Ex Parte Parkos et al

Board of Patent Appeals and Interferences

Jun 18, 2012

10930466 (B.P.A.I. Jun. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ARTHUR J. PARKOS and
DEBORRA J. ZUKOWSKI
____________

Appeal 2010-007170
Application 10/930,466
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Arthur J. Parkos, et al. (Appellants) seek our review under 35 U.S.C. §
134 of the final rejection of claims 1, 3-19, 21-27, 29, and 30. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method comprising:
detecting an event which occurs during transportation of a
mailpiece on the way from a sender to an addressee;
then determining alternate contact information for the sender
by reading said alternate contact information from the mailpiece;
then sending a request including information regarding the
event to the sender using the alternate contact information;
receiving instructions from the sender in response to the
request regarding at least one action to be taken upon occurrence of
said event; and
determining if the mailpiece is in a condition to allow the
received instructions to be followed, and if the mailpiece is in the
condition to allow the received instructions to be followed, then
following said instructions and if the mailpiece is not in the
condition to allow the received instructions to be followed, then
destroying the mailpiece.
The other independent claim, claim 21 - also drawn to a method,
differs from claim 1 in adding a step of “and if the sender requests electronic
delivery, then, opening the mailpiece; scanning a document contained in the

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Sep. 4, 2009) and Reply Brief (“Reply Br.,” filed Feb. 10, 2010),
and the Examiner’s Answer (“Answer,” mailed Dec. 10, 2009).
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mailpiece to generate scanned data; and transmitting the scanned data to the
addressee.”

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Theimer
Sansone ‘613
Sansone ‘880
Kuebert
Lala
Nguyen
MacKlin
Kan

US 5,627,517
US 2002/0141613 A1
US 2002/0143880 A1
US 2002/0165729 A1
US 2002/0165908 A1
US 2003/0199320 A1
US 2004/0093314 A1
US 2005/0049890 A1
May 6, 1997
Oct. 3, 2002
Oct. 3, 2002
Nov. 7, 2002
Nov. 7, 2002
Oct. 23, 2003
May 13, 2004
Mar. 3, 2005
The following rejections are before us for review:
1. Claims 1, 3, 4, 7, 82, 11, 12, and 14 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Sansone ‘880, Kuebert, and Sansone
‘613.
2. Claim 5 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Sansone ‘880, Kuebert, Sansone ‘613, and Kan.
3. Claims 10 and 15 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Sansone ‘880, Kuebert, Sansone ‘613, and Official
Notices I and II.

2 Claim 8 was inadvertently not included in the statement of the rejection as
set forth in the Answer.
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4. Claim 13 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Sansone ‘880, Kuebert, Sansone ‘613, and MacKlin.
5. Claims 17 and