Ex Parte Nauche

Board of Patent Appeals and Interferences

Apr 25, 2007

10310733 (B.P.A.I. Apr. 25, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GILLES NAUCHE
__________

Appeal No. 2007-0933
Application No. 10/310,733
Technology Center 2800
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Decided: April 25, 2007
__________

Before HUBERT C. LORIN, ANITA PELLMAN GROSS, and JENNIFER D.
BAHR, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal from a decision of the Examiner rejecting claims 1-6. 35
U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b) (2002).
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Application 10/310,733

We AFFIRM.
The Brief1 argues the claims as a group. Pursuant to the rules, the Board
selects representative claim 1 to decide the appeal with respect to claims 1-6. 37
C.F.R. § 41.37(c)(1)(vii) (2006).
Claim 1 reads as follows:

1. A mail processing machine comprising
a recto-verso printer adapted to receive data to be printed and to
produce printed documents based on said data,
said documents being designed to be enclosed and franked,
wherein the printer is capable of recto-verso printing the
documents and in that the processing machine comprises:
means for determining if a value related to the weight of said
documents exceeds postal threshold; and
means upstream of the printer to select the process for franking
the cover by recto-verso printing the documents at will based upon the
threshold determination.

The Examiner has finally rejected claims 1-6 under 35 U.S.C. § 103(a) as
being unpatentable over Bresnan (U.S. Patent no. 5,873,073) in view of Bucci
(U.S. Patent No. 5,655,089).

A. Issue

Appellant contends that the cited art combination would not have led one of
ordinary skill in the art to the claimed invention, the crux of the invention being to

1 Our decision will make reference to Appellant’s Appeal Brief (“Br.,” filed 27
February 2006) and the Examiner's Answer (“Answer,” mailed 29 March 2006).

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Application 10/310,733

recto-verso print a document at will if a value exceeds a postal threshold.
Examiner contends that it would. Has Appellant shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103 over Bresnan and Bucci in not showing
that the cited art combination would lead one of ordinary skill in the art to the
claimed invention?

B. Facts

The record supports the following findings of fact by a preponderance of the
evidence.
1. The Examiner finds that Bresnan discloses a mail processing machine
comprising:
• a recto-verso printer (Bresnan, Fig. 1, reference no. 35) adapted to
receive data to be printed and to print documents with the data (Bresnan,
Fig. 1, reference nos. 36 and 38);
• documents designed to be enclosed and franked (Bresnan, Fig. 1,
reference no. 40, col. 2, ll. 42-43);
• wherein the printer is capable of recto-verso printing the documents
(Bresnan, col. 2, ll. 26-27) and
• wherein means upstream of the printer (Bresnan, Fig. 1, reference no. 10)
selects (Bresnan, col. 2, ll. 21-38) the process for franking the cover by
recto-verso printing the documents (Bresnan, Fig. 1, reference no. 40,
col. 2, ll. 42-43).
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Application 10/310,733

(Answer 3-4).
2. Appellant does not dispute the Examiner’s characterization of what Bresnan
discloses.
3. The Examiner finds that the difference between the claims and Bresnan is
that Bresnan does not disclose “means for determining if a value related to the
weight of said documents exceeds postal threshold means upstream of the printer
to select the process for franking the cover by recto-verso printing the documents
at will based upon the threshold determination,” i.e., the last two “means” set forth
in the claims. (Answer 4).
4. Appellant does not dispute the Examiner’s characterization of the difference
between the claims and Bresnan. (Br. 9).
5. The Examiner relies on Bucci to overcome the difference between the
claimed invention and Bresnan.
6. The Examiner finds that the “Bucci system is capable to perform
determining if a value related to the weight of said documents exceeds postal
threshold means” (Answer 4) because Bucci (col. 1, ll. 36-42) states the following
Research has revealed, however, that up to 5 sheets of 81/2”x11” paper
can be mailed in the same envelope, and still pay at the same 1 oz. rate.
Further research has shown that by printing on both sides of said
sheet, one can effectively transmit by hard-copy mail 10 pages of
information in a single 1 oz. mailing.

7. The Examiner finds that
[i]t would have been obvious to a person having ordinary skill in the
art at the time of the invention was made to modify the teachings of Bresnan
by including means for determining if a value related to the weight of said
documents exceeds postal threshold means upstream of the printer to select
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Application 10/310,733

the process for franking the cover by recto-verso printing the documents at
will based upon the threshold determination, since Bucci teaches that having
the process for franking the cover by recto-verso printing the documents at
will in case a value (and the computed value) related to the weight of said
documents exceeds postal threshold would be beneficial for the purpose of
adopting an effecting economical system to save money on papers and
postage.

(Answer 4-5).

