10709289 (B.P.A.I. Sep. 15, 2010)

Ex Parte Werner

Board of Patent Appeals and InterferencesSep 15, 2010

10709289 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte TODD C. WERNER ____________________ Appeal 2009-006736 Application 10/709,289 Technology Center 3600 ____________________ Before: WILLIAM F. PATE III, STEVEN D.A. MCCARTHY, and MICHAEL W. O’NEILL, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-006736 Application 10/709,289 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 4, 10, 11 and 13. Br 1.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a multi-bin printer. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A machine, comprising: an elongate conveyor system for transporting items to a hopper; a pivotally-mounted friction belt positioned with respect to said hopper such that an item in said hopper is substantially fully engaged along its length when said pivotally-mounted friction belt is in a fully unpivoted position and such that an item in said hopper is engaged only at a leading end thereof when said pivotally-mounted friction belt is in a fully pivoted position; a printing and drying station where ink is applied to said items and dried; an elongate discharge apparatus; said elongate discharge apparatus including a plurality of longitudinally-spaced apart deflectors for diverting preselected items from a first path of travel to a second path of travel; said elongate discharge apparatus including a plurality of bins, there being as many bins as there are deflectors; said elongate conveyor system and said elongate discharge apparatus being disposed in parallel relation to one another; said printing and drying station being disposed in interconnecting relation to said elongate conveyor system and said elongate discharge apparatus; 2 Claims 1-13 were rejected in the final Office Action dated Aug. 27, 2008. The Examiner has withdrawn the rejections of claims 5-9 and 12. Ans. 2. Thus the remaining claims on appeal are claims 1-4, 10, 11, and 13. Appeal 2009-006736 Application 10/709,289 3 a first end of said printing and drying station being positioned at a discharge end of said elongate conveyor system; a second end of said printing and drying station being positioned at an input end of said elongate discharge apparatus; said elongate conveyor system, said printing and drying station, and said elongate discharge system collectively forming a square “U”-shaped configuration; whereby an operator of said machine has unimpeded access to said elongate conveyor system, said printing and drying station, and said elongate discharge apparatus. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ricciardi Stevens Sorensen DeWitt Kechel US 5,253,859 US 5,460,273 US 5,772,200 US 6,613,998 B2 US 6,822,182 B2 Oct. 19, 1993 Oct. 24, 1995 Jun. 30, 1998 Sep. 2, 2003 Nov. 23, 2004 REJECTIONS Claims 1-4 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over DeWitt, Stevens, and Ricciardi. Ans. 4. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over DeWitt, Stevens, Ricciardi, and Kechel. Ans. 7. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over DeWitt, Stevens, Ricciardi, and Sorensen. Ans. 7. OPINION Appellant and the Examiner agree that DeWitt fails to disclose a “pivotally-mounted friction belt” as required by claim 1. Ans. 5; Br. 12. Appellant’s argument that Ricciardi fails to overcome this deficiency is Appeal 2009-006736 Application 10/709,289 4 persuasive. Br. 13-14. First, Ricciardi’s belts 26a, 26b are not “pivotally- mounted.” They extend about a triangular course of travel and are forced outwardly by rollers 32a, 32b. Col. 4, ll. 31-51, figs. 1, 2. Secondly, the rationale articulated by the Examiner for employing Ricciardi’s arrangement is to “counteract the ever increasing force applied by the stack against the envelope conveying belt system.” Ans. 5. This is advantageous in Ricciardi, because Ricciardi employs these belts to stack envelopes 46. Col. 6, l. 54 – col. 7, l. 34. In contrast, DeWitt uses pre-feed belts 24 in a feeding module 20 which removes envelopes from a stack 5. Col. 4, l. 10 – col. 5, l. 26; figs. 1, 4. The Examiner has not explained why removing envelopes from DeWitt’s stack would also lead to the same problem encountered by Ricciardi’s stacking mechanism—ever increasing force against the conveying belt. Thus, the Examiner has failed to articulate a reason with the rational underpinning necessary to support the conclusion that the proposed modification would have been obvious to one having ordinary skill in the art. The additional references, as applied by the Examiner, fail to overcome this deficiency of DeWitt and Ricciardi. Thus, the rejections of claims 1-4, 10, and 11 cannot be sustained. Appellant and the Examiner agree that DeWitt fails to disclose an “air nozzle mounted downstream of said protruding rollers, between said protruding rollers and said nip” as required by claim 13. Ans. 7; Br. 19. Appellant’s argument that Sorensen fails to overcome this deficiency is persuasive. Br. 19-20. While Sorensen may teach the general concept of using air nozzles, Sorensen uses those nozzles 74 to inject air 70 at a feed hopper 10 to assist in removing elements, which may be envelopes, from a stack 12. Col. 5, ll. 55-63, col. 6, ll. 47-53, figs. 4-6. Claim 13 calls for an air nozzle to be mounted at a specific location: downstream of the protruding Appeal 2009-006736 Application 10/709,289 5 rollers (on the discharge apparatus). The Examiner has not articulated any reason with a rational underpinning as to why it would have been obvious to one having ordinary skill in the art to place the nozzle at the specific location claimed. All words in a claim must be considered in judging the obviousness of the claimed subject matter. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Thus, the rejection of claim 13 also cannot be sustained. DECISION For the above reasons, the Examiner’s rejections of claims 1-4, 10, 11 and 13 are reversed. REVERSED nlk PITNEY BOWES INC. INTELLECTUAL PROPERTY & TECH. LAW DEPT. 35 WATERVIEW DRIVE MSC 26-22 SHELTON CT 06484