Ex Parte Chastain et alDownload PDFPatent Trial and Appeal BoardSep 17, 201211522717 (P.T.A.B. Sep. 17, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID P. CHASTAIN, ALLEN L. SIMERS, JOSHUA A. SCHRIVER, JASON W. HARBERT, and DAVID W. PURCELL ____________________ Appeal 2010-005495 Application 11/522,717 Technology Center 3600 ____________________ Before: NEAL E. ABRAMS, CHARLES N. GREENHUT, and REMY J. VANOPHEM, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005495 Application 11/522,717 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 8- 19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a separator card for mailpiece handling equipment. Claim 8, reproduced below, is illustrative of the claimed subject matter: 8. A system for separating batches of mail in a mailpiece sorter, comprising: card stock interposed between batches of mail, the card stock having a ferromagnetic symbology disposed on a face of the card stock, the symbology indicative of at least one parameter; an inductive proximity detector operative to scan the ferromagnetic symbology on the card stock and to produce an output signal indicative of the at least one parameter; a device for conveying the batches of mail past the inductive proximity detector, and a processor having stored therein a plurality of predefined signature profiles each being indicative of stored information pertaining to a mailpiece job run, the processor, furthermore, responsive to the output signal of the inductive proximity detector for developing information concerning the mailpiece job run for use by the mailpiece sorter. REJECTION Claims 8-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Applicants admitted prior art (“APA”) in view of Nelson Appeal 2010-005495 Application 11/522,717 3 (US 3,895,220 iss. Jul. 15, 1975) and Look1 (US-2008/0035730 A1 pub. Feb. 14, 2008). Ans. 3. OPINION Appellants argue independent claims 8 and 14 as a group. We select claim 8 as the representative claim, and claim 14 will stand or fall with claim 8. 37 C.F.R. § 41.37(c)(1)(vii). The Examiner correctly found, and Appellants do not dispute, that the APA discloses the basic invention of claim 8 except for the “ferromagnetic symbology.” Ans. 3 (citing Spec. pp. 1-6 paras. 2-6). In the APA the “ferromagnetic material is a uniform layer or coating applied to the card stock.” Spec. p. 2, para. [0004]. The presence of such material is sensed by a detector and interpreted by a processor. Id. As Appellants point out (App. Br. 11-12), the purpose of the APA separator cards is to “distinguish between batches of mail to be sorted, e.g., different customers.” Spec. 1, para. [0003]. The Examiner correctly found that Nelson demonstrates that the use of bars, “ferromagnetic symbology” was known in the art. Ans. 4 (citing Nelson Fig. 1, cols. 4-6). Nelson suggests this type of encoding could be used to sort mail by customer number or type. Nelson col. 2, ll. 58-61. Substitution of Nelson’s bars for the uniform layer or coating of the APA would predictably enable the communication of more detailed information to the detector and processor, for example, information represented by the number of bars as compared to merely the presence or absence of a 1 Incorrectly identified by the Examiner as 2008/0035739 (hereinafter “Huang”) in the Final Rejection and Answer, but correctly identified on PTO form 892 Notice of References Cited mailed Apr. 25, 2008. Appeal 2010-005495 Application 11/522,717 4 ferromagnetic material. See e.g., Nelson col. 3, ll. 55-68. Thus, we agree with the Examiner that such substitution would have been obvious to one having ordinary skill in the art. See e.g., KSR Int’l v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”). Appellants contend that the Examiner mischaracterizes the function of the APA card stock as one of sorting as compared to separating batches. App. Br. 11-12. We disagree. While the mail within each batch may be further sorted into individual containers, using the cards as a cue to divert the batch to a particular set of mailpiece containers (Spec. p. 1, para. [0003]) is also properly characterized as sorting. The APA already demonstrates it was known to use ferromagnetic cards “between batches of mail.” Nelson need not also teach this same exact location for the card stock in order to conclude the claimed subject matter would have been obvious in view of the combined teachings of the APA and Nelson. Contra App. Br. 12-13. The lack of a single reference disclosing a particular subcombination of the claimed invention, does not, without more, indicate that the Examiner erred in reaching a conclusion of obviousness based upon a combination of prior art disclosures. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). The fact that Nelson uses the symbology for sorting each individual piece of mail provides a reasonable expectation that such symbology could also function as a separator or cue to sort, or merely to separate, batches of mail. While the Examiner groups claims 8-19 as rejected based on the combination of APA, Nelson and Look, the Examiner does not appear to Appeal 2010-005495 Application 11/522,717 5 rely on Look for any teachings related to independent claim 8, nor do Appellants raise any issues relevant to Look and claim 8. Thus, the Examiner’s citation of Look insofar as claim 8 is concerned is inconsequential. See e.g., In re Bush 296 F.2d 491, 496 (C.C.P.A. 1961). Accordingly, we sustain the Examiner’s rejection of claims 8 and 14. With respect to dependent claims 9-13 and 15-19, Appellants contend that neither Nelson nor Huang disclose geometric shapes. We are mindful that the Examiner incorrectly indicated a “9” in place of a “0” in the Pre- Grant Publication number. However, the Look reference was properly identified on PTO form 892, Notice of References Cited, and was identified by title (Ans. 3). Furthermore, paragraphs not present in Huang were cited by the Examiner in Final Rej. 3; Ans. 4. Thus, despite the presence of an incorrect numeral in the Final Rejection and Answer, the rejection, along with the Notice of References Cited, would have put a reasonable applicant on notice of the examiner's rejection. See e.g., In re Jung, 637 F. 3d 1356, 1362 (Fed. Cir. 2011). Appellants’ argument directed to Huang does not apprise us of any error in that rejection. Accordingly, we sustain the Examiner’s rejection of claims 9-13 and 15-19. DECISION The Examiner’s rejection of claims 8-19 is affirmed. 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 Klh Copy with citationCopy as parenthetical citation