Ex Parte Simpson

Board of Patent Appeals and Interferences

May 17, 2010

10052617 (B.P.A.I. May. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte SHELL S. SIMPSON
_____________

Appeal 2009-004345
Application 10/052,617
Technology Center 2600
______________

Decided: May 17, 2010
_______________

Before ROBERT E. NAPPI, CARL W. WHITEHEAD Jr., and BRADLEY
W. BAUMEISTER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004345
Application 10/052,617

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 19 and 21 through 35. Appeal Brief 2.
We affirm-in-part and enter a new rejection.

INVENTION
The invention is directed to method of generating notification that a
print to mail document has been printed. See pages 8 and 9 of Appellant’s
Specification. Claim 1 is reproduced below:
1. A method for print-to-mail notification, comprising:
determining that a print-to-mail format document has been
generated by printing, folding, and sealing the document as a mailing;
identifying attributes of the print-to-mail format document; and
generating notification information that identifies that the print-
to-mail format document has been generated, thereby indicating that
the document has been printed, folded, and sealed as a mailing.

REFERENCES
Gleason US 5,091,777 Feb. 25, 1992
Tammi US 5,726,897 Mar. 10, 1998
Pollard US 5,745,590 Apr. 28, 1889
Stewart US 6,714,964 B1 Mar. 30, 2004

2

Appeal 2009-004345
Application 10/052,617

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 7, 12 through 15, 18, 19,
21, 26, and 27 under 35 U.S.C. § 103(a) as being unpatentable over Tammi
in view of Gleason. Answer 4-7.1
The Examiner has rejected claims 8 through 10, 16, and 22 through 25
under 35 U.S.C. § 103(a) as being anticipated by over Tammi in view of
Gleason and Stewart. Answer 7-10.
The Examiner has rejected claims 11 and 17 under 35 U.S.C. § 103(a)
as being unpatentable over Tammi in view of Gleason and Pollard. Answer
10.
The Examiner has rejected claims 28, 29, 32, 33, 34, and 35 under 35
U.S.C. § 103(a) as being unpatentable over Tammi in view of Gleason,
Pollard and Appellant’s Admitted Prior art. Answer 11.

1 Throughout this decision we refer to the Examiner’s Answer dated Feb. 5,
2008. We note that this Answer contains a new ground of rejection which
complies with MPEP 1207.02(A)(6)(d). Contrary to Appellant’s arguments
the Answer does not run afoul of 37 C.F.R. 41.43(a)(2), as the Answer was
submitted in response to an Order Dated Dec. 20, 2007, not in response to a
Reply Brief filed by Appellant. Regardless, any issues raised by Appellant’
arguments directed to the propriety of new rejection in this Answer are moot
as we enter a new ground of rejection.
3

Appeal 2009-004345
Application 10/052,617

ISSUES
Rejection under 35 U.S.C. § 103(a) as being unpatentable over
Tammi in view of Gleason.
Appellant argues on pages 7 through 18 of the Appeal Brief2 that the
Examiner’s rejection under 35 U.S.C. § 103(a) based upon Tammi in view
of Gleason is in error. Appellant asserts on pages 9 and 10 of the Appeal
Brief that Tammi does not teach that signals provided to the system control
by the post processing system (which folds, inserts, and seals) are provided
after the post processing is complete. As such Appellant concludes that
Tammi does not teach “determining that a print to mail format document has
been generated by printing, folding, and sealing the document as a mailing”
as recited in claim 1 or as similarly recited in independent claims 12, 18, or
28. Appeal Brief 10 through 13, 17, and 18.
Appellant also argues that Tammi does not teach that a print-to-mail
format document is generated. Appellant argues that Tammi teaches
generating a printed mail statement that is placed into an envelope.
Appellant argues that this is different than a print-to-mail format document
that is generated by folding, printing, and sealing and thus, does not require
an envelope. Appeal Brief 13-16.
Thus, Appellant’s arguments directed to the rejections of independent
claims 1, 12, 18, and 21 present us with the following issues:

2 Throughout the opinion, we refer to the Appeal Brief filed February 27,
2007; Reply Brief filed April 4, 2008; and Appellant’s Response Filed July
24, 2008.
4

Appeal 2009-004345
Application 10/052,617

a) Does the combination of Tammi in view of Gleason teach
generating notification information that identifies that a print-to-mail
document has been generated?
b) Does the combination of Tammi in view of Gleason teach
generating print-to-mail documents as claimed?

