Ex Parte Mozdzer et al

Patent Trial and Appeal Board

Apr 22, 2014

11956682 (P.T.A.B. Apr. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSEPH M. MOZDZER, JAMES A. FAIRWEATHER,
THOMAS M. LYGA, and DAVID J. EATON
____________________

Appeal 2011-0134211
Application 11/956,682
Technology Center 2100
____________________

Before JEAN R. HOMERE, JEFFERY S. SMITH, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Pitney Bowes, Inc. (App Br. 2.)
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Rejection of claims 1-18. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants’ Invention
Appellants invented a mechanical interface (60) for negotiating a
protocol version to thereby synchronize exchange of data and material
between a source mechanical device (50) having a first protocol version
(110) and a receiving mechanical device (70) having a second protocol
version (110). Spec. [0010], [0036], fig. 2.
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for interfacing a source device to a receiving
device, the method comprising:
negotiating a protocol version to use for communicating
between the source device and the receiving device;
negotiating a feature set of the protocol version;
configuring a mechanical interface device located
between the source device and the receiving device to support
the feature set and the protocol version and to accept material
from the source device and pass the material to the receiving
device; and
operating the receiving device in accordance with the
negotiated protocol version and negotiated feature set to
synchronize exchange of data and material between the source
device and the receiving device.

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Prior Art Relied Upon
Delfer US 5,754,434 May 19, 1998
Bischel US 6,027,268 Feb. 22, 2000
Okamoto US 6,339,685 B1 Jan. 15, 2002
Yoshimura US 2002/0171868 A1 Nov. 21, 2002
Mixer US 6,693,722 B1 Feb. 17, 2004
Yamaguchi US 2004/0061884 A1 Apr. 1, 2004
Leyva US 6,842,264 B1 Jan. 11, 2005
Walmsley US 2006/0164452 A1 Jul. 27, 2006
Boyd US 2007/0097399 A1 May 3, 2007
Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1-3, 7-12, and 15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Delfer and Leyva.
2. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Delfer, Leyva, and
Yamaguchi.
3. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Delfer, Leyva, and Okamoto.
4. Claims 6 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Delfer, Leyva, and
Walmsley.
5. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Delfer, Leyva, and Mixer.
6. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Delfer, Leyva, and
Yoshimura.
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7. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Delfer, Leyva, and Boyd.
8. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Delfer, Leyva, and Bischel.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 4-12, and the Reply Brief, pages 1-2.2

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding the combination of Delfer and Leyva teaches or suggests a
mechanical interface for negotiating a protocol version between a source
device and a receiving device, as recited in claim 1?

Appellants argue the proffered combination does not teach or suggest
the disputed limitations emphasized above. App. Br. 5-8; Reply Br. 1-2. In
particular, Appellants argue while Leyva discloses a table generator that
generates a translation table for translating between a first protocol version
in a first device, and a second protocol version in a second device when
transmitting between the devices, the table generator does not negotiate a
protocol version to facilitate communication between the devices. Rather,

2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed March 24, 2011), the Answer (mailed June 9,
2011), and the Reply Brief (filed September 22, 2011) for the respective
details. We have considered in this decision only those arguments
Appellants actually raised in the Brief. Any other arguments which
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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the generated translation table allows each device to use its own protocol to
communicate as opposed to creating a new negotiated protocol to facilitate
the communication. App. Br. 7; Reply Br. 1. Further, Appellants argue that
Leyva’s paper handler controller (PHC) is integrated into hardware and
firmware residing in printer memory to control various devices and does not
negotiate a set of features of the protocol versions to determine what features
will be available in the newly created protocol. App. Br. 7. Additionally,
Appellants argue because the PHC must support the complete command
from a protocol version, the PHC is not a mechanical interface device
configured to support a feature set of the protocol version to facilitate the
transfer of material from the source device to the receiver device. App. Br.
8. Therefore, Appellants submit Leyva does not cure the noted deficiencies
of Delfer. Id.
In response, the Examiner finds Leyva’s disclosure of a PHC
communicating with printer devices through commands conforming to a
compatible protocol to exchange information therewith teaches the PHC
negotiating a protocol version to communicate with the devices. Ans. 18-19.
Further, the Examiner finds Delfer’s disclosure of a mail moving item (e.g.,
a transfer tray, collator or folder) configured to mechanically interface a
printer to an inserter for transferring items therebetween teaches the
mechanical interface. Ans. 19. Additionally, the Examiner finds the
proffered combination of references teaches the disputed limitations. Id.
On the record before us, we agree with the Examiner’s findings and
ultimate conclusion of obviousness. We note at the outset the disputed claim
recitation set forth above does not preclude the source device and the
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receiver device from retaining their respective protocol versions. Rather, the
claim requires that the negotiated protocol version include a set of features
to enable the source and receiver devices to exchange data and materials.
Therefore, notwithstanding that each of Leyva’s devices retains their
individual protocol, it suffices that the table of modified commands created
by the table generator includes a set of commands to facilitate the exchange
of data between devices having different protocol versions. Leyva, col. 6,
ll. 6-13. Further, we find un-rebutted the Examiner’s finding that the
Leyva’s PHC, when integrated into Delfer’s inserter, teaches a mechanical
interface that creates a set of commands to exchange data between different
protocol versions to facilitate the exchange of data between associated
devices. Ans. 19.
Additionally, in considering the general form of Appellants’
arguments in the principal Brief, Appellants have attacked the individual
teachings of Delfer and Leyva separately, as opposed to the combined
disclosures proffered by the Examiner. We note that one cannot show
nonobviousness by attacking the references individually where the rejections
are based on combinations of references. In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Here, the respective references relied on by the
Examiner must be read, not in isolation, but for what the combination
teaches or suggests when considered as a whole. We find nonetheless that
the cumulative weight and the totality of the evidence on this record favor
the Examiner’s position that the combined disclosures of Delfer and Leyva
would have taught or suggested the disputed limitations. It therefore follows
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that Appellants have not shown error in the Examiner’s obviousness
rejection of claim 1.

Regarding the rejection of claims 2-18, because Appellants have
either not presented separate patentability arguments or have reiterated
substantially the same arguments as those previously discussed for
patentability of claim 1 above, claims 2-18 fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).
DECISION
We affirm the Examiner’s rejections of claims 1-18 as set forth above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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