Ex Parte Passoni

Patent Trial and Appeal Board

Jul 31, 2013

11664394 (P.T.A.B. Jul. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/664,394 10/04/2007 Gianfranco Passoni SCZISTP01AUS 9112
20210 7590 07/31/2013
DAVIS & BUJOLD, P.L.L.C.
112 PLEASANT STREET
CONCORD, NH 03301
EXAMINER
GERRITY, STEPHEN FRANCIS
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
07/31/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GIANFRANCO PASSONI
____________________

Appeal 2011-006824
Application 11/664,394
Technology Center 3700
____________________

Before EDWARD A. BROWN, LYNNE H. BROWNE, and
CARL M. DeFRANCO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006824
Application 11/664,394

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STATEMENT OF THE CASE
Gianfranco Passoni (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s rejection of claims 9, 10, 12, 14, 16, and 23-25. Br. 1.
Claims 11, 13, 15, and 17 are objected to. Id. Claims 1-8 and 18-22 have
been cancelled. Id. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b). We reverse.

CLAIMED SUBJECT MATTER
Claims 9, 14, and 25 are independent. Claim 9 is representative of the
appealed subject matter and reads:
9. A method of inserting at least one
object into envelopes from a stack of envelopes
stacked in a stacker and having an envelope flap on
the bottom face thereof, the method comprising the
steps of:
opening an envelope flap of an envelope
from the stack of envelopes by a rotary cam to
facilitate insertion of the at least one object;
engaging the envelope flap of the envelope
with a surface of the rotary cam and maintaining
the envelope flap in contact with the surface of the
rotary cam;
pulling the envelope, via the rotary cam, from
the stack of envelopes via the envelope flap, into
contact with an exterior surface of the rotary cam;
gripping the envelope with the surface of the
rotary cam and maintaining the envelope in contact
with the surface of the rotary cam;
conveying the envelope, by the rotary cam,
to move the envelope into an inserting area;
detaching the envelope from the surface of
the rotary cam; and
inserting the object into the envelope and
removing the envelope from the inserting area.
Appeal 2011-006824
Application 11/664,394

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REJECTIONS
1. Claims 9, 12, 14 and 23-25 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Huck (US 3,253,384; iss May 31, 1966).
2. Claims 10 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Huck and Bishop (US 4,373,848; iss Feb. 15, 1983).

ANALYSIS
Claims 9, 12, 14, and 23-25 – Anticipation - Huck
Claims 9, 12, and 23
Claim 9 is directed to “[a] method of inserting at least one object into
envelopes from a stack of envelopes stacked in a stacker and having an
envelope flap on the bottom face thereof,” and recites the step of “opening
an envelope flap of an envelope from the stack of envelopes by a rotary
cam.” Emphasis added. The Examiner found that Huck discloses, inter
alia, “fully opening” an envelope flap of an envelope E, by a lip of a rotary
cam 715 to open the envelope. Ans. 4.
Appellant contends that Huck does not disclose the claim limitation
“opening an envelope flap of an envelope from the stack of envelopes by a
rotary cam.” Br. 6. Appellant contends that Huck discloses a flap opening
assembly 600 for opening the flap of an envelope from a stack of envelopes;
and an upper transfer cylinder assembly 700, which then grips the opened
flap while it is disposed in its position leading the envelope’s body,
removing the envelope from the stack. Id. (citing Huck, col. 6, ll. 61-64, col.
7, ll. 29-30). In support of this contention, Appellant references the
following disclosure in Huck:
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Application 11/664,394

