Ex Parte Horree et al

Patent Trial and Appeal Board

Aug 16, 2016

11966335 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111966,335 12/28/2007 Richard Horree
919 7590 08/18/2016
PITNEY BOWES INC
INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT.
37 EXECUTIVE DRIVE
MSC 01-152
DANBURY, CT 06810
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
G-399 4953
EXAMINER
HARRINGTON, MICHAEL P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
08/18/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
iptl@pb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD HORREE,
WOJCIECH M. CHROSNY,
LINDA S. LIN,
and GEORGE M. MACDONALD
Appeal2014--001843
Application 11/966,335
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Richard Horree, Wojciech M. Chrosny, Linda S. Lin, and George M.
MacDonald (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 1-20, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed May 22, 2013) and the Examiner's Answer ("Ans.," mailed September
12, 2013), and Final Action ("Final Act.," mailed November 23, 2012).
Appeal2014-001843
Application 11/966,335
The Appellants invented a way of providing for "permanent" (fixed-
rate) postage including modified postal indicia. Specification para. 5.
An understanding of the invention can be derived from a reading of
exemplary claim 17, which is reproduced below (bracketed matter and some
paragraphing added).
17. A method of affixing a postal indicium comprising:
[ 1] selecting a descending register
from a set of at least two descending registers
in a single postal security device
having a processor
that are simultaneously available
for dispensing postage
for use with a postal service;
[2] generating,
and
by the processor,
at least one cryptographic portion of
the indicium
and
the selected descending register;
[3] printing the postal indicium on a mail piece using a printer,
said postal indicium including an identifier
associated with the selected descending register.
The Examiner relies upon the following prior art:
Daniels US 4,504,915
Liechti US 5, 715, 164
2
Mar. 12, 1985
Feb.3, 1998
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Application 11/966,335
Schwartz US 5,905,232
Brand US 6,061,670
Kummer US 2005/0065896 Al
Athens US 7 ,272,581 B2
~vfay 18, 1999
May 9, 2000
Mar. 24, 2005
Sep. 18,2007
Claims 9-11 stand rejected under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure.
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Brand, Athens, Liechti, and Schwartz.
Claims 17 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brand and Athens.
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Brand, Athens, and Kummer.
Claims 2-5 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brand, Athens, Liechti, and Schwartz, and Kummer.
Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Brand, Athens, Liechti, Schwartz, and Daniels.
Claims 10-13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Brand, Athens, Kummer and Liechti.
Claims 14--16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Brand, Athens, Kummer, Liechti, and Daniels.
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Application 11/966,335
ISSUES
The issues of obviousness tum primarily on whether the references
describe the plural descending registers and permanent postage database
recited in the independent claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure defines the adjective "permanent" as used in the
claims to mean "fixed rate" as in not subject to change by the post
office. Spec. para. 5.
Facts Related to the Prior Art
Brand
02. Brand is directed to printing postage indicia using closed and
open system printing devices. Brand 1: 13-16.
03. Brand describes a meter registered at several different post
offices. Each meter has an internal sub-register corresponding to
each post office for which the meter is authorized. The meter
further has a register (RNPS) for the national Postal Service.
When the customer makes a refill call, the meter reports the status
of each RPO register to the refill Data Center. The customer
requests funds transferred to the RNPS register. The funds are
transferred by a refill transaction to the national postal service
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Application 11/966,335
register. Reports of the registers are reported from the refill Data
Center to the national Postal Service to allow the Postal Service to
account for postage at each local post office. The register RNPS
may have ascending and descending registers. Brand 4:57-5:6.
04. Brand describes funds transferred to a national Postal Service
register in the postage metering device during postage refill for the
postage metering device. As required those funds are transferred
within the postage metering device to a one of a plurality of sub-
registers representing one of the several different post offices
when franking occurs with an origin of deposit for a particular
post office. At the next postage refill transaction for the postage
metering device the total internal transfers to each local post office
sub-registers are reported to the refill Data Center, which reports
the same to the Postal Service. The Postal Service may then
account postage refill funds transfer to the appropriate post office.
