Ex Parte 6,690,773 et al

Patent Trials and Appeals Board

Jul 31, 2014

95001302 - (D) (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,302 01/22/2010 6,690,773 ZUMBOX-003 1661
919 7590 07/31/2014
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT.
37 EXECUTIVE DRIVE
MSC 01-152
DANBURY, CT 06810
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/31/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ZUMBOX, INC.
Requester

v.

PITNEY BOWES, INC.
Patent Owner
____________

Appeal 2014-006691
Reexamination Control 95/001,302
Patent 6,690,773 B1
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, MAHSHID D. SAADAT, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION
Examiner’s Determination under 37 C.F.R. § 41.77(d)
37 C.F.R. § 41.77(f)

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In an earlier Decision, Appeal No. 2013-000144, mailed May 17,
2013 (“Decision”), the Board reversed the Examiner’s decision favorable to
the patentability of claims 1-8 of U.S. Patent No. 6,690,773 B1 (the “’773
patent”). Decision 9. In particular, we reversed the Examiner’s decision not
to reject claims 1-8 as anticipated by Mulligan. Our reversal of the
Examiner’s decision in connection with the prior art rejections of claims 1-8
was designated new grounds of rejection pursuant to 37 C.F.R. § 41.77(b).
Patent Owner elected to reopen prosecution, proposed new claims 15-
20, and submitted claim amendments affecting claims 1-8.
1
Requester filed
comments pursuant to 37 C.F.R. § 41.77(c) in response to Patent Owner’s
initial request to reopen prosecution.
2
In accordance with 37 C.F.R.
§ 41.77(d), the Examiner determines that “the response of Patent Owner . . .
overcomes the new grounds of rejection . . . as to claims 3 and 4 and new
claims 15 and 18, as being anticipated by Mulligan under 35 U.S.C.
102(e).”
3
The Examiner also finds that “the response of Patent owner . . .
does not overcome the new grounds of rejection as to claims 1, 2, 5-8, 16,
17, 19, and 20,
4
as being anticipated by Mulligan under 35 U.S.C. 102(e)”
(Ex’r Determ. 10). Hence, the Examiner rejects claims 16, 17, 19, and 20 as

1
“Patent Owner’s Response Requesting Reopening of Prosecution in Inter
Partes Reexamination,” dated June 17, 2013 (“PO Request” or “PO Req.”).
2
See Requester’s “Comments, Per 37 CFR § 41.77(c) of Requester,
Zumbox, Inc.,” filed July 15, 2013 (“3PR Resp.”).
3
See “Determination under 37 CFR § 41.77(d)” mailed May 1, 2013
(“Examiner’s Determination” or “Ex’r Determ.”), p. 13.
4
New claims 15-20 were presented by Patent Owner in the PO Request and
were therefore not subject to the new grounds of rejection as enumerated in
the Decision. We assume the Examiner rejects claims 16, 17, 19, and 20 as
being anticipated by Mulligan in the Examiner’s Determination.
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anticipated by Mulligan under 35 U.S.C. 102(e) and maintains the rejection
of claims 1, 2, and 5-8 under 35 U.S.C. § 102(e) as anticipated by Mulligan
and does not reject claims 15 and 18 or maintain the rejection of claims 3
and 4 under 35 U.S.C. § 102(e) as anticipated by Mulligan.
Pursuant to 37 C.F.R. § 41.77(e), Patent Owner and Requester each
submitted a response to the Examiner’s Determination.
5
Pursuant to 37
C.F.R. § 41.77(f), the proceeding has been returned to the Board so that we
may reconsider the matter and issue a new decision.
Claims 1 and 2, as amended, recite a data center “for providing access
for the plurality of messaging systems to the at least one of the recipient
preference profiles associated with each respective recipient.” We agree
with the Examiner that Mulligan discloses this feature for at least the reasons
set forth by the Examiner and Requester (Ex’r Determ. 11, 3PR Resp. to
Exr’s Determination 1-2).
Patent Owner argues that “the Mulligan . . . service provider 116 does
not provide any way for the signal origination nodes to know anything about
the recipient preference profiles” (PO Resp. to Exr’s Determination 11-12).
Hence, Patent Owner argues that Mulligan fails to disclose a data center for
providing some way for messaging systems to know something about the
recipient preference profiles. Even if Patent Owner is correct in this
assertion, we note that claims 1 and 2, as amended, do not recite this feature.

