Ex Parte Foth et alDownload PDFBoard of Patent Appeals and InterferencesFeb 10, 201211321175 (B.P.A.I. Feb. 10, 2012) Copy Citation 1 2 3 4 UNITED STATES PATENT AND TRADEMARK OFFICE 5 ___________ 6 7 BEFORE THE BOARD OF PATENT APPEALS 8 AND INTERFERENCES 9 ___________ 10 11 Ex parte THOMAS J. FOTH, 12 CHRISTOPHER J. CAPELLI, 13 CHARLES R. MALANDRA JR., 14 and FREDERICK W. RYAN 15 ___________ 16 17 Appeal 2010-008318 18 Application 11/321,175 19 Technology Center 3600 20 ___________ 21 22 23 Before HUBERT C. LORIN, ANTON W. FETTING, and 24 BIBHU R. MOHANTY, Administrative Patent Judges. 25 26 FETTING, Administrative Patent Judge. 27 28 DECISION ON APPEAL 29 Appeal 2010-008318 Application 11/321,175 2 STATEMENT OF THE CASE1 1 Thomas J. Foth, Christopher J. Capelli, Charles R. Malandra Jr., and 2 Frederick W. Ryan (Appellants) seek review under 35 U.S.C. § 134 (2002) 3 of a final rejection of claims 1-9 and 12, the only claims pending in the 4 application on appeal. We have jurisdiction over the appeal pursuant to 5 35 U.S.C. § 6(b) (2002). 6 The Appellants invented a way of applying mailer applied restriction 7 regarding changing of delivery parameters for a mail piece (Specification ¶ 8 0001). 9 An understanding of the invention can be derived from a reading of 10 exemplary claim 1, which is reproduced below [bracketed matter and some 11 paragraphing added]. 12 1. A method of changing delivery parameters of a mail piece, 13 the method comprising: 14 [1] receiving the mail piece from a mailer; 15 [2] receiving from the mailer an electronic file relating to 16 electronic delivery change instructions from an intended 17 recipient of the mail piece; 18 [3] applying a marking on the mail piece associated with an 19 address of the intended recipient; 20 [4] mailing the mail piece; 21 [5] sending the intended recipient information regarding the 22 mailed mail piece; 23 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed January 20, 2010) and the Examiner’s Answer (“Ans.,” mailed February 23, 2010). Appeal 2010-008318 Application 11/321,175 3 [6] receiving from the intended recipient an electronic delivery 1 change instruction 2 to change at least one of the delivery parameters of the 3 mail piece after the mail piece has been mailed; 4 [7] comparing the electronic delivery change instruction with 5 the electronic file 6 to determine prohibited delivery change instructions; 7 and 8 [9] limiting the intended recipient from changing the at least 9 one of the delivery parameters 10 where the electronic delivery change instruction 11 comprises a prohibited delivery change instruction. 12 The Examiner relies upon the following prior art: 13 Couch US 7,130,803 B1 Oct. 31, 2006 Kuebert US 2002/0165729 A1 Nov. 7, 2002 Blaesche US 2003/0004893 A1 Jan. 2, 2003 Cordery US 2004/0093312 A1 May 13, 2004 Claims 1-9 and 12 stand rejected under 35 U.S.C. § 101 as directed to 14 non-statutory subject matter. 15 Claims 1-5, 7, and 12 stand rejected under 35 U.S.C. § 103(a) as 16 unpatentable over Kuebert and Cordery. 17 Claims 6 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable 18 over Kuebert, Cordery, and Blaesche. 19 Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 20 Kuebert, Cordery, and Couch. 21 Appeal 2010-008318 Application 11/321,175 4 ISSUES 1 The issue of statutory subject matter turns primarily on whether a 2 method that places indicia on a mail piece and mails that piece transforms 3 that piece. The issues of obviousness turn primarily on whether the 4 Appellants’ general assertion that the Examiner failed to present a prima 5 facie case as to certain limitations is supported. 6 FACTS PERTINENT TO THE ISSUES 7 The following enumerated Findings of Fact (FF) are believed to be 8 supported by a preponderance of the evidence. 9 Facts Related to the Prior Art 10 Kuebert 11 01. Kuebert is directed to dynamically redirecting an item, such as a 12 parcel, to a new delivery point, flexibly specified, before the 13 parcel is delivered to the originally addressed delivery point. 14 Kuebert ¶ 0003. 15 02. A static, predefined database stores notification contact 16 information to add a fraud protection factor. Since the notification 17 information prelinks a physical mailbox to a notification channel, 18 such as an electronic mailbox or electronic address, the intended 19 recipient is notified of any fraudulent redirection of mail item to a 20 new address. Moreover, if the `recipient` instructions do not come 21 from a predefined notification path for the recipient, as stored in 22 the static database, they can be ignored as presumably fraudulent. 23 Furthermore, a recipient may only change delivery points to an 24 Appeal 2010-008318 Application 11/321,175 5 address that is pre-recorded in the static database. Kuebert ¶ 1 0029. 2 03. Kuebert’s system accepts, e.g., from the recipient, instructions 3 regarding delivery of mail item. The recipient's instruction may 4 include a new delivery point, a new delivery time, and other 5 information, such as special delivery instructions. If the recipient 6 makes no response to the notification, the mail item is delivered to 7 the addressed delivery point according to procedures well known 8 to those skilled in the art. Kuebert ¶ 0043. 9 04. Instructions may be accepted from individuals or organizations 10 other than the recipient. Kuebert may accept instructions from the 11 sender or the mailer. One skilled in the art would recognize that a 12 wide variety of instructions sources may be used. Kuebert ¶ 0044. 