Ex Parte Nambudiri

Board of Patent Appeals and Interferences

Apr 14, 2010

10698150 (B.P.A.I. Apr. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EASWARAN NAMBUDIRI
____________

Appeal 2009-004724
Application 10/698,150
Technology Center 3600
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Decided: April 15, 2010
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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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Appeal 2009-004724
Application 10/698,150

STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 13 and 15 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 AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed a mailing machine that
has capabilities for detecting and responding to errors in printing postage
indicia. (Spec. [0001]). Claim 13, reproduced below with the numbering in
brackets added, is representative of the subject matter of appeal.

13. A mailing machine comprising:
transport means for transporting mail pieces along a transport
path;
printing means for printing a postage indicia on the mail pieces
transported by the transport means, the postage indicia including a
barcode and human-readable numerals that represent a postage
amount;
[1] reading means, located adjacent the transport path, for
reading the barcode and the human-readable numerals;
[2] comparing means coupled to the reading means for
comparing a postage amount represented by data read from the
barcode with the postage amount represented by the human-readable
numerals; and
[3] means for halting the transport means in response to the
postage amount represented by data read from the barcode not
matching with the postage amount represented by the human-readable
numerals.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Sansone US 6,361,164 B1 Mar. 26, 2002
Montgomery US 2003/0101143 A1 May 29, 2003
Briley US 6,860,425 B2 Mar. 1, 2005

The following rejections are before us for review:
1. Claims 13 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sansone, Montgomery, and Briley.

THE ISSUES
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
This issue turns on whether it would have been obvious to one of
ordinary skill in the art to combine the teachings of Sansone, Montgomery,
and Briley to meet the claimed limitations.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Sansone has disclosed a system that meters the firing of a printer to
audit the dots produced by a digital printer (Title).

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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FF2. Sansone verifies security in a postage meter using dot or drop
printing. Security is achieved by counting the pulse firings used to produce
ink drops. Sansone determines what is printed on mail pieces by reading the
printer firings (that represent alphanumeric characters or other data
produced) and comparing it with the value stored in non-volatile memory
(Abstract).
FF3. Sansone has disclosed that the apparatus determines what is printed on
the mail piece by reading firings (that represent alphanumeric characters or
other data produced) and comparing it with the value stored in memory (Col.
2:39-44).
FF4. Montgomery has disclosed a system for detecting postage fraud using
a unique mail piece indicum (Title). Montgomery compares the tracking ID
found in the self-validating postage indicum and the standard tracking ID to
reveal a discrepancy and fraud (Abstract).
FF5. Montgomery in Fig. 14 discloses at step 700 reading a self-validating
unique postage indicum on a mail piece and in the next step 702 comparing
the contents of the self-validating unique postage indicum to human readable
information on the mail piece.
FF6. Montgomery discloses that a postal verifier operates scanning station
484 to read the postage indicum (barcode) and then manually compares this
to the human readable information (postage amount). If the barcode
information does not match the human readable information, this is an
indication of fraud [0134].
FF7. Briley has disclosed a postage meter indica verification apparatus
(Title).
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FF8. Briley has disclosed that if no postage indicia is determined to be
present by sensor 16 that the control device disables postage meter device 12
so that it can no longer print postage indicia 20 (Col. 2:56-59).

PRINCIPLES OF LAW
“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.”)
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, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415, (citing Graham, 383 U.S.
at 12), and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
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obvious when it does no more than yield predictable results.” Id. at 416.
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”) However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
Claims 13 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sansone, Montgomery, and Briley. The Appellant argues
that the rejection of claim 13 is improper because Sansone does not teach
claim limitation [1] since it instead “counts the number of signal pulse
firings” and further also fails to teach “halting the transporting of mail
pieces” for errors (Br. 5). The Appellant argues that Montgomery is
improperly applied in the rejection because the reference fails to disclose
claim limitations [1], [2], and [3] (Br. 6-7). The Appellant also argues that
Briley fails to disclose claim limitations [1] and [2] and only stops operation
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if there is no postage indicium present (Br. 7). The Appellant further argues
that the rejection of record uses impermissible hindsight (Br. 7).
In contrast, the Examiner has determined that the references of
Sansone, Montgomery, and Briley have been properly combined to meet the
claimed limitations (Ans. 5-9).
We agree with the Examiner. We note initially that claim 13 includes
the above cited claim limitations [1], [2], and [3] which require:
[1] reading means, located adjacent the transport path, for
reading the barcode and the human-readable numerals;
[2] comparing means coupled to the reading means for
comparing a postage amount represented by data read from the
barcode with the postage amount represented by the human-readable
numerals; and
[3] means for halting the transport means in response to the
postage amount represented by data read from the barcode not
matching with the postage amount represented by the human-readable
numerals. (Claim 13).

The Appellant arguments (Br. 4-8) have been largely directed to
discussing the references applied in the rejection individually. It is improper
to attack references individually where, as here, the obviousness rejection is
based on their combined teachings. In re Merck & Co., 800F.2d 1019, 1097
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425-426 (CCPA 1981). Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Turning to the references, Sansone verifies security in a postage meter
using dot or drop printing by counting the pulse firings used to produce ink
drops (FF2). Montgomery has disclosed that a postal verifier operates a
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scanning station to read a postage indicum (barcode) and then manually
compares this to the human readable information (postage amount) and that
if the barcode information does not match, that this is an indication of fraud.
(FF6). The system of Montgomery is simpler in some aspects than that of
Sansone because it deals with scanning already printed material rather than
measuring the pulses used to produce ink drops. Briley has disclosed that if
no postage indicia is determined to be present by sensor 16 that the control
device disables postage meter device 12 so that it can no longer print postage
indicia 20 (FF8) which is at least some indication that a printing postage
process is stopped if an error occurs. The modification of the postal system
of Sansone to use the scanning verification system of Montgomery that
compares the postage barcode to the human readable postage amount and to
stop the process as suggested by Briley is considered an obvious, predictable
combination of known elements for a simpler process which was halted if
fraud was determined and did not require measuring pulse firings of the ink.
The use of a conventional vision system to read the human readable postage
amount instead of being read by an operator and to halt the transport line if
fraud are detected are considered modifications well within the level of one
of ordinary skill in the art to automate the system and to stop mail from
being sent out if fraud was detected. For these above reasons the rejection of
claim 13, and claim 15 for which the same arguments have been presented,
is sustained.

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CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 13 and 15 under 35 U.S.C. § 103(a) as unpatentable over
Sansone, Montgomery, and Briley.

DECISION
The Examiner’s rejection of claims 13 and 15 is sustained.

AFFIRMED

JRG

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

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