Ex Parte Willoughby et al

Board of Patent Appeals and Interferences

Aug 26, 2009

10144870 (B.P.A.I. Aug. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte STUART WILLOUGHBY, 8
RONALD F. SMITH, DANIEL LORD, CHARLES OUTMAN, 9
JOSEPH A. OTTEN, JOHN GULLO, 10
and 11
ANNA VALE 12
____________________ 13
14
Appeal 2009-003078 15
Application 10/144,870 16
Technology Center 3600 17
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Decided: August 26, 2009 20
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Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU 24
R. MOHANTY, Administrative Patent Judges. 25
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CRAWFORD, Administrative Patent Judge. 27
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29
DECISION ON APPEAL30
Appeal 2009-003078
Application 10/144,870

2
STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1 to 7. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Appellants invented a method for providing a label to a customer or 4
user, in which the label includes address information, postage indicia, and a 5
delivery confirmation barcode (Spec. 1). The Appellants appeared for oral 6
hearing on August 13, 2009. 7
The prior art relied upon by the Examiner in rejecting the claims on 8
appeal is: 9
Petkovsek US 2002/0167162 A1 Nov. 14, 2002 10
Shah US 2003/0078893 A1 Apr. 24, 2003 11
Claim 1 under appeal reads as follows: 12
1. A method comprising: 13
receiving a request for a label, wherein the 14
request includes shipping information and a 15
postage rate; 16
forming an encrypted transmission to a 17
postage vendor including the postage rate and the 18
shipping information for debiting a postage cost 19
from a prepaid account determined from the 20
postage rate and the shipping information; 21
receiving an encrypted postage indicia from 22
the postage vendor; 23
forming delivery tracking indicia for the 24
label; and 25
addressing the label including the postage 26
indicia, the shipping information, and the delivery 27
tracking indicia. 28
The Examiner rejected claims 1 to 7 under 35 U.S.C. § 103(a) as 29
being unpatentable over Shah in view of Petkovsek. 30
31
Appeal 2009-003078
Application 10/144,870

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ISSUES 1
Have Appellants shown that the Examiner erred in rejecting the 2
claims because Shah does not disclose the basic components, namely a three 3
party configuration, utilized in the claimed method? 4
Have Appellants shown that the Examiner erred in rejecting the 5
claims because Shah does not disclose receiving a request that includes 6
shipping information and a postage rate? 7
Have Appellants shown that the Examiner erred in rejecting the 8
claims because Shah does not disclose debiting a prepaid customer account? 9
10
FINDINGS OF FACT 11
Shah discloses a method which includes the step of receiving, by a 12
remote postage printing device, a request for a postage label from a user 13
112/212/312 [0042]. The remote postage printing device receives and 14
processes the user’s request and transmits the request to a secure metering 15
device 126/226/336 (Fig. 6). The request may include specific postage 16
amounts [0050, 0070; Fig. 6]. This transmission may be an encrypted 17
transmission [0039]. The secured metering device 126/226/326 sends 18
encrypted postage indicia to the remote postage printing device 112/212/312 19
[0043]. The remote postage printing device then prepares the postage label 20
[0037]. The funds required for the requested postage are debited by the 21
secured metering device from the user’s bank account [0071]. 22
The Appellants have not challenged the Examiner’s finding that it is 23
old and well known in the art to debit a postage user’s prepaid account. 24
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Appeal 2009-003078
Application 10/144,870

