Ex Parte Chapman et al

Board of Patent Appeals and Interferences

Jun 22, 2009

11084233 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARL R. CHAPMAN, JAMES A. FAIRWEATHER, and
THOMAS M. LYGA
____________

Appeal 2008-005976
Application 11/084,233
Technology Center 3600
____________

Decided: 1 June 22, 2009
____________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI Administrative Patent Judges.

STAICOVICI, 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 2008-005976
Application 11/084,233

2
STATEMENT OF THE CASE
Carl R. Chapman et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1 and 7. Claim 13 is
allowed.2 Claims 2-6, 8-12, 14, and 15 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellants’ invention is drawn toward a paper handling system in
which materials, such as folded pages, unfolded pages, and envelope
enclosures, are fed from a common material feed area along a common feed
transport path. Specification, ¶¶ [004] and [006].
Claim 1 is representative of the claimed invention and reads as
follows:
1. A materials handling system, comprising:

a common transport path;

a feeder station having a first feed mechanism for feeding
an enclosure envelope to the common transport path and
at least one second feed mechanism for feeding material
to the common transport path, the material for insertion
into the enclosure envelope;

an insertion subsystem for inserting said material from
said at least one second feed mechanism into said
enclosure envelope;

a folder subsystem for folding said material from said at
least one second feed mechanism;

a first transport path connected to said common transport

2 Ans. 2.
Appeal 2008-005976
Application 11/084,233

3
path and to said insertion subsystem for transporting said
material from said common transport path to said
insertion subsystem for insertion into said enclosure
envelope;

a second transport path connected to said common
transport path, said folder subsystem and said insertion
subsystem, said second transport path for transporting
said material from said common transport path to said
folding subsystem for folding and transporting folded
material to said insertion subsystem for insertion into
said enclosure envelope; and

a third transport path connected to said common transport
path and to said insertion subsystem, said third transport
path for transporting said envelope from said common
transport path to said insertion subsystem.

THE REJECTIONS3
The Examiner relies upon the following as evidence of
unpatentability:
Hirano US 6,213,456 B1 Apr. 10, 2001

The Appellants seek review of the Examiner’s rejection of claims 1
and 7 under 35 U.S.C. § 102(b) as anticipated by Hirano.

3 The rejection of claims 1 and 7 under 35 U.S.C. § 102(b) as
anticipated by Kawata (US 6,381,443 B1, issued Apr. 30, 2002) has been
withdrawn by the Examiner. Ans. 3. Similarly, the rejection of claim 13
under 35 U.S.C. § 102(b) as anticipated by Krasuski (US 6,366,827 B2,
issued Apr. 2, 2002) has likewise been withdrawn by the Examiner. Id.
Appeal 2008-005976
Application 11/084,233

4
THE ISSUE
Have the Appellants demonstrated that the Examiner erred in
determining that Hirano teaches a “common transport path” into which is fed
both an enclosure envelope and a material to be inserted into the enclosure
envelope, and which further satisfies the additional requirements for the
"common transport path" set forth in the "first transport path …" limitation
of claim 1?

SUMMARY OF DECISION
We REVERSE.
FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Hirano teaches a finisher component 1 (insertion subsystem)
attached to a copying machine 10 for inserting a plurality of
sheets (material for insertion into an enclosure envelope) from
the copier into a cover C (enclosure envelope) to form a bound
booklet. Hirano, col. 1, ll. 12-18 and fig. 1.
2. Hirano further teaches a paper conveying section 6 including
conveying routes 61, 62, 63, 64, 65, 66, and 67. Hirano, col. 6,
ll. 46-60 and fig. 1.
3. The finisher component of Hirano also includes a cover storage
unit 51, a cover conveying unit 52, paper insertion unit 53, and
Appeal 2008-005976
Application 11/084,233

5
a paper conveying unit 54. Hirano, col. 11, ll. 17-25 and figs. 1
and 7.
4. In operation, the paper insertion unit 53 receives a cover C from
the cover conveying unit 52 and papers from the paper
conveying unit 54. Hirano, col. 11, ll. 36-40. In other words,
the travel paths of the cover C and the paper converge at the
paper insertion unit 53.
5. The paper conveying unit 54 receives paper from the conveying
routes 65 and 67 or 66 and 67. The conveying routes 65 and 67
transfer papers, either folded or unfolded, one by one from the
output section 10b of the copying machine 10. Similarly, the
conveying routes 66 and 67 transfer a plurality of papers that
have been temporarily stacked in a stacking section 11b finisher
component 1. Hirano, col. 11, ll. 47-55; col. 11, l. 64 through
col. 12, l. 3; and fig. 1.
6. The paper conveying routes 65 and 67 or 66 and 67 are located
upstream of the paper conveying unit 54, the paper insertion
unit 53, and the discharge unit 56. Hirano, fig. 1.

