Ex Parte Bailey et al

Board of Patent Appeals and Interferences

Jun 19, 2012

11123575 (B.P.A.I. Jun. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM F. BAILEY and MICHAEL J.
SHUKAITIS
____________________

Appeal 2010-008522
Application 11/123,575
Technology Center 3600
____________________

Before: ANTON W. FETTING, JOSEPH A.FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008522
Application 11/123,575

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim a mail receipt terminal and methods for providing
proof of deposit of a mail piece by a sender with the postal authority
(Specification 1, [002]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
A mail piece receipt terminal for accepting a mail piece having
payment
information applied thereto, the mail receipt terminal
comprising:
a controller module including a control system and a clock
module;
an input scanner module in operative communication with the
controller module for: (i) receiving the mail piece, and (ii) scanning
the payment information to determine its veracity;
a receipt module in operative communication with the controller
module for providing receipt data corresponding to the mail piece; and
an interface in operative communication with the controller module
for providing the receipt data to a data center.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Appeal 2010-008522
Application 11/123,575

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Pintsov US 5,586,036 Dec. 17, 1996

The following rejections are before us for review:
The Examiner rejected claims 1, 2, 4-11 and 13-18 under 35 U.S.C.
§ 102(b) over Pintsov.
The Examiner rejected claims 3 and 12 under 35 U.S.C. § 103(a) over
Pintsov.
ISSUE
The issues turns on whether Pintsov’s disclosed use of printed indicia
representative of data ultimately used to pay an amount goes to the content
of the indicia not affecting a result different from what is required in the
claims because the address indicia in Pintsov is also used to make a veracity
determination to release a private key.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Pintsov discloses
[t]he scanned document includes among other things the
scanning of the various barcoded information imprinted on the
mailpiece. The scanning of the MID provides the information
which is sent to the local computer 406 to retrieve from the
public key database the public key associated with the mailer of
the mailpiece being scanned.
(Col.8, ll. 45-50).
2. Pintsov further discloses:
Appeal 2010-008522
Application 11/123,575

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The public key so recovered is used to decrypt the
encryption of the MID, MSD, DAD, and DATE
data, using the mailers private key SKM. This
allows the computer to generate the necessary data
for billing which may either be retained at the local
computer 406 or communicated to a central billing
computer 408 where billing records and billing
database may be maintained.
(Col.8, ll. 52-58).
3. The Specification describes that the recipient address 22, among
other items, e.g., “the date 34, the meter serial number 32 and the postage
amount 38, are utilized by the postage metering system 110 to generate the
verification data 39.” (Specification 6: [0021]).
Additional findings of fact may appear in the Analysis that follows.
ANALYSIS
Appellants argue that “The Examiner mistakenly equates a mailer's
identification data, destination data and mailer's required service data with
payment information. On the contrary, Pintsov '036 uses such data to
generate billing data (to invoice the mailer), and not payment information.”
(Appeal Br. 6).
We disagree with Appellants because we construe the term “payment
information” to be information that is used to verify the veracity of the
postal indicia as is defined in the claims. The Specification describes that
the recipient address 22, among other items, is utilized by the postage
metering system 110 to generate the verification data. (FF 3). Thus, we
construe “payment information” to include recipient address information.
We thus find that because Pintsov discloses using inter alia, address
indicia to make a veracity determination in order to release the private key
(FF 1, 2), the claim requirement is met. Whether the involved printed
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Application 11/123,575

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indicia in Pintsov is representative of data ultimately used to pay an amount
in the future, or is representative of a paid-in-full amount, goes to the content
of the indicia which does not differ from the end result required by the
claims, which is using the indicia to make a veracity determination.
Concerning Appellants’ argument that the Examiner’s laptop official
notice is not properly combined with Pintsov '036 to render the claims
obvious (Appeal Br. 8), we find however that the Examiner has provided an
sufficient rationale to combine as set forth on pages 7-8 of the Answer.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 2, 4-11
and 13-18 under 35 U.S.C. § 102(b).
We conclude the Examiner did not in rejecting claims 3 and 12 under
35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 4-11 and 13-18 under
35 U.S.C. § 102(b) AFFIRMED.
The decision of the Examiner to reject claims 3 and 12 under 35
U.S.C. § 103(a) is AFFIRMED.

AFFIRMED

MP