When franking each mailpiece, the postage metering device prints
an origination postal code corresponding to an appropriate post
office as part of a digital indicia printed on the mailpiece. Brand
3:7-22
Athens
05. Athens is directed to optimizing the throughput of a mailing
machine. Athens 1: 13-15.
Liechti
06. Liechti is directed to communications between electronic
postage meters and a computerized central facility. Liechti 1 :6-9.
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Application 11/966,335
Schwartz
07. Schwartz is directed to an electronic scale particularly suitable
for mailing or shipping use. Schwartz 1: 19-21.
Kummer
08. Kummer is directed to automatically correcting postage for
residual mail. Kummer para. 1.
09. Kummer describes plural rate tables, one table for each class of
postal service. Kummer para. 24.
Daniels
10. Daniels is directed to automatic postage value computing
generally and more specifically to individualizing the computation
of postage values for users having particular mailing requirements.
Daniels 1:7-11.
ANALYSIS
Claims 9-11 rejected under 35 U.S. C. § 112, first paragraph, as lacking a
supporting written description within the original disclosure
We are persuaded by Appellants' argument that each of these claims is
properly supported by the originally filed disclosure.
As to claim 9, in which the Examiner finds the recitation of "a second
remaining balance associated with the descending register according to a
second rate table active for dispensing postage in at least one permanent
postage database" to be unsupported, we agree with Appellants that the
Specification describes a database of remaining numbers of each of various
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Application 11/966,335
stamp denominations. Br. l 0-11. Each such remaining number is a
remaining balance of stamps.
Examiner responds that "a descending register balance is commonly
known in the art to be the amount of money remaining on the descending
register of a postage machine that can be used for postage." Ans. 3.
Examiner has two problems with this response. First, a descending register
in the computer arts is a register that retains a value that is decreased. Hence
the name. The Examiner is suggesting that in the more narrow postal
automation arts, there is a more narrow construction restricted to monetary
amounts, but provides no evidence to support this. Second, the limitation
does not say the balance is stored in the register, only that the balance is
stored and that it is associated with the register. Appellants' Fig. 7 in the
disclosure shows this.
As to claim 10, in which the Examiner finds the recitation of "a database
record of the at least one permanent postage database associated \x1ith at least
one of the first and second balance is not active for adding postage" to be
unsupported, we agree with Appellants that the Specification describes a
database of stamp quantities that may not be incremented. Br. 11-12.
Examiner responds that "the database entries that are not active for
adding postage are limited to only expired rate tables, and not to general
records." Ans. 5. The Examiner does not explain the pertinence of this
finding, and it does not appear to negate the support Appellants describe for
the claim limitation. The limitation only calls for some record in the
database that is not active for adding postage. This does not detract from the
association formed with the descending register when the postage was
acquired from parent claim 9.
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Application 11/966,335
As to claim 11, in which the Examiner finds the recitation of "at least
two rate table records stored in the database, each only active for use in
applying rates for adding postage until an associated rate table has expired"
to be unsupported, we agree with Appellants that the Specification describes
an example of this. Br. 12.
Examiner responds that "Appellant's written description is entirely
absent regarding the at least two rate tables each only active for use in
adding postage during different dates." Ans. 6. This finding is entirely
conclusory and does not respond to the example Appellants cite.
Claims 17 and 19 rejected under 35 U.S. C. § 103 (a) as unpatentable over
Brand and Athens
Independent claim 17 recites "selecting a descending register from a set
of at least two descending registers in a single postal security device." We
are persuaded by Appeiiants; argument that the art faiis to describe this. Br.
17. Examiner responds that Brand describes this. Ans. 9. This is in error;
Brand describes a single descending register in its register RNPS. Perhaps
sensing this from Appellants' argument, Examiner goes on to find that
[a]s is commonly known in the art, postage machines contain
both ascending and descending registers in order to track a
balance remaining and the amount of funds used to so far to
print postage. By tracking the total postage evidenced for mail
destined for the desired post office, the system would decrease
the postage known to be available in the descending register
associated with that post office.
