Ex Parte Fry et al

Board of Patent Appeals and Interferences

Oct 30, 2009

10935319 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte Rick A. Fry and Reed Durand
____________________

Appeal 2009-004603
Application 10/935,319
Technology Center 3600
____________________

Decided: November 2, 2009
____________________

Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Lockheed
Martin Corp. (Lockheed) under 35 U.S.C. § 134(a) from a final rejection of
claims 1-25, the only claims on appeal. Lockheed requests reversal of the
Examiner’s rejection of claims 1-25. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part and enter a new ground of rejection.

References Relied on by the Examiner
Yamashita 6,107,589 Aug. 22, 2000

The Invention
Lockheed’s invention is related to the field of mail sorting.
Specifically, Lockheed claims a method and device for sorting mail having a
greater number of sort locations than physical bin locations. (Spec. ¶ [0018-
20]).1 There are three independent claims on appeal, claims 1, 13, and 19.
Claim 1 is illustrative of the claimed invention and is reproduced below:
1. A sorting device, comprising:
at least one reading device for reading delivery information of
objects;
a conveying system which transports the objects;
at least one feeder for inducting the objects onto the conveying
system;
a plurality of physical bin locations adjacent the conveying
system for storage of the objects injected from the conveying system;
and
a controller assigning and reassigning sort locations, as
required, to the plurality of physical bin locations during a sorting
operation for each object of the objects based on a predetermined

1 References to the specification are to U.S. Publication 2006/0070929.
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criteria, wherein a number of sort locations is greater than the physical
bin locations.

(App. Br. 25, Claims App’x.).

The Rejections on Appeal
The Examiner provided the following grounds of rejection for the
claims on appeal.
The Examiner rejected claims 1-25 under 35 U.S.C. § 102(b) as
anticipated by Yamashita.
Lockheed contends that Yamashita fails to anticipate claims 1-25 by
failing to disclose a greater number of sort locations than physical bin
locations. (App. Br. 5-9). Lockheed also provides additional separate
arguments for the patentability of claims 2, 6, 9-11, 13-14, 15-17, 21, and
22. (Id. at 9-23).
B. ISSUES
1. Has Lockheed demonstrated that the Examiner incorrectly determined
that Yamashita teaches a greater number of sort locations than there are
physical bin locations?
2. Has Lockheed demonstrated that the Examiner incorrectly determined
that Yamashita teaches swapping trays to redefine an existing physical bin
location as a buffer bin?
3. Would one of ordinary skill in the art have had a reason to swap a full
tray for an empty tray, empty the full tray and designate it as a new overflow
tray?

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C. FINDINGS OF FACT
Lockheed’s Specification

1. Lockheed’s specification does not provide a special definition for the
term “sorting location.”
2. One of ordinary skill in the mail sorting art would understand that
Lockheed’s controller, which assigns and reassigns “sorting locations,” as
encompassing a controller that designates a particular place for the receipt of
sorted mail.
3. Lockheed’s specification does not provide a special definition for the
term “physical bin location” but does state that each bin location has a tray
or container that can be associated with the bin location for storage of mail.
(Spec., 2:15-17).
4. One of ordinary skill in the mail sorting art would understand that a
physical bin location identifies a particular spot where a mail may be placed
during sorting and that a tray or container is usually associated with such a
location.

