Ex Parte Mileaf et al

Board of Patent Appeals and Interferences

Nov 12, 2008

10771342 (B.P.A.I. Nov. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DARYL S. MILEAF, STEPHANIE A. LAURETANO,
JASON PARK, PATRICK COWGILL, STANLEY WAKAMIYA,
and CHARLES SHAW
____________

Appeal 2008-4675
Application 10/771,342
Technology Center 3600
____________

Decided: November 12, 2008
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and STEFAN
STAICOVICI Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Daryl S. Mileaf et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1 and 3 through 9. Claims 2 and 10
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Application 10/771,342

have been canceled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6 (2002).

THE INVENTION
The Appellants’ invention is drawn towards a two-pass sorting
method for sorting a batch of mail including deliverable mail, saturation
mail (mass mailings), and mail placed on hold, destined for multiple delivery
points (destinations) on a plurality of carrier routes (streets) (¶¶ 13, 33, and
39). The method configures the sorting system 100 according to a first-pass
sort plan 110 and a second-pass sort plan 111 (¶ 28 and fig. 1) using a mail
sorting system 100 having multiple input feeders 101(1), 101(2) and
multiple outputs, 102(1) through 102(15) (¶ 26 and fig. 1). The method
includes feeding a plurality of mail pieces into the sorting system 100,
sorting the plurality of mail pieces according to the first-pass sort plan to
form multiple batches, wherein each batch contains mail destined for the
same delivery point (address) on each of the carrier routes (street) and an
additional, separate batch of mail containing a set of delivery points
(destinations) to which mail should not be delivered (mail on hold) (¶¶ 28
and 29 and fig. 3). The method further includes sorting the plurality of mail
pieces according to the second-pass sort plan which assigns each batch of
mail sorted by the first-pass sort plan to an output corresponding to
consecutive delivery points on each delivery route (¶¶ 30 and 35 and fig. 4).
To provide saturation mail (mass mailings) at each delivery point along
each carrier route, the saturation mail is fed into the mail sorting system
immediately after sorting a batch of mail according to the second-pass plan
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and immediately prior to feeding a consecutive batch of mail according to
the second-pass plan (¶¶ 41-45 and figs. 5A-5C).
Claim 1 is representative of the claimed invention and reads as
follows:
1. A method for sorting a batch of mail into delivery point
order using a mail sorting system comprising a first output, a
second output, and a third output, comprising:
creating a first-pass sort plan, wherein the first-pass sort plan
specifies: a first delivery point group comprising a first delivery
point on a first carrier route and a first delivery point on a
second carrier route, a second delivery point group comprising
a second delivery point on the first carrier route and a second
delivery point on the second carrier route, and a third delivery
point group comprising delivery points on the first and second
carrier routes that are on hold;
creating a second-pass sort plan, wherein the second-pass sort
plan assigns the first and second delivery points on the first
carrier route to the first output and assigns the first and second
delivery points on the second carrier route to the second output;
feeding the batch of mail into the mail sorting system;
sorting the batch of mail according to the first-pass sort plan
utilizing the first, second and third outputs, thereby forming (1)
a first batch of mail comprising mail addressed to the first
delivery point on the first carrier route and the first delivery
point on the second carrier route; (2) a second batch of mail
comprising mail addressed to the second delivery point on the
first carrier route and the second delivery point on the second
carrier route; and (3) a third batch of mail comprising mail
addressed to a delivery point that is on hold;
feeding the first batch of mail into the mail sorting system;

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sorting the first batch of mail according to the second-pass sort
plan;
feeding one or more pieces of saturation mail into the mail
sorting system immediately after sorting the first batch of mail
according to the second-pass sort plan;
feeding the second batch of mail into the mail sorting system
immediately after feeding the one or more pieces of saturation
mail into the mail sorting system; and
sorting the second batch of mail according to the second-pass
sort plan.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

Steinmetz US 6,740,835 B2 May 25, 2004
Vanderbles US 6,741,908 B2 May 25, 2004
Kechel US 6,762,384 B1 Jul. 13, 2004
Hanson US 2004/0200761 A1 Oct. 14, 2004
Burns US 6,953,906 B2 Oct. 11, 2005

