Ex Parte Quine et al

Patent Trial and Appeal Board

Apr 30, 2013

11176706 (P.T.A.B. Apr. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DOUGLAS B. QUINE, JAMES A. EUCHNER,
and JOHN E. MASSUCCI
____________________

Appeal 2011-003557
Application 11/176,706
Technology Center 3600
____________________

Before: WILLIAM V. SAINDON, SCOTT A. DANIELS and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003557
Application 11/176,706

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1
and 3–9. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

CLAIMED SUBJECT MATTER
The claims are directed to method and system for mitigating threats
and hoaxes perpetrated through a mail system.1 Claim 1, reproduced below,
is the only independent claim and is illustrative of the claimed subject
matter:
1. A method for identifying mail pieces containing a
threatening agent/material in a mail piece processing system
comprising the steps of:
providing a first device operative to cause particulate
material to collect in a first region of the mail piece when the
mailpiece contains a particulate material;
producing a first content profile indicative of the internal
contents of the mail piece;
analyzing the first content profile using a sensing device
to determine if the first content profile indicates the presence of
particulate material in the first region of the mail piece; and
out-sorting the mail pieces, from the mailpiece
processing system, if the first content profile is indicative of the
presence of particulate material in the mail piece.

1 As noted by Examiner, claims listed in Appeal Brief Claims Appendix is
not the most recent set of claims. Ans. 3. We refer to Appellants’
Amendment filed on September 25, 2009 for the current claim language.
Appeal 2011-003557
Application 11/176,706

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Drake US 7,170,023 B1 Jan. 30, 2007
Ryan
Harshbarger
US 2003/0121839 A1
US 2005/0211606 A1
Jul. 3, 2003
Sep. 29, 2005

REJECTIONS
The Examiner made the following rejections:
Claims 1, 4-6, and 9 stand rejected under 35 U.S.C §102(b) as being
anticipated by Ryan. 2 Ans. 4.
Claim 3 stands rejected under 35 U.S.C §103(a) as being unpatentable
over Ryan and Drake. Ans. 5.
Claims 7 and 8 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Ryan and Harshbarger. Ans. 5.

ANALYSIS
Anticipation Rejection
Claim 1
Appellants separately argue independent claim 1, claims 4-6, and
claim 9, which directly depend from claim 1. App. Br. 11-15.
The Examiner found that Ryan describes the steps of causing
particulate material to collect in a first region of the mail piece (12);
producing a first content profile indicative of the internal contents of the
mail piece (23); analyzing the first content profile to determine if the first
content profile indicates the presence of particulate material in the first

2 The rejection of claim 2 under 35 U.S.C §102(b) as being anticipated by
Ryan was withdrawn by Examiner. Ans. 3.
Appeal 2011-003557
Application 11/176,706

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region of the mail piece (100); and out-sorting the mail pieces (25) if
particulate material is present. Ans. 4.
Appellants argue that Ryan does not teach handling or manipulating
the mailpieces to “cause the particulate matter to collect in a region of the
mailpiece.” App. Br. 12. According to Appellants, Ryan discloses a
singulator that functions in a conventional manner to separate a single sheet
material from a stack of sheet material, and does not perform an “additional
uniquely different function (i.e., a function other than, or in addition to, its
conventional function of separating/singulating sheet material).” App. Br.
12. Appellants challenge the Examiner’s assumption that the singulator is
capable of collecting particulate matter in a particular region of the
mailpiece. App. Br. 13. In response, the Examiner pointed out that the
singulator separates individual mailpieces that are “conveyed through the
use of belts and guide walls that press against the mailpieces (paragraph
0043, 0045, and 0054) and therefore move some particulate material to
move within the mailpiece.” Ans. 7.
Appellants’ argument questioning the ability of the singulator to cause
particulate matter to be collected in a particular region of the mailpiece is not
persuasive. As correctly noted by the Examiner, claim 1 does not recite
language requiring that all the particulate material move to a first region,
therefore, movement of some of the particulate material meets the limitation
of claim 1. Ans. 7. As shown in Figure 5e of Ryan, the singulator transports
the mailpiece in a vertical or “on edge” orientation. We see no logic or
evidence that supports Appellants’ implication that the vertical orientation of
the mailpiece would not cause at least some of the particulate material
present to naturally collect in a region of the mailpiece, i.e. by gravitational
Appeal 2011-003557
Application 11/176,706

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forces. Ryan, paras. [0043] - [0045], [0047]; figs. 5c – 5e. Therefore,
Appellants do not apprise us of error in the Examiner’s findings. As such,
we sustain the rejection of claim 1 under 35 U.S.C §102(b).

Claims 4-6
Appellants argue that the Examiner failed to show that the limitations
of claim 1 are present in the Ryan patent, and these limitations are likewise
not present in claims 4-6. App. Br. 14-15. Because we are not apprised of
error in the rejection of claim 1, we sustain the rejection of claims 4-6 as
well.

Claim 9
The Examiner found that Ryan discloses the step of scanning the mail
piece for the presence of a threatening message or symbol and out-sorting
the mail piece if the first content profile indicates the presence of particulate
material and scanning detects the threatening message or symbol. Ans. 4-5.
Appellants agree with Examiner’s finding regarding the scanner, but contend
that “the Ryan Jr. et al reference does not disclose the method step recited in
Claim 9 and does not anticipate or render obvious the subject claim.” App.
Br. 15. Based on this record, Appellants arguments do not apprise or
persuade us of error in the Examiner’s findings. Accordingly, we sustain the
rejection of claim 9.

Appeal 2011-003557
Application 11/176,706

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Obviousness Rejections
Claim 3, Ryan and Drake
Appellants argue that the Examiner failed to show that the limitations
of claim 1 are present in the Ryan patent from which claim 3 depends. App.
Br. 16. Because we are not apprised or error in the rejection of claim 1, we
sustain the rejection of claim 3.

Claims 7 and 8, Drake and Harshbarger
Appellants argue that the Examiner failed to show that the
limitations of claim 1 are present in the Ryan patent from which claims 7
and 8 depend. App. Br. 17. Because we are not apprised of error in the
rejection of claim 1, we sustain the rejection of claims 7 and 8.

DECISION
The rejection of claims 1, 4-6, and 9 under 35 U.S.C §102(b) is
affirmed.
The rejection of claims 3, 7, and 8 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)(1)(iv) (2011).

AFFIRMED

msc