Ex Parte Jacobson et al

Board of Patent Appeals and Interferences

Jan 28, 2011

10857992 (B.P.A.I. Jan. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY S. JACOBSON,
WESLEY A. KIRSCHNER,
JOSEPH M. MOZDZER,
KONSTANTIN G. KODONAS,
and JOSEPH P. TOKARSKI
____________

Appeal 2010-001182
Application 10/857,992
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, 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 10/857,992

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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 12-19. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to a mail processing system
including a manually fed mailing machine incorporating systems and
methods to reduce feeding and weighing errors (Spec., para. [0001]). Claim
12, reproduced below, is further illustrative of the claimed subject matter.
12. A method for processing mail pieces in a manually
fed mailing machine that utilizes differential weighing to
determine the weight of each mail piece, the method
comprising:
manually removing a first mail piece from a scale
coupled to the mailing machine, the scale providing information
associated with the first mail piece to the mailing machine, the
mailing machine storing the information associated with the
first mail piece in a memory;
manually placing the first mail piece on a feed deck of
the mailing machine, the mailing machine in response to the
first mail piece being placed on the feed deck activating a
transport to feed the first mail piece into the mailing machine
for processing;
manually removing a second mail piece from the scale
while the first mail piece is being processed by the mailing
machine, the scale providing information associated with the
second mail piece to the mailing machine, the mailing machine
storing the information associated with the second mail piece in
the memory;
manually placing the second mail piece on the feed deck
of the mailing machine;
manually removing a third mail piece from the scale
while the first mail piece is being processed by the mailing
machine and the second mail piece is on the feed deck of the
mailing machine, the scale providing information associated
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with the third mail piece to the mailing machine, the mailing
machine storing the information associated with the third mail
piece in the memory;
wherein the mailing machine retrieves the information
associated with the second mail piece stored in the memory
after processing for the first mail piece has been completed and
activates the transport to feed the second mail piece into the
mailing machine for processing.

Claims 12-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Freeman (US Pat. 4,742,878, iss. May 10, 1988) in view of Storace (US
Pat. 3,877,531, iss. Apr. 15, 1975) and Marzullo (US Pat. 5,120,043, iss.
Jun. 9, 1992); claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Freeman in view of Storace, Marzullo, and Barrall (US
Pub. 2002/0065924 A1, pub. May 30, 2002) ; claim 16 stands rejected under
35 U.S.C. § 103(a) as unpatentable over Freeman in view of Storace,
Marzullo, Barrall, and Nakamura (US Pat. 6,151,464, iss. Nov. 21, 2000);
claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Freeman in view of Storace, Marzullo, and Baker (US Pat. 5,001,648, iss.
Mar. 19, 1991); claim 18 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Freeman in view of Storace, Marzullo, and Ruffino (US
Pat. 6,595,611 B1, iss. Jul. 22, 2003); claim 19 stands rejected under 35
U.S.C. § 103(a) as unpatentable over Freeman in view of Storace, Marzullo,
and Official Notice.
We AFFIRM.

