Ex Parte Kiani et al

Board of Patent Appeals and Interferences

Jan 10, 2012

11171536 (B.P.A.I. Jan. 10, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/171,536 06/30/2005 Shahrom Kiani 18525-0824 8169
28524 7590 01/11/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
EPSTEIN, BRIAN M
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
01/11/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHAHROM KIANI, CHERYL C. MILLER, EDDIE
KIN LUI, SEKHAVAT SHARGHI, and MICHAEL J.
CYKANA
____________________

Appeal 2010-003756
Application 11/171,536
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/171,536

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 2-11. We affirm.

THE CLAIMED INVENTION
Appellants’ claimed invention provides an improved system for
keeping track of presort mailing information to address the difficulties of
actual postage by job in combined mailings (Specification 2:6-11).
Claim 2 is illustrative of the claimed subject matter:

2. A process for the identification of a mail piece in a
stream of mail pieces being sorted in a sorting machine as
belonging to a specific mailer, wherein the stream of mail
pieces is a mixed mail stream containing mail originating from
two or more mailers, comprising:
identifying sets of mail piece characteristics that identify
mail pieces originated by each mailer without use of a special
symbol uniquely identifying the mailer or use of markers such
as divider cards to indicate a change in mailer during a sorting
run;
detecting these characteristics for each mail piece as the
stream of mail pieces passes through the sorting machine;
comparing the detected characteristics to a database
containing the sets of characteristics identified with mailers to
determine if the detected characteristics match one set of the
characteristics, thereby deductively identifying the mail piece
with its mailer; and recording the number of mail pieces in the
stream that belong to that mailer; and
sorting the mail pieces based on postal destination
information on each mail piece.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Barton
Brehm
Steinmetz
US 5,998,752
US 2002/0053533 A1
US 6,696,656 B2
Dec. 7, 1999
May 9, 2002
Feb. 24, 2004
Critelli
Poulin

US 2004/0263901 A1
US 2005/0209979 A1
Dec. 30, 2004
Sep. 22, 2005

REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 2, 4-6, and 10 under 35 U.S.C. § 103(a)
over Critelli and Poulin.
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) over Critelli,
Poulin, and Brehm.
The Examiner rejected claims 7 and 11 under 35 U.S.C. § 103(a) over
Critelli, Poulin, and Barton.
The Examiner rejected claims 8 and 9 under 35 U.S.C. § 103(a) over
Critelli, Poulin, and Steinmetz.