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a flap opening assembly 600 which is operative to
unfold the flap of the lowermost envelope in the
stack; an upper transfer cylinder assembly or rotor
700 which is operative to grip the opened flap and
move the envelope to a position over the chute
assembly 400 where it receives a package or set of
the insert materials being fed through the chute
assembly.
Ans. 6 (citing Huck, col. 2, ll. 40-47). According to this disclosure, the flap
of the envelope is already opened by the time it is gripped by the upper
transfer cylinder assembly 700.
We agree with Appellant that Huck does not support the Examiner’s
rejection. Huck’s apparatus also includes an envelope feeder magazine 500
in which envelopes E are stacked “with their flaps folded beneath and
against the bodies of the envelopes so that the flap on the bottom most
envelope in the stack overlies the space 504.” See Huck, col. 6, ll. 3-13; fig.
3a. Huck discloses that the envelopes are opened by the flap opening
assembly 600, which notably includes a sucker head 601. See Huck, col. 6,
ll. 15-19; fig. 3a. Huck discloses that the sucker head 601 operates as
follows:
as the sucker head 601 moves into its position
[underlying] the opening 504, suction is applied at
the sucker head so that it grips the flap of the
bottom most envelope in the stack and thereafter
pivots it ... to a position [leading] the body of the
envelope as the sucker head moves to its second
position.... The flap, while disposed in its position
leading the body of the envelope, is thereafter
gripped by the upper transfer cylinder assembly
700 and the envelope removed from the stack.
See Huck, col. 6, ll. 49-64.
Regarding the upper transfer cylinder assembly 700, Huck discloses:
Appeal 2011-006824
Application 11/664,394

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As the counter clockwise movement of the
grippers [713] continues ... whereupon continued
counterclockwise movement moves them ... until
they reach a position as seen in FIG. 9 directly
overlying the flap of an envelope E, which flap has
been moved to its opened position by the
oscillating movement of the flap opening assembly
600 during the time elapsing between the last
passage of the flanges 703 and the present passage
of the grippers 713.... Further rotative movement
of the rotor moves the grippers ... until the grippers
occupy the position seen in FIG. 10 where they
grip the leading edge portion of the [envelope] flap
between themselves and high dwell portions 715a
formed on the outer peripheral surfaces 715 of the
flanges. At this time, the suction to the sucker
head 601 is terminated, thereby releasing the flap
... so that as the rotor continues to rotate the
[envelope] is pulled from the bottom of the
magazine and transported edgewise and flap first
in a circular path toward the bottom of the orbit of
the rotors.
See Huck, col. 7, ll. 22-51 (emphasis added). In contrast to the Examiner,
Appellant contends that Huck does not disclose “fully opening” a flap of an
envelope E by a lip of a rotary cam (Br. 7), but rather, discloses that the
envelope flap is opened and held by the sucker head 601 of the flap opening
assembly 600 prior to being gripped by the grippers 713 of the upper transfer
cylinder assembly 700 onto surface 715a on surface 715 (id. at 9-10).
Regarding the claimed invention, Appellant contends that “a flap of
an envelope is opened when it is unfolded so that the envelope is capable of
being ‘extracted from the pile 14’ of envelopes.” Br. 11; see also Spec.
para. [039] (emphasis added). We understand that the envelope that includes
a flap 16 extending below the envelope storage bin 12 shown in Figure 2A
Appeal 2011-006824
Application 11/664,394