Yamashita
5. Yamashita discloses a sorting device for sorting mail in the order of a
delivery route. (Yamashita 1:62-67).
6. Yamashita provides a mail sorting example for a delivery route using
a three digit destination code ranging from 0-9 for each digit, i.e., 000 to
999. (Id. at 9:1-11 and 26-36).
7. The three digit destination code in the example is used to represent a
specific destination for a particular piece of mail along a delivery route.
(Id.).
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8. Yamashita’s sorting example uses 10 sorting compartments (S0 to S9)
to sort the mail. (Id. at 9:36-46). The 10 sorting compartments remain
constant throughout the sorting process and identify a place where mail may
be placed during sorting.
9. Yamashita’s exemplified sorting process is conducted in three stages:
a first stage where the unit digits are sorted, a second stage where the mail
previously sorted by units is now sorted based on their tens digit, and a third
stage where the sorted unit and tens digit mail is now sorted by the hundreds
digit. (Id. at 9:37 to 10:44).
10. The first stage sorts the unit digits by placing destination codes ending
in the unit 0 in compartment “S0”, destination codes ending in 1 in
compartment “S1”, etc. (Id. at 9:36-38).
11. The second stage takes the mail that has been sorted into ten different
groups (XY0, XY1, . . . XY9, where X is the hundreds digit and Y is the tens
digit) and sorts each group based on its tens digit. For example, for sorting
the unit digit 9 mail, the second stage will assign new numbers, e.g., X09,
X19, X29, X39, . . . X99, to the compartments S0 to S9. Once the unit
digit 9 mail is sorted, sheets which have 8 to 0 at the units place are then
sorted in a similar manner. (Id. at 10:1-12).
12. The third stage processing takes the mail that has been sorted into one
hundred different groups (X00, X01, . . . . X99, where X is the hundreds
digits) and sorts each group based on its hundreds digit. For example, for
sorting the X00 mail, the compartments S0 to S9 are used to represent the
numbers, 000, 001, 002, 003, . . . 009. (Id. at 10:36-48). Once the X00 mail
has been sorted, the remaining X01 to X99 mail is sorted.

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13. Yamashita further teaches auxiliary sorting compartments (SA, SB,
SC) that are designed to accommodate excess mail that is unable to be held
in any of the 10 sorting compartments (S0-S9), so as to avoid overflow. (Id.
at 11:62 to 12:14).
14. Yamashita further teaches that the auxiliary sorting compartments
may be reassigned as lower use sort locations in the event that one of the
sorting compartments from S0 to S9 has already been used to collect mail
that has another destination code. (Id. at 11:30-42).
D. PRINCIPLES OF LAW
We give claims their broadest reasonable interpretation consistent
with the specification. It is Appellant’s burden to precisely define their
claimed invention and to clearly set forth any special definitions for the
claim terms. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described in a single prior
art reference.” Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987).
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Any need or
problem known in the field of endeavor at the time of invention can provide
a reason for combining elements in the manner claimed. Id. at 420.

E. ANALYSIS
The Examiner found that Yamashita taught all claim limitations of
claims 1-25. Lockheed disagrees. In particular, all of the claims on appeal
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require that there be more sort locations than physical bin locations and
Lockheed contends that Yamashita fails to describe such a feature.
(App. Br. 5-9). Lockheed also provides additional separate arguments as to
claims 2, 6, 9-11, 13-14, 15-17, 21, and 22. (Id. at 9-23). The Examiner’s
rejection and Lockheed’s contentions are discussed in detail below.

Yamashita Teaches More Sorting Locations than Physical Bin
Locations

The Examiner found that Yamashita taught a greater number of sort
locations than there are physical bin locations. (Ans. 3). Specifically, the
Examiner determined “that an assignment of a specific digit of a code to [a]
bin is equivalent to a sort location...” (Id. at 10). The Examiner further
determined that “the assign[ment] of more digits then there are physical
bins, regardless of the number of passes, anticipates ‘a number of sort
locations [that] is greater than the physical bin locations’ as claimed.” (Id.).
Lockheed disagrees with the Examiner’s findings and contends that
Yamashita does not anticipate claims 1-25. Specifically, Lockheed contends
that “merely using multiple passes does not amount to having more sort
locations than physical bin locations.” (App. Br. 6). Additionally,
Lockheed contends that Yamashita discloses “more physical locations than
sort locations” due to Yamashita’s use of auxiliary sorting compartments for
overflow conditions. (Id. at 7). We disagree.

