 3600
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Decided: November 25, 2008
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Before LINDA E. HORNER, JOHN C. KERINS, and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Bruce H. Hanson and Michael Wisniewski (Appellants) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 1-23. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is to a sequencing system and
method for increasing machine capacity and throughput of mail pieces such
as packages, flats, mixed mail and the like (Spec. 6:17-20). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A system for sequencing products,
comprising:
a plurality of input feeding devices each
randomly receiving product from a stream of
product;
a plurality of output groups each having a
plurality of output bins; and
a control system having a mode which
constrains the input feeding devices to (i) feeding
non-rejected product to output bins of assigned
output groups of the plurality of output groups
associated with a corresponding one of the
plurality of input feeding devices, and (ii) feeding
rejected product to at least one output bin of the
plurality of output bins in a single group accessible
to any of the plurality of input feeders.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
De Leo US 6,107,588 Aug. 22, 2000
Walach US 6,274,836 B1 Aug. 14, 2001
DeWitt US 2002/0104782 A1 Aug. 8, 2002
The Appellants seek our review of the following rejections made by
the Examiner:
1. Claims 1-23 are rejected under 35 U.S.C. § 103(a) as unpatentable
over De Leo and DeWitt.
2. Claims 1-23 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Walach and DeWitt.

ISSUE
The Appellants contend that DeWitt discloses a single input feeding
device with a corresponding output bin and does not disclose any
embodiment in which “any of a plurality of feeding devices can feed
rejected product to at least one output bin of the plurality of output bins in a
single group accessible to any of the plurality of input feeders.” App. Br. 8.
The Examiner found that “De Witt discloses (ii) feeding rejected product to
at least one output bin (250) of the plurality of output bins in a single group
accessible to any of the plurality of input feeders (460) for the purpose of
separating items which have been misread or partially read from those that
have been properly processed (para. 105).” Ans. 3.
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The issue before us is:
Have the Appellants shown that the Examiner erred in finding that
DeWitt discloses a plurality of feeding devices that can feed rejected product
to at least one output bin in a single group accessible to any of the plurality
of input feeders?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. DeWitt discloses a system and method for extracting, re-ordering,
re-orienting, imaging, and sorting remittance transactions. DeWitt
1:¶0002.
2. DeWitt discloses a fully-automated embodiment, as depicted in
Figures 1-18, and a semi-automated embodiment, as depicted in
Figures 19-22. DeWitt 3:¶¶0018-0045 and 16:¶¶0156, 0157.
3. The fully-automated embodiment includes an imaging section 200
that includes a reject bin 250. DeWitt, Fig. 14.
4. DeWitt discloses that a magnetic ink character recognition
(“MICR”) character reader 220 magnetically reads the MICR line
on checks. DeWitt also discloses that it may be desirable to use an
imaging reader to verify the results from the MICR character
reader 220, and if there is a mismatch between the optically read
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MICR line and the results from the MICR character reader 220, the
documents from that transaction are directed to the reject bin 250.
DeWitt 9-10:¶¶0097-0098.
5. DeWitt further discloses that if the documents are out of order, i.e.,
check/invoice order rather than invoice/check order, then the
documents in the transaction are directed to the reject bin 250.
DeWitt: 6:¶0069.
6. The semi-automated embodiment includes a plurality of drop
chutes 460 and an imaging device 480 that scans the document to
obtain image data relating to the documents. DeWitt: 16:¶0159.
7. DeWitt discloses that “[f]rom the imaging device, the documents
are conveyed to one or more output bins 490.” DeWitt 16:¶0159.
8. DeWitt further discloses:
The imaging device 480 scans the image of each
document and transfers the image data to the
controller 415. If a MICR module is included, the
MICR line on each check is identified and
decoded. Then, if desired, a printer prints
information on each document, such as the batch
number and the sequential document number
identifying each document in the batch. The
documents are then conveyed to a plurality of
output bins 495, and if desired, a plurality of gates
496 sorts the documents into the different bins
according to document-type or transaction-type.
DeWitt 19:¶0192.
9. DeWitt does not disclose that the imaging device 480 of the semi-
automated embodiment includes a reject bin or is able to access
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reject bin 250 of the fully-automated embodiment and does not
disclose, for example, using an imaging reader to verify the results
from an MICR character reader 220 such that mismatches would
be sent to a reject bin, as in the fully-automated embodiment
described above.
10. Thus, DeWitt does not disclose feeding rejected product to at least
one output bin 250 of a plurality of output bins in a single group
accessible to any of a plurality of input feeders 460.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). “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., 127 S. Ct. 1727, 1734 (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, 127 S. Ct. at 1734 (“While the
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sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)

ANALYSIS
The Examiner’s rejection of claims 1-23 is based on the combination
of the teachings of De Leo or Walach in view of DeWitt. Independent claim
1 is directed to a system for sequencing products that includes “a control
system having a mode which constrains the input feed devices to …
(ii) feeding rejected product to at least one output bin of the plurality of
output bins in a single group accessible to any of the plurality of input
feeders.” Independent claim 15 is directed to a method of sequencing
product that includes the step of “feeding, in the second pass phase, rejected
product of the plurality of product to an output bin common and accessible
to any of the input devices.” Independent claim 21 is also to a system for
sequencing products that includes “means for permitting, in the second pass
phase, rejected product of the plurality of product to an output bin common
and accessible to any of the feeding means.”
As noted by the Examiner, neither De Leo nor Walach discloses
feeding rejected product to at least one output bin of the plurality of output
bins in a single group accessible to any of the plurality of input feeders, as
required in claims 1, 15, and 21. Ans. 3, 10-11. The Examiner relied on
DeWitt for this teaching and found that DeWitt’s drop chutes 460 are
capable of accessing its reject bin 250. Ans. 3, 11. We disagree with this
finding by the Examiner. DeWitt does not disclose that the reject bin 250 of
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the first, fully-automated embodiment of DeWitt, is accessible to the drop
chutes 460 of the second, semi-automated embodiment of DeWitt (Facts 9-
10). Thus, the Examiner erred in rejecting claims 1, 15, and 21, and their
respective dependent claims 2-14, 16-20 and 22-23, as unpatentable over De
Leo or Walach in view of DeWitt.

CONCLUSION
We conclude that the Appellants have demonstrated error in the
Examiner’s finding that DeWitt discloses a plurality of feeding devices that
can feed rejected product to at least one output bin in a single group
accessible to any of the plurality of input feeders.

DECISION
The decision of the Examiner to reject claims 1-23 is reversed.

REVERSED

vsh

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