Ex Parte Marcoux-Norton et al

Patent Trial and Appeal Board

Nov 5, 2014

12025103 (P.T.A.B. Nov. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTOPHER M. MARCOUX-NORTON and
ERIC J. MORIN
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Appeal 2012-004088
Application 12/025,103
Technology Center 3600
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Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1–4, 7–10, 13–16, and 19–22 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

Appeal 2012-004088
Application 12/025,103

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THE INVENTION
The Appellants’ claimed invention is directed to delivery confirmation
and receipt of a delivered article through a digital signature (Spec., para. 1).
Claim 1, reproduced below, is representative of the subject matter on appeal.

1. A method for acknowledging receipt of an article by an
intended receiver, the method comprising:
[1] communicating a receiver identification to the intended
receiver using a computer;
[2] providing a mechanism to request an actual receiver of the
article to provide the receiver identification to a delivery controller
prior to delivery of the article;
[3] in response to the actual receiver providing the receiver
identification to the delivery controller and [4] the receiver
identification provided by the actual receiver matching the receiver
identification communicated to the intended receiver, [5] generating a
digital signature based on a combination of the receiver identification
and an identification of the article using the computer;
[6] and in response to the intended receiver receiving the
article, acknowledging the receipt of the article by the intended
receiver based on the digital signature by communicating the digital
signature to a centralized server by the delivery controller wherein the
delivery controller provides a security login to communicate the
digital signature.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–3, 6–9, 12–15, 18–21, and 24 are rejected under
35 U.S.C. § 103(a) as unpatentable over Hashimoto (US 2004/0243426 A1,
pub. Dec. 2, 2004), Fitzsimmons (US 7,818,268 B2, iss. Oct. 19, 2010), and
Kantarjiev (US 2010/0332402 A1, Dec. 30, 2010).
Appeal 2012-004088
Application 12/025,103

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2. Claims 4, 10, 16, and 22 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Hashimoto, Fitzsimmons, Kantarjiev , and Klingenberg
(US 2010/0076903 A1, pub. Mar. 25, 2010).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.

ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose elements of claim limitations [1], [4], and
[5] as listed in the claim above (App. Br. 8–11, Reply Br. 1–4).
In contrast, the Examiner has determined that cited claim limitations
[1] and [4] are shown by Hashimoto at paragraphs 20, 35, 36, 42, and 88.
The Examiner has determined that claim limitation [5] is shown by
Fitzsimmons at column 1, line 60 to column 2, line 51 and column 3, line 17
to column 4, line 58 (Ans. 5–6, 9–10).
We agree with the Examiner. Initially we note in claim 1 that the
“intended receiver” can be the same as, or different than, the “actual
receiver” and this claim construction is supported by the Specification at
paragraph 13. The argued claim limitations [1], [4], and [5] require:
[1] communicating a receiver identification to the intended
receiver using a computer;

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).
Appeal 2012-004088
Application 12/025,103

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[4] the receiver identification provided by the actual receiver
matching the receiver identification communicated to the intended
receiver, [and]
[5] generating a digital signature based on a combination of the
receiver identification and an identification of the article using the
computer.

(Claim 1, emphasis added).

Here, we agree that the requirement in claim limitation [1] for
“receiver identification” is shown in Hashimoto at paragraph 20 in which it
is disclosed that “key information” is given to a collection company.
Further, the requirements in claim limitation [4] for the receiver
identification provided and communicated to “match” is shown by
Hashimoto at paragraph 36 when the key information is used to release the
lock on the collection box device. Lastly, argued claim limitation [5]
requires generating a digital signature based on the receiver identification
and identification of the article. Fitzsimmons at column 1, line 60 to
column 2, line 16 discloses mail verification data over a network which
serves as a “digital signature” and includes both mail ID data and a recipient
portion. Here in Fitzsimmons, the mail ID data serves as “article
identification” and the recipient portion serves as a type of “receiver
identification.” Although the “receiver identification” from Hashimoto and
Fitzsimmons are different, it is the combination of the references that is used
to show the same “receiver identification” used throughout. As the argued
claim limitations have been shown in the prior art, the rejection of record of
claim 1 is sustained.
Appeal 2012-004088
Application 12/025,103

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The Appellants have provided the same arguments for the remaining
claims, and the rejection of these claims is sustained for the same reasons
given above.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims as listed in the Rejections section above.

DECISION
The Examiner’s rejection of claims 1–4, 7–10, 13–16, and 19–22 is
sustained.
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

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