5
“Comments, Per 37 CFR § 41.77(e) of Requester, Zumbox, Inc.,” filed
January 11, 2014 (“3PR Resp. to Exr’s Determination”) and “Patent
Owner’s Comments Under 41.77(e) on the Examiner’s Determination After
Reopening of Prosecution in Inter Partes Reexamination,” filed January 13,
2014 (“PO Resp. to Exr’s Determination”).
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Patent Owner also argues that Mulligan discloses a messaging system
“using” a profile but fails to disclose a messaging system being provided
“access” to a profile. Patent Owner does not point out a specialized
definition of the term “access” in the Specification. We construe the term
“access” using a plain and customary definition of having the “liberty to . . .
use” (see, e.g., Webster’s New Universal Unabridged Dictionary, 1983, p.
11). It is undisputed that Mulligan discloses a messaging system “using” a
profile; hence, the messaging system of Mulligan has the “liberty” to use the
profile since the messaging system of Mulligan, in fact, “uses” the profile.
We affirm the Examiner’s decision to maintain the rejection of claims
1 and 2 as anticipated by Mulligan.
Claim 3, as amended, recites that “the plurality of messaging systems
each” includes a control system “for accessing an intended recipient . . .
profile,” for “using the intended recipient . . . profile to process the
message,” and “for not dispatching messages to the intended recipient while
the message hold instruction is active.” Claim 4 depends from claim 3.
New claim 15 recites a similar feature. The Examiner finds that Mulligan
fails to disclose this feature (Ex’r Determ. 12-13).
As previously discussed, Mulligan discloses signal origination nodes
102, 104, 106, and 108 that feed a signal to service provider 116 that
processes a message “for transmission to subscriber database analyzer 204.”
(Decision 5, citing Mulligan, 4:45-50, 5:35-39). Hence, Mulligan discloses
“messaging systems” (i.e., signal origination nodes 102, 104, 106, and 108)
and a service provider 116 that processes the message. We agree with the
Examiner that Mulligan does not disclose also that each of the “messaging
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systems” (i.e., each of signal origination nodes 102, 104, 106, and 108 of
Mulligan) includes a control system that processes the message. Instead,
Mulligan appears to disclose that service provider 116 (that is not disclosed
as being included in any of the signal origination nodes) processes the
message.
Patent Owner and Requester concur with the Examiner (3PR Resp. to
Exr’s Determination 3-4, PO Resp. to Exr’s Determination 13-14). We
affirm the Examiner’s decision not to maintain the rejection of claims 3 and
4 and the Examiner’s decision not to reject new claim 15 as anticipated by
Mulligan.
Claim 5, as amended, recites a method comprising “providing, to a
messaging system, an intended . . . profile corresponding to an intended
recipient of a message for use by the messaging system in processing the
message.” Claims 6 and 7 contain similar amendments. Claim 8 depends
from claim 7. The Examiner finds that Mulligan discloses this feature (Ex’r.
Determ. 13-14). Requester concurs with the Examiner (3PR Resp. to Exr’s
Determination at 4).
Patent Owner argues that Mulligan fails to disclose “that [the
messaging systems] are affirmatively provided with, or are even aware of,
subscriber profiles” (PO Resp. to Exr’s Determination at 16). However, we
agree with the Examiner and Requester for at least the reasons set forth by
the Examiner. For example, Mulligan discloses “signal origination nodes
102, 104, 106, and 108” (see, e.g., col. 4, ll. 37-38, i.e., “messaging
systems”) in communication with “service provider 116” (see, e.g., col. 4, l.
50) that “provides” “data associated with the recipient’s address” (see, e.g.,
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col. 6, ll. 14-15, i.e., “profile corresponding to an intended recipient of a
message”) to the signal origination nodes for use in forwarding the message
from the signal origination nodes. As the Examiner explains (Exr’s
Determination 13-14), the service provider provides the “profile” (or data
associated with the recipient) to the messaging system to send the message
as desired. Otherwise, the recipient’s data would not be provided to the
messaging system and the message would not be successfully transmitted as
desired (information regarding the recipient’s data not being properly
“provided” in order to successfully transmit the message).
We affirm the Examiner’s decision to maintain the rejection of claims
5-8 as anticipated by Mulligan.
New claim 18 recites downloading a database of recipient profiles to
the plurality of messaging systems at periodic intervals. The Examiner finds
that Mulligan fails to disclose this feature (Exr’s Determination 15). We
agree with the Examiner for at least the reasons set forth by the Examiner.
Id. Requester disagrees with the Examiner because, according to Requester,
claim 18 is not entitled to patentable weight because of the recitation of the
term “whereby” (3PR Resp. to Exr’s Determination at 5). Even if Requester
is correct that a claim reciting the term “whereby” should be given no
patentable weight, we note that claim 18 recites a system wherein providing
access for the plurality of messaging systems to the at least one of the
recipient preference profiles associated with each respective recipient
includes downloading a database of recipient profiles to the plurality of
messaging systems at periodic intervals. Claim 18 does not appear to recite
“whereby.” Therefore, we are not persuaded by Requester’s argument.
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We affirm the Examiner’s decision not to reject new claim 18 as
anticipated by Mulligan.
Patent Owner does not provide additional arguments in support of
new claims 16, 17, 19, and 20.

CONCLUSION
We affirm the Examiner’s decision to maintain the rejection of claims
1, 2, and 5-8 under 35 U.S.C. § 102(e) as anticipated by Mulligan and the
Examiner’s decision not to maintain the rejection of claims 3 and 4 under 35
U.S.C. § 102(e) as anticipated by Mulligan. We also affirm the Examiner’s
decision to reject new claims 16, 17, 19, and 20 under 35 U.S.C. § 102(e) as
anticipated by Mulligan and the Examiner’s decision not to reject new
claims 15 and 18 under 35 U.S.C. § 102(e) as anticipated by Mulligan.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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ack

PATENT OWNER:

Pitney Bowes Inc.
Intellectual Property & Procurement Law Dept.
37 Executive Drive
MSC 01-152
Danbury, CT 06810

THIRD PARTY REQUESTER:

Law Office of David H. Judson
15950 Dallas Parkway
Suite 225
Dallas, TX 75248