ISSUE
Did the Examiner err in asserting that a combination of Freeman,
Storace, and Marzullo renders obvious the subject matter of claims 12-14?
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FINDINGS OF FACT
Freeman
Freeman discloses that an object of the invention is to provide a
relatively small, less massive, inexpensive, “‘tabletop’” system suitable for
use by low and medium volume mailers (col. 1, ll. 63-66).
Another aspect disclosed in Freeman is to provide a mixed weight
mailing system where the weighing system is modular and may be easily
added to an otherwise substantially conventional mailing machine (col. 1, l.
67 to col. 2, l. 2).
Freeman discloses that preferably mailpieces will be stopped on scale
module 22 in a manner which will allow approximately 2 inches of
overshoot until time T2+ so as to minimize the transport time from weigh
module 20 to mailing machine 12. Feeder 50 continues to operate until time
T3 to singulate the next mailpiece mp2 at time T3 and then stops. By time
T4 scale module 20 will determine the weight of mailpiece mp1 and
compute the corresponding postage amount. Scale module 20 then transmits
this postage amount to postage meter 15 over link 15A and postage meter 15
then sets its indicia correspondingly. When the indicia are properly set,
postage meter 15 signals transport control 38 at time T5 through link 15A
and scale electronics 36. At time T5 transport control 38 again turns on
motors M1 and M2 and singulator 52 to begin transport of mailpiece mp1
from scale module 20 to mailing machine 12 and mailpiece mp2 from feeder
50 to scale module 20. At time T6 mailpiece mp1 is taken by sealer rollers
16 and a print cycle begins. At time T7 mailpiece mp2 is transported onto
scale module 20 and the next weigh cycle begins. At time T6 mailpiece mp1
is advanced by sealer rollers 16 until it reaches trip switch 18 which initiates
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printing by drum 19. At time T8 mailpiece mp1 is printed with indicia
corresponding to the appropriate postage and ejected to stacker 200.
Mailing machine 12 is an asynchronous machine which operates
continuously, and once a mailpiece is taken by sealer rollers 16 a print cycle
will automatically continue until completion. At time T9 the weigh time for
mailpiece mp2 is completed and at time T10 meter 15 is again appropriately
set and the mailpiece for the next cycle (not shown) is advanced onto scale
module 20. From times T11 to T12 the print cycle for mailpiece mp2 is
completed. The operation as described will then continue until all
mailpieces are properly metered (Fig. 9; col. 9, ll. 29-64).

ANALYSIS
Claims 12-14
We are not persuaded the Examiner erred in asserting that a
combination of Freeman, Storace, and Marzullo renders obvious the subject
matter of claims 12-14 (App. Br. 5-9). Appellants assert that Freeman is not
a manually fed mailing machine, as recited in claims 12-14, and that “[t]he
manual feeding in Marzullo is not the same as the removing and placing or
mail pieces from a scale onto a feed deck as in the present invention” (App.
Br. 5-8). However, the Examiner combines the automated mailing machine
of Freeman and the manually fed machine of Marzullo to arrive at the
recited manually fed mailing machine (Exam’r’s Ans. 3-5, 10). See In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (one cannot show non-obviousness
by attacking references individually where the rejections are based on
combinations of references).
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Appellants assert that one of ordinary skill would not modify the
automated mailing machine of Freeman to include manual steps, as
disclosed in Marzullo, because to do so would “significantly change the
principle of operation of the system in Freeman” (App. Br. 8). Freeman
discloses placing multiple mailpieces in a hopper. Feeder 50 then transports
singulated mailpieces to scale module 20, which weighs the mailpiece and
determines the appropriate amount of postage. The mailpiece is then fed by
sealer rollers 16 to drum 19, which applies the postage (Fig. 9; col. 9, ll. 29-
50). The Examiner has modified Freeman in view of Marzullo to remove
the hopper and feeder 50, and have a user manually transfer a mailpiece
from scale module 20 to sealer rollers 16. Freeman discloses that two
objects of their invention are to (1) “provide a relatively small, less massive,
inexpensive, ‘tabletop’ system suitable for use by low and medium volume
mailers” (col. 1, ll. 63-66), and (2) “provide a mixed weight mailing system
where the weighing system is modular and may be easily added to an
otherwise substantially conventional mailing machine” (col. 1, l. 67 to col. 2,
l. 2). Object (1) of Freeman is similar to Appellants’ asserted advantages of
the recited manually fed mailing machine (App. Br. 6-7), and making scale
module 20 even more modular by delimiting exactly where scale module 20
needs to be placed relative to sealer rollers 16 comports well with object (2)
of Freeman. Accordingly, we do not agree that the proposed modification of
Freeman in view of Marzullo would “significantly change the principle of
operation of the system in Freeman.”
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Claims 15-19
Appellants assert that claims 15-19 are patentable, because the
additionally cited references do not remedy the aforementioned deficiencies
of Freeman, Storace, and Marzullo with respect to the subject matter of
claims 12-14 (App. Br. 9-10). However, because we are not persuaded there
are any deficiencies in the Examiner’s rejections of claims 12-14, we sustain
the rejections of claims 15-19 as well.
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) (2007).

AFFIRMED

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