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PRINCIPLES OF LAW 1
An invention is not patentable under 35 U.S.C. § 103 if it is obvious. 2
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007). The facts 3
underlying an obviousness inquiry include: Under § 103, the scope and 4
content of the prior art are to be determined; differences between the prior 5
art and the claims at issue are to be ascertained; and the level of ordinary 6
skill in the pertinent art resolved. Against this background the obviousness 7
or nonobviousness of the subject matter is determined. Such secondary 8
considerations as commercial success, long felt but unsolved needs, failure 9
of others, etc., might be utilized to give light to the circumstances 10
surrounding the origin of the subject matter sought to be patented. Graham 11
v. John Deere Co., 383 U.S. 1, 17-18 (1966). In addressing the findings of 12
fact, “[t]he combination of familiar elements according to known methods is 13
likely to be obvious when it does no more than yield predictable results.” 14
KSR at 416. As explained in KSR: 15
If a person of ordinary skill can implement a 16
predictable variation, § 103 likely bars its 17
patentability. For the same reason, if a technique 18
has been used to improve one device, and a person 19
of ordinary skill in the art would recognize that it 20
would improve similar devices in the same way, 21
using the technique is obvious unless its actual 22
application is beyond his or her skill. Sakraida 23
and Anderson's-Black Rock are illustrative - a court 24
must ask whether the improvement is more than 25
the predictable use of prior art elements according 26
to their established functions. 27
KSR at 417. 28
A prior art reference is analyzed from the vantage point of all that it 29
teaches one of ordinary skill in the art. In re Lemelson, 397 F.2d 1006, 1009 30
Appeal 2009-003078
Application 10/144,870

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(CCPA 1968) (“The use of patents as references is not limited to what the 1
patentees describe as their own inventions or to the problems with which 2
they are concerned. They are part of the literature of the art, relevant for all 3
they contain.”). Furthermore, “[a] person of ordinary skill is also a person of 4
ordinary creativity, not an automaton.” KSR at 421. The obviousness 5
analysis need not seek out precise teachings directed to the specific subject 6
matter of the challenged claim, for a court can take account of the inferences 7
and creative steps that a person of ordinary skill in the art would employ. Id. 8
at 418. 9
On appeal, Applicants bear the burden of showing that the Examiner 10
has not established a legally sufficient basis for combining the teachings of 11
the prior art. Applicants may sustain their burden by showing that where the 12
Examiner relies on a combination of disclosures, the Examiner failed to 13
provide sufficient evidence to show that one having ordinary skill in the art 14
would have done what Applicants did. United States v. Adams, 383 U.S. 39, 15
52 (1966). 16
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ANALYSIS 18
We are not persuaded of error on the part of the Examiner by 19
Appellants’ argument that the Examiner erred in rejecting the claims 20
because Shah does not disclose the basic components, namely a three party 21
configuration, utilized in the claimed method because claim 1 does not recite 22
a three component system. Rather, claim 1, and claims 2 to 7 which are 23
dependent thereon, recite a series of steps that we have found are disclosed 24
in Shah. 25
Appeal 2009-003078
Application 10/144,870

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We are not persuaded of error on the part of the Examiner by 1
Appellant’s argument that the Examiner erred in rejecting the claims 2
because Shah does not disclose receiving a request that includes shipping 3
information and a postage rate. As we found above, Shah discloses that the 4
secured metering device receives a request from the remote postal printing 5
device which passes on the user’s request for postage. As the request 6
received from the remote postage printing device includes a postal amount, 7
postal value, or postal rate, and since this request is a processed user request, 8
it is our view that a person of ordinary skill in the art would recognize that 9
the postal rate was received from the user. 10
We are not persuaded of error on the part of the Examiner by 11
Appellants’ argument that the Examiner erred in rejecting the claims 12
because Shah does not disclose debiting a prepaid customer account. Shah 13
does disclose that a user’s account is debited to pay the postage. The 14
Examiner found that it is old and well known to use a prepaid account to pay 15
postage. The Appellants have not challenged this finding. As such, we 16
agree with the Examiner that it would have been obvious to use a prepaid 17
account to pay the postage in Shah. 18
In view of the foregoing, we will sustain the Examiner’s rejection of 19
claim 1. We will also sustain the rejection as it is directed to claims 2 to 7 20
because the Appellants have not argued the separate patentability of these 21
claims. 22
23
CONCLUSION OF LAW 24
On the record before us, Appellants have not shown that the Examiner 25
erred in rejecting claims 1 to 7. 26
Appeal 2009-003078
Application 10/144,870

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DECISION 1
The decision of the Examiner is affirmed. 2
No time period for taking any subsequent action in connection with 3
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 4
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AFFIRMED 6
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hh 10
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Ivan Mlachak 12
Lewis & Roca, LLP 13
40 N. Central Ave. 14
Phoenix, AZ 85004-4429 15
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