Ex Parte Bresnan et al

Board of Patent Appeals and Interferences

Jun 19, 2012

10737244 (B.P.A.I. Jun. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK A. BRESNAN, BERNARD E.GRACY, JR.,
and JOANN MARTIN
____________________

Appeal 2010-002155
Application 10/737,244
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 2010-002155
Application 10/737,244

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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 2-5, 8-16, 19-33, 39-43, 46-54, and 57-71. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim a system and method for optimizing efficiency in
mail and message production equipment and systems. (Specification 1:5-6).
Claim 3, reproduced below, is representative of the subject matter on
appeal.

3. A message processing system for preparing a plurality of messages
to be distributed to recipients, the system comprising:
a consolidator module receiving data corresponding to the plurality of
messages,
the consolidator module programmed to consolidate multiple of the
plurality of messages into a single message package, the consolidator
module consolidating the messages based on first criteria;
a distributor module coupled to the consolidator module and receiving
a data stream containing consolidated message packages, the
distributor module programmed
to determine optimal routing for production of message packages
based on second criteria;
wherein the recipients are customers and the consolidator module and
the distributor are coupled to a customer relationship management
system, the customer relationship management system determining at
least some of the first and second criteria;
wherein the first and second criteria include marketing business rules
are determined by the customer relationship management system; and
Appeal 2010-002155
Application 10/737,244

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wherein the marketing rules include at least one of a rule that
messages including particular marketing content may be consolidated
and a rule that messages including particular marketing content may
not be consolidated.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
The following rejections are before us for review.
Claims 2-5, 12-16, 19, 21-24, 31-33, 39-43, 50-54, 57, 59-62, 69-71
are rejected under 35 U.S.C. 103(a) as being unpatentable over Schumacher.
Claims 8-11, 20, 46-49 and 58 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Schumacher in view of U.S. Pub No. 2004/0230523
to Johnson.
Claims 28, 30, 66 and 68 are rejected under 35 U.S.C. 1 03(a) as
being unpatentable over Schumacher in view of Stepno in further view of
Johnson.

Schumacher US 5,058,030 Oct. 15, 1991
Stepno US 2002/0133472 A1 Sep. 19, 2002
Johnson US 2004/0230523 A1 Nov. 18, 2004

ISSUE
The issue of obviousness turns on whether a person with ordinary skill
in the art would understand that Schumacher’s disclosure of consolidating
based on the kind of address would have to take into account the content of
the message to insure that the kind of address, rural RFD versus a
metropolitan address, was being matched with corresponding content.

Appeal 2010-002155
Application 10/737,244

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FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. We adopt the Examiner’s findings as set forth on the Answer
on pages 3-4.
2. Schumacher discloses consolidation messages from a
publisher for distribution based on content in that sending such
messages can be based on “for what kind of addressees are the ads
intended….” (Col. 4, ll. 26-27).
3. Additional findings of fact may appear in the Analysis that
follows.

ANALYSIS
We affirm the rejections of the claims under 35 U.S.C. § 103(a).
Independent claims 3, 12, 41 and 50 each have been amended
after-final to include features of cancelled claims 7, 18, 45, and 56, all of
which were previously rejected under §103 obviousness based on
Schumacher alone.
The amended language is: wherein the marketing rules include at
least one of a rule that messages including particular marketing content may
be consolidated and a rule that messages including particular marketing
content may not be consolidated.
The Examiner found with regard to this limitation that
…it would have been obvious at the time of the
invention that Schumacher would allow the option
of certain market content not to be consolidated.
(Answer 4).
Appellants however disagree. (Appeal Br. 9).
Appeal 2010-002155
Application 10/737,244

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We agree with the Examiner’s ultimate finding that it would have
been obvious at the time of the invention that a person with ordinary skill in
the art would know that in Schumacher, certain messages including
particular marketing content may be consolidated with some messages and
not with others, based on message content.
Specifically, we find that Schumacher discloses distribution based on
content in that sending such messages can be based on “for what kind of
addressees are the ads intended….” (FF 2). In our view, consolidating based
on the “kind” of address would have to take into account the content of the
message relative to the demographic of the addressee. This would insure that
the characteristics of the recipients, rural RFD versus a metropolitan address,
were being matched to the content being mailed. See KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). (In making the obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ.”).
We also affirm the rejection of the dependent claims since Appellant
has not challenged such with any reasonable specificity (see In re Nielson,
816 F.2d 1567, 1572, (Fed. Cir. 1987)).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 2 - 5, 8-16,
19-33, 39-43, 46-54, and 57–71 under 35 U.S.C. § 103(a).
Appeal 2010-002155
Application 10/737,244

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DECISION
The decision of the Examiner to reject claims 2-5, 8-16, 19-33, 39 -43,
46-54, and 57–71 is AFFIRMED.

AFFIRMED

MP