Neopost Technologies

Patent Trials and Appeals Board

Mar 18, 2022

2021004503 (P.T.A.B. Mar. 18, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 15/840,420 12/13/2017 Peter Robinson 690187.483/439411 9538 157716 7590 03/18/2022 Cozen O''Connor - Neopost 999 Third Avenue Suite 1900 Seattle, WA 98104 EXAMINER SMITH, JACOB A ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 03/18/2022 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): nyipdocketing@cozen.com ppogson@cozen.com sclayton@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER ROBINSON Appeal 2021-004503 Application 15/840,420 Technology Center 3700 Before DANIEL S. SONG, JEREMY M. PLENZLER, and LISA M. GUIJT, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-8 and 16-20.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Quadient Technologies France. Appeal Br. 2. 2 Claims 9-15 are withdrawn. Final Act. 1. Appeal 2021-004503 Application 15/840,420 2 CLAIMED SUBJECT MATTER The claims relate to manufacturing mailings. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for manufacturing mail pieces, the method comprising: supplying a piece of cold seal paper to form an envelope body; collating documents to form content to be inserted in the mailpiece; folding the envelope body around the content along a fold line corresponding to a middle of the envelope body with a pair of finishing rollers and simultaneously sealing the mailpiece with the pair of finishing rollers in a single finishing step. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Downing US 5,938,880 Aug. 17, 1999 Eijkelkamp3 US 2010/0190629 A1 July 29, 2010 Van Gorp US 2011/0192892 A1 Aug. 11, 2011 Kawano US 2012/0159899 A1 June 28, 2012 Nozawa US 2012/0260605 A1 Oct. 18, 2012 REJECTIONS Claims 1-3, 5-8, and 16-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Van Gorp, Nozawa, Downing, and Eijkelkamp. 3 The Final Action mistakenly refers to this reference as “Francisus,” the inventor’s middle name. See Final Act. 3. The Answer corrects this mistake. See Ans. 3. Appeal 2021-004503 Application 15/840,420 3 Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Van Gorp, Nozawa, Downing, Eijkelkamp, and Kawano.4 OPINION Claim 1 requires “folding . . . and simultaneously sealing the mailpiece . . . in a single finishing step.” Claim 16 includes a similar limitation. The Examiner finds that Van Gorp teaches this limitation. Final Act. 4, 8; Ans. 4-6 (citing, e.g., Van Gorp ¶ 31). Claims 1 and 16 additionally specify that the “folding . . . and simultaneously sealing” is performed using a “pair of finishing rollers.” The Examiner concedes that “Van Gorp does not specifically teach folding the envelope body around the content along a fold line corresponding to a middle of the envelope body with a pair of finishing rollers.” Final Act. 4, 8. The Examiner finds that Eijkelkamp “teaches folding the envelope body around the content with a pair of finishing rollers.” Id. at 5, 9. The Examiner additionally finds that Eijkelkamp “teaches that, ‘It is also known to feed and fold a set of stacked sheets using a pair of folding rollers using the wedge to plea and push all the stacked sheets into the nip, so that all the sheets in the stack are folded together.’” Id. at 5, 9 (citing Eijkelkamp ¶ 3). In view of these findings, the Examiner reasons that “it would have been obvious . . . to have modified Van Gorp to incorporate the teachings of [Eijkelkamp] to include using a pair of rollers to fold and seal the mailpiece with the motivation of providing a structure to quickly and efficiently perform the folding of a mailpiece.” Id. at 5, 9. 4 The Final Action did not list all references applied in the rejection (Final Act. 14), but the Examiner’s Answer corrected the listing of applied references (Ans. 3). Appeal 2021-004503 Application 15/840,420 4 Appellant contends that Van Gorp fails to teach simultaneously folding and sealing. See Appeal Br. 7-10, 12-13; Reply Br. 1-3. Appellant’s contentions are not persuasive. Notably, Appellant fails to address paragraph [0031] of Van Gorp, cited by the Examiner. See Ans. 6. Paragraph [0031] of Van Gorp explains that “the wrapping step 103 . . . seals any pressure sensitive or contact glue strips.” Immediately prior to that discussion, Van Gorp explains that “[t]he continuous web 141 is . . . fed into the wrapping section 103 where individual panels 92, 94 are wrapped along the fold lines 40 and 45.” Van Gorp ¶ 30. Without any explanation from Appellant, we are not apprised of error in the Examiner’s finding. Appellant additionally contends that “[t]he Examiner’s Answer asserts that Appellant does not address or contest the assertion that Van Gorp as modified by Eijkelkamp would be obvious to ‘both seal and fold in a single finishing step,’” but “[t]his assertion is not true.” Reply Br. 2. Appellant contends that “Eijkelkamp does not even once mention sealing anywhere within its entire disclosure.” Id. This is not persuasive. The Examiner does not rely on Eijkelkamp teaching a sealing operation. Rather, as made clear in the Answer, “[t]he only teachings of Eijkelkamp used to modify Van Gorp [were] the structures to perform the folding of the mailpiece.” Ans. 8. The Examiner explains that “when Van Gorp was modified to include the folding structures of Eijkelkamp, there was no change to the process of simultaneously folding and sealing.” Id. at 8-9. The pressure sensitive glue from Van Gorp would result in sealing when Eijkelkamp’s rollers are employed in the proposed combination. Appellant does not identify reversible error in the Examiner’s findings or rationale. Indeed, Appellant does not even address much of the actual Appeal 2021-004503 Application 15/840,420 5 findings or rationale relied on by the Examiner in the rejections. For at least the reasons set forth above, we are not apprised of error in the Examiner’s decision to reject claims 1-8 and 16-20.5 CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5-8, 16-20 103 Van Gorp, Nozawa, Downing, Eijkelkamp 1-3, 5-8, 16-20 4 103 Van Gorp, Nozawa, Downing, Eijkelkamp, Kawano 4 Overall Outcome 1-8, 16-20 TIME PERIOD FOR RESPONSE 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). AFFIRMED 5 Appellant argues claims 1-3 and 5-8 as a group and claims 16-20 as a group. Appeal Br. 7-14. Accordingly, claims 2, 3, and 5-8 fall with representative claim 1, and claims 17-20 fall with representative claim 16. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant relies on the arguments presented with respect to claim 1 for the patentability of claim 4.