Ex Parte Stubleski et al

Board of Patent Appeals and Interferences

Feb 26, 2009

10400522 (B.P.A.I. Feb. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANDREW MARK STUBLESKI, MARK DAVID
BITTENBENDER, PIERRE JACQUES CAMPAGNOLLE, and
DOMINIQUE ANDRE ZARAGOZA
____________________

Appeal 2008-4640
Application 10/400,522
Technology Center 3600
____________________

Decided:1 February 26, 2009
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, 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).
Appeal 2008-4640
Application 10/400,522

STATEMENT OF THE CASE
Andrew Mark Stubleski et al. (Appellants) seek our review under
35 U.S.C. § 134 from the final rejection of claims 1, 8-11, 16-18, and 23-25.
We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
Appellants’ claimed invention pertains to a mail handling system for
automatically correcting the orientation of a stack of mail. (Spec. 1,
¶ [0001]; 5, ¶ [0012].) Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A mail transport system for transporting a stack of mail
to a mail processing system and for automatically correcting the
orientation of a stack of mail being transported before the stack
of mail reaches the mail processing system, comprising:
a) a transporter having an endless transport belt
terminating at the processing system upon which mail can be
conveyed at a transport speed toward the processing system;
b) a first moving mechanism connected to said
transporter to move said transport belt;
c) a generally upright pusher that is movable generally
parallel to and over said transport belt;
d) a second moving mechanism connected to said pusher
and to move said pusher independently of said first moving
mechanism;
e) at least one photo sensor located at one or more
positions along said transporter and adapted to optically sense
the orientation of a stack of mail being conveyed on said
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transporter before the stack of mail reaches the processing
system; and
f) at least one controller in communication with said
photo sensor, said first moving mechanism, and second moving
mechanism and configured to control said first moving
mechanism and said second moving mechanism in response to
detection by said photo sensor of an orientation error of a stack
of mail being conveyed on said transport belt toward the
processing system, said controller including at least one
computer configured to receive mail stack orientation signals
from said photo sensor and to execute stack correction software
consisting of orientation error correction commands, wherein,
upon receiving a signal from said photo sensor indicating an
orientation error, orientation error correction commands (a)
cause said first moving mechanism to move the transporter at a
speed faster than the transport speed while the second transport
mechanism moves the pusher at the transport speed or (b) cause
said second moving mechanism to move the pusher at a speed
faster than the transport speed while the first transport
mechanism moves the transporter at the transport speed.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Holmes US 5,379,992 Jan. 10, 1995
Engarto US 6,354,587 B1 March 12, 2002
Blackwell US 6,511,062 B1 Jan. 28, 2003
The following rejections are before us for review:
1. Claims 1, 8, 9, 16-18, and 23-25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Blackwell and Holmes;
2. Claims 9-11 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blackwell, Holmes, and Engarto.

