Ex Parte Kummer et al

Board of Patent Appeals and Interferences

Apr 21, 2010

10823032 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT H. KUMMER, JR., LINDA S. LIN,
LYNN W. D’AMICO, and WESLEY A. KIRSCHNER
____________

Appeal 2009-006280
Application 10/823,032
Technology Center 3600
____________

Decided: April 21, 2010
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of
the final rejection of claims 1-19 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to a system and method
to remotely enable and disable features in a mailing system. (Spec. [0008]).
Claim 1, reproduced below with some numbering in brackets added, is
representative of the subject matter of appeal.

1. A method for a mailing machine to change operational
features comprising:
establishing a communication link with a remote data center via
a network;
receiving from the remote data center, via the communication
link, a directory file, the directory file including an indication of all
operational features that should be enabled within the mailing
machine, each of the operational features having at least one
associated operating file required to implement the operational
feature;
determining if an operating file stored in a memory of the
mailing machine is not associated with an operational feature
indicated in the directory file; and
[1] deleting any operating files stored in the memory of the
mailing machine that are not associated with an operational feature
indicated in the directory file,
wherein deletion of any operating file stored in the memory of
the mailing machine that is not associated with an operational feature
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indicated in the directory file disables an operational feature with
which the deleted operating file is associated.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Eskandari US 2002/0133471 A1 Sep. 19, 2002
Choksi US 6,477,243 B1 Nov. 5, 2002
Shaw US 2002/0176111 A1 Nov. 28, 2002
Montgomery US 2003/0101148 A1 May 29, 2003

The following rejections are before us for review:
1. Claims 1 and 8 are rejected under 35 U.S.C. § 102(b) as
anticipated by Eskandari.
2. Claims 2, 4-5, 9, 11-12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Eskandari.
3. Claims 3 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Eskandari and Choksi.
4. Claims 6, 13, 15-16 and 18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Eskandari and Montgomery.
5. Claims 7 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Eskandari and Shaw.
6. Claims 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Eskandari, Montgomery, and Choksi.
7. Claims 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Eskandari, Montgomery and Shaw.

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THE ISSUES
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
This issue turns on whether Eskandari discloses claim limitation [1] as
identified in claim 1 above.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Eskandari has disclosed the configuration enablement of a franking
system (Title).
FF2. Eskandari has disclosed customizing a system having a plurality of
operating features. At least one selected operating feature is enabled by
selecting at least one secondary parameter from a predefined list of
secondary parameters. A compilation of parameters is installed in the
customized system and enables the selected operating features to be used
(Abstract).
FF3. Eskandari at paragraphs [0061] and [0062] discloses:
[0061] In another embodiment, a currently enabled operating feature
32 can be selected to be disabled. The independent parameter 470
representing the enabled operating feature 32 can be removed from
the franking system's parameter set 458. The secondary parameters
472 and dependent parameters 476 are selected based on the updated
parameter set 458. The new authorization code 14 is generated based
on the updated parameter set 458, and is entered into the franking

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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system 11. The enabled operating feature 32 is then disabled, and
unavailable for use in the franking system 11.

[0062] In a further embodiment, the operating features 12 of the
current franking system 11 can be saved. When an update is to be
accomplished, new operating features 30 are added to the saved
operating features, and operating features to be removed 24 are
removed from the saved operating features. The updated saved
operating features can be the parameter set 458 of independent
parameters 470. The parameter set 458 can be used, along with the
associated secondary parameters 472 and dependent parameters 476,
to generate a new authorization code 14, which can be entered into the
franking system 11.

FF4. Eskandari at [0061] discloses that independent parameter 470
representing operating feature 32 can be removed from the franking systems
parameter set 458.
FF5. Eskandari at [0062] discloses that operating features 12 of the current
franking system can be saved and that operating features to be removed 24
are removed from the saved operating features.
FF6. Eskandari at Fig. 1 (item 360), [0031], [0042], [0061] and [0062] does
not specifically disclose deleting any operating files stored in the memory of
the mailing machine that are not associated with an operational feature
indicated in the directory file.