ISSUES
Did the Examiner err in rejecting claims 2, 4-6, and 10 under 35
U.S.C. § 103(a) over Critelli and Poulin as disclosing identifying sets of mail
piece characteristics that identify mail pieces originated by each mailer
without the use of a special symbol uniquely identifying the mailer, since
Critelli discloses an employee number of the employee that mailed the mail
piece, affixed to each piece of mail to identify who mailed it?
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FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Critelli discloses sets of mail piece characteristics that identify mail
pieces originated by each mailer, stating, the “unique aspects of the
mail item could include, for example, the indicium generated for the
mail item (e.g., the postage meter identification), the date of processing
(obtained, for example, from a real time clock within the mailing
machine 30) and the destination address.” (¶ [0030]).
2. Critelli discloses the “unique aspect information of the mail item could
be retrieved utilizing the scanner 32 ...” (¶ [0030]).
3. Critelli discloses comparing the detected characteristics to a database
containing the sets of characteristics identified with mailers to
determine if the detected characteristics match one set of the
characteristics, thereby deductively identifying the mail piece with its
mailer, in that “the mail item is linked to the tracking identification
information, from which the originator can be identified.” (¶ [0030]).
4. The Specification does not define “special symbol” but describes a
special symbol uniquely identifying the mail piece that may optionally
be used to distinguish separate jobs in a batch from a single mailer, in
that “the mail piece may include a special symbol or number 20 put on
by the mailer that distinguishes mail from one job for that mailer from
another. A different symbol or number 20 is used for each successive
job for that mailer.” (Spec. 5 ll. 20-22).
5. The Specification describes that the “goal of the input process is to
create a ‘profile’ of features by which a specific mailers' mail pieces can
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be recognized as they pass through the sorting system ...” (Spec. 5 ll. 3-
5).
6. Critelli discloses employees sending mail are “provided with tracking
information to be placed on each mail item. The tracking information
can include, for example, an employee identification number, an
equipment identification number and a unique mail identification
number.” (¶ [0011]).
7. Poulin discloses the use of a sorting apparatus 300 used in disclosed
embodiments (¶ [0030]).
8. Poulin discloses identifying sets of mail piece characteristics that
identify mail pieces originated by each mailer without use of a special
symbol uniquely identifying the mailer:
Identification of a business reply mail piece in the general
stream of mail may be performed in any suitable manner. For
example, the business reply mail piece may be identified by
recognition of facial indicia markings 201 in the capture image
of the business reply mail piece. Alternatively, the business
reply mail piece may be identified by recognition of the license
plate 203. As another example, the business reply mail piece
may be identified by determining the destination of the business
reply mail piece from the captured image or images using
address information 205 or POSTNET barcode 207 and then
performing a database lookup of the destination to determine if
the address is designated as a business reply mail address.
(¶ [0026]).
9. Poulin discloses detecting characteristics for each mail piece as the
stream of mail pieces passes through the sorting machine, by
“automatically identif[ying] the at least one business reply mail piece in
the stream of mail pieces; and in response to identifying the at least one
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business reply mail piece, automatically read[ing] information on the at
least one business reply mail piece.” (¶ [0006]).
10. Critelli discloses a method for “identification of the originator of a mail
piece within a corporate mail room environment.” (¶ [0010]).
11. Poulin discloses a method for “identification of a business reply mail
piece in the general stream of mail ...” (¶ [0026]).
12. Critelli discloses recording the number of mail pieces in the stream that
belong to that mailer, in that “information can be stored in the record
made for the mail item, and provides additional information to the
corporation as to the type and amount of mail generated by each
employee.” (¶ [0034]).
13. Poulin discloses recording the number of mail pieces in the stream that
belong to that mailer, in that “the recognition of the business reply mail
piece in the general mail stream may be used to maintain a count ...” ¶(¶
[0021]).
14. Brehm discloses an embodiment that involves recording the number of
mail pieces in the stream that belong to that mailer, stating, “[t]his
embodiment requires counting the number of mail pieces 95 in each
container 50 because the cost of the postage applied (specifically, the
program rate 60 times the number of mail pieces 95) must be charged to
the sender 100.” (¶ [0130]).
15. Brehm discloses “the pre-sorting facility 75 opens the containers 50 and
commingles 56 the mail pieces therein. The commingled mail pieces 85
are then pre-sorted 57 into a pre-sorted batch 90.” (¶ [0111]).
16. Barton discloses using information from items immediately preceding
and/or following one item to deduce information about that one item,
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stating, “The system may also be able to infer the codes of a group of
consecutive items, from the codes of the items at either end of that
group. Alternatively, the inference may use only the codes of items
before the item with the unreadable code.” (Col. 3 ll. 44-50).
17. Barton discloses a sorting system for mail (Col. 1 ll. 3-7).
18. Steinmetz discloses “automated mail sorting and more particularly, a
method of processing ‘return to sender’ mail using an automated
mailpiece sorting apparatus with integrated voice recognition for ‘return
to sender’ processing.” (Col. 2 ll. 64-67).
19. Steinmetz discloses if a mail piece is rejected due to an incorrect
address, sorting that mail piece to a reject bin, in that if the address
cannot be read by an OCR system, “then the mailpiece 30 is delivered to
a reject bin 18' at step S212.” (Col. 7 ll. 23-29).
20. Steinmetz discloses assigning a pseudo mailer ID to mail pieces
21. for which no mailer ID can be identified through the use of a bar code
when unable to identify an address, stating, “when the ‘return to sender’
mailpieces are identified and collected, a bar code identification (ID)
can be printed on ‘return to sender’ mailpieces. The bar code data is
unique to each piece.” (Col. 4 ll. 1-4).

