Ex Parte Kara

Board of Patent Appeals and Interferences

Apr 20, 2010

10991241 (B.P.A.I. Apr. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte SALIM G. KARA 8
___________ 9
10
Appeal 2009-010480 11
Application 10/991,241 12
Technology Center 3600 13
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15
Decided: April 20, 2010 16
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18
Before HUBERT C. LORIN, ANTON W. FETTING, and 19
BIBHU R. MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
Appeal 2009-010480
Application 10/991,241

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STATEMENT OF THE CASE 1
Salim G. Kara (Appellant) seeks review under 35 U.S.C. § 134 (2002) of 2
a final rejection of claims 1, 2, and 4-26, the only claims pending in the 3
application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). Oral arguments were presented on March 18, 2010. 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a way of imprinting postage in a personalized 10
configuration of a meter stamp on an item of mail (Specification 1:¶ 0002). 11
An understanding of the invention can be derived from a reading of 12
exemplary claim 1, which is reproduced below [bracketed matter and some 13
paragraphing added]. 14
1. A method comprising: 15
[1] importing an image into a postage indicia printing system 16
from a remote device, wherein said image is generated by a user 17
prior to said importing; 18
[2] modifying, by said user, said imported image; and 19
[3] printing, by said postage indicia printing system, a postage 20
indicia including at least a portion of said image. 21

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed December 1, 2008) and Reply Brief (“Reply Br.,” filed April 3,
2009), and the Examiner’s Answer (“Ans.,” mailed February 19, 2009).
Appeal 2009-010480
Application 10/991,241

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1
THE REJECTION 2
The Examiner relies upon the following prior art: 3
Heinrich US 5,471,925 Dec. 5, 1995
Sekiguchi US 5,494,445 Feb. 27, 1996
Claims 1, 2, and 4-26 stand rejected under 35 U.S.C. § 103(a) as 4
unpatentable over Heinrich and Sekiguchi. 5
ARGUMENTS 6
The Appellant argues each independent claim with its dependent claims 7
as a group. The Appellant makes the same arguments regarding each of the 8
independent claims. Accordingly, we treat all claims as argued as a group, 9
and select claim 1 as representative of the group. 7 C.F.R. § 41.37(c)(1)(vii) 10
(2008). 11
The Appellant contends that combining the references would make them 12
unfit for their intended purpose (Appeal Br. 11-14) and that Heinrich fails to 13
describe modifying an imported image (Appeal Br. 14). 14
ISSUES 15
The issue of whether the Examiner erred in rejecting claims 1, 2, and 4-16
26 under 35 U.S.C. § 103(a) as unpatentable over Heinrich and Sekiguchi 17
turns on whether the references show it was predictable to modify an 18
imported postal image. 19
Appeal 2009-010480
Application 10/991,241

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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Heinrich 5
01. Heinrich is directed to changing the text portion of postal logos. 6
Heinrich 1:7-10. The logo and text portions form the completed 7
postal image. Heinrich 1:14-21. 8
02. Heinrich is a patent assigned to a German company, by German 9
inventors, claiming foreign priority to a German patent 10
application. Heinrich Title Page. 11
03. Heinrich describes modifying the logo text portion of an 12
imported logo in a postal machine. Heinrich 5:45-55. 13
04. Heinrich describes printing the logo in a postal machine. 14
Heinrich 3:53-67. 15
05. Heinrich says that as a rule, a postage meter produces an 16
imprint in some form that is agreed upon with the postal service. 17
Heinrich also says that approved advertising logos contain varied 18
messages, and that the logo is an additional detail that must be 19
agreed upon with the postal service. Heinrich 2:27-49. Heinrich 20
does not specify which particular postal service is meant. 21
06. Heinrich describes agreeing with the postal authorities on an 22
approval method to change advertising in postage indicia 23
dynamically. Heinrich 4:37-49. 24
Appeal 2009-010480
Application 10/991,241

