Ex parte Holbrook

Board of Patent Appeals and Interferences

Jan 29, 1998

07887040 (B.P.A.I. Jan. 29, 1998)

Application for patent filed May 22, 1992.1
1
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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RUSSELL W. HOLBROOK

_____________
Appeal No. 95-2936
Application 07/887,0401
______________
ON BRIEF
_______________
Before MEISTER, ABRAMS and FRANKFORT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 95-2936
Application 07/887,040
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's
final rejection of claims 9 through 14, 18, 19, 22 and 23.
Subsequent to the final rejection in papers filed May 23, 1994
and August 18, 1994 (Paper Nos. 10 and 13½) claim 19 was
canceled, a new claim 24 was added, and other claims were
amended. As a result of the examiner's entry of these amendments,
claims 9 through 14, 18, 22, 23 and 24 remain for our
consideration on appeal. Claims 1 through 8, 15 through 17 and
19 through 21 have been canceled.
Appellant's invention relates to a moistening apparatus
for moistening the glue line of an envelope flap and/or a tape in
a mailing system. Claims 23 and 24 are representative of the
subject matter on appeal and a copy thereof, as reproduced from
Appendix B to appellant's brief, is attached to this decision.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Lupkas 3,911,862 Oct. 14, 1975
McCausland et al. (McCausland) 4,670,144 June 2, 1987
Katz et al. (Katz) 4,840,397 June 20, 1989
Appeal No. 95-2936
Application 07/887,040
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Marzullo 4,875,965 Oct. 24, 1989
O'Dea 4,924,805 May 15, 1990
Muisener 5,006,233 Apr. 9, 1991
Claims 9 through 12, 18 and 22 through 24 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Marzullo in view of Lupkas, O'Dea and Muisener.
Claim 13 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Marzullo in view of Lupkas, O'Dea and Muisener
as applied in the paragraph above, further taken in view of Katz.
Claim 14 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Marzullo in view of Lupkas, O'Dea and Muisener
as applied in claims 10, 11 and 23 above, further in view of
McCausland.
Rather than reiterate the examiner's full statement
of the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding the rejections,
we make reference to the examiner's answer (Paper No. 14, mailed
November 2, 1994) for the examiner's complete reasoning in
support of the rejections, and to appellant's brief (Paper
Appeal No. 95-2936
Application 07/887,040
4
No. 13, filed August 18, 1994) and reply brief (Paper No. 15,
filed January 6, 1995) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determination that the examiner's
rejections of the appealed claims under 35 U.S.C. § 103 are not
well founded and will therefore not be sustained. However,
pursuant to 37 CFR § 1.196(b), we have made a new ground of
rejection against claim 23 on appeal. Our reasoning in support
of these determinations follows.
Like appellant, we consider that the examiner's attempt
to selectively modify the apparatus of Marzullo in view of the
patents to Lupkas, O'Dea and Muisener is based on a hindsight
reconstruction of the claimed invention from disparate bits and
pieces found in the applied secondary references. It is our view
Appeal No. 95-2936
Application 07/887,040
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that in searching for an incentive for modifying the apparatus of
Marzullo, the examiner has impermissibly drawn from appellant's
own teachings and fallen victim to what our reviewing Court has
called "the insidious effect of a hindsight syndrome wherein that
which only the inventor has taught is used against its teacher."
W. L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 313 (Fed. Cir. 1983). In this regard, we
particularly find the examiner's reliance on the water
purification system of Muisener to modify the mail folding and
sealing apparatus of Marzullo to be inappropriate. Since we have
determined that the examiner's conclusion of obviousness is based
on a hindsight reconstruction using appellant's own disclosure as
a blueprint to arrive at the claimed subject matter, it follows
that we will not sustain the examiner's rejection of appealed
claims 9 through 12, 18 and 22 through 24 under 35 U.S.C. § 103.
Further basis for not sustaining the examiner's
rejection of independent claim 24 and of claims 9, 11 and 12
which depend from claim 23 is found on page 5 of appellant's
reply brief, wherein it is pointed out that the references
applied by the examiner fail to teach or suggest (1) the use of a
Appeal No. 95-2936
Application 07/887,040
6
nozzle applicator which delivers moistening fluid to an envelope
flap and a tape moistening apparatus for applying moistening
fluid to a tape, both used in a single mailing system as
specified in claim 24, and (2) a filter means operatively
connected to a moistening apparatus in the manner specified in
claims 9, 11 and 12.
Our review of the references to Katz and McCausland,
applied by the examiner against dependent claims 13 and 14 to
show specific forms of filter materials, also reveals nothing
which would have provided an incentive, or an adequate teaching
or suggestion, for combining Marzullo, Lupkas, O'Dea and Muisener
in the manner urged by the examiner. Accordingly, it follows
that the examiner's rejection of claims 13 and 14 under 35 U.S.C.
§ 103 also will not be sustained.
Under the provisions of 37 CFR § 1.196(b), we enter the
following new rejection of claim 23 on appeal.
Claim 23 is rejected under 35 U.S.C. § 103 as being
unpatentable over O'Dea in view of Marzullo. As is apparent from
our review of appellant's specification (pages 1, 2, 4 and 5),
Appeal No. 95-2936
Application 07/887,040
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the O'Dea patent (4,924,805) represents a prior art moistening
apparatus for moistening the glue line of an envelope flap and
discloses the structure and operation of portions of appellant's
system including the envelope transport and movable moistening
spray nozzle structures. What O'Dea lacks is any teaching or
suggestion regarding collection of excess sprayed moistening
fluid and of a pump means for pumping the collected moistening
fluid from the collection means back to a moistening fluid supply
tank, as is set forth in appellant's claim 23 on appeal.
However, looking at Figure 5 of O'Dea, it is apparent
to us that excess spray from nozzle (250) and runoff from
envelope flap (451) will travel along the inclined guide wall and
baffle (454) of the apparatus therein and ultimately be deposited
in the base portion of the housing of the moistening unit.
Marzullo, Figure 10, evidences knowledge in the art concerning