FINDINGS OF FACT
1. Appellant admits that at the time of the invention it was known to
have appliances that print statements on heavy weight media. These
appliances would fold the media, and seal it to form a mailing (thus,
it was known to create a print-to-mail document). Specification 1.
2. Tammi teaches a mail assembly system which makes use of non-
printed data to control documents in the system. Abstract.
3. Tammi’s system includes a printing system item 20 and a post
processing system 70. See Figure 1.
4. Tammi’s post processing system includes items such folders,
inserters, sealing machines, and postage metering machines. The
post processing system can have more or fewer machines as required
for the mailing being created. Tammi, col. 9, ll. 55-60, col. 21, ll.
46-48.
5. Tammi’s post processing system also includes sensors 105a-c which
monitors the position of documents through the post processing
system: e.g. sensors monitor that a document has finished having
one post-processing process performed and is moving to the next.
Tammi, col. 21, 43-60, col. 24, ll. 9-20, col. 26 ll. 42-53.
5

Appeal 2009-004345
Application 10/052,617

6. These sensors are also used to verify that processing is performed,
and the system controller sends an acknowledgement signal when
the outputs of these sensors indicate that a mailing has successfully
traversed the post processing system. Tammi, col. 22, ll. 10-20, col.
24 ll. 9-47, and col. 26 ll. 55-67.

ANALYSIS
Rejection under 35 U.S.C. § 103(a) as being unpatentable over
Tammi in view of Gleason.
At the outset we note that we will not sustain the Examiner’s rejection
of claims 1 through 7, 12 through 15, 18, 19, 21, 26, and 27 under 35 U.S.C.
§ 103(a) as being unpatentable over Tammi in view of Gleason, as we find
that the combination of Tammi and Gleason does not teach print-to-mail
documents as claimed. However, as discussed infra, we find that the
combination of Appellant’s admitted prior art, Tammi, and Gleason suggest
that the claimed method for creating print-to-mail documents is obvious.
Accordingly, we enter a new rejection of these claims based upon Tammi,
Gleason, and Appellant’s Admitted prior art. In so doing, we adopt the
Examiner’s findings concerning the limitations not argued by the Appellant
of claims 1 through 7, 12 through 15, 18, 19, 21, 26, and 27, and we address
the issues raised by Appellant’s arguments as they apply to the new
rejection.
First Issue.
Appellant’s arguments have not persuaded us that the combination of
Tammi in view of Gleason and Appellant’s admitted prior art teach
generating notification which identifies that a print to mail document has
6

Appeal 2009-004345
Application 10/052,617

been generated. Claim 1 recites generating notification information that
identifies that the print-to-mail document has been printed, folded, and
sealed. Independent claims 1, 12, and 18 recite limitations directed to
similar notifications. As discussed infra we find that the combination of the
references teach generating a print-to-mail format document. The Examiner
in rejecting the claims finds that Tammi’s teaching of the post processing
system verifying receipt of a document meets the claimed generating a
notification. Answer 5 and 15 through 17. We concur with and adopt the
Examiner’s findings as we find that they are supported by ample evidence.
See Facts 3-6. Tammi teaches that the post processing system performs
operations such as folding, and sealing of a document that has been printed.
Facts 3 and 5. Tammi teaches that the post processing system includes
various sensors (items 105a-c), which confirm that the mailing has
successfully traveled through the elements of the post processing system.
Fact 5. Tammi teaches a verification system that works with the sensors and
provides an acknowledgement signal if all of the sensors indicate proper
completion of the post processing operations. Fact 6. Appellant’s argument
on pages 11 and 12 of the Brief, that the sensors verify prior to post
processing, is not persuasive as we find that Tammi teaches that the sensors
monitor progress at various stages in the post processing and that the output
of all the sensors used to provide verification that the post processing is
properly performed. Fact 6. Thus, Appellant’s arguments have not
persuaded us of error in finding that the combination of Tammi, Gleason,
and Appellant’s admitted prior art teach generating notification information
as recited in the independent claims.