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Sekiguchi 1
07. Sekiguchi is directed to advertising and promotional images. 2
Sekiguchi 1:23-24. 3
08. Sekiguchi describes importing and modifying such promotional 4
images. Sekiguchi 2:3-11. 5
09. Sekiguchi describes images as being words, letters, 6
photographs, pictures, or portraits. Sekiguchi 2:36-38; also 4:61-7
64. 8
10. Sekiguchi describes using a postal image, i.e. a postal stamp 9
image, for the image that is imported and modified. Sekiguchi 10
32:17-41. 11
PRINCIPLES OF LAW 12
Obviousness 13
A claimed invention is unpatentable if the differences between it and 14
the prior art are “such that the subject matter as a whole would have been 15
obvious at the time the invention was made to a person having ordinary skill 16
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 17
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 18
In Graham, the Court held that that the obviousness analysis is 19
bottomed on several basic factual inquiries: “[(1)] the scope and content of 20
the prior art are to be determined; [(2)] differences between the prior art and 21
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 22
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 23
U.S. at 406. “The combination of familiar elements according to known 24
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Application 10/991,241

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methods is likely to be obvious when it does no more than yield predictable 1
results.” KSR, 550 U.S. at 416. 2
ANALYSIS 3
There is no argument that Heinrich imports a postal image and prints it. 4
Such is the province of postal machines in general. The contention regards 5
modifying such an image. Heinrich does modify the text portion of a logo. 6
The entire logo including such modified text is what is then printed. Again, 7
there is no argument regarding this either. Instead, the Appellant contends 8
that modifying the text is not modifying the imported log frame, and that the 9
logo frame is unchangeable. Appeal Br. 14. This argument is not 10
commensurate with the scope of the claim. 11
Claim 1 recites that an image is imported and modified. Heinrich 12
describes a postage image that includes a logo and text. FF 01. Further, 13
Sekiguchi describes how one of ordinary skill knew that images could be 14
composed of words, letters, photographs, pictures, or portraits. FF 09. 15
Thus, Heinrich’s modifying a text portion of an image meets the claim 16
limitation of modifying an image. 17
Beyond that, however, Sekiguchi describes importing and modifying 18
promotional images. FF 08. This takes us to the Appellant’s contention that 19
combining the references would render them unsuitable. Such a contention 20
is problematic at least because Sekiguchi describes using a postal image, i.e. 21
a postal stamp image, for the image that is imported and modified. FF 10. 22
But the Appellant argues that Heinrich teaches that the images in postal 23
indicia cannot be modified because they must be agreed upon by the postal 24
service. Appeal Br. 13. This contention has at least the following problems. 25
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Application 10/991,241

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Heinrich does not state that one cannot modify the images, but rather that, as 1
a rule, the postal service must agree to them. FF 05. Anything that is simply 2
so as a rule is not a physical constraint, but rather a convention that is 3
generally, but not necessarily, followed. Heinrich goes on to describe how 4
such a rule can be modified by simply agreeing with the postal service on an 5
arrangement otherwise. FF 06. 6
Probably most critical, however, is that Heinrich does not specify which 7
postal service it is referring to (FF 05). Heinrich is a patent assigned to a 8
German company, by German inventors, claiming foreign priority to a 9
German patent application (FF 02). Thus, one of ordinary skill would take 10
Heinrich’s reference to the postal service as being Deutsche Post rather than 11
the U.S. Postal Service. So, Heinrich does not appear to describe any issue 12
with modifying a postal image in the United States. 13
The Appellant also argues that modifying the text portion of Heinrich’s 14
image with Sekiguchi’s method would render the postal image unreadable 15
and using Heinrich’s unchanged image without Sekiguchi’s grid would 16
defeat the presentation described by Sekiguchi. Appeal Br. 11-12. The most 17
straight forward answer to this argument is again Sekiguchi’s explicit 18
recitation of such a postal image implementation. FF 10. Further, nothing 19
in Heinrich or Sekiguchi describe that Sekiguchi’s image alteration method 20
would render Heinrich’s text unreadable. If the text is sufficiently large and 21
Sekiguchi’s bars are sufficiently thin, the text would remain quite legible. 22
CONCLUSIONS OF LAW 23
The Examiner did not err in rejecting claims 1, 2, and 4-26 under 35 24
U.S.C. § 103(a) as unpatentable over Heinrich and Sekiguchi. 25
Appeal 2009-010480
Application 10/991,241

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DECISION 1
To summarize, our decision is as follows. 2
• The rejection of claims 1, 2, and 4-26 under 35 U.S.C. § 103(a) as 3
unpatentable over Heinrich and Sekiguchi is sustained. 4
No time period for taking any subsequent action in connection with this 5
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 6
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AFFIRMED 8
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