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ISSUES
The issues before us include whether the Appellants have shown
that the Examiner erred in rejecting claims 1, 8, 9, 16-18, and 23-25 under
35 U.S.C. § 103(a) as being unpatentable over Blackwell and Holmes.
The issues before us also include whether the Appellants have shown
that the Examiner erred in rejecting claims 9-11 under 35 U.S.C. § 103(a) as
being unpatentable over Blackwell, Holmes, and Engarto.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Blackwell discloses a mail handling device that optimizes the
pressure of a flat mail article against the singulation head and the angle of
the article in relationship to the head. (Blackwell, col. 1, ll. 7-14, 50-52.)
Blackwell’s device utilizes two pressure switches, each having a servo
motor 58 applying a bias to corresponding levers 46 which extend from the
face of the singulator head 52. (Id., col. 5, ll. 24-26; Fig. 5A.) The levers,
located at the top (46T) and bottom (46B) of the head, detect the pressure
against the levers and the angle of the article 68 in relationship to the head.
(Id., col. 6, ll. 4-11; Figs. 3, 5A.)
2. Blackwell teaches a control processor 18 that controls the
operation of servo motor 62, which drives belt 22, and a paddle feed servo
motor 64, which moves paddle 26. (Blackwell, col. 5, ll. 39-40.) Servo
motors 62 and 64 operate the belt 22 and the paddle 26 to move the stack of
mail towards the singulator head. (Id., col. 6, ll. 1-3.) When the processor
determines from the sensors 46 that the pressure and angle are within
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acceptable ranges, a signal is sent to the singulator head to initiate
singulation of the articles. (Id., col. 6, ll. 11-14.)
3. Blackwell teaches that, although singulation is permitted when
the pressure and angle are within acceptable limits, the device continues to
operate to optimize these parameters. (Blackwell, col. 6, ll. 15-20.)
Blackwell discloses:
[S]o long as the detected pressure on [bottom] lever 46B is
different than an established target pressure, processor 18
operates at least servo motor 62 [driving belt 22], and to a
lessor [sic] extent servo motor 64 [moving paddle 26], speeding
up or slowing down the servo motors, turning on or off the
servo motors, or even reversing the direction of either one or
both servo motors, as required, in order to control the pressure
applied at [bottom] sensor 46B so as to reduce the difference
between the instantaneous pressure at this sensor and the target
pressure. ….
Similarly, if the angle θ [between the article and the
singulator face] is too great so that, for example, there is no
contact with [top] sensor 46T, or if the stack topples forward so
that pressure on [top] sensor 46T is greater than pressure on
[bottom] lever 46B, singulation can not effectively be
performed and operation of singulation mechanism 14 is
inhibited (i.e., processor 18 does not operate the singulation
head). However, even when θ is within an acceptable range for
singulation, the system continues to monitor this angle and
seeks to optimize it by controlled movement of belt 22 and/or
paddle 26. For example, if stack 66 flops forward, paddle 26
may need to be moved backwards so as to permit the stack to
flop over in the proper direction. However, so long as θ is
different than an optimal value for this angle, servo motors 64
and 62 will be appropriately adjusted by processor 18 so as to
adjust this angle in a direction to reduce the difference between
the instantaneous angle and optimum angle.
(Id., col. 6, ll. 20-52.)
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4. Holmes discloses a sorting device for flat, rectangular items
(particularly mail). (Holmes, col. 1, ll. 5-6, 27-28.)
5. Holmes teaches an optical sensor 200 comprising a
photoemitting device (e.g., a LED) and photodetecting device (e.g., a
phototransistor) defining an optical path 204 through which extends a
gripping plane (P). (Holmes, col. 4, ll. 29-33.) The gripping plane P
represents the proper orientation for further processing of mail. (See id.,
col. 5, ll. 10-18.)
6. Figures 2A and 2B of Holmes are reproduced below:

Figure 2A is a side view of Holmes’ mail handling device, and figure 2B
depicts an enlarged view of the area at the stop element 25.
7. Holmes teaches that items (i.e. mail) 7 are placed upright on
surface 14, with the items normally arranged in non-parallel, inclined planes
and in a disorderly pile 4. (See Holmes, col. 4, ll. 54-59; Fig. 2A.) The
sorting process is started by electronic unit 230. (Id., col. 4, ll. 60-61.)
Upright pusher (slide) 33 moves the mail items 7 along surface 14 until the
bottom edge 17 of the first item 7 contacts stop element 25 at the front edge
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20 of surface 14 and activates microswitch 27a or 27b. (Id., col. 4, ll. 60-
65.) The electronic unit 230 then stops slide 33 and activates belt pair 58 or
58′, which rotates the bottom edge of item 7 thereby properly orienting the
bottom edge of item 7 with the gripping plane. (Id., col. 4, l. 66 – col. 5,
l. 6.) Then the electronic unit 230 moves slide 33 forward until the top edge
of item 7 intercepts the optical path 204 of optical sensor 200 at the same
time that the bottom edge activates microswitches 27a and 27b. (Id., col. 5,
ll. 7-10.) In this way, the pile of items is placed in the proper orientation.
8. Holmes further teaches that, after the item 7 is in the proper
orientation, the electronic unit 230 stops the movement of slide 33 and belts
58 and 58′ and begins the process of unloading item 7 from the translating
device 12 (which includes the slide 33 and surface 14). (Holmes, col. 2, l.
42-43; col. 5, ll. 10-13.)
9. Therefore, Holmes discloses a photo sensor that is located
at a position along the transporter and is adapted to optically sense the
orientation of a stack of mail being conveyed on the transporter before the
stack of mail reaches the processing system.
10. Holmes also teaches:
Optical sensor 200 may be assisted by others of the same type
and having optical paths through plane P; and the signals
generated by said sensors may be supplied to a NAND device
designed to only emit an unloading enabling signal when all the
input signals are zero, i.e. when all the optical paths are
intercepted, thus providing for improved alignment of item 7 in
relation to plane P.
(Holmes, col. 8, ll. 16-23.)
11. Holmes teaches that the electromechanical limit stop sensor
(microswitch) 27 may be replaced by an optoelectronic sensor having an
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optical path interceptable by the straight bottom edge 17 of items 7.
(Holmes, col. 8, ll. 12-15.)
12. Engarto discloses a pusher (paddle 26) that is supported for
reciprocating movement on a substantially linear track (guide channel 58).
(Engarto, col. 4, ll. 43-51; Fig. 2A.)
13. Engarto also discloses a servo motor coupled to a drive chain
60 to move the paddle 26. (Engarto, col. 4, l. 52- col. 5, l. 6.)
14. The prior art of record indicates that the person of ordinary skill
in the art of mail transport devices has a high level of skill. (See, e.g., Facts
1-11.)

PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). It is Appellants’ burden to
precisely define the invention, not the United States Patent and Trademark
Office’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (citing 35
U.S.C. § 112, ¶ 2). Appellants have the opportunity to amend the claims
during prosecution, and broad interpretation by the Examiner reduces the
possibility that the claim, once issued, will be interpreted more broadly than
is justified. Prater, 415 F.2d at 1404-05.
“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
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subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007) (quoting 35 U.S.C. § 103). 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 skill
in the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966); see
also KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”). The scope and content
of the prior art includes the explicit and inherent teachings of the prior art.
In re Zurko, 258 F.3d 1379, 1383-84 (Fed. Cir. 2001) (citing In re Napier,
55 F.3d 610, 613 (Fed. Cir. 1995)).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739, and discussed
circumstances in which a patent might be determined to be obvious. In
particular, the Court pointed out that “the principles laid down in Graham
reaffirmed the ‘functional approach’ of Hotchkiss [v. Greenwood], 11 How.
248 [(1851)].” KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739 (citing
Graham, 383 U.S. at 12). The Court reiterated 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. at ___, 127 S. Ct. at
1739. The Court also noted that “when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
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predictable result.” Id. at ___, 127 S. Ct. at 1740 (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966)). 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 ___, 127 S. Ct. 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. at ___,
127 S. Ct. at 1740.
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, … would be led in a direction divergent from the path
that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed.
Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353,
1360 (Fed. Cir. 1999)). “When a piece of prior art ‘suggests that the line
of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant’ the piece of prior art is said
to ‘teach away’ from the claimed invention.” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)).

