Ex Parte Foth et al

Board of Patent Appeals and Interferences

Feb 10, 2012

11321175 (B.P.A.I. Feb. 10, 2012)

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UNITED STATES PATENT AND TRADEMARK OFFICE 5
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BEFORE THE BOARD OF PATENT APPEALS 8
AND INTERFERENCES 9
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Ex parte THOMAS J. FOTH, 12
CHRISTOPHER J. CAPELLI, 13
CHARLES R. MALANDRA JR., 14
and FREDERICK W. RYAN 15
___________ 16
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Appeal 2010-008318 18
Application 11/321,175 19
Technology Center 3600 20
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Before HUBERT C. LORIN, ANTON W. FETTING, and 24
BIBHU R. MOHANTY, Administrative Patent Judges. 25
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FETTING, Administrative Patent Judge. 27
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DECISION ON APPEAL 29
Appeal 2010-008318
Application 11/321,175

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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

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[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

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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

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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
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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
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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
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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
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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
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AFFIRMED 5
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MP 9