Ex Parte McManus et al

Board of Patent Appeals and Interferences

Oct 22, 2009

10278460 (B.P.A.I. Oct. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DEBORAH R. MCMANUS, JOHN H. WINKELMAN,
and SURYA R. SAGI
____________

Appeal 2008-005491
Application 10/278,460
Technology Center 2100
____________

Decided: October 22, 2009
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-11. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

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A. INVENTION
The invention at issue on appeal provides enhancement to such
existing systems by providing the ability to receive data files from remote
mail inserter systems, and to transfer files to remote mail inserter systems,
from a central file repository. This transfer of files is preferably to upload
software updates to the remote mail inserter machines and to download
inserter and mail production data from the remote inserter machines.
Control of the transfer of files to and from the central file repository can be
accomplished through a control website that may be accessed anywhere with
Internet access. Such transfers can be scheduled for immediate execution or
for any time in the future. The present invention will also notify the
originator when such downloads/uploads are complete. (Spec. 4.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method for controlling transfer of files in a network
of mail production inserter machines, the network of mail
production inserter machines including a plurality of inserter
machines located at a plurality of inserter sites, and a command
center at a command site remote from the inserter sites, the
method comprising:
storing mail production inserter data at the plurality of
inserter sites;
storing software updates;
defining a file transfer transaction using a command
center computer interface, the step of defining the file transfer
transaction further including:
selecting one or more of the plurality of mail production
inserter machines for the file transfer transaction;
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identifying inserter data from the selected one or more
mail production inserter machines to transfer to the command
center;
identifying software updates to transfer from the
command center to the one or more selected mail production
inserter machines;
identifying a time for the file transfer transaction;
identifying a sequence for inserter data transfer and
software update portions of the transfer transaction; and
executing the defined file transfer transaction.

C. REFERENCES
The Examiner relies on the following references as evidence:
Daniels US 5,797,015 Aug. 18, 1998
Satyanarayanan US 6,662,198 B2 Dec. 09, 2003
(filed Aug. 30, 2001)

D. REJECTIONS
The Examiner makes the following rejections.
Claims 1-6 stand rejected under 35 U.S.C. §102(b) as being
anticipated by Daniels.
Claims 7-11 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Daniels in view of Satyanarayanan.

II. ISSUE
Whether Appellants have shown error in the Examiner's initial
showing of anticipation of independent claim 1 and of obviousness of
independent claim 7?
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III. PRINCIPLES OF LAW
35 U.S.C. § 102
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
“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., Inc. 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. 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 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.
Appellants have the opportunity on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
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claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

35 U.S.C. § 103(a)
Obviousness
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; and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).

IV. ANALYSIS
Appellants argue that the appealed claims recite a specific
combination of steps directed to controlling the transfer of files in a network
of mail production inserter machines and that given a reasonable claim
interpretation it can be seen that "none of the steps of independent claim 1
are disclosed in Daniels." (App. Br. 4). Appellants contend that the
Examiner has adopted an unfairly broad claim interpretation. Appellants
contend that Daniels does not describe defining a file transfer transaction
between a plurality of inserter sites in a command center as recited in the
claims and there is no recited “command center” described in Daniels.
Appellants contend that the Examiner chooses to "ignore the recited steps
and inter-operation of steps" (App. Br. 5).
In response to Appellants' contentions, the Examiner in the
Examiner's Answer at pages 3-4 attempts to identify a plurality of inserter
sites and a command center, but the Examiner relies upon column 2, lines 3-
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6, of Daniels which describes the Background of the Invention rather than
the invention of Daniels. Therefore, the Examiner has set forth a rejection
over a combination of teachings rather than a single teaching. This is
improper under 35 U.S.C. § 102.
The Examiner further strains at page 11 of the Answer, in response to
Appellants' contention that none of the steps are disclosed in Daniels, to
reply that "the functions for the five sub steps in claim 1 are implied in
Daniels teaching even Daniels does not use exactly the same terminology in
his disclosure." We cannot agree with the Examiner's conclusions and find
that the Examiner’s conclusions are based upon speculation and conjecture
upon what the database in figure 4 necessarily teaches. What figure 4 may
“imply” is not sufficient for an anticipation rejection.
With respect to Appellants' argument that Daniels does not describe
defining a file transfer transaction between at least one of a plurality of
inserter sites and a command center, the Examiner responds that the
command center is "similar to Daniels ‘user interface’" and the
communication and identification of inserter data is "inherited [sic, inherent]
in Daniels teaching" (Ans. 13). Again, we find the Examiner's conclusions
to not be based upon the express teachings of Daniels and what necessarily
would be taught to skilled artisans, but to be based on speculation and
conjecture. This is not appropriate in a rejection based upon anticipation.
For these exemplary reasons, we find that Appellants have shown
error in the Examiner’s initial showing of anticipation. Hence, the Examiner
has not set forth a sufficient initial showing of anticipation, and we cannot
sustain the rejection of independent claim 1 based upon Daniels alone.
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Therefore, we similarly cannot sustain the rejection of dependent claims 2-7,
which contains a subject matter found deficient in the base rejection.

Obviousness
With respect to independent claim 7, the Examiner additionally relies
upon the teachings of Satyanarayanan to teach the second server and data
concatenater. Appellants advance similar contentions with respect to
Daniels as discussed above and further contend that Satyanarayanan fails to
disclose or suggest the features of claim 7 pertaining to components of
storing data and software updates and for defining a file transfer transaction
relating to inserters and that Satyanarayanan does not teach anything about
collecting data from or providing software updates to an inserter machine as
recited in the present intention. (App. Br. 6-7). We agree with Appellants’
contentions, as discussed above and further find that the teachings of
Satyanarayanan are not reasonably pertinent to the claimed invention as
advanced by the Examiner. The Examiner finds the term “inserter” in
Satyanarayanan which is has not been shown to be related to any type of
"mail production inserter machines" as recited in the preamble of
independent claim 7. The Examiner appears to have merely found the same
term in an unrelated context and applied the reference in the rejection.
Finding no convincing line of reasoning for the combination of teachings in
addition to the above-noted deficiencies of Daniels alone with respect to
independent claim 1, we find the rejection based upon obviousness to be
lacking. Therefore, we cannot sustain the rejection of independent claim 7
and its dependent claims 8-11.

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V. CONCLUSION
For the aforementioned reasons, Appellants have shown error in the
Examiner's initial showing of anticipation and in the Examiner's initial
showing of obviousness.

VI. ORDER
We reverse the anticipation rejection of claims 1-7 and we reverse the
obviousness rejections of claims 8-11.

REVERSED

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