PRINCIPLES OF LAW
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros, Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

Appeal 2008-005976
Application 11/084,233

6
OPINION
The Appellants argue that the “system of Hirano does not utilize a
common transport path into which is fed both the enclosure envelope and
[the] material to be inserted into the envelope.” Br. 9. In response, the
Examiner takes two separate positions.
In a first instance, the Examiner finds that the paper conveying route
61 of Hirano satisfies the claimed limitation of a “common transport path.”
Ans. 4. We disagree with the Examiner’s approach for the following reason.
As noted above, Hirano teaches a finisher component 1 including a paper
conveying section 6 having conveying routes 61, 62, 63, 64, 65, 66, and 67.
FF 1 and 2. The finisher component 1 of Hirano also includes a cover
storage unit 51, a cover conveying unit 52, paper insertion unit 53, and a
paper conveying unit 54. FF 3. In operation, the paper insertion unit 53
receives a cover C (enclosure envelope) from the cover conveying unit 52
and papers from the paper conveying unit 54. FF 4. In turn, the paper
conveying unit 54 receives paper from the conveying routes 65 and 67 or 66
and 67. FF 5. As such, the travel paths of the cover C (enclosure envelope)
and the paper converge only at the paper insertion unit 53. FF 4. Hence,
because the travel path of the cover C (enclosure envelope) does not
converge with the paper conveying route 61 at any point, we find that the
paper conveying route 61 of Hirano does not satisfy the limitation of a
“common transport path,” as required by claim 1.
In a second instance, the Examiner takes the position that
the path the envelopes C takes (from element 512
to 563) and the path the materials take (cassette
feeders shown in the bottom right corner of the
device in figure 1 to element 563) share a common
Appeal 2008-005976
Application 11/084,233

7
transport path, the path including the point where
the materials and envelopes are bound (at element
53) and discharged to tray 563.

Ans. 5. Emphasis added.
In other words, it appears that the Examiner is suggesting that the path
traveled by the cover C (enclosure envelope) and the papers between the
paper insertion unit 53 and the discharge unit 56, satisfies the claimed
limitation of a “common transport path,” as required by claim 1.
Claim 1 also requires a “first transport path,” however. Specifically,
claim 1 requires that the “first transport path” is connected to the “common
transport path” and to an insertion subsystem for transporting the material
(for insertion into the enclosure envelope) from the “common transport
path” to the insertion subsystem. In other words, claim 1 requires that the
“first transport path” is located downstream of the “common transport path."
The Examiner takes the position that the conveying route 65 of Hirano
satisfies the limitation of the “first transport path.” Ans. 5. In contrast to the
Examiner’s position, we find that in Hirano the paper conveying routes 65,
66, and 67 are located upstream of the Examiner’s “common transport path.”
FF 6. Therefore, the path traveled by the cover C (enclosure envelope) and
the papers between the paper insertion unit 53 and the discharge unit 56 of
Hirano, likewise does not satisfy the limitation of a “common transport
path,” as required by claim 1.
Inasmuch as we found that Hirano does not teach a “common
transport path” into which is fed both an enclosure envelope and a material
to be inserted into the enclosure envelope, as required by independent claim
1, Hirano does not teach all the elements of independent claim 1.
Appeal 2008-005976
Application 11/084,233

8
Accordingly, the rejection of claims 1 and 7 under 35 U.S.C. § 102(b) as
anticipated by Hirano cannot be sustained.

CONCLUSION
The Appellants have demonstrated that the Examiner erred in
determining that Hirano teaches a “common transport path” into which is fed
both an enclosure envelope and a material to be inserted into the enclosure
envelope, and which further satisfies the additional requirements for the
"common transport path" set forth in the "first transport path …" limitation
of claim 1.

DECISION
The Examiner’s rejection of claims 1 and 7 is reversed.

REVERSED

mls

PITNEY BOWES INC.
35 WATERVIEW DRIVE
MSC 26-22
SHELTON, CT 06484-3000