13 05. A notification is sent, e.g., to the sender (or mailer), to indicate 14 acceptance of the instructions. The notification may be sent to a 15 variety of individuals or organizations, such as, the sender, the 16 mailer, or the recipient. A copy of the recipient's email delivery 17 instructions can be forwarded to the sender. The sender may have 18 final control over delivery and has the option to veto any alternate 19 delivery instructions given by the recipient. To prevent fraud or 20 for other reasons, the sender can direct that mail item be delivered 21 to the original address. Kuebert ¶ 0045. 22 06. The instruction acceptance notification may be sent by as email, 23 telephone, fax, letter, or electronic data exchange between data 24 processing systems. Contact information for communicating, e.g., 25 Appeal 2010-008318 Application 11/321,175 6 with the sender, may be looked up in a database provided by the 1 mailer, gotten from information written on the parcel (e.g., return 2 address), or gotten from information encoded on the mail item 3 using a bar code or data matrix code. Kuebert ¶ 0046. 4 07. The new delivery instructions, e.g., from the recipient, may be 5 approved or vetoed. The instructions may be approved by a 6 variety of individuals and organizations. One skilled in the art 7 would recognize that approval of the instructions may be 8 performed in a wide variety of ways. For example, the sender 9 compares the new delivery address to a list of previously specified 10 acceptable delivery addresses for the recipient, and agrees if the 11 new address is on the list. Agreeing only to pre-defined alternate 12 addresses helps reduce fraudulent redirection of mail. Kuebert ¶ 13 0047. 14 08. If the instructions are approved, the mail item is delivered 15 according to the instructions. If the recipient has specified a new 16 delivery point, a distinctive new label specifying the new address 17 may be produced and affixed to the mail item in place of the 18 original delivery address label, so that a delivery person reading 19 the label will deliver the mail item correctly. The distinctive new 20 label may be used to alert the mail carrier that the piece is 21 automatically being redirected and adds a degree of fraud 22 prevention. Similarly, the delivery address of the mail item 23 contained in a database may be changed to reflect the new 24 delivery point. The label and database changes may be performed 25 Appeal 2010-008318 Application 11/321,175 7 automatically, for example, by a system used by the U.S. Postal 1 Service. Kuebert ¶ 0048. 2 09. If the instructions are not approved, then the mail item is delivered 3 according to the original address. One skilled in the art would also 4 recognize that the mail item may be sent to destinations other than 5 the original address, e.g., in the event of an undeliverable address. 6 For example, the mailer may specify a new delivery point for the 7 mail item in this stage. Kuebert ¶ 0049. 8 ANALYSIS 9 Claims 1-9 and 12 rejected under 35 U.S.C. § 101 as directed to non-10 statutory subject matter. 11 We are persuaded by the Appellants’ argument that applying a marking 12 on a mailpiece transforms the mailpiece. Appeal Br. 9. The Examiner’s 13 finding that the underlying mailpiece is unchanged is irrelevant. The 14 combination of the mailpiece and the marking forms an article that differs 15 from what began. The distinction is functional rather than ornamental, as it 16 is needed to complete the mailpiece. 17 Claims 1-5, 7, and 12 rejected under 35 U.S.C. § 103(a) as unpatentable 18 over Kuebert and Cordery. 19 We are unpersuaded by the Appellants’ argument that 20 Kuebert fails to teach or suggest "receiving from the mailer an 21 electronic file relating to electronic delivery change instructions 22 from an intended recipient of the mail piece," "comparing the 23 electronic delivery change instruction with the electronic file to 24 determine prohibited delivery change instructions," and 25 "limiting the intended recipient from changing the at least one 26 Appeal 2010-008318 Application 11/321,175 8 of the delivery parameters where the electronic delivery change 1 instruction comprises a prohibited delivery change instruction 2 Appeal Br. 10. We adopt the Examiner’s findings and analysis from 3 Answer 7-8 and 14-16 and reach similar legal conclusions. See FF 01-09. 4 The Appellants’ contend these facts do not present a prima facie case for 5 obviousness, but the Appellants do not explain how these findings fail to 6 describe the limitations at issue. Appeal Br. 10-11. 7 Claims 6 and 8 rejected under 35 U.S.C. § 103(a) as unpatentable over 8 Kuebert, Cordery, and Blaesche. 9 Claim 9 rejected under 35 U.S.C. § 103(a) as unpatentable over Kuebert, 10 Cordery, and Couch. 11 These claims are not separately argued, and thus stand or fall with the 12 independent claims. 13 CONCLUSIONS OF LAW 14 The rejection of claims 1-9 and 12 under 35 U.S.C. § 101 as directed to 15 non-statutory subject matter is improper. 16 The rejection of claims 1-5, 7, and 12 under 35 U.S.C. § 103(a) as 17 unpatentable over Kuebert and Cordery is proper. 18 The rejection of claims 6 and 8 under 35 U.S.C. § 103(a) as unpatentable 19 over Kuebert, Cordery, and Blaesche is proper. 20 The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over 21 Kuebert, Cordery, and Couch is proper. 22 DECISION 23 The rejection of claims 1-9 and 12 is affirmed. 24 Appeal 2010-008318 Application 11/321,175 9 No time period for taking any subsequent action in connection with this 1 appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2 § 1.136(a)(1)(iv) (2007). 3 4 AFFIRMED 5 6 7 8 MP 9 Copy with citationCopy as parenthetical citation