The following rejections are before us for review:
The Examiner rejected claims 1, 3, 6, 7, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Kechel in view of Vanderbles and in further
view of Hanson.
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The Examiner rejected claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Kechel in view of Vanderbles and Hanson and in further
view of Burns. 1
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Kechel in view of Vanderbles and Hanson and in further
view of Steinmetz.2

THE ISSUES
1. Have the Appellants shown that the Examiner’s reading of the
teachings of Hanson with respect to the limitation of “saturation mail” is
inconsistent throughout the record of the instant application?
2. Have the Appellants shown the Examiner failed to provide an
adequate reason to combine the teachings of Kechel and Hanson to reject the
appealed claims under 35 U.S.C. § 103(a)?
For the reasons set forth in our discussion below, we are not
persuaded by the Appellants’ arguments.
Accordingly, we AFFIRM the Examiner’s rejection.

1 Although the Appellants do not specifically address the grounds of
rejection of claims 4, 5, and 8, it is apparent that the Appellants intend to
contest the rejections of claims 4, 5, and 8 as part of the instant appeal
(App. Br. 2), presumably relying on the same argument advanced against
the rejection of claim 1 from which they depend.
2 When describing the rejections of claims 4, 5, and 8 the Examiner
does not mention Hanson explicitly (Amended Answer, mailed March 6,
2008, at 8). Inasmuch as claim 1 stands rejected as unpatentable over
Kechel in view of Vanderbles and in further view of Hanson, we understand
Hanson to be incorporated in the rejections of claims 4, 5, and 8, which
depend from claim 1. We consider the Examiner’s omission as a
particularity of the Examiner’s writing style and credit the rejections as
including Hanson.
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FINDINGS OF FACT
Kechel
We make the following findings of fact with respect to Kechel:
1. Kechel discloses a multi-pass mail sorting method in which presorted
mail (sorted by presort mailers) and non-presorted mail items
(deposited into the postal system) are sorted progressively by a sorting
system (col. 3, ll. 59-61and col. 5, ll. 50-55).
2. The mail carrier delivers mail to a plurality of “destinations” (delivery
points) on multiple “streets” (carrier routes) (col. 4, ll. 20-23).
3. Kechel teaches presort mailers that provide pre-sorted mail resulting
from sorting mail destined to a predetermined list of recipients (col. 5,
ll. 5-8 and 35-49).
4. In Kechel’s method, in a first pass the non-presorted mail is sorted
into a plurality of bins, wherein each bin contains mail destined to the
first “destination” on each “street” (col. 4, ll. 28-33 and col. 5, ll. 55-
57).
5. Kechel further discloses merging the mail sorted in the first pass with
the presorted mail in a combined batch (col. 5, ll. 57-59).
6. Kechel’s method then sequentially feeds the combined batches into
the sorting system and sorts the combined batches in a second pass
such that each batch of mail is directed to an output bin corresponding
to sequential “destinations” on each “street” (col. 4, ll. 34-46 and col.
5, ll. 63-67).
7. Presorted mail” is defined as “mass mailings of sales materials” (col.
1, ll. 39-41).

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Hanson
We make the following findings of fact with respect to Hanson:
8. Hanson discloses a mail sorting method for sorting different types of
mail products, i.e., letters and flats (¶ 2).
9. Hanson’s method includes sorting a first type of product (letters) into
a sequential order for delivery using a two-pass sorting scheme to
form a pre-sequenced first product (¶¶ 15 and 32).
10. Hanson’s method also includes passing a second type of product
(flats) through a first-pass of the two-pass sorting scheme (¶¶ 15 and
32).
11. Hanson’s method then intermixes the pre-sequenced first product
(letters) during the second-pass sorting of the second type of product
(flats) to form a sequentially merged group of the first and the second
type of product (letters and flats) for each delivery point (¶¶ 15 and
32).

PRINCIPLES OF LAW
1. To support an obviousness rejection all words in a claim must be
considered in judging the patentability of that claim against the prior art. In
re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
2. For a prima facie case of obviousness to be established there must be
"an apparent reason to combine the known elements in the fashion
claimed." KSR Int'l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41
(2007).

