Ex Parte Purcell et al

Board of Patent Appeals and Interferences

Jul 29, 2011

11868028 (B.P.A.I. Jul. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS K. PURCELL, KARL C. UNGER, and
BRIAN K. DUDLEY
____________

Appeal 2009-012964
Application 11/868,028
Technology Center 3700
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012964
Application 11/868,028

2
STATEMENT OF THE CASE
Douglas K. Purcell et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 3, 4, and
6-14. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
THE INVENTION
Appellants’ claimed invention is directed to an insert and envelope
assembly. Spec. 1, l. 6. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. An insert and envelope assembly comprising:
an envelope including a flap portion, a body portion and
securing means which are operable to secure said flap portion
directly to said body portion, said body portion including a
front panel and a rear panel defining an inner cavity
therebetween, wherein said flap portion is directly pivotally
coupled to said front panel along a fold line;
an insert made of a separate piece of material than said
envelope, wherein said insert is removably adhered directly to
said rear panel by an insert adhesive at a position external of
said inner cavity such that said entire insert is removable from
said envelope without causing damage to said envelope or said
insert; and
an outer envelope receiving said envelope, and said
located and positioned insert, therein.
Independent claim 13 recites, in pertinent part, an assembly
comprising an envelope and an insert, wherein the insert is removably
adhered directly to the rear panel of the envelope by an insert adhesive at a
position external of the inner cavity such that the entire insert is removable
from the envelope without causing damage to the envelope or insert. Claim
Appeal 2009-012964
Application 11/868,028

3
14 depends from claim 13 and adds an outer envelope receiving the
envelope and insert therein.
THE EVIDENCE
The Examiner relies upon the following evidence:
MacDougall US 3,652,007 Mar. 28, 1972
Luftig US 3,986,662 Oct. 19, 1976
Coffey US 5,779,137 Jul. 14, 1998
THE REJECTIONS
Appellants seek review of the following rejections:
1. The Examiner rejected claims 1, 3, 4, and 6-12 under 35 U.S.C.
§ 103(a) as being unpatentable over Luftig, MacDougall, and Coffey.
2. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Luftig and Coffey.
3. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over Luftig, Coffey, and MacDougall.
ISSUES
The Examiner found that Luftig does not disclose the insert being
attached by an insert adhesive, as called for in independent claims 1 and 13.
Ans. 4, 5. The Examiner found that Coffey discloses an envelope having an
insert attached to a panel of the envelope via a removable insert adhesive
such that the insert can be removed without damaging the insert or the
envelope. Ans. 4, 5-6. The Examiner determined that it would have been
obvious to one of ordinary skill in the art to create the envelope of Luftig
with the insert attached to the rear panel with insert adhesive, as taught by
Appeal 2009-012964
Application 11/868,028

4
Coffey, “in order to prevent damage to the insert or the envelope upon
removal of the insert from the envelope.” Ans. 4, 6.
Appellants argue claims 1, 3, 4, and 6-12 as a group. App. Br. 4-14.
We select claim 1 as representative, and claims 3, 4, and 6-12 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue with
regard to the rejections of claims 1 and 13 that the Examiner failed to
provide a proper motivation for combining Coffey and Luftig, that using
Coffey’s disclosed insert adhesive on the envelope of Luftig would, in fact,
cause damage to the insert and envelope, that the Examiner has
impermissibly used the Appellants’ own invention as a template, and that
Luftig teaches against the proposed combination. App. Br. 5-10 and 14-15.
In the grounds of rejection pertaining to claims 1 and 14, the
Examiner further found that Luftig does not disclose the assembly further
comprising an outer envelope. Ans. 4, 6. The Examiner determined that it
would have been obvious to one of ordinary skill to “create the envelope of
Luftig as a return envelope and place it within an outer envelope with an
invoice as taught by MacDougall in order to bill a customer and supply them
with a means to reply.” Ans. 5, 6. Appellants argue one having ordinary
skill in the art would not be motivated to use the envelope of Luftig as an
inner envelope as proposed by the Examiner because to do so would
frustrate the purpose of Luftig’s invention. App. Br. 10-15.
The issues presented by this appeal are:
Has the Examiner articulated adequate reasoning with rational
underpinning to explain why one of ordinary skill in the art would have been
Appeal 2009-012964
Application 11/868,028