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ANALYSIS
The Rejection of Claims 1, 8, 9, 16-18, and 23-25 Under 35 U.S.C. § 103(a)
as Being Unpatentable Over Blackwell and Holmes
Appellants argue the rejected claims as a group. (Appellant’s [sic]
Amended Brief On Appeal Under 37 C.F.R. § 41.37, dated August 16, 2007
(App. Br.) 4-8.) We select claim 1 as the representative claim, and claims 8,
9, 16-18, and 23-25 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 recites “at least one photo sensor located at one or more
positions along said transporter and adapted to optically sense the orientation
of a stack of mail being conveyed on said transporter before the stack of
mail reaches the processing system.” Appellants argue that the cited
references neither teach nor suggest this limitation. (App. Br. 5.) The
Examiner found that Holmes’ optical sensor 200 satisfies the limitation.
(Ans. 8-9; see id. 4, 6.)
Appellants do not dispute that Holmes discloses an optical sensor, but
argue that Holmes’ sensor is located at the end of the transport belt rather
than along the belt. (App. Br. 6.) Appellants also assert that Holmes’ sensor
does not detect stack inclination and does not communicate with a controller
in order to correct stack orientation. (Reply Br. 2, 4-5.) We agree with the
Examiner’s conclusion that a sensor is located at a position “along said
transporter” when the sensor is located at any point on the periphery of the
transporter (Ans. 9). In other words, the end of the transporter is a position
“along said transporter.” We also agree with the Examiner that Holmes
teaches a photo sensor located at a position along the transporter and that is
adapted to optically sense the orientation of a stack of mail being conveyed
on the transporter before the stack of mail reaches the processing system.
(Facts 5-9.) And, contrary to Appellants’ assertions, Holmes does teach a
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photo sensor communicating with a controller to correct stack orientation.
(See Facts 7-8, 10.)
Appellants contend that “Blackwell teaches against replacing the
pressure sensor at the singulation head with an optical sensor located along
the transport path.” (Reply Br. 3.) Appellants argue that Blackwell device
would not operate properly without pressure sensors at the singulation head.
(Id.) Blackwell’s embodiment both adjusts the pressure of the stack against
the head and corrects the orientation of the stack. (Facts 1-3.) We
acknowledge that Blackwell’s device would not be able to perform its
pressure controlling function without a pressure sensor. However,
Appellants’ claimed invention does not require controlling pressure.
Blackwell does not discourage and would not have led one of ordinary skill
in the art away from using photo sensors to sense the stack orientation prior
to the mail reaching the processing station. Thus, we fail to find that
Blackwell teaches away from the use of photo sensors to perform
Appellants’ orientation error correction.
Appellants also argue that cited references do not disclose maintaining
a constant transport speed and do not suggest the “concept” and the
“scheme” of correcting orientation by moving either the transporter or
pusher faster than the other. (App. Br. 7-8; see also id. 6.) Appellants
contend that the use, in independent claims 1 and 16, of the words “a” and
“the” before “transport speed” indicates a single speed, and thus supports
their constant-speed argument. (Reply Br. 5.) The claim language quoted
by Appellants (Reply Br. 5) indicates that the “transport speed” is the frame
of reference against which to compare the speed of the faster moving
element – the transporter or the pusher. The claim language does not require
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that that the “transport speed” remains constant. Further, Blackwell and
Holmes each teach controlling one of either the transporter or the pusher to
correct orientation, thus suggesting that the speed of the other element does
not change. (See Facts 2-3, 7.)
Appellants also argue that “there is no teaching, suggestion, or
motivation for modifying Blackwell and/or combining the teachings of
Blackwell and Holmes.” (App. Br. 6.) This argument is foreclosed by KSR,
in which the Court rejected the rigid requirement of a teaching, suggestion or
motivation to combine known elements in order to show obviousness. KSR
Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1741.
Blackwell teaches a mail transport system with a belt, a pusher and a
controller that receives signals from sensors and manipulates separately the
belt and pusher to properly orient mail for further processing. (Facts 1-3.)
Blackwell’s sensors have levers that extend from the face of the singulation
head, thereby sensing the orientation of the stack before it reaches the head.
(Fact 1.) Holmes also teaches a mail transport system with belts, a pusher,
and a controller that receives signals from sensors (including a photo sensor)
and that manipulates separately the belts and the pusher so as to correct
orientation errors prior to further processing. (Facts 6-9.) Holmes also
discloses the use of multiple photo sensors to provide improved alignment
of a mail item, and teaches that optoelectric sensors may replace
electromechanical microswitches. (Facts 10, 11.) The subject matter
of Appellants’ claim 1 is merely the combination of prior art elements
according to known methods to yield predictable results. See KSR Int’l Co.,
550 U.S. at ___, 127 S. Ct. at 1739. Appellants have not persuaded us of
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error in the Examiner’s conclusion of obviousness of claim 1, and claims 8,
9, 16-18, and 23-25, which fall with claim 1.

The Rejection of Claims 9-11 Under 35 U.S.C. § 103(a) as Being
Unpatentable Over Blackwell, Holmes, and Engarto
Appellants do not offer separate arguments for the patentability of
claims 9-11, but assert that those claims are allowable as dependent on
allowable independent claim 1. (App. Br. 8-9; Reply Br. 6.) Appellants
have failed to persuade us of error in the Examiner’s rejection of claim 1,
and, thus, also have failed to persuade us that the rejection of claims 9-11 is
erroneous.

CONCLUSIONS
We conclude that the Appellants have failed to show that the
Examiner erred in rejecting claims 1, 8, 9, 16-18, and 23-25 under 35 U.S.C.
§ 103(a) as being unpatentable over Blackwell and Holmes, and in rejecting
claims 9-11 under 35 U.S.C. § 103(a) as being unpatentable over Blackwell,
Holmes, and Engarto.

DECISION
The decision of the Examiner to reject claims 1, 8-11, 16-18, and
23-25 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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JRG

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