OPINION
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Rejection of Claims 1, 3, 6, 7, and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Kechel, Vanderbles, and Hanson
The Appellants argue claims 1, 3, 6, and 7 under 35 U.S.C. § 103(a)
together as a group. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii) (2007), we have selected claim 1 as the representative
claim to decide the appeal of the rejection of claims 3, 6, and 7 standing or
falling with claim 1. In view of the Appellants’ arguments, the rejection of
claim 9 will be addressed separately.

Claims 1, 3, 6, and 7
Issue (1)
The Appellants argue that because the “Examiner agreed with the
Applicant that ‘Hanson does not explicitly discuss saturation mail’…it is
[then] impossible for Hanson to disclose ‘feeding one or more pieces of
saturation mail into the mail sorting [system]…’ ” (App. Br.3 8) (underlining
in original). In other words, according to the Appellants, the Examiner’s
position is inconsistent because, on the one hand, the Examiner
acknowledges Hanson does not disclose the limitation of “saturation mail”
(Final Rejection at 9), but, on the other hand, the Examiner asserts that
“Hanson discloses a similar mail merging operation including feeding one or
more pieces of saturation mail into the mail sorting [system]” (Final
Rejection at 4) (underlining added). In response to the Appellants’

3 We refer herein to the Appeal Brief (“App. Br.”), filed December 12,
2007, the Reply Brief (“Reply Br.”), filed February 29, 2008, the
Examiner’s Answer (“Ans.”), mailed January 24, 2008, the Examiner’s
Amended Answer (“Amended Answer”), mailed March 6, 2008, and the
Final Rejection (“Final Rejection”), mailed July 12, 2007.
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argument, the Examiner clarifies that the teachings of Hanson were used to
show a feeding sequence in which different types of mail items (letters and
flats) are input into a mail sorting system (Ans. 10). Moreover, the
Examiner asserts that Kechel teaches the limitation of “saturation mail”
(Ans. 11).
Although we agree with the Appellants that Hanson does not disclose
the limitation of “saturation mail,” the Appellants’ argument is unpersuasive
because it attacks Hanson individually, rather than the combination of
Kechel, Vanderbles, and Hanson. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Kechel specifically defines “presorted mail” as “mass mailings of
sales materials” (Finding of Fact 6). The Appellants define “saturation
mail” as,
…a mailing that covers at least 75% of all delivery points on
the route or 90% of the residential delivery points on the route.
For example, a local store may wish to send an advertisement to
every residential delivery point on one or more routes (Spec.
13, ¶ 39).

Therefore, just as the Examiner asserted, the limitation of “saturation mail”
of claim 1 reads on the disclosed “presorted mail” of Kechel.
Furthermore, when reading the record in its entirety, the Examiner’s
position on the teachings of Hanson appears to be consistent. First, the
Examiner explicitly acknowledges that Hanson does not disclose the
limitation of “saturation mail” (Final Rejection at 9). Second, the Examiner
specifically states that “Kechel discloses the saturation mail but does not
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disclose feeding it immediately after sorting the first batch of mail” (Ans.
10) (underlining added). Third, the Examiner uses the teachings of Hanson
to show a “feeding sequence” (Ans. 10), that is, “Hanson is relied upon for
the timing or feed sequence of the different types of mail” (Final Rejection
at 9) (underlining added). Finally, the Examiner concludes that,

[i]t would have been obvious to one of ordinary skill in the art
at the time of the applicant’s invention to have modified Kechel
to include the specific feed sequence, as taught by Hanson, for
the purpose of… (Ans. 5) (underlining added).

Therefore, the Examiner consistently refers to the teachings of Hanson
to show the feeding sequence of different types of mail and not to disclose
“saturation mail.” In conclusion, we find that the Examiner’s reading of the
teachings of Hanson with respect to the limitation of “saturation mail” is
consistent throughout the record of the instant application.

Issue (2)
The Appellants argue that the Examiner’s reason to combine the
teachings of Kechel and Hanson to provide “a merged set of mail” is not an
adequate reason “because the system disclosed in Kechel already produces
this result” (Reply Br. 2). The system of Kechel produces a “merged set of
mail” (Findings of Fact 1 and 5). Specifically, the system of Kechel merges
presorted mail items (saturation mail) (Finding of Fact 3) with mail items
sorted in a first-pass of a multi-pass mail sorting method in a combined
batch (Findings of Fact 4 and 5). After forming the combined batch, the
mail items in Kechel are further sorted in a second-pass to correspond to
sequential “destinations” (points of delivery) on a “street” (carrier route)
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(Finding of Fact 6). On the other hand, Hanson uses a two-pass sorting
scheme to achieve a similar sequential sorting of mail items by points of
delivery (destinations) on a carrier route (street) (Findings of Fact 9, 10, and
11) without having to form a combined batch. Therefore, the system of
Hanson represents an improvement as compared to the system of Kechel
because the need to form a combined batch is eliminated, hence reducing the
number of operations. "[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill." KSR Int'l. Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1740 (2007). Therefore, modifying the mail
sorting method of Kechel to provide saturation mail immediately after
sorting a batch of mail according to the second-pass plan and immediately
prior to feeding a consecutive batch of mail according to the second-pass
plan as taught by Hanson would not have been uniquely challenging to a
person of ordinary skill in the art because it is no more than “the simple
substitution of one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement.” Id. at
1741. The improvement appears to be the product not of innovation but of
ordinary skill and common sense. A person of ordinary skill in the art would
readily appreciate that the benefits gained by feeding saturation mail
immediately after sorting the batch of mail according to the second-pass and
immediately prior to feeding a consecutive batch of mail according to the
second-pass, as taught by Hanson, would achieve similar benefits in the mail
sorting method of Kechel. Moreover, the Appellants do not provide any
evidence to show that modifying Kechel to feed saturation mail immediately
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after sorting a batch of mail according to the second-pass and immediately
prior to feeding a consecutive batch of mail according to the second-pass
would have been beyond the technical grasp of a person of ordinary skill in
the art.
For the reasons discussed above, the Appellants’ arguments do not
demonstrate error in the Examiner’s rejection of claim 1, and claims 3, 6 and
7 standing or falling with claim 1. Accordingly, the rejection of claim 1, and
claims 3, 6, and 7 standing or falling with claim 1, is sustained.

Claim 9
Issues (1) and (2)
The Appellants’ only argument as to why claim 9 is unpatentable over
Kechel in view of Vanderbles and in further view of Hanson is that the
“remarks for claim 1 apply to claim 9, because claim 9 requires ‘inputting a
batch of saturation mail into the sorting system immediately after inputting
the first batch of mail into the sorting system”’ (App. Br. 8) (underlining in
original). For the reasons discussed above, the Appellants have not
demonstrated any error in the Examiner’s rejection of claim 1 as
unpatentable over Kechel in view of Vanderbles and in further view of
Hanson. Likewise, the Appellants’ argument as to claim 9 fails to
demonstrate error in the rejection of claim 9 as unpatentable over Kechel in
view of Vanderbles and in further view of Hanson. The rejection is
sustained.

Rejection of Claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over
Kechel, Vanderbles, Hanson, and Burns and Rejection of Claim 8 under
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35 U.S.C. § 103(a) as unpatentable over Kechel, Vanderbles, Hanson, and
Steinmetz
Although the Appellants do not specifically address the grounds of
rejection of claims 4, 5, and 8, it is apparent that the Appellants intend to
contest the rejections of claims 4, 5, and 8 as part of the instant appeal
(App. Br. 2), presumably relying on the same argument advanced against
the rejection of claim 1 from which they depend. As stated supra, we are
not persuaded by the Appellants’ arguments as to any error by the Examiner
in the rejection of claim 1. Accordingly, we are equally not persuaded of
any error on the part of the Examiner in the rejections of claims 4, 5, and 8.

DECISION
The decision of the Examiner to reject claims 1 and 3 through 9 under
35 U.S.C. § 103(a) is affirmed.
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

JRG

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