how to deal with such excess moistening fluid runoff. As clearly
seen in Marzullo, the excess moistening fluid reaching the base
portion of the housing therein is collected and directed into a
container or tank (40). As can be seen in Figure 9 of Marzullo,
the collected excess moistening fluid is then pumped by a pump
Appeal No. 95-2936
Application 07/887,040
8
(38) from the tank (40) to the moistening fluid supply reservoirs
(26) of the moistening apparatus (20).
After reviewing the collective teachings of O'Dea and
Marzullo, it is our opinion that it would have been obvious to
one of ordinary skill in the art at the time of appellant's
invention to provide the apparatus of O'Dea with a collection
arrangement, collection tank and a pump means similar to that of
Marzullo to collect excess moistening fluid runoff and return
that fluid to the spray nozzle liquid supply container (260) of
O'Dea, so as to avoid any problems such excess moistening fluid
runoff may otherwise cause in the system.
In light of the foregoing, the decision of the examiner
to reject claims 9 through 14, 18, 22, 23 and 24 under 35 U.S.C.
103 is reversed. In addition, a new ground of rejection has been
entered against claim 23 on appeal pursuant to 37 CFR § 1.196(b).
This decision contains a new ground of rejection pur-
suant to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
Appeal No. 95-2936
Application 07/887,040
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1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that “[a] new ground of rejection
shall not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exer-
cise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of facts
relating to the claims so rejected, or both,
and have the matter reconsidered by the
examiner, in which event the application
will be remanded to the examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
REVERSED, 37 CFR § 1.196(b)
Appeal No. 95-2936
Application 07/887,040
10
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 95-2936
Application 07/887,040
11
Steven J. Shapiro
Pitney Bowes, Inc.
Intellectual Property & Tech. Law Dept.
World Headquarters
One Elmcroft Road
Stamford, CT 06926-0700
Appeal No. 95-2936
Application 07/887,040
- A1 -
APPENDIX
23. An improved moistening apparatus for moistening
the glue line of an envelope flap, said glue line being along
the edge of the envelope and having a generally uniform cross-
sectional width, comprising:
support means for causing said envelope flap to
be partially open and for causing said envelope to
travel in a first direction;
a nozzle applicator slidably mounted to said
support means for slidable displacement of said
nozzle in a second direction generally perpendic-
ular to said first direction and further mounted
such that said nozzle is between said envelope
and said envelope flap;
pump means for causing moistening fluid to be
delivered to and through said nozzle; and
control means for causing said pump to deliver
a given volume of moistening fluid to said nozzle
and for causing said nozzle to displace in said
second direction such that said nozzle is opposite
said glue line of said envelope as said envelope
is displaced in said first direction further such
that moistening fluid is applied by said nozzle
evenly to said glue line;
wherein the improvement comprises:
a moistening fluid supply tank for con-
taining said moistening fluid;
said pump means having means for obtaining
said moistening fluid from said moistening
fluid supply tank;
excess moistening fluid collection means
including:
a baffle extending in said second direction
Appeal No. 95-2936
Application 07/887,040
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throughout the displacement range of said noz-
zle such that said envelope flap is between
said nozzle and said baffle;
an excess moistening fluid collection tank
positioned with respect to said baffle for
collecting excess moistening fluid deposited
on said baffle; and,
said pump means having means for pumping
said collected moistening fluid from said
excess moistening fluid collection means to
said moistening fluid supply tank.
24. In a mailing system, a moistening apparatus for
moistening the glue line of an envelope flap, said glue line
being along the edge of the envelope and having a generally
uniform cross-sectional width, said apparatus comprising:
support means for causing said envelope flap to be
partially open and for causing said envelope to travel
in a first direction;
a nozzle applicator slidably mounted to said support
means for slidable displacement of said nozzle in a
second direction generally perpendicular to said first
direction and further mounted such that said nozzle is
between said envelope and said envelope flap;
a moistening fluid supply tank for containing
moistening fluid;
pump means for causing moistening fluid to be
delivered to and through said nozzle, said pump means
having means for obtaining said moistening fluid from
said moistening fluid supply tank;
control means for causing said pump to deliver a
given volume of moistening fluid to said nozzle and for
causing said nozzle to displace in said second direc-
tion such that said nozzle is opposite said glue line
of said envelope as said envelope is displaced in said
first direction further such that said moistening fluid
is applied by said nozzle evenly to said glue line;
Appeal No. 95-2936
Application 07/887,040
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excess moistening fluid collection means including
a baffle extending in said second direction
throughout the displacement range of said nozzle
such that said envelope flap is between said
nozzle and said baffle whereby said baffle collects
excess moistening fluid from said envelope flap;
an excess moistening fluid collection tank
positioned with respect to said baffle for collect-
ing said excess moistening fluid deposited on said
baffle; and
a tape moistening applicator which applies
moistening fluid to a tape, said tape moistening
applicator including a tape moistening fluid tank
connected to said moistening fluid supply tank;
wherein said excess moistening fluid collection
means further comprises a guide surface including
an opening therein which is mounted beneath said
tape moistening applicator such that excess moisten-
ing fluid from said tape collects on said guide sur-
face and passes through said opening, and means for
connecting said opening to said excess moistening
fluid collection tank such that said excess moisten-
ing fluid from said tape flows into said excess
moistening fluid collection tank;
wherein said pump means includes means for
pumping said collected moistening fluid from said
excess moistening fluid collection means to said
moistening fluid supply tank.