Yamashita’s Sorting and Physical Bin Locations
We provide claims with their broadest reasonable construction in light
of the specification. Lockheed’s claims require a controller assigning and
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reassigning sort locations as required where the number of sort locations is
greater than the physical bin locations. Lockheed’s brief does not direct our
attention to where its specification provides a specific definition for the
terms “sort locations” or “physical bin locations.” Further, our review of
Lockheed’s specification indicates that the terms are provided their plain and
ordinary meaning. Accordingly, we construe the term “sort location” as it is
used in the claim to encompass the designation of a particular place for the
receipt of a sorted object, e.g., mail. Similarly, we construe the term
“physical bin location” as encompassing the designation of a particular spot
where an object, e.g., mail, may be placed during sorting. Furthermore,
although a tray or container may be associated with a physical bin location a
tray or container is not required to designate such a “location.”
Yamashita employs more sorting locations than physical bin
locations. Yamashita’s sorting device sorts mail in the order of a delivery
route. (Yamashita 1:62-67). Yamashita provides an example of its sorting
device where mail having a three digit destination code is sorted. (Id.
at 9:1-11 and 26-36). The three digit destination code represents a specific
destination for a particular piece of mail along a delivery route. (Id.).
Yamashita’s patent describes an example of sequencing the mail in three
stages where 10 sorting compartments (S0 to S9) are used over and over
again. (Id. at 9:26-36). As determined by the Examiner, Yamashita’s
sorting compartments represent physical bin locations as that term is used in
Lockheed’s claims.
Yamashita’s exemplified sorting process is conducted in three stages,
a first stage where the unit digits are sorted, a second stage where the mail
previously sorted by units is now sorted based on their tens digit, and a third
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stage where the sorted unit and tens digit mail is now sorted by the hundreds
digit. (Id. at 9:37 to 10:44). Yamashita reassigns the sorting location for
each pass made in its sorting machine. Specifically, the first stage sorts the
unit digits by assigning destination codes ending in the unit 0 to
compartment “S0,” destination codes ending in 1 to compartment “S1,” etc.
(Id. at 9:36-38). The second stage takes the mail that has been sorted into
ten different groups (XY0, XY1, . . . XY9, where X is the hundreds digit and
Y is the tens digit) and sorts each group based on its tens digit. In doing so,
Yamashita’s sorting device reassigns the sorting locations, for example, for
sorting the unit digit 9 mail, the second stage will assign new numbers,
e.g., X09, X19, X29, X39, . . . X99, to the compartments S0 to S9. Once
the unit digit 9 mail is sorted, sheets which have 8 to 0 at the units place are
then sorted in a similar manner. (Id. at 10:1-12). Similarly, the third stage
processing takes the mail that has been sorted into one hundred different
groups (X00, X01, . . . . X99, where X is the hundreds digits) and sorts each
group based on its hundreds digit. (Id. at 10:36-48). Accordingly,
Yamashita assigns and reassigns numerous sorting location codes (ten
sorting location codes in each pass) to the same ten physical bin locations.
Although Lockheed states that multiple passes does not amount to having
more sort locations, Lockheed’s claims do not exclude the use of multiple
passes for purposes of determining the number of sort locations employed.
Lockheed contends that the use of the auxiliary bins for overflow
conditions demonstrates that Yamashita will create additional physical bin
locations for the sort locations, while the sort locations remain constant.
Lockheed, however, fails to explain how Yamashita’s addition of three
additional physical bin locations for overflow conditions alters the fact that
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Yamashita employs a greater number of sorting locations than physical bin
locations. For example, the first stage contains ten sorting locations (unit
digits 0-9) and physical bin locations S0-S9 and SA, SB and SC. The
second stage contains one hundred sorting locations (tens digits 0-9 with
units digits 0-9, i.e., 00, 01, . . . 99) assigned to the same physical bin
locations and the third stage employs even more sorting locations again
assigned to the same bin locations. Accordingly, Yamashita’s number of
sorting locations is greater than its physical bin locations, even with the
inclusion of the optional overflow auxiliary bins.
We find that Lockheed has not demonstrated that the Examiner
incorrectly determined that Yamashita teaches a greater number of sort
locations than physical bin locations. Lockheed has provided no additional
arguments for the patentability of claim 1, 3-5, 7-8, 12, 19, 20, and 23-25
beyond the contention that Yamashita fails to teach more sorting locations
than there are physical bins. As Appellant has not shown that the Examiner
incorrectly determined that Yamashita teaches a greater number of sort
locations than physical bin locations we affirm the Examiner’s rejections of
claims 1, 3-5, 7-8, 12, 19, 20, and 23-25.

