Ex Parte Butler et al

Patent Trial and Appeal Board

Nov 12, 2014

10912990 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TODD N. BUTLER and BRYAN W. HORN
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Appeal 2012-0114991
Application 10/912,990
Technology Center 3700
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Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims 15,
17–25, 31, 33, 35, 37, 38, 40–42, 50, and 53–56.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
According to the Specification, Appellants’ “invention relates to mailers
and, in particular, to mailers that are suitable for securing and protecting stress-
sensitive or frangible articles for safe processing by automated processing

1 Appellants identify Butler Leasing Corporation as the real party in interest. See
Appeal Br. 1.
2 Our decision references Appellants’ Specification (“Spec.,” filed Aug. 6, 2004),
Appeal Brief (“Appeal Br.,” filed Jan. 6, 2012), and Reply Brief (“Reply Br.,” filed
May 9, 2012), as well as the Examiner’s Answer (“Answer,” mailed Mar. 15,
2012).
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equipment.” Spec. 1, ll. 7–9. Claims 15 and 42 are the only independent claims
under appeal. We reproduce below claim 15 as representative of the claims.
15. A mailer for an article, the mailer being
transported between a pair of moving belts when the
mailer is processed by postal processing equipment, and
the moving belts having a width, the mailer comprising:
a first panel having a first surface; and
a second panel having a second surface in contact
with said first surface of said first panel, said second
surface being adhesively bonded by portions of an
adhesive with said first surface, said second panel having
a first edge and a second edge spaced from said first edge
by a height of said mailer when said first and second
panels are adhesively bonded by said adhesive portions,
said first and second edges located on opposite sides of
the moving belts when said mailer is transported between
the pair of moving belts, said adhesive portions defining
a first pocket between said first surface of said first panel
and said second surface of said second panel for holding
the article, at least one of said adhesive portions
positioned between said first edge and said pocket to
define a false bottom to limit movement of the article
relative to said first edge, said false bottom so
dimensioned that at least half of the portions of the first
and second panels overlying the article in said first
pocket are not contacted over the width of the pair of
moving belts, and another of the adhesive portions is
positioned to define a side edge of the pocket so as to
limit movement in a direction parallel to the first and
second edges,
wherein said first panel is joined to said second
panel along a fold line, and said first and second panels
are folded along said fold line for adhesively bonding
said first and second surfaces.

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REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claims 15, 17–21, 24, 25, 31, 33, 35, 37, 38, 40–42, 50, and 53–56 under
35 U.S.C. § 103(a) as obvious over Potter (US 2005/0247769 Al, publ. Nov. 10,
2005), Butler (US 2002/0117410 Al, publ. Aug. 29, 2002), and Jones (2,171,702,
iss. Sept. 5, 1939)3;
claims 22 and 23 under 35 U.S.C. § 103(a) as obvious over Potter, Butler,
Jones, and Popat (US 5,887,780, Mar. 30, 1999).

ANALYSIS
With respect to independent claim 15, Appellants argue that the Examiner’s
proposed combination of references does not teach the claimed “false bottom.”
The Examiner relies on Potter’s Figures 5 and 6 to teach a mailer that, when
processed during mailing, is oriented such that the opening (referred to as “slot
13”) into which disc 11 is inserted so that disc 11 is located within pouch 12 (that
is formed by glue lines 32 and 33) will face upward. See Answer 5, 8–10. The
Examiner concludes that it would have been obvious to modify Potter’s mailer to
include at the bottom of pouch 12 a false bottom, as taught by each of Butler and
Jones, which would raise disc 11 within pouch 12 so that the processing belts that
move the mailer would contact less of disc 11 during processing. See id. at 10.
Conversely, Appellants argue that based on Potter’s disclosure, during processing
Potter’s mailer is oriented such that slot 13 faces downward. See Appeal Br. 7–11,
nota bene 11 (“[T]he Examiner's identification of structural features in Potter is
inverted relative to the actual disclosure of structural features in Potter and, for that