5
led to modify the assembly of Luftig to use an insert adhesive, as taught by
Coffey, to result in the claimed invention in which the insert is removable
from the envelope without causing damage to the envelope or insert?
Has the Examiner articulated adequate reasoning with rational
underpinning to explain why one of ordinary skill in the art would have been
led to add an outer envelope, as taught by MacDougall, to the assembly of
Luftig?
ANALYSIS
“Insert adhesive”
Luftig discloses an envelope 10 having a card 24, which may be used
for a return receipt, “removably fixed to the lower segment 20” on the rear
of the exterior of the envelope. Luftig, col. 2, l. 60 – col. 3, l. 1 and col. 5,
ll. 4-7; figs. 1 and 4. In light of this disclosure, we find that Luftig teaches
fixing a return receipt to the rear exterior face of an envelope in such a
manner that the return receipt can be removed from the envelope without
damage to the return receipt.
Coffey discloses an interoffice routing envelope having a routing label
“releasably mounted” on the envelope by a pressure sensitive adhesive, so
that the label can be peeled off the envelope without damaging the envelope.
Coffey, col. 2, ll. 11-24. This configuration allows the label to be removed
once all of the routing blocks are filled, and a new label to be applied so that
the envelope may be reused. Coffey, col. 3, ll. 33-38. Coffey discloses that
the envelope is made of Tyvek® material so that it is “durable, long lasting,
waterproof and may be fairly described as virtually indestructible compared
Appeal 2009-012964
Application 11/868,028

6
with the conventionally used brown paper inter-office routing envelope.”
Coffey, col. 2, l. 58 – col. 3, l. 2. Coffey discloses that “[t]he material for
the purpose of the present invention may be considered as having inherently
the comparable of a release coating making it possible to readily peel the
label 30 from the surface of the envelope without damage to the envelope.”
Coffey, col. 3, ll. 2-6. The label 30 has a pressure sensitive adhesive 31 on
one face for adhesively attaching the label to the front face of the envelope.
Coffey, col. 3, ll. 10-11. Coffey teaches that “[t]he adhesive chosen is such
as to rupture before either that of the label 30 or envelope 20.” Coffey, col.
3, ll. 25-26. Coffey discloses that the adhesive is “a water based resinous
adhesive which is readily recyclable” and that the preferred adhesive has a
formulation that is a trade secret of Moore Business Forms Inc. and is
known under the trademark Stix. Coffey, col. 3, ll. 26-31.
We find that Coffey would have suggested to a person having
ordinary skill in the art that one way to affix the return receipt to the
envelope of Luftig would be to use an adhesive. Further, Coffey teaches that
in the case of paper envelopes, a release coating would need to be applied to
the paper to allow the return receipt to be removed without damaging the
envelope or the return receipt. Coffey teaches that in the case of an envelope
made of more durable material, such as Tyvek® material, a pressure sensitive
adhesive can be used. Regardless of the underlying envelope material,
Coffey would have suggested to one having ordinary skill in the art to select
an adhesive that will “rupture before either that of the label or envelope.”
Appeal 2009-012964
Application 11/868,028

7
We are not persuaded by Appellants’ argument that the proposed
combination would cause damage to Luftig’s insert/envelope. App. Br. 5.
Appellants’ argument is based on the notion that a person having ordinary
skill in the art would blindly incorporate the specific pressure sensitive
adhesive disclosed in Coffey on the paper envelope of Luftig without any
consideration to the overall teachings of the references. This is not the
proper test for obviousness.
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (internal citations omitted).
See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.”); and In re Nievelt, 482 F.2d
965, 968 (CCPA 1973) (“Combining the teachings of references does not
involve an ability to combine their specific structures.”). Rather, the
Supreme Court stated that in an obviousness inquiry, “[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). As the Examiner explained
in the Answer, “the Coffey reference is applied to teach the idea of
releasably attaching an insert to an envelope via an adhesive, as the Luftig
Appeal 2009-012964
Application 11/868,028

8
reference is silent to the method of attachment (merely stating that the card
24 is affixed to the envelope (Col 3, lines 30-31)).” Ans. 7. We agree with
the Examiner’s reasoning that “[o]ne of ordinary skill in the art would use an
adhesive/substrate combination which would not tear, as taught by Coffey
(either by the stronger substrate, or by the alternative method shown by
Coffey to be known in the art, a release coating on ordinary paper).” Ans. 7.
We further find the Examiner’s articulated reason to combine to be
based on a rational underpinning because the Examiner extracted the reason
to combine from the Coffey reference itself. In particular, Coffey teaches
selecting an adhesive for adhering a label to an interoffice envelope such
that the adhesive ruptures before either the label or envelope so as to avoid
damage to either the label or envelope. Coffey is concerned with reusing the
envelope and recycling the label. Luftig is similarly concerned with reusing
the return receipt. As such, for the purpose of reusing the return receipt, a
person having ordinary skill in the art would have been led to modify Luftig
with the teaching of Coffey to use an adhesive that would rupture before the
return receipt and the envelope so that the return receipt could be safely
removed from the envelope without damaging either the envelope or the
receipt.
We are also not persuaded by Appellants’ argument that Luftig
teaches against the proposed combination. App. Br. 9. While we agree that
the envelope of Luftig is not intended to be reused for mailing after its initial
Appeal 2009-012964
Application 11/868,028