Claim 2
Appellant contends that the Examiner incorrectly determined that
Yamashita anticipates claim 2. (App. Br. 14). Claim 2 differs from claim 1
only in that claim 2 further recites that “the number of the plurality of
physical bin locations is ‘n’ and the sort locations is at least ‘n+1.’” (Id. at
25, Claims App’x.). We affirm for the reasons provided above as Yamashita
discloses more sorting locations than there are physical bin locations.
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Claim 6
Claim 6 depends from claim 1, and further requires that “the
controller defines buffer bins which are interchangeably used as either low
density range bins or high density range bins of the plurality of physical bin
locations based on the density ranges.” (Id.). The Examiner found that
Yamashita disclosed auxiliary sorting compartments designed to compensate
for overflow amounts to a teaching of the claimed buffer bins. (Ans. 14).
Lockheed contends that “Yamashita does not address the buffer bins are
interchangeably used with the low or high density bins.” (App. Br. 14).
Lockheed’s specification states that buffer bins may be substituted for
a high density tray when a high density tray becomes filled. (Spec. ¶ 0041).
Yamashita teaches auxiliary sorting compartments (SA, SB, SC) that are
designed to accommodate excess mail that is unable to be held in any of the
ten sorting compartments (S0-S9), so as to avoid overflow. (Yamashita
11:62 to 12:14). Yamashita further teaches an example wherein the
overflow bins may be reassigned as lower use sort locations in the event that
one of the sorting compartments from S1 to S9 has already been used to
collect mail that has another destination code. (Id. at 11:30-42).
Lockheed has not explained on this record how a claimed controller
which defines buffer bins is distinguishable from Yamashita’s device which
employs auxiliary sorting compartments. Thus, we hold that Lockheed has
not demonstrated that the Examiner incorrectly determined that Yamashita
teaches buffer bins that may be used interchangeably with low use (low
density) or high use (high density) bins. Accordingly, we affirm the
Examiner’s finding of anticipation as to claim 6.
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Claims 9, 10, 15, 16, and 21
Each of claims 9, 10, 15, 16, and 21 recite the limitation of using a
tray swap (“swap of trays”) to redefine an existing physical bin location as a
buffer bin under various conditions. (App. Br. 26-29, Claims App’x.). The
Examiner contends that the prior art meets the claims to the extent that the
claim elements are required. (Ans. 15-21). Lockheed contends that
Yamashita fails to disclose either: (1) “defining a buffer bin as a sort
location for an inducted object if the physical bin location assigned to the
object is not available,” or (2) the swapping of trays. (App. Br. 15-23).
We disagree with Lockheed’s first contention because Yamashita
teaches the buffer bins (auxiliary sort compartments) for use when a physical
bin (sort compartment) is not available. Particularly, as discussed above,
Yamashita teaches the use of buffer bins (auxiliary sort compartments) to
compensate for a bin that becomes full during the sorting process, so as to
avoid overflow. (Yamashita 11:62 to 12:14).
We agree, however, that Yamashita fails to expressly or inherently
describe a device having a controller that defines the not available physical
bin location as the new buffer bin after a swap of trays. Accordingly, for
this reason we reverse the Examiner’s finding of anticipation as to claims 9,
10, 15, 16, and 21.

Claims 11, 17, 18, and 22
Lockheed’s claims 11, 17, 18, and 22 each recite the limitation of
“determining an error rate for a bin location of the plurality of bin
locations.” The Examiner determined that this limitation was met by
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Yamashita’s teaching of checking for a full bin. (Ans. 17-18, 20 and 22).
Lockheed disagrees and contends that “determining whether the bin is full is
not an error rate.” (App. Br. 18, 21 and 23). Lockheed’s specification does
not provide a special definition for the term “error rate” but does discuss the
term in its customary fashion, the rate at which an associated bin location
will not be available due to breakdowns in the device. (Spec.¶ 0015). The
plain and ordinary meaning of the word “rate” is a ratio between two things.
Yamashita’s determination of whether a bin is full does not involve
determining a ratio or a rate. Thus, we agree with Lockheed that the
Examiner incorrectly determined that Yamashita teaches utilizing an “error
rate.” Accordingly, we reverse the Examiner’s rejections of claims 11, 17-
18 and 22.