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of the present application is subsequently “opened,” as described by
Appellant, by the lip 24 of the rotating rotary cam 17 hooking the flap 16.
See Spec. para. [041]. We further understand that Figure 1B of the present
application shows an “opened” envelope flap in contact with the
protuberance 25 of the rotary cam 17. Appellant contends that “[t]he
difference, however, is that [Huck] unfolds the flap of the envelope by
means of a separate flap opening assembly 600 while the present pending
invention opens the envelope by means of a rotary cam.” Br. 11.
Appellant’s contentions are persuasive.
Claim 9 recites the steps of “opening an envelope flap of an envelope
from the stack of envelopes by a rotary cam to facilitate insertion of the at
least one object,” “engaging the envelope flap of the envelope with a surface
of the rotary cam and maintaining the envelope flap in contact with the
surface of the rotary cam,” and “pulling the envelope, via the rotary cam,
from the stack of envelopes via the envelope flap, into contact with an
exterior surface of the rotary cam.” The Patent and Trademark Office gives
claims their broadest reasonable interpretation consistent with the
specification, reading claim language as it would be interpreted by one of
ordinary skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Here, we construe the claim limitation
“engaging the envelope flap” as “engaging the [opened] envelope flap”
opened by the rotary cam, and construe the limitation “via the envelope flap”
as “via the [opened] envelope flap.” According to this construction, the
envelope is pulled from the stack of envelopes after its flap has already been
opened by the rotary cam. This construction is consistent with Appellant’s
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construction of an “opened” envelope flap discussed supra, and the
Specification. See Spec. para. [039].
In response to Appellant’s contentions, the Examiner stated, in regard
to Huck, that “the degree of openness at this point prior to being picked up
by the rotary cam does not satisfy the claim limitation set forth in claims 9
and 25, which requires the envelopes to be opened to the point to facilitate
the insertion of objects.” Ans. 7. The Examiner stated “[a]n [interpretation]
that the examiner has taken during prosecution is that Huck is ultimately
silent as to the degree of openness [that] is achieved prior to being placed on
the rotary cam.” Id. The Examiner did not, however, show by a
preponderance of the evidence that Huck discloses “opening an envelope
flap of an envelope from the stack of the envelopes by a rotary cam,” and
then “pulling the envelope, via the rotary cam, from the stack of envelopes
via the [opened] envelope flap, into contact with an exterior surface of the
rotary cam,” as called for by claim 9. Emphasis added. In contrast, Huck
discloses that the envelope flap is opened by the flap opening assembly 600,
allowing the envelope with an opened flap to then be pulled from the stack
of envelopes by upper transfer cylinder assembly 700.
The Examiner also stated “[a]nother interpretation requires not only
that the flap be in an open condition (i.e. extended from the body), but
arranged on the rotary cam and positioned such that an object can be inserted
into the envelope body.” Ans. 7-8. For this interpretation also, the
Examiner did not show by a preponderance of the evidence that Huck
discloses every limitation of claim 9.
Accordingly, we do not sustain the rejection of claim 9 and its
dependent claims 12 and 23.
Appeal 2011-006824
Application 11/664,394

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Claims 14 and 24
Independent claim 14 is directed to an apparatus for inserting objects
into envelopes and recites “a rotary cam for opening and conveying the
envelopes” and “wherein the rotary cam is adapted to open an envelope flap
of an envelope, the rotary cam is adapted to maintain the envelope flap of the
envelope in contact which a surface of the cam and to pull the envelope out
of the stacker by the envelope flap.” Emphasis added. The Examiner found
that Huck discloses the structural elements of the claim and is also capable
of performing the claimed function. Ans. 4, 6. However, as discussed
supra, Huck discloses that the flap opening assembly 600, not a rotary cam,
opens the flaps of envelopes, thereby allowing upper transfer cylinder
assembly 700 to then pull the envelope with an already opened flap from the
stack of envelopes. Accordingly, we do not sustain the rejection of claim 14
and its dependent claim 24.
Claim 25
Independent claim 25 is directed to “a method of inserting at least one
object into envelopes from a stack of envelopes stacked in a stacker and
having an envelope flap on the bottom face thereof,” and recites, inter alia,
the steps of “unfolding and opening the envelope flap, via the rotary cam, to
facilitate insertion of at least one object into the envelope” and “pulling, via
the envelope flap, the envelope into contact with an exterior surface of the
rotary cam.” Emphasis added. The Examiner’s findings (Ans. 4-6) and
Appellant’s arguments for patentability (Br. 6-12) in regard to claim 25 are
similar to those discussed supra for the rejection of claim 9. Accordingly,
we also do not sustain the rejection of claim 25 for similar reasons.

Appeal 2011-006824
Application 11/664,394

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Claims 10 and 16 – Obviousness – Huck and Bishop
Claims 10 and 16 depend from claims 9 and 14, respectively. The
Examiner’s application of Bishop to the rejection of claims 10 and 16 (Ans.
5, 8-9) does not cure the deficiencies of the rejection of claims 9 and 14.
Thus, we do not sustain the rejection of claims 10 and 16 for similar reasons.

DECISION
The Examiner’s rejection of claims 9, 10, 12, 14, 16, and 23-25 is
REVERSED.

REVERSED

dm