Ex Parte Tokarski et al

Board of Patent Appeals and Interferences

Apr 6, 2012

11083462 (B.P.A.I. Apr. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JOSEPH P. TOKARSKI, 8
JOHN A. HURD, 9
GARY S. JACOBSON, 10
WESLEY A. KIRSCHNER, 11
and ROBERT G. ARSENAULT 12
___________ 13
14
Appeal 2010-009788 15
Application 11/083,462 16
Technology Center 3600 17
___________ 18
19
20
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 21
BIBHU R. MOHANTY, Administrative Patent Judges. 22
23
FETTING, Administrative Patent Judge. 24
DECISION ON APPEAL 25
26
Appeal 2010-009788
Application 11/083,462
2

STATEMENT OF THE CASE1 1
Joseph P. Tokarski, John A. Hurd, Gary S. Jacobson, Wesley A. 2
Kirschner, and Robert G. Arsenault (Appellants) seek review under 3
35 U.S.C. § 134 (2002) of a non-final rejection of claims 8-10, 12-15, 17, 4
and 18, the only claims pending in the application on appeal. We have 5
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 6
The Appellants invented a way for printing multiple regions across a 7
mail piece (Specification ¶ 0001). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 8, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
8. A method 12
for printing a complete image 13
including 14
a postage indicium 15
and 16
other information not related to the postage 17
indicium 18
on a mail piece 19
in a mail processing system 20
including a printer, 21
the printer retrieving print data associated with the 22
complete image from a memory device, 23

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed January 6, 2010) and the Examiner’s Answer (“Ans.,” mailed
April 1, 2010).
Appeal 2010-009788
Application 11/083,462
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the complete image having an amount of print data 1
greater than capacity of the memory device, 2
the method comprising: 3
[1] separating the complete image into 4
a first region including all of the postage indicium 5
and 6
a second region including at least a portion of the 7
other information, 8
each region being sized 9
such that all print data associated with each region 10
can be stored in the memory device; 11
[2] transporting the mail piece 12
along a transport path through the mail processing 13
system, 14
the transport path passing the mail piece past a 15
print head; 16
[3] loading all print data associated with the first region 17
into the memory device 18
as the mail piece approached the print head; 19
[4] reading the print data associated with the first region from 20
the memory device 21
and 22
[4.1] printing an image of the postage indicium corresponding 23
to the print data associated with the first region 24
onto the mail piece 25
as the mail piece is transported past the print head; 26
[5] determining if printing of the first region has been 27
completed 28
based on movement of the mail piece along the transport; 29
[6] loading all print data associated with the second region 30
into the memory device 31
Appeal 2010-009788
Application 11/083,462
4

after it has been determined that printing of the first 1
region has been completed 2
based on movement of the mail piece along the 3
transport path; 4
and 5
[7] reading the print data associated with the second region 6
from the memory device 7
and 8
[7.1] printing an image of the other information corresponding 9
to the print data for the second region 10
onto the mail piece 11
as the mail piece is transported past the print head. 12
The Examiner relies upon the following prior art: 13
Howard US 4,591,281 May 27, 1986
Manduley US 2003/0016986 A1 Jan. 23, 2003
Claims 8-10, 12-15, 17, and 18 stand rejected under 35 U.S.C. § 103(a) 14
as unpatentable over Manduley and Howard. 15
ISSUES 16
The issues of obviousness turn on the breadth of the phrase “separating 17
the complete image.” 18
FACTS PERTINENT TO THE ISSUES 19
The following enumerated Findings of Fact (FF) are believed to be 20
supported by a preponderance of the evidence. 21
Facts Related to the Prior Art - Manduley 22
Appeal 2010-009788
Application 11/083,462
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01. Manduley is directed to printing information on a medium by 1
detecting a type of medium and entering a printing mode as a 2
function of the type of medium detected in the detecting step. The 3
printing mode is either an envelope printing mode or a tape/label 4
printing mode. When in the envelope printing mode, a print 5
module is positioned at a first position, and prints postal indicia. 6
Slogan information, change of address information, and delivery 7
instructions are obtained and printed on a second area of the 8
envelope. A recipient address data is printed on a third area and 9
sender address information is printed on a fourth area of the 10
envelope. In the tape printing mode, indicia is printed on a first 11
portion of the tape and additional tape information is obtained and 12
printed on a second portion of the tape, and return address 13
information is printed at a third position of the tape. Manduley ¶’s 14
0011-0022. 15
ANALYSIS 16
We are not persuaded by the Appellants’ argument that Manduley does 17
not separate the image that is printed on its envelopes into regions that are 18
individually printed as the print head completes each prior region. Appeal 19
Br. 7-16. The issue reduces down to claim construction and scope as the 20
crux of the difference between Appellants and the Examiner is the nature of 21
separating the complete image. 22
Appellants’ argue as though the complete image is a single data entity 23
that is separated into plural entities. If the claim required this to be so, we 24
would be compelled to agree with Appellants. 25
Appeal 2010-009788
Application 11/083,462
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Closer inspection of the claim shows that nowhere is the specific nature 1
of the complete image recited, and that the word “separating” may mean 2
either generating a separation by splitting apart or maintaining separation by 3
maintaining individuation. The Examiner makes findings as though the 4
complete image is that which is created upon Manduley’s envelope, and 5
separating means maintaining individuation. 6
Manduley clearly builds this image up from individual, separate portions 7
that were not created by splitting a single image, which is the thrust of 8
Appellants’ argument. But we find the claim does not require that a single 9
image data structure be split apart, only that some complete image, that may 10
even be a prospective image, be composed of individual parts kept separate 11
from each other. 12
CONCLUSIONS OF LAW 13
The rejection of claims 8-10, 12-15, 17, and 18 under 35 U.S.C. § 103(a) 14
as unpatentable over Manduley and Howard is proper. 15
DECISION 16
The rejection of claims 8-10, 12-15, 17, and 18 is affirmed. 17
No time period for taking any subsequent action in connection with this 18
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 19
§ 1.136(a)(1)(iv) (2007). 20
21
AFFIRMED 22
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24
Appeal 2010-009788
Application 11/083,462
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MP 1