ANALYSIS
Independent Claim 2
The rejection is affirmed as to claims 2, 4-6, and 10. Appellants do
not provide a substantive argument as to the separate patentability of claims
4-6 and 10 that depend from claim 2, which is the sole independent claim
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among those claims. Therefore, we address only claim 2, and claims 4-6
and 10 fall with claim 2. See, 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue the rejection of claim 2 was improper because
“[t]here is no mention in Critelli of any of Appellants' three steps using
multiple mail piece characteristics, not just a unique identifier.” (Appeal Br.
5).
We are not persuaded of error, because we find the Examiner made a
prima facie case of obviousness of all the required steps of claim 2 using the
combination of Critelli and Poulin (Ans. 3-6). The Examiner found Critelli
discloses the claim requirements using mail characteristics, but does not
disclose the sorting limitation, and does not disclose identifying mail
without the use of a special symbol uniquely identifying the mail piece,
which is part of the identifying limitation (Ans. 4). The Examiner found the
elements of sorting and identifying without special symbol in Poulin (Ans.
4).
Our review of Critelli confirms the Examiner’s findings of the claim
limitations in the art are correct as follows. We find Critelli discloses the
identifying sets of mail piece characteristics limitation, at the identification
of unique aspect information such as, a postage meter identification (FF 1) at
a scanner (FF 2), and find Critelli discloses comparing the detected
characteristics limitation as the mail item is linked to the tracking
identification information (FF 3).
We further find Critelli identifies sets of mail piece characteristics that
identify mail pieces originated by each mailer using a special symbol (FF 6).
But, we find that Poulin discloses identifying mail without use of a special
symbol uniquely identifying the mailer using mail characteristics already
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present on the mail (FF 8), and discloses detecting these characteristics on a
sorting machine (FF 9). That is, Poulin discloses identifying a mail piece
from a set of mail piece characteristics (FF 1, 8) present on the mail piece
without requiring the addition of special-purpose tracking
information/special symbol, thus meeting the claim requirements.
The Examiner found one of ordinary skill would modify Critelli to
omit the use of special symbols and instead use standard mail characteristics
affixed to the mail piece for the identification purposes. (Answer 6). This
modification would eliminate the need to affix a special origin symbol, and
permit use of the invention on mail in the “general stream of mail” not
specially identified beforehand, as Poulin discloses. Since we find both
Critelli and Poulin are concerned with problems common to identifying
mailed items (FF 10, 11), we thus find the combination reasonable. We
therefore find the Examiner established a prima facie case of obviousness
without error.
Appellants argue, “it is not clear why one skilled in the art would
think to combine Critelli and Poulin.” (Appeal Br. 5).
We are not persuaded by Appellants' argument, because we find
Critelli is confined to the corporate mail room (FF 10) where an originator
may be required to affix an employee number to mail, but Poulin discloses a
method for use on mail “in the general stream” without such special
identification (FF 11). Therefore, we agree with the Examiner (Answer 6),
and find it predictable to expand the applicability of Critelli’s method to a
more general use on a sorting machine, as disclosed by Poulin, which also
would avoid the special identification step not required by the combination.
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Appellants next argue “the present invention, Critelli and Poulin each
take places in different environment to solve different problems.” (Appeal
Br. 5).
We are not persuaded by Appellants' argument, because as found
supra, Critelli and Poulin deal with common problems in identifying mail
pieces (FF 10, 11), and thus their combination is reasonable.
Appellants next argue “even if there were reason to apply Poulin's
identification approach to Critelli's mail room system, one skilled in the art
would still be missing steps of measuring the characteristics during passage
on a sorting machine, and ultimately sorting the mail.”
We are not persuaded by Appellants' argument, because we find
Poulin discloses performing its method on a sorting apparatus (FF 7), thus
meeting the claim requirements.
Appellants further argue shortcomings in Critelli, starting with there
being “no citation to where Critelli teaches sorting.” (Appeal Br. 4).
That argument is not well taken because the Appellants are attacking
the reference individually when the rejection is based on a combination of
references, and Poulin not Critelli, discloses its identification method is
performed on sorting equipment (FF 7). See In re Keller, 642 F.2d 413, 426
(CCPA 1981).
Appellants next argue “[t]here are no sets of characteristics as claimed
by Appellants, just a single identifier to determine the mailer. Indeed, as
argued during prosecution, there is no need for a deductive process of
determining the mailer in the system described by Critelli.” (Appeal Br. 5).
We are not persuaded by Appellants' argument, which also attacks a
single reference in a combination of references, because we find, as set forth
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above, while Critelli discloses deductively identifying the mail piece using
special symbol (FF 3), Poulin discloses that deductively identifying can be
performed using a set of mail piece characteristics that do not require use of
a special symbol (FF 8), thus meeting the claim requirement.
Claim 3
Claim 3 depends from independent claim 2, and recites, inter alia,
“computing postage for each mailer based on total number of mail pieces in
