Ex parte MILLER

Board of Patent Appeals and Interferences

Sep 12, 1997

08055477 - (D) (B.P.A.I. Sep. 12, 1997)

Application for patent filed May 3, 1993.1
1
Paper No. 16
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte CARL A. MILLER
______________
Appeal No. 95-3178
Application 08/055,4771
_______________
ON BRIEF
_______________
Before COHEN, KIMLIN and LYDDANE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 5 and 8, and from the refusal of the examiner to allow
Appeal No. 95-3178
Application 08/055,477
The panel designated in this appeal, upon review of appellant's brief,2
discovered appellant's request for an oral hearing. A Program and Resource
Administrator of the board, responsible for setting hearings, inquired of
appellant as to whether an oral hearing was still sought. As indicated in
Paper No. 15, appellant chose to waive the oral hearing requested. This panel
therefor proceeded to decide the appeal on brief.
Our understanding of this document is derived from a reading of a3
translation thereof prepared in the United States Patent and Trademark Office.
A copy of the translation is appended to this opinion.
2
claims 6 and 7, as amended subsequent to the final rejection.
These claims constitute all of the claims in the application. 2
Appellant's invention pertains to a mechanism for sealing an
envelope (claims 1 through 7) and to a method for sealing an
envelope (claim 8). A basic understanding of the invention can
be derived from a reading of exemplary claims 1 and 8, copies of
which appear in the "APPENDIX" to the brief.
In rejecting appellant's claims under 35 U.S.C. § 102(b),
the examiner has relied upon the references listed below:
Jaynes 826,169 Jul. 17, 1906
Markoe 366,099 Sep. 26, 1906
(France)3
The following rejections are before us for review.
Claims 1 through 6 and 8 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Jaynes.
Claims 1 through 4 and 6 through 8 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Markoe.
Appeal No. 95-3178
Application 08/055,477
Appellant's "Background Of The Invention" section of the specification4
(page 1) informs us that prior to the present invention it was a known method
of sealing an envelope to drive the envelope between a pair of rollers and
then deflect a lower edge of the envelope upwards against a resilient stop.
When the envelope is decoupled from the rollers, the resilient stop and the
force of gravity urge the upper edge of the envelope into the nip of a second
pair of rollers to fold and seal the envelope flap against the rear panel of
the envelope. As further disclosed, to avoid buckling the envelope as it is
deflected, the deflecting surface is typically curved so that the rate at
which the lower edge is deflected is limited so that thicker, stiffer
envelopes do not buckle.
3
The full text of the examiner's rejections and response to
the argument presented by appellant appears in the answer (Paper
No. 14), while the complete statement of appellant's argument can
be found in the brief (Paper No. 13).
In the brief (page 3), appellant points out that the
following groups of claims do not stand or fall together and are
argued separately: claims 1 through 5 and 8; claim 6; and claim
7. As to the first claim grouping, like appellant in the brief
(page 3), we focus out attention, infra, exclusively upon claims
1 and 8, with claims 2 through 5 standing or falling with claim
1.
OPINION
In reaching our conclusion on the anticipation issues raised
in this appeal, this panel of the board has carefully considered
appellant's specification and claims, the applied references,4
and the respective viewpoints of appellant and the examiner. As
Appeal No. 95-3178
Application 08/055,477
4
a consequence of our review, we make the determinations which
follow.
The rejection based upon the Jaynes reference
We sustain the rejection of claims 1 through 5 and 8 under
35 U.S.C. § 102(b) based upon the teaching of Jaynes, but not
the rejection of claim 6.
At the outset, we recognize that anticipation under
35 U.S.C. § 102(b) is established only when a single prior art
reference discloses, either expressly or under principles of
inherency, each and every element of a claimed invention. See
In re Paulsen, 30 F.3d 1475, 1478-1479, 31 USPQ2d 1671, 1675
(Fed. Cir. 1994), In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990), and RCA Corp. v. Applied Digital Data
Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984). However, the law of anticipation does not require that
the reference teach specifically what an appellant has disclosed
and is claiming but only that the claims on appeal "read on"
something disclosed in the reference, i.e., all limitations of
the claim are found in the reference. See Kalman v. Kimberly
Appeal No. 95-3178
Application 08/055,477
5
Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983); cert. denied, 465 U.S. 1026 (1984).
We turn now to the claimed subject matter.
Claim 1 on appeal is drawn to a mechanism for sealing an
envelope comprising, inter alia, stop means displaced from a path
for engaging a lower edge of an envelope and urging an upper edge
of the envelope towards an intake, and resilient deflecting means
for deflecting the lower edge towards the stop means at a
variable rate of deflection, the rate of deflection varying
inversely with the stiffness of the envelope to prevent buckling
of the envelope.
Claim 8 on appeal addresses a method for sealing an envelope
comprising, inter alia, the steps of deflecting a lower edge from
a path as the envelope moves forward; the rate at which the lower
edge is deflected being varied inversely with the stiffness of
the envelope to avoid buckling; after deflecting the lower edge
continuing to apply a first force and simultaneously applying a
second, smaller force to urge the envelope rearward towards an
intake, and when the upper edge is proximate the intake ceasing
to apply the first force; whereby the envelope responds to the
second force to move the upper edge into the intake to fold and
