Ex Parte Salomon

Board of Patent Appeals and Interferences

Mar 6, 2009

10325339 (B.P.A.I. Mar. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES A. SALOMON
____________

Appeal 2008-4100
Application 10/325,339
Technology Center 3600
____________

Decided:1 March 6, 2009
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and DAVID B.
WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this
page of the decision. The time period does not run from the Mail Date (paper
delivery) or Notification Date (electronic delivery).

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Application 10/325,339

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STATEMENT OF THE CASE
The Appellant seeks our review of the Examiner’s final rejection of claims
1-3, 5-11, 13-19, and 21-27 under 35 U.S.C. § 134 (2002). We have jurisdiction
under 35 U.S.C. § 6(b) (2002). We affirm.
The Appellant claims a mail processing system, including a mailing machine
having a continuous feed function that automatically generates an indicia label
based on the physical attributes of a mail piece (Specification 1:[0002]). Claim 1,
reproduced below, is representative of the subject matter on appeal.

1. A method of operating a mail processing system to
process a mail piece, the mail processing system printing
an indicium for the mail piece, the method comprising:
determining the weight of the mail piece before the
mail piece is placed into a mail piece processing path of
the mail processing system;
determining if the determined weight of the mail
piece exceeds a predetermined weight threshold;
if the determined weight does not exceed the
predetermined weight threshold, processing the mail
piece through a mail piece processing path of the mail
processing system and printing the indicia directly on the
mail piece; and
if the determined weight does exceed the
predetermined weight threshold, halting operation of the
mail piece processing path and automatically printing the
indicium on a tape for affixing to the mail piece.

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THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejection:
Malatesta US 6,651,878 B2 Nov. 25, 2003
Bergman US 4,935,078 Jun. 19, 1990
Claims 1-3, 5-11, 13-19, and 21-27 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Malatesta in view of Bergman.

ISSUES
The Appellant argues that there is no disclosure, teaching or suggestion in
Malatesta or Bergman of automatically printing indicia on a tape. The Examiner
concedes that Malatesta does not teach the disputed limitation, but found that
Bergman discloses a high throughput-mailing machine that includes a tape module
that allows the option to print postal indicia on a tape rather than on the individual
mail piece. Has the Appellant shown that the Examiner erred in finding that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to combine the partial or full cessation of the mail processing system due
to oversized mail pieces as taught by Malatesta and automatically printing indicia
on a tape as taught by Bergman?
The Appellant further argues that there is nothing in Malatesta or Bergman
that discloses, teaches, or suggests determining the weight of a mail piece before
the mail piece is placed into the processing path of the system. The Examiner
found that Malatesta fails to disclose the disputed claim limitation, but found that
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Bergman discloses determining the weight of the mail before the mail piece is
placed into a mail piece processing path of the mail processing system. Has the
Appellant shown that the Examiner erred in finding that it would have been
obvious to one of ordinary skill in the art at the time of the invention to modify the
invention of Malatesta to determine the weight of the mail piece before the mail
piece is placed into a mail piece processing system, as disclosed by Bergman?

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.
Cir. 1988) (explaining the general evidentiary standard for proceedings before the
Office).
1. Malatesta is directed to a mail weighing and postage determination system
(Malatesta, col. 1, ll. 5-7). Malatesta teaches stopping at least a portion of
the mail processing systems if the weight of an item is found to be invalid
(Malatesta, col. 3, ll. 1-11).
2. Bergman is directed to a mailing machine for high-speed processing of
mixed mail, capable of high throughput, and of compact size. The mail
piece processing system of Bergman is designed to time the sequential
processing actions to optimize mail piece throughput (Bergman, Abstract).
3. Bergman teaches a mailing means that includes a platen assembly mounted
to the base of a mailing machine for cooperatively acting with a suitable
postage meter. If present, a tape module includes a tape feed which can
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selectively deliver one of two types of tape for imprinting by the meter
module (Bergman, col. 8, ll. 3-19). The optional capability is provided for
imprinting indicia on one of a plurality of tape media. (Bergman, col. 9, ll.
5-12).
4. Bergman teaches a non-weighing mode shown in Figure 7. A non-weighing
mode means that all of the envelope’s have the same weight and therefore
the postage meter wheels do not require a position change and a verify test,
both of which are time consuming. The machine in the non-weighing mode
can be programmed to process mail faster because no time need be allocated
to postage meter printing wheel adjustment (Bergman, col. 14, l. 67 – col.
15, l. 7).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations including
(1) the scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of ordinary skill in the art, and (4)
where in evidence, so-called secondary considerations. Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
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[Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court held that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740. The operative question in this “functional approach” is thus “whether
the improvement is more than the predictable use of prior art elements according to
their established functions.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984). Only if this initial burden is met does the burden of coming forward
with evidence or argument shift to the appellant. Id. at 1445. See also Piasecki,
745 F.2d at 1472. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445; Piasecki, 745 F.2d at 1472.