a sorted batch, volume discounts based on the total number of mail pieces in
the batch, and the number of mail pieces recorded as belonging to that
mailer.”
Appellants argue Brehm teaches away, because it “teaches counting
the mail pieces of each mailer beforehand, not during sorting.”
We are not persuaded by Appellants' argument. First, we find Critelli
discloses keeping information on “amount of mail generated by each”
mailer/employee (FF 12), Poulin discloses counting mail pieces (FF 13), and
Brehm discloses counting mail pieces (FF 14). Although Brehm discloses
embodiments involving counting mail before the pre-sorting process
“commingles” the mail (FF 15), we do not find any teaching in Brehm
which would discourage one of ordinary skill in the art from counting pieces
of mail during sorting. “A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation
marks omitted). See also, In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (noting that merely disclosing more than one alternative does not
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teach away from any of these alternatives if the disclosure does not criticize,
discredit, or otherwise discourage the alternatives). We therefore find
Brehm does not teach away from counting during sorting.
Claims 7 and 11
Dependent claim 7 recites, inter alia, “determining the mailer of a
series of mail pieces immediately preceding and/or following the mail piece;
and if the mail pieces in the series all originated from the same mailer,
concluding that the mail piece was sent by the same mailer as the mail
pieces in the series.” Dependent claim 11 recites nearly identical language
as claim 7, but more narrowly requires determining the mailer of both the
preceding and following mail pieces, whereas claim 7 optionally permits one
of the preceding or following pieces to be used, but not both.
The Examiner found the combination of Critelli and Poulin does not
disclose this requirement, but found Barton does (Ans. 9-10).
Appellants argue both claims 7 and 11 together, asserting the claimed
method applies “a series approach to identifying a mailer, not to determining
a destination code as in Barton.” (Appeal Br. 7).
We are not persuaded by Appellants' argument. It is not necessary for
the prior art to serve the same purpose as that disclosed in Appellants’
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016.
Further, what a reference teaches or suggests must be examined in the
context of the knowledge, skill, and reasoning ability of a skilled artisan.
What a reference teaches a person of ordinary skill is not limited to what a
reference specifically “talks about” or what is specifically “mentioned” or
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“written” in the reference. Syntex (U.S.A.) LLC v. Apotex, Inc. 407 F.3d
1371, 1380 (Fed. Cir. 2005).
We find Barton discloses using information from items immediately
before and after one item to deduce information about that one item (FF 16),
thus meeting the claim requirement. Although the information Barton uses
is a code, we find one of ordinary skill in the art would recognize the
technique is equally applicable to other information such as identifying sets
of mail piece characteristics to determine a mailer. Additionally, Barton is
directed to a mail sorting system (FF 17), and thus its combination with
Critelli and Poulin (FF 12, 13) is reasonable, because each deals with
common problems in sorting and interpreting mail.
Claim 8
Claim 8 depends from independent claim 2 and recites, inter alia,
“wherein if a mail piece is rejected due to an incorrect address, sorting that
mail piece to a reject bin associated with the mailer of the mail piece.”
Appellants argue Steinmetz “relates to bar code IDs; there is no
mention of sorting to a mailer specific reject bin.” (Appeal Br. 8).
We are not persuaded by Appellants' argument, because the claim
does not require a bin “specific” to a mailer, but only a “rejection bin
associated with the mailer.” This requirement is broad enough to encompass
a single reject bin associated with all mailers. We thus find Steinmetz
discloses a process to sort mail (FF 18) with a reject bin where mail is sent
when the address to which it is being sent cannot be read (FF 19), thus
meeting the claim requirement.
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Claim 9
Claim 9 depends from independent claim 2 and recites, inter alia,
“assigning a pseudo mailer ID to mail pieces for which no mailer ID can be
identified, and assigning the pseudo mailer ID to a mailer in an offline
process after sorting is completed.”
Appellants argue in Steinmetz the “identifier for a specific mail piece
is not a pseudo mailer ID within the meaning of claim 9 on appeal.”
(Appeal Br. 8).
We are not persuaded by Appellants’ argument. We find the
Specification does not define or describe the pseudo mailer ID, so we
interpret it broadly as an identifier not tied to any particular, actual mailer.
We thus find Steinmetz discloses the use of a bar code when unable to
identify an address, stating, “when the ‘return to sender’ mailpieces are
identified and collected, a bar code identification (ID) can be printed on
‘return to sender’ mailpieces. The bar code data is unique to each piece.”
(FF 20). We therefore find the bar code of Steinmetz is an identifier which
is not tied to any particular mailer, but is used in the process of identifying a
recipient, thus meeting the claim requirement.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 2, 4-6, and 10 under 35
U.S.C. § 103(a) over Critelli and Poulin.
The Examiner did not err in rejecting claim 3 under 35 U.S.C.
§ 103(a) over Critelli, Poulin, and Brehm.
The Examiner did not err in rejecting claims 7 and 11 under 35 U.S.C.
§ 103(a) over Critelli, Poulin, and Barton.
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The Examiner did not err in rejecting claims 8-9 under 35 U.S.C.
§ 103(a) over Critelli, Poulin, and Steinmetz.

DECISION
For the above reasons, the Examiner’s rejection of claims 2-11 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