Claims 13 and 14
Independent claim 13 and dependent claim 14 have similar limitations
to claim 1, discussed above, but further requires:
initially allocating a plurality of physical bin locations for sort
locations based on historical density information of objects for
a particular segment of a delivery route; and assigning and
reassigning the sort locations to defined density bin locations
associated with a plurality of physical bin locations based on
the density range information and objects being inducted into
the sort locations…

(App. Br. 27, Claims App’x.). The Examiner found that Yamashita taught
the above limitations. (Ans. 6-7). Lockheed however contends that
Yamashita does not anticipate claims 13 and 14 as Yamashita only utilizes
current information rather than historical information. (App. 11-12).
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We disagree with Lockheed. Yamashita discloses using “past
records” to presume where “lots of mail” will be sent and to assign auxiliary
sorting compartments as sorting destinations for pieces of mail based upon
this information. (Yamashita 12:22-31). We find that Yamashita’s use of
“past records” amounts to historical information rather than current
information. Specifically, the plain meaning of the word “past” indicates
information that is historical rather than current.
Accordingly, we hold that Lockheed has not shown that the Examiner
incorrectly determined that Yamashita utilizes the claimed historical density
information. Based on the foregoing we affirm the rejections of claims 13
and 14.

New Ground of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new grounds of rejection for claims 9, 10, 15, 16, and 21. As
discussed above, we determined that Yamashita fails to recite the limitation
of using a tray swap (“swap of trays”) to redefine an existing physical bin
location as a buffer bin under various conditions. Although swapping trays
is not anticipated, such a modification would have been obvious to one of
ordinary skill in the art at the time of invention.
Yamashita discloses all limitations of claims 9, 10, 15, 16, and 21
except for swapping trays. Particularly, Yamashita teaches using extra
“auxiliary sorting compartments” as buffer bins as opposed to swapping
trays to create buffer bins. Thus, one of ordinary skill in the mail sorting art
would have understood that when a first bin is full, mail may be directed to a
second bin. One of ordinary skill in the art would have also understood that
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when the second bin becomes full, the mail can be directed back to the now
empty first bin, i.e., trays are swapped. KSR at 1742. (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
One of ordinary skill in the art had ample reason to swap trays as the
swapping of trays allows the mail sorting process to continue on while the
bins are being emptied.

F. CONCLUSION
1. Lockheed has not demonstrated that the Examiner incorrectly
determined that Yamashita teaches a greater number of sort locations than
there are physical bin locations.
2. Lockheed has demonstrated that the Examiner incorrectly determined
that Yamashita teaches swapping trays to redefine an existing physical bin
location as a buffer bin.
3. One of ordinary skill in the art would have had a reason to swap a full
tray with an empty tray, empty the full tray and designate it as a new
overflow tray.

G. ORDER
The rejections of claims 1-8, 12-14, 19-20, and 23-25 under 35 U.S.C.
§ 102(b) as being anticipated by Yamashita are affirmed.
The rejections of claims 9, 10, 11, 15-18, and 21-22 under 35 U.S.C.
§ 102(b) as being anticipated by Yamashita reversed.
We have also entered a new ground of rejection against claims 9, 10,
15, 16, and 21 under 37 C.F.R. § 41.50(b).
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37 C.F.R. § 41.50(b) provides that, “[a] new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims:

(1) Submit an appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner…; or

(2) Request that the proceeding be reheard under 37 C.F.R.
§ 41.52 by the Board upon the same record …

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-IN-PART
New ground of rejection under 37 C.F.R. § 41.50(b) (2008)

Ak

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Andrew M. Calderon
Greenblum and Bernstein P.L.C.
1950 Roland Clarke Place
Reston VA 20191