8. Appellant acknowledges the Bucci passage of col. 1, lines 36-42, reproduced
above and adds that “[i]t does not seem to require much research to determine that
printing on both sides of the paper will allow double the pages of text to be printed
on the same number of pages of paper when compared to single sided printing.”
(Br. 10).
9. But Appellant disagrees with the Examiner’s finding that the Bucci passage
of col. 1, lines 36-42, suggests recto-verso printing a document based on a postal
threshold determination. (Br. 10).
10. Appellant argues that
The Examiner cites to the passage of Bucci ‘089 described above
which merely recites the known property of printing that you can fit twice as
many pages of printed text on a two sided document. Bucci does not suggest
determining if a value exceeds a threshold and then taking action based upon
that determination by deciding whether to recto-verso print the document
based upon such a determination. Bucci clearly teaches away from the
teaching of Claim 1 by teaching that two-sided printing is always preferable
for environmental reasons.

(Br. 13).
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Application 10/310,733

11. Appellant also argues that, unlike Bresnan, Bucci does not teach or suggest a
system for mail piece production that includes a duplex printer and there is no
motivation to combine the two references to derive the claimed mail processing
machine comprising “means upstream of the printer to select the process for
franking the cover by recto-verso printing the documents at will based upon the
threshold determination” that a value related to the weight of the documents
exceeds the postal threshold. (Br. 9-10).

C. Principles of Law

1. A prima facie case of obviousness is established by presenting evidence that
would have led one of ordinary skill in the art to combine the relevant teachings of
the references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).

D. Analysis

There is no dispute that Bresnan discloses a system comprising two
subsystems – an initiating node and a printer adapted to receive data to be printed
and to print documents based on the data. (FF1 and 2; see also Bresnan, col. 3, ll.
16-43). A close reading of Bresnan reveals that the initiating node includes a
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Application 10/310,733

means for the system operator to select whether to print a document on one or two
sides (Bresnan, col. 8, ll. 45-49). This disclosure supports the Examiner’s finding
(FF1) that Bresnan’s printer is recto-verso capable. Furthermore, one of ordinary
skill in the art would understand that if, as Bresnan discloses, the initiating node
includes a means for the system operator to select whether to print a document on
one or two sides, then the system operator is in a position to decide, at will,
whether to recto-verso print documents on the recto-verso capable printer.
The dispute is whether the prior art would further suggest recto-verso
printing a document at will based on a determination that a document’s weight
exceeds a postal threshold as claimed. For the following reasons, we find that one
of ordinary skill in the art would be led to combine the relevant teachings of
Bresnan and Bucci to arrive at the claimed invention whereby a document is recto-
verso printed at will based on a determination that a document’s weight exceeds a
postal threshold as claimed.
Given that the Bresnan printer is capable of recto-verso printing a document
at will, it is necessarily capable of recto-verso printing a document if the
determination is made to do so. One of ordinary skill in the art reading Bresnan
would foresee the system operator determining to recto-verso print documents on
the printer for any number of reasons. Among the conventional reasons for recto-
verso printing a document is to fit more text on a set number of pages. (FF8).
Another reason, one suggested by Bucci, is to reduce the cost of mailing a
document. The Bucci passage the Examiner relied upon to overcome the
difference between Bresnan and the claimed invention evidences the common
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Application 10/310,733

knowledge that mail is priced according to weight, with each succeeding
incremental weight representing a postal threshold. (FF6). Bucci indicates that, in
the context of mailing monthly bills and statements, the postal threshold is “now
between 23 [cents] and 29 [cents] depending upon the class of mail” (Bucci, col. 1,
ll. 29-30) and a “1 oz. [rate]” (Bucci, col. 1, l. 42). Bucci also indicates that, with
respect to mailing monthly bills and statements, “[a]nalysis has also revealed that
these types of mailings produce an unnecessary expense for postage … ” (Bucci,
col. 1, ll. 31-33). As one solution to this problem, Bucci suggests “by printing on
both sides of said sheet, one can effectively transmit by hard-copy mail 10 pages of
information in a single 1 oz. mailing” (Bucci, col. 1, ll. 39-41). One of ordinary
skill in the art reading Bucci would understand that in order not to exceed a given
postal threshold value one can retro-verso print a document and thus keep the
weight of the document below the postal threshold value.
Appellant has not shown that the Examiner erred in rejecting the claims
under 35 U.S.C. § 103 over Bresnan and Bucci.
Accordingly the rejections are affirmed.

CONCLUSION OF LAW

On the record before us, Appellant has failed to show that the Examiner
erred in rejecting the claims over the prior art.

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Application 10/310,733

DECISION

The Examiner’s rejection of claims 1-6 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) (2006).
AFFIRMED

hh

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