PRINCIPLES OF LAW
Principles of Law Relating Claim Construction
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the specification as it would be
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interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

Principles of Law Relating to Anticipation
“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. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim.

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
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In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art” id. at 415-16.

ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
“in Eskandari an operating feature is simply disabled” and that there is no
disclosure of claim limitation [1] (Br. 7). The Appellants argue that “[t]here
is a difference between disabling a feature, i.e., making it non-operational,
and deleting operational files stored in memory.” The Appellants also argue
that Eskandari at paragraph [0035] discloses that the system can be upgraded
or downgraded at anytime without additional software showing that no files
were deleted from the system (Br. 7). The Appellants also argue that
removing parameter 470 from the parameter set 458 does not delete an
operating file (Br. 8).
In contrast, the Examiner has determined that Eskandari discloses the
cited claim limitation [1] at paragraphs [0060] and [0061] (Ans. 13).
We agree with the Appellants. Claim 1 includes claim limitation [1]
which recites:
[1] deleting any operating files stored in the memory of the mailing
machine that are not associated with an operational feature indicated
in the directory file (Claim 1, emphasis added).

Eskandari at [0061] discloses that independent parameter 470
representing operating feature 32 can be removed from the franking systems
parameter set 458 (FF4) but the franking system parameter set 458 has not
shown to be “any operating files stored in the memory of the mailing
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machine that are not associated with an operational feature indicated in the
directory file.” Similarly, Eskandari at [0062] discloses that operating
features 12 of the current franking system can be saved and that operating
features to be removed 24 are removed from the saved operating features
(FF5) but it not specifically disclosed that the removal is not from another
parameter set or that is “any operating files stored in the memory of the
mailing machine that are not associated with an operational feature indicated
in the directory file” as claimed. Thus, Eskandari at [0061] and [0062] does
not specifically disclose deleting any operating files stored in the memory of
the mailing machine that are not associated with an operational feature
indicated in the directory file (FF6). Note that while Eskandari discloses
that an operating feature can be removed from the franking systems
parameter set 458 (FF4) that this is not shown to necessarily include all the
memory areas of the mailing machine. While paragraph [0062] does
disclose removal of saved operating features, the removal maybe from a
specific parameter set and again does not necessarily include all memory
areas of the mailing machine. The Examiner has not asserted that such a
feature of claim limitation [1] is inherent in the reference and it does not
appear that such a position can be established beyond probabilities or
possibilities. “To establish inherency, the extrinsic evidence must make
clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill. Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations omitted) (internal quotation marks omitted). For these
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reasons the rejection of claim 1 and its dependent claims is not sustained.
The Appellants have provided similar arguments for claim 8 and 15, which
contain a similar limitation, and the rejection of these claims and their
dependent claims is not sustained for the same reasons above.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1 and 8 under 35 U.S.C. § 102(b) as anticipated by
Eskandari.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 2, 4-5, 9, 11-12 under 35 U.S.C. § 103(a) as unpatentable
over Eskandari.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 3 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Eskandari and Choksi.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 6, 13, 15-16 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Eskandari and Montgomery.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 7 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Eskandari and Shaw.
We conclude that Appellants have shown that the Examiner erred in
rejecting claim 17 under 35 U.S.C. § 103(a) as unpatentable over Eskandari,
Montgomery, and Choksi.
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We conclude that Appellants have shown that the Examiner erred in
rejecting claim 19 under 35 U.S.C. § 103(a) as unpatentable over Eskandari,
Montgomery and Shaw.

DECISION
The Examiner’s rejection of claims 1-19 is reversed.

REVERSED

PITNEY BOWES INC.
35 WATERVIEW DRIVE
MSC 26-22
SHELTON, CT 06484-3000

JRG

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