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ANALYSIS
The Appellant argues claims 1-3, 5-11, 13-19, and 21-27 as a group. We
treat claim 1 as representative.
The Appellant argues that, as noted by the Examiner in the Office Action,
there is no disclosure, teaching, or suggestion in Malatesta of automatically
printing the indicia on a tape for affixing to the mail piece if the determined weight
exceeds a predetermined threshold. According to the Appellant, Bergman is
directed to a high throughput mailing machine capable of processing mixed mail,
which includes an optional tape module 31 that will provide a tape for imprinting
by a meter module. The Appellant argues that there is no disclosure, teaching, or
suggestion anywhere in Bergman of the system automatically printing indicia on a
tape (Br. 6). The Appellant argues that the system in Bergman is a conventional
mail processing system as described in the Background portion of the Specification
(citing Specification [0002-0005]) in which the user must make a selection as to
whether or not to print on the tape, and there is nothing in Bergman that discloses,
teaches, or suggests automatically printing indicia on a tape based on the weight of
a mail piece as in the present invention (Br. 6).
The Examiner found that Malatesta fails to disclose automatically printing
the indicia on a tape for affixing to the mail piece if the determined weight does
exceed the predetermined weight threshold. However, the Examiner found that
Bergman discloses a high throughput-mailing machine that includes a tape module
that allows the option to print postal indicia on a tape rather than on the individual
mail piece (Answer 4, citing Bergman, col. 8, ll. 5-20, col. 9, ll. 5-12). The
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Examiner therefore found that it would have been obvious to one of ordinary skill
in the art at the time of the invention to combine the partial or full cessation of the
mail processing system due to oversized mail pieces as taught by Malatesta and
automatically printing indicia on a tape as taught by Bergman, because processing
mail at a high rate of speed is desirable in the postage industry and automatically
printing indicia on a tape for oversized mail pieces would greatly speed up the
processing of mail pieces (Answer 4-5).
The Appellant further argues that the only disclosure, teaching or suggestion
of such operation is provided in Appellant’s own Specification. The Appellant
argues that without using the present claims as a road map, it would not have been
obvious to make the multiple, selective modifications needed to arrive at the
claimed invention from these reference (Br. 7).
The Appellant’s argument is not persuasive because the Appellant is
attacking the references individually rather than the combination asserted by the
Examiner. Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Malatesta teaches stopping at least a portion of the mail processing systems
if the weight of an item is found to be invalid (Finding of Fact 1). The passage of
Bergman cited by the Appellant discloses an optional capability to print postage
indicia on one of a plurality of tapes. We find that the Examiner has provided
sufficient rational underpinning for the proposed combination. The Appellant has
not shown that the Examiner erred in finding that it would have been obvious to
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one of ordinary skill in the art at the time of the invention to combine the partial or
full cessation of the mail processing system due to oversized mail pieces as taught
by Malatesta and automatically printing indicia on a tape as taught by Bergman.
The Appellant further argues that there is nothing in Malatesta or Bergman
that discloses, teaches, or suggests determining the weight of a mail piece before
the mail piece is placed into the processing path of the system (Br. 6). The
Examiner found that Malatesta fails to disclose determining the weight of the mail
piece before the mail piece is placed into a mail piece processing path of the mail
processing system, but found that Bergman discloses determining the weight of the
mail before the mail piece is placed into a mail piece processing path of the mail
processing system (Answer 4, citing Bergman, col. 14, l. 60 – col. 15, l. 7).
According to the Examiner, the postage machine of Bergman has a non-
weighing mode for processing a series of identical mail pieces; in such a case, mail
piece weight would still need to be known for the purpose of determining the
amount of postage to apply and the machine would not be doing the weighing.
The Examiner further found that it would have been obvious to one of ordinary
skill in the art at the time of the invention to modify the invention of Malatesta
such that it determines the weight of the mail piece before the mail piece is placed
into a mail piece processing system, as disclosed by Bergman. The Examiner
found that the motivation is provided by Bergman in that weighing separately from
a mail processing system allows the system to be operated in a quicker non-
weighing mode for multiple mail pieces of the same weight (Answer 4).
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The passage of Bergman cited by the Examiner teaches a non-weighing
mode wherein all the envelope’s have the same weight, which permits faster mail
processing, because no time need be allocated to postage meter printing wheel
adjustment (Finding of Fact 1). We agree with the Examiner that one of ordinary
skill in the art would understand the non-weighing mode to require prior weighing
of the items, because it requires that all of the envelopes have the same weight.
The Appellant has not shown that the Examiner erred in rejecting claim 1 as
obvious over Malatesta in view of Bergman. Claims 2-3, 5-11, 13-19, and 21-27
were not argued separately, and fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).

CONCLUSIONS
We conclude that the Appellant has not shown that the Examiner erred in
finding that it would have been obvious to one of ordinary skill in the art at the
time of the invention to combine the partial or full cessation of the mail processing
system due to oversized mail pieces as taught by Malatesta and automatically
printing indicia on a tape as taught by Bergman. We conclude that the Appellant
has not shown that the Examiner erred in finding that it would have been obvious
to one of ordinary skill in the art at the time of the invention to modify the
invention of Malatesta such that it determines the weight of the mail piece before
the mail piece is placed into a mail piece processing system, as disclosed by
Bergman.

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DECISION
The decision of the Examiner to reject claims 1-3, 5-11, 13-19, and 21-27
under 35 U.S.C. § 103(a) as unpatentable over Malatesta in view of Bergman 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) (2007).

AFFIRMED

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LV:

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