Ex Parte SievelDownload PDFPatent Trial and Appeal BoardDec 29, 201512492199 (P.T.A.B. Dec. 29, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/492,199 0612612009 Mark E. Sievel 919 7590 12/31/2015 PITNEY BOWES INC. INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT. 37 EXECUTIVE DRIVE MSC 01-152 DANBURY, CT 06810 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. G-510 6857 EXAMINER HARRINGTON, MICHAEL P ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 12/31/2015 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): iptl@pb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARKE. SIEVEL Appeal2013-005174 Application 12/492, 199 Technology Center 3600 Before ANTON W. PETTING, PHILIP J. HOFFMANN, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We AFFIRM. 1 Our decision references Appellant's Appeal Brief ("Br.," filed Oct. 19, 2011), and the Examiner's Answer ("Ans.," mailed Nov. 26, 2012). 2 Appellant identifies the real party in interest as "Pitney Bowes, Inc." (Br. 2). Appeal2013-005174 Application 12/ 492, 199 CLAIMED INVENTION Appellant's invention "relates generally to postage printing systems, and more particularly to a stamp printing device that prints postage stamps on demand" (Spec. i-f 1 ). Claims 1 and 11 are the only independent claims on appeal. Claim 1, reproduced below (lettering in brackets added), is illustrative of the subject matter on appeal. 1. A method for a stamp printing device to print a postage stamp for a mail piece, the method comprising: [a] receiving, by a processing device, a code from an item to be included in the mail piece to obtain information about the item; [b] obtaining, by the processing device, stamp images that are related to the item based on the information obtained about the item from the code; [ c] displaying, by the processing device, the obtained stamp images related to the item on a display; [ d] receiving, by the processing device, an indication of a selected stamp image from the displayed stamp images; and [ e] printing, by the processing device, the postage stamp for the mail piece using a printer of the stamp printing device, having the selected image related to the item to be included in the mail piece. Br., Claims Appendix 1. REJECTIONS I. Claims 1, 3, 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Murata (US 5,586,238, iss. Dec. 17, 1996), Brasington (US 5,923,406, iss. July 13, 1999), and Aoki (US 7,566,007 B2, iss. July 28, 2009). 2 Appeal2013-005174 Application 12/ 492, 199 II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Murata, Brasington, Aoki, and Vaghi (US 6,571,223 Bl, iss. May 27, 2003). III. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Murata, Brasington, Aoki, and Burningham (US 7,127,434 B2, iss. Oct. 24, 2006). IV. Claims 6 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Murata, Brasington, Aoki, and Harding (US 2004/0079804 Al, pub. Apr. 29, 2004). V. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Murata, Brasington, Aoki, and Official Notice. VI. Claims 11, 13, and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Murata and Brasington. VII. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Murata, Brasington, and Vaghi. VIII. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Murata, Brasington, and Burningham. IX. Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Murata, Brasington, and Harding. (See Ans. 5-23). FINDINGS OF FACT We have determined that the findings of fact in the Discussion section below are supported at least by a preponderance of the evidence. 3 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal2013-005174 Application 12/ 492, 199 DISCUSSION We have reviewed Appellant's arguments in the Brief against the Examiner's Answer, and we are not persuaded of error. We adopt the Examiner's findings and rationale provided on pages 5-27 of the Answer as our own, and we note the following for emphasis. Rejection I Claims 1, 3, 5, 7, and 8 Appellant argues "[a ]t no point in Murata is there ever any disclosure, teaching, or suggestion of 'receiving, by a processing device, a code from an item to be included in the mail piece to obtain information about the item' as is recited in claim 1" (Br. 8). In particular, Appellant contends "[t]he portrait cards are not items to be included in the mail piece" (id.). In addition to limitation [a], Appellant also argues that Murata does not teach or suggest limitation [ d] of claim 1 (id.). Appellant's arguments are not persuasive of Examiner error because Appellant is attacking Murata individually when the rejection is predicated upon a combination of Murata, Brasington, and Aoki. One cannot show nonobviousness by attacking references individually where the rejection is based on combinations of references. Keller, 642 F .2d at 425--426; In re Merck & Co., 800 F.2d 1091, 1097-1098 (Fed. Cir. 1986). As the Examiner points out, "Murata was cited as teaching the creation of an image using a scanned code ... [and the] image was then able to be printed by a user upon the reception of selection" (Ans. 26-27). The Examiner relied upon the combination of the references for teaching various portions of each of the limitations in claim 1 (see id. at 12-15). For instance, the Examiner relied 4 Appeal2013-005174 Application 12/ 492, 199 on Aoki for teaching "receiving a product code from an item to be shipped" (id. at 14---a code from an item to be included in the mail piece). Similarly, Appellant's argument that Brasington fails to disclose "a code from an item to be included in the mail piece to obtain information about the item" (Br. 8-9) is not persuasive because the Examiner relies on Aoki for teaching this limitation. Also, Appellant's argument that "Aoki does not obtain any images related to the item on a display, nor does it receive an indication of a selected image" (id. at 10) is misplaced, because the Examiner rather relies on the combination of the references for teaching this limitation. Appellant further contends The combined system of Murata and Brasington will allow a user to customize a postage stamp with an image of the sender of the mail piece. Combining this with Aoki will simply add a label that includes a company logo related to the company which supplies the consumable supply item, a name portion indicating the type and application machine model of the consumable supply item, the product code of the consumable supply item, and a distribution barcode which indicates the product code. This, however, still does not result in that ability to customize a postage stamp by including an image related to the item that is included in the mail piece as in the present invention. Id. at 11. The language of claim 1, however, does not limit the type of information obtained about the item to form the basis of the image related to the item. Appellant merely points to examples in the Specification of the type of information that may be used to obtain an image related to the item (id. at 10). Thus, the language of the claim does not exclude "creating a 5 Appeal2013-005174 Application 12/ 492, 199 shipping label with an image related to the product being shipped, e.g. a company logo of the product" (see Ans. 25). Therefore, we find that the Examiner's interpretation of the claim language is reasonable in light of the Specification. In view of the foregoing, we sustain the Examiner's rejection of independent claim 1. We also sustain the rejection of claims 3, 5, 7, and 8, which depend from claim 1, and are not argued separately. Rejections II-V Claims 2, 4, 6, 9, 10 Appellant provides separate headings arguing the patentability of claims 2, 4, 6, 9, and 10 (Br. 11-12), but relies on arguments presented with respect to claim 1. As such, we sustain the rejection of these claims for the same reasons. Rejection VI Claims 11, 13, and 15 Although Appellant separately argues the patentability of claims 11, 13, and 15, these arguments are not substantially different from those presented with respect to claim 1 (see Br. 12-16). Therefore, we sustain the rejection of these claims based on the reasoning provided with respect to claim 1. Rejections VII-IX Claims 12, 14, and 16 Appellant provides separate headings arguing the patentability of claims 12, 14, and 16 (see Br. 16-17), but relies on arguments presented with respect to claim 11. As such, we sustain the rejection of these claims for the same reasons. 6 Appeal2013-005174 Application 12/ 492, 199 DECISION The Examiner's decision to reject claims 1-16 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)(l )(iv). AFFIRMED Ssc 7 Copy with citationCopy as parenthetical citation