9
use1, we disagree with the Appellants’ contention that a person having
ordinary skill in the art would not be concerned with damage to the envelope
during removal of the return receipt. When a letter is sent with a return
receipt, the mail carrier delivers the letter to the addressee, the addressee
signs the return receipt to prove that the addressee received the letter, and
then the mail carrier removes the return receipt from the envelope to mail
back to the sender. The letter is then left with the addressee. One having
ordinary skill in the art would not wish to use an adhesive that would
damage the envelope during removal of the return receipt, because at that
point in the delivery process the envelope has not yet been opened by the
addressee, and any resulting damage to the envelope may also damage the
contents within the envelope.
Accordingly, we find that the Examiner’s proposed combination of
Luftig and Coffey would have led to the use of an insert adhesive on the
envelope of Luftig that would allow the return receipt to be removed from
the envelope without causing damage to the envelope or insert, and we find
that the Examiner’s articulated reasoning for such a combination is based on
a rational underpinning. Appellants’ arguments have not persuaded us of
error in the Examiner’s analysis. As such, we will sustain the Examiner’s
rejection of claim 13 as being unpatentable over Luftig and Coffey. We now
analyze the Examiner’s reliance on MacDougall for the obviousness
rejection of the remaining claims on appeal.

1 Luftig suggests that once the letter is delivered, opened, and its contents are
removed, then the envelope is discarded. Luftig, col. 8, ll. 25-28.
Appeal 2009-012964
Application 11/868,028

10
“Outer envelope”
Independent claim 1 and dependent claim 14 further call for an outer
envelope receiving the envelope and insert therein. MacDougall discloses
that a common practice in mailing accounts for utility services is to employ:
(1) an envelope having a front panel formed with a viewing window; (2) a
punched card containing the address of the account and the statement of the
account; and (3) a return envelope bearing the address of the utility, where
the punched card and return envelope are located within the first envelope
and mailed to the address on the account. MacDougall, col. 1, ll. 18-28.
MacDougall discloses that the recipient then opens and discards the first
envelope, tears the punch card along a weakened tear line to separate the
statement of account portion of the punched card from the account portion,
and then returns the account portion of the punched card, together with a
check in payment of the account, in the return envelope. MacDougall,
col. 1, ll. 28-37.
The Examiner’s stated reason to combine is that it would have been
obvious to add the outer envelope “in order to bill a customer and supply
them with a means to reply.” Ans. 5; see also Ans. 8. We find this
reasoning to be based on a rational underpinning because a billing party,
such as a utility or a credit card company, may wish to provide some or all
of its customers with a return receipt to be used on the envelope within
which the customer remits payment as an enhanced customer service, so that
the customer can ensure that the utility has received its payment. Such
entities may wish to offer this enhanced customer service to their customers
Appeal 2009-012964
Application 11/868,028

11
to entice new customers, retain existing customers, and be competitive in the
marketplace. While this enhanced service may require added cost for the
billing company to sign for such envelopes upon receipt, this is a
cost/benefit assessment made by the billing company and does not persuade
us that the Examiner’s articulation is based on faulty reasoning.
Further, Appellants’ argument that a credit card company using
Luftig’s envelopes for payments would not be able to process them
automatically due to the presence of the return receipt card is unavailing.
App. Br. 13. When the credit card company signs the return receipt upon
delivery of the envelope, the mail carrier then removes the return receipt to
send it back to the customer, and the credit card company is left with only
the envelope with the payment therein for processing.
We are also not persuaded by Appellants’s argument that the purpose
of Luftig’s envelope, i.e., having windows formed therein so as to allow
information printed on the papers secured within the envelope to be visible
during mailing, would be frustrated by placing Luftig’s envelope within an
outer envelope. Reply Br. 10. The Examiner is proposing that a billing
party would mail Luftig’s envelope/return receipt assembly to a customer
within an outer envelope for use by the customer in remitting payment to the
billing party. Thus, at the point during the mailing process in which the
customer uses Luftig’s envelope/return receipt assembly to remit payment,
Luftig’s envelope/return receipt would operate in its intended fashion with
the REGISTERED MAIL notice visible through the window and the return
receipt releasably affixed to the back of the envelope.
Appeal 2009-012964
Application 11/868,028

12
As such, we find the Examiner’s articulated reason to further modify
Luftig’s envelope/return receipt assembly to include an outer envelope to be
based on a rational underpinning. Accordingly, we sustain the rejection of
claims 1 and 14, and claims 3, 4, and 6-12 which fall with claim 1, as being
unpatentable over Luftig, MacDougall, and Coffey.
CONCLUSIONS
The Examiner articulated adequate reasoning with rational
underpinning to explain why one of ordinary skill in the art would have been
led to modify the assembly of Luftig to use an insert adhesive, as taught by
Coffey, to result in the claimed invention in which the insert is removable
from the envelope without causing damage to the envelope or insert.
The Examiner articulated adequate reasoning with rational
underpinning to explain why one of ordinary skill in the art would have been
led to add an outer envelope, as taught by MacDougall, to the assembly of
Luftig.
DECISION
The decision of the Examiner to reject claim 1, 3, 4, and 6-14 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).
AFFIRMED
nlk