Ex Parte Beech et al

Patent Trials and Appeals BoardJul 2, 2019

15213980 - (D) (P.T.A.B. Jul. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/213,980 07/19/2016 Brian Beech 52835 7590 07/05/2019 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 Minneapolis, MN 55402-1683 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 02968.0504USD1 8115 EXAMINER TRAN, HUAN HUU ART UNIT PAPER NUMBER 2853 NOTIFICATION DATE DELIVERY MODE 07/05/2019 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): PTOMail@hsml.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN BEECH and THOMAS J. WAGENER Appeal2018-007172 Application 15/213,980 Technology Center 2800 Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to finally reject claims 1, 2, and 5. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Entrust Datacard Corporation is the Applicant/ Appellant and identified as the real party in interest. App. Br. 2. 2 The Examiner objected to claim(s) 3, 4, and 6-11 as dependent upon a rejected base claim, but allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Final Act. 6. Accordingly, these claims are not before us for review on appeal. Appeal2018-007172 Application 15/213,980 Appellant's invention relates generally to a mechanism that can custom print an insert, match the custom printed insert with a card/ carrier combination, and insert the matched custom printed insert and card/ carrier combination into an envelope for mailing to the intended card holder. Spec. 1-3; App. Br. 2. Claim 1 illustrates the invention: 1. An inserter mechanism configured for use with a card production system having a card personalization system and a card fixing mechanism that together output a card/carrier combination, comprising: an insert hopper that is configured to contain a plurality of inserts to be printed on; an insert printing mechanism operatively connected to the insert hopper and configured to receive an insert from the insert hopper to print on the insert and produce a custom printed insert; the inserter mechanism includes an input through which a card/carrier combination can be input thereto, and the inserter mechanism is configured to match the custom printed insert with a card/carrier combination received through the input; an envelope hopper configured to contain a plurality of envelopes; and an inserting mechanism configured to insert the matched card/carrier combination and the custom printed insert into one of the envelopes. Appellant requests review of the Examiner's decision to finally reject claims 1, 2, and 5 under 35 U.S.C. Â§ 103 as unpatentable over Hill (US 5,862,754, issued January 26, 1999) and McCumber (US 7,059,532 B2, issued June 13, 2006). App. Br. 5; Final Act. 3. 2 Appeal2018-007172 Application 15/213,980 OPINION3 After review of the respective positions the Appellant and the Examiner provide, we REVERSE the Examiner's prior art rejection of claims 1, 2, and 5 for the reasons the Appellant presents. We add the following for emphasis. We refer to the Examiner's Final Action for a complete statement of the rejection. Final Act. 4. We agree with Appellant that the Examiner reversibly erred in the determination of obviousness. As Appellant argues, the Examiner improperly relies on the disclosure of Hill and McCumber to address the limitations of the claimed inserter mechanism. See generally App. Br. As Appellant further argues, Hill and McCumber only disclose a device for making a card/carrier combination and the Examiner does not explain where or how Hill and McCumber disclose a device to produce a custom printed insert that is matched with a card/carrier combination. App. Br. 7, 9; Reply Br. 2. Accordingly, we reverse the Examiner's prior art rejection for the reasons the Appellant presents. DECISION The Examiner's prior art rejection of claims 1, 2, and 5 is reversed. REVERSED 3 We limit our discussion to claim 1. 3