Ans. 10. We agree, again, that Brand has both an ascending and
descending register. But the claim requires plural descending registers. The
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Application 11/966,335
Examiner suggests it was predictable for Brand to also provide a descending
register to match each ascending sub-register assigned to a particular post
office. The problem with this suggestion is that Brand provides no reason
for doing so, as its single descending register tracks the remaining available
balance for all post offices. Indeed, apportioning this across each of the
individual post offices tracked for would severely limit Brand's flexibility,
as then individual post office remaining balances would go to zero while
balances otherwise remained. Brand describes a device that allows funding
across plural post offices with a common pool of funds, thus the single
descending register.
Claim 19 depends from claim 1 7.
Claim 1 rejected under 35 U.S.C. § 103(a) as unpatentable over Brand,
Athens, Liechti, and Schwartz
Independent claim 1 recites "at least two concurrently available
descending registers incorporated in the first postal security device that are
each active for dispensing postage." This is similar to the limitation in claim
1 7 that is not described by the art.
Claims 9 and 18 rejected under 35 U.S.C. § 103(a) as unpatentable over
Brand, Athens, and Kummer
Independent claim 9 recites
at least one permanent postage database operatively connected
to the processor, wherein the processor is configured to store a
first remaining balance associated with the descending register
according to a first rate table active for dispensing postage and
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Application 11/966,335
a second remaining balance associated with the descending
register according to a second rate table active for dispensing
postage in at least one permanent postage database.
We are persuaded by Appellants' argument that the Examiner makes no
finding that any of the postal databases in the references store permanent
postage data, as in postal amounts not subject to future rate change. The
Examiner finds that Kumer describes plural rate tables in connection with
this limitation. Final Act. 23. The Examiner does not respond to this
contention in the Response, other than to acknowledge that Appellants'
Specification supports this limitation. Ans. 10-11. Thus the Examiner fails
to present a prima facie case.
Claim 18 depends from claim 1 7 and Appellants' arguments are
therefore applicable to this.
Claims 2-5 and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over
Brand, Athens, Liechti, and Schwartz, and Kummer
These claims depend from claim 1 and Appellants' arguments are
therefore applicable to these.
Claims 6---8 rejected under 35 U.S.C. § 103(a) as unpatentable over Brand,
Athens, Liechti, and Schwartz, and Daniels
These claims depend from claim 1 and Appellants' arguments are
therefore applicable to these.
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Application 11/966,335
Claims 10--13 rejected under 35 U.S.C. § 103(a) as unpatentable over
Brand, Athens, Kummer and Liechti
These claims depend from claim 9 and Appellants' arguments are
therefore applicable to these.
Claims 14-16 rejected under 35 U.S.C. § 103(a) as unpatentable over
Brand, Athens, Kummer, Liechti, and Daniels
These claims depend from claim 9 via claim 13 and Appellants'
arguments are therefore applicable to these.
CONCLUSIONS OF LAW
The rejection of claims 9-11 under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure is
improper.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over
Brand, Athens, Liechti, and Schwartz is improper.
The rejection of claims 17 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Brand and Athens is improper.
The rejection of claims 9 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Brand, Athens, and Kummer is improper.
The rejection of claims 2-5 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Brand, Athens, Liechti, and Schwartz, and Kummer is
improper.
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Appeal2014-001843
Application 11/966,335
The rejection of claims 6-8 under 35 U.S.C. § 103(a) as unpatentable
over Brand, Athens, Liechti, and Schwartz, and Daniels is improper.
The rejection of claims 10-13 under 35 U.S.C. § 103(a) as unpatentable
over Brand, Athens, Kummer and Liechti is improper.
The rejection of claims 14--16 under 35 U.S.C. § 103(a) as unpatentable
over Brand, Athens, Kummer, Liechti, and Daniels is improper.
DECISION
The rejection of claims 1-20 is reversed.
REVERSED
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