7

Appeal 2009-004345
Application 10/052,617

Second issue
As identified above Appellant’s arguments have persuaded us that the
Examiner erred in finding that the combination of Tammi in view of
Gleason teaches generating a print to mail documents as claimed. However,
we find that Appellant’s Admitted prior art makes up for this missing
teaching.
In rejecting independent claims 1, 12, and 18, the Examiner states that
the claims do not define a print-to-mail document as a document which can
be mailed without an envelope. Answer 18. While we concur with the
Examiner’s claim interpretation, we note that claim 1 identifies that the
print-to-mail document is one that is sealed. The Examiner has not shown
that Tammi teaches sealing the document, but rather sealing the envelope in
which the document is placed. Accordingly, we do not find that Tammi
teaches print-to-mail documents as claimed.
Nonetheless, Appellant admitted that it was known to generate print-
to mail-documents which are sealed and as such do not need envelopes for
mailing. Fact 1. Tammi identifies that the post processing section could be
modified to accommodate different types of mailings. Fact 4. Thus, we
consider the use of Tammi’s system of monitoring post processing on print-
to-mail documents to be obvious as it is nothing more than using a known
system for monitoring the printing and processing of mailings for a known
type of mailing. Accordingly, we now reject claims 1 through 7, 12 through
15, 18, 19, 21, 26, and 27 under 35 U.S.C. § 103(a) as being unpatentable
over Tammi, Gleason, and Appellants’ Admitted prior art.

8

Appeal 2009-004345
Application 10/052,617

Rejections of dependent claims 8-11, 16, 17, 24, 35, 30 and 31.
The Examiner’s rejections of these dependent claims relies upon the
same rationale discussed above with respect to independent claims 1, 12, and
18. We will not sustain the Examiner’s rejection of these claims, for the
reasons discussed supra. However, as noted above though, we find that the
Appellant’s admitted prior art teaches the limitation missing from these
rejections. Accordingly, we now reject the claims by adopting the
Examiner’s reasoning and modified the rejection to additionally rely upon
the Appellant’s Admitted prior art. Accordingly, we enter the following new
rejections:
a) Claims 8 through 10, 16, and 22 through 25 under 35 U.S.C.
§ 103(a) as being anticipated by over Tammi in view of Gleason,
Appellant’s Admitted prior art, and Stewart; and
b) Claims 11 and 17 under 35 U.S.C. § 103(a) as being unpatentable
over Tammi in view of Gleason Appellant’s Admitted prior art and Pollard.
Appellants arguments directed to the Examiner’s rejection of these
claims present us with the same issues discussed supra with respect to
independent claims 1, 12, and 18. Similarly, these arguments have not
persuaded us that the new rejection is in error.

Rejection of claim 28, 29, 32, 33, 34, and 35.
Appellant’s arguments directed to the rejection of these claims present us
with the same issues discussed supra with respect to claim 1, 12, and 18.
Additionally, Appellant’s argue that “no admissions by Applicant remedy
the deficiencies of the Tammi, Gleason and Pollard references.” Appeal
9

Appeal 2009-004345
Application 10/052,617

Brief 19. As discussed above we find that the Appellant’s Admitted prior art
does remedy the deficiencies noted in the rejection of claims 1, 12, and 18.
Accordingly, we sustain the Examiner’s rejection of claims 28, 29, 32, 33,
34, and 35.

SUMMARY
We will not sustain the Examiner’s rejection of claims 1 through 19,
21 through 27, 30, and 31 under 35 U.S.C. § 103(a). However, we sustain
the Examiner’s rejection of claims 28, 29, 32, 33, 34, and 35 under 35
U.S.C. § 103(a) as being unpatentable over Tammi in view of Gleason,
Pollard, and Appellant’s Admitted Prior art. We enter a new rejection
against claims 1 through 19 and 21 through 27, 30, and 31 under 35 U.S.C.
§ 103(a).

ORDER
The decision of the Examiner to reject claims 1 through 19 and 21
through 35 is affirmed-in-part.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection…
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
10

Appeal 2009-004345
Application 10/052,617

the proceeding will be remanded to the examiner. . . .
(2) Request that the proceeding be reheard under § 41.52 by the
Board upon the same record. . . .

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).
11

Appeal 2009-004345
Application 10/052,617

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

ELD

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
3404 E. HARMONY ROAD
MAIL STOP 35
FORT COLLINS, CO 80528
12