Ex Parte Bresnan et al

Board of Patent Appeals and Interferences

Jun 28, 2012

10736998 (B.P.A.I. Jun. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

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

Appeal 2010-002117
Application 10/736,998
Technology Center 3600
____________________

Before: HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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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 1-3, 6-25, 27-32, 35-53 and 55-57. 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 by consolidation of messages
(Specification 1:5-6).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A message processing system for preparing a plurality of messages
to be distributed to customers, 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 customer relationship management system coupled to the
consolidator module,
the customer relationship management system determining at least
some of the first criteria;
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wherein the first criteria include marketing business rules determined
by the customer relationship management system; and
wherein the marketing rules include a rule whether messages that
include particular marketing content may be consolidated.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Schumacher US 5,058,030 Oct. 15, 1991
Stepno US 2002/0133472 A1 Sep. 19, 2002
Johnson US 2004/0230523 A1 Nov. 18, 2004
Savage US 7,236, 950 Jun. 26, 2007

The following rejections are before us for review.
The Examiner rejected claims 1-3, 6-25, 27-32, 35-53 and 55-57
under 35 U.S.C. § 103(a) as being unpatentable over Schumacher and
Savage.
The Examiner rejected claims 52, 53, 55-57 under 35 U.S.C. § 35
U.S.C. § 101.
The Examiner rejected claim 30 under 35 U.S.C. 112, Second
Paragraph.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:

1. Savage discloses “the bill aggregation system 142 includes the bill
charges and telecommunication charges, calculates a credit card bill
and an aggregated bill.” Col. 25, ll. 50-52.
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2. Savage discloses the system “…verifies supplier name/ID, and
matches the supplier's customer account number to the financial
institution's customer number, … [i]n addition, the bill calculation
system 146 determines format rules, for example, by jurisdiction, and
verifies cycle-time ID and account, location and/or site.” Col. 23, ll.
35-43.
3. Savage further discloses that: At S161, the retail company bill
aggregator 124 receives the flat file, verifies the formatting of line
item, returns invalid items to the vendor database 199, performs a
"sanity check" on the data and returns items outside of boundaries,
and sends the file to the order entry system 116.” Col.26, ll. 30-34.
4. Additional findings of fact may appear in the Analysis that follows.

ANALYSIS
We affirm the rejections of claims 1-3, 6-25, 27-32, 35-53 and 55-57
under 35 U.S.C. § 35 U.S.C. § 101, 35 U.S.C. § 103(a), and 35 U.S.C. 112,
Second Paragraph.
Rejection under 35 U.S.C. § 101
We are not persuaded by Appellants’ argument that independent claim
52 is patent eligible because by the claim terms required that a “‘plurality of
messages’ are transformed into ‘single message’”. (Appeal Br. 7) We find
that the consolidation of data does not amount to transforming a particular
article into a different state or thing. This is because first, data is not an
article of manufacture, it is an abstraction. Second, in this case, the
information in the data does not change because the point here is to
accurately convey the information to the end user consumer with the same
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content that was issued by the sender. As this is a method claim, the data is
not restricted to that in a machine, but extends to manually created and
copied messages, which are by nature mere abstractions.
We therefore affirm the rejection under 35 U.S.C. § 101.
Rejection under 35 U.S.C. 112, Second Paragraph
We affirm the rejection of claim 30 because the record before us does
not include the required correction which would have remedied the error.
(Appeal Br. 7).
Rejections made under 35 U.S.C. § 103(a).
Independent claims 1 and 30.
Appellants argue that “[t]he claim language is directed to "rules"
about whether "particular marketing content may be consolidated." Such
rules may dictate that certain content may or may not be consolidated.
Savage teaches nothing about such rules….” (Appeal Br. 8)
We disagree with Appellants. Preliminarily, we construe the claim
term “messages” to be any information which can be consolidated into a
single document or a “document package comprised of multiple documents
intended for the same address in the form of a mailpiece (householding).”
(Specification 5:18-6:2). As such, we find that the billing information in
Savage is content which is consolidated based the information inherent to
the each bill, namely, the recipient’s identity. Identifying information is
important, if not key to any marketing effort, and thus we find that customer
identity constitutes marketing content.
With this understanding, we find Savage meets the claim requirement
of marketing rules include a rule whether messages that include particular
marketing content may be consolidated because Savage explicitly discloses
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using rules based on: customer identification, account, location and/or site to
consolidate/aggregate bills from plural vendors. Savage thus uses
information related to marketing to consolidate. (FF 1-4). We find that
Savage’s customer identification information meets the claim’s required
marketing content because according to the claims, some type of content in
the message must cause consolidation which is met by the identification
information of Savage.
We also affirm the rejections of dependent claims 2-3, 9-17, 31, 32,
and 38-45 since Appellant has not challenged such with any reasonable
specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
Claims 18-20, 22, 24-26, 28, 46-48, 50, 52 -54 and 56
Representative claim 52 recites, in pertinent part, “wherein the step of
consolidating includes determining whether a customer preference
authorizes consolidating for a particular message, and whereby
consolidating is disallowed if there is no authorization.”
Concerning this limitation, the Examiner found that “… it would have
been obvious at the time of the invention that Schumacher's invention would
check for customer authorization of consolidation and not perform
consolidation unless an authorization is found.” (Answer 22).
Appellants argue that “the Examiner has still failed to cite a reference
that supports using a ‘customer preference’ to authorize consolidation.”
(Appeal Br. 9).
We agree with the Examiner that authorization to consolidate is an
obvious consideration before taking action. In the case of Stepno for
example, we find that Stepno discloses at ¶ [0010] that the action of
consolidation is need based because consumer can become “mail fatigued”.
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We find that a need expressed by a consumer implicitly includes
authorization to remedy the problem.
Claims 21, 23, 27, 29, 49, 51, 55 and 57
Representative claim 21 recites in pertinent part, if the customer
preference does not authorize consolidation, the consolidator generates
content to be included in the message that describes benefits of
consolidation.
Concerning this limitation, we find that a person with ordinary skill in
the art would understand that given the age-old art of persuasion, the
practice of petitioning a refuser of an item or service to reconsider his/her a
refusal for reasons given in the petition is a matter of common sense. “In
rejecting rigid application of the ‘teaching, suggestion, or motivation’ test
for obviousness, the Supreme Court observed that common sense can be a
source of reasons to combine or modify prior art references to achieve the
patented invention.” Perfect Web Technologies, Inc. v. INFOUSA, Inc. 587
F.3d 1324, 1329 (Fed. Cir. 2009).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-3, 6-25,
27-32, 35-53 and 55-57 under 35 U.S.C. § 103(a).
We conclude the Examiner did not err in rejecting claims 52, 53, 55-
57 under 35 U.S.C. § 35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claim 30 under 35
U.S.C. 112, Second Paragraph.
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DECISION
The decision of the Examiner to reject claims 1-3, 6-25, 27-32, 35-53
and 55-57 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)(1)(iv).

AFFIRMED.

MP