Ex Parte Sievel

Patent Trial and Appeal Board

Dec 29, 2015

12492199 (P.T.A.B. Dec. 29, 2015)

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