3 The Examiner’s entry of Appellant’s Amendment filed May 8, 2012, canceling
claims 43, 44, 51, 52, and 57–60, moots the obviousness rejection of these claims.
See Advisory Action dated June 29, 2012.
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reason, is erroneous.”). Therefore, Appellants argue, “If Potter were modified . . .
to add a false bottom, the slot (13) of the mailer[ ] . . . would be obstructed by the
added false bottom. Hence, the Examiner's proposed modification . . . is not a
modification that a person having ordinary skill in the art would have made to
Potter.” Appeal Br. 11.
Even assuming arguendo Appellants are correct that the false bottom would
obstruct removal of disc 11 from pouch 12, Appellants arguments are not
persuasive. The fact that the proposed modification would provide one advantage
(e.g., contacting less of disc 11 with processing belts) at the expense of another
advantage (e.g., easier removal of disc 11 from pouch 12) is not a basis for
concluding the proposed modification is improper. We also do not find Todd N.
Butler’s Declaration dated March 30, 2011 (“Decl.”), to be persuasive. For
example, with respect to paragraph 9 of the Declaration, a user of the mailer may
simply desire holding the disc above the bottom of the mailer at the expense of
ease of opening the mailer. Decl. ¶ 9. With respect to paragraph 10, the
Declaration does not establish persuasively that “the primary goal of Potter is to
avoid [the disc being in] the cancellation area,” nor that lifting the disc from the
bottom of the mailer would obviate the primary goal. Decl. ¶ 10.
Notwithstanding the above, we note that Potter apparently does not limit the
orientation in a user may address the mailer. See, for example, Potter, ¶ 25 (“The
address of the recipient can be printed on either the outer surface 15 of right panel
36 or the outer surface 14 of left panel 35.”) Thus, a preponderance of the
evidence supports the Examiner’s conclusion that Potter teaches a mailer oriented
such that slot 13 faces upward during processing.
Appellants’ further arguments regarding claim 15 are similarly unpersuasive.
For example, Appellants do not establish persuasively that the proposed
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modification would render Potter unsuitable for its intended purpose. See Appeal
Br. 12–13. In particular, even if Potter’s mailer is oriented with slot 13 facing
downward, Appellants do not establish that Potter’s intended purpose requires
insertion or removal of disc 11 from pouch 12 through slot 13 after folding of the
mailer, as opposed to before folding the mailer. With respect to the additional
arguments on page 13 of the Appeal Brief, we note that the Examiner’s stated
motivation for adding the false bottom is to raise disc 11 within pouch 12 so that
the processing belts that move the mailer would contact less of disc 11. See, for
example, Jones, Abstract.
Based on the foregoing, we sustain the rejection of claim 15. We also
sustain the rejection of claims 41 and 42, which Appellants argue with claim 15.
See Appeal Br. 7–14.
With respect to claims 54 and 56, Appellants’ arguments (see Appeal Br. 15)
are unpersuasive because a preponderance of the evidence supports the Examiner’s
conclusion that Potter teaches a mailer oriented such that slot 13 faces upward. We
therefore affirm the rejection of claims 54 and 56.
With respect to claim 24, we agree with Appellants that the Examiner has
not shown the required envelope. See Appeal Br. 15–16. We therefore do not
sustain the rejection of claim 24.
With respect to claim 35, the Examiner finds that Potter teaches the required
first pocket open end. See Answer 12. We therefore do not find Appellants’
arguments to be persuasive (see Appeal Br. 16), and we therefore sustain the
rejection of claim 35.
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Appellants do not separately argue any of the remaining claims. See Appeal
Br. 16–17. We therefore affirm the rejections of the remaining claims.

DECISION
The Examiner’s rejections of claims 15, 17–23, 25, 31, 33, 35, 37, 38,
40–42, 50, and 53–56 under 35 U.S.C. § 103(a) are AFFIRMED.
The Examiner’s rejection of claim 24 under 35 U.S.C. § 103(a) is
REVERSED.
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).

AFFIRMED-IN-PART

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