seal a flap.
Appeal No. 95-3178
Application 08/055,477
6
The Jaynes patent discloses an envelope sealing machine
(Figures 1 through 3) including rollers 3 and 4 for moving an
envelope z, a so-called "deflecting-leaf" made up of a transverse
rod 12 and a rod 13 (page 1, lines 78 through 80), a skeleton
flap-pressing lever pivoted on rod 14, preferably formed from a
single piece of wire bent to form a bail 15, having rearwardly-
extending arms 15a and having the intermediate portion of its
laterally-spaced arms coiled around the rod 14 (page 1, lines
89 through 95), and rollers 3 and 5 for passing the envelope
therebetween. As noted by Jaynes (page 2, lines 29 through 34),
The skeleton supporting shelf or leaf 12, 13,
as well as the spring-arms 15a, will yield
very considerably, so that envelops that vary
a great deal in size may be run through this
machine and sealed without readjusting any
parts of the machine.
Claims 1 through 5 and 8
We share the examiner's view that the subject matter of
claims 1 and 8 is anticipated by the teaching of Jaynes. From
our perspective, one versed in the art would understand that the
lower edge of an envelope passing through the nip of the rollers
3,4, of Jaynes (Figure 1) would be deflected by the so-called
"deflecting leaf" (12, 13) towards the spring-arms 15a. Thus, we
consider the spring-arms and "deflecting leaf" to correspond to
Appeal No. 95-3178
Application 08/055,477
7
the claimed stop means and resilient deflecting means
respectively of claim 1. Additionally, it is clear to us that in
operation the machine of Jaynes causes a deflecting of the lower
edge of the envelope (by "deflecting leaf") and after deflecting
effects simultaneously applying of a second smaller force (by
spring-arms 15a) to urge the envelope toward the intake to
rollers 3, 5, as required by steps of method claim 8.
The argument advanced by appellant (brief, page 5) is not
convincing. In particular, for the reasons addressed, supra, we
do not share appellant's point of view that the rollers 3 and 4
disclosed by Jaynes would apply a rearward force to the envelope
even before any deflection might occur.
Claim 6
As to the rejection of claim 6, it is apparent to this panel
of the board that the subject matter thereof is not anticipated
by the Jaynes patent. More specifically, we are of the opinion
that the fixed ends of the "deflecting leaf" attached to the
supporting-plates 2 (page 1, lines 78 through 84) in the Jaynes
patent cannot be fairly said to be "proximate", i.e., very near
Appeal No. 95-3178
Application 08/055,477
Webster's New Collegiate Dictionary, G. & C. Merriam Company,5
Springfield, Massachusetts, 1979.
8
or close , to the stop means, as required by claim 6. Thus, the5
rejection of claim 6 under 35 U.S.C. § 102(b) based upon the
Jaynes patent is not sustained.
The rejection based upon the Markoe reference
We sustain the rejection of method claim 8, but not the
rejection of claims 1 through 4, 6, and 7 under 35 U.S.C.
§ 102(b).
Method claim 8
Our review of the Markoe disclosure, and in particular the
perceived operation of the envelope sealing machine construction
of Figure 6 (translation, page 6) relied upon by the examiner,
indicates to us that the method steps of appellant's claim 8 are
anticipated thereby.
In appellant's view (brief, page 4), the Markoe document
(the French reference) does not teach the step of applying a
rearward force to the leading edge (lower edge) of an envelope
Appeal No. 95-3178
Application 08/055,477
9
only after it is deflected from a path. Appellant's argument is
not commensurate with the scope of the subject matter of claim 8.
Claim 8 recites, inter alia, that after deflecting a lower edge
of an envelope continuing to apply a first force and simul-
taneously applying a second force to urge an envelope rearward
towards an intake. Thus, contrary to appellant's argument, the
second force is not required to be applied to the lower "edge",
as claimed. Based upon the configuration of components in Figure
6, in particular, we are of the view that those skilled in this
art would understand that the lower edge of an envelope emanating
from the nip between rollers 24, 25 of Markoe would engage and be
deflected by the directing plate and thereafter a second, smaller
force effected by the roller 48 cooperating with the directing
plate 49 urges the envelope rearward towards the intake between
the rollers 25, 26. Accordingly, the method of appellant's claim
8 is determined to be anticipated by the Markoe disclosure.
Claims 1 through 4, 6, and 7
As to the subject matter of independent claim 1, like
appellant, we do not discern a stop means in the teaching of
Appeal No. 95-3178
Application 08/055,477
10
Markoe (Figure 6) for engaging a "lower edge" of an envelope and
urging an upper edge towards an intake. At best, it appears to
us that the roller 48 would help make an envelope descend between
rollers 25 and 26 by engaging a side of an envelope after the
envelope is deflected by the directing plate 49. Thus, we cannot
sustain the rejection of claims 1 through 4, 6, and 7 under
35 U.S.C. § 102(b) based upon the teaching of Markoe.
In summary, this panel of the board has:
affirmed the rejection of claims 1 through 5 and 8 under
35 U.S.C. § 102(b) as being anticipated by Jaynes, but reversed
the rejection of claim 6 on the same ground; and
reversed the rejection of claims 1 through 4, 6, and 7 under
35 U.S.C. § 102(b) as being anticipated by Markoe, but affirmed
the rejection of claim 8 on the same ground.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 95-3178
Application 08/055,477
11
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
EDWARD C. KIMLIN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
WILLIAM E. LYDDANE )
Administrative Patent Judge )

Robert H. Whisker
Pitney Bowes Inc.
Intellectual Property &
Tech. Law Dept.
World Headquarters,
One Elmcroft Road
Stamford, CAT 06926-0700
Appeal No. 95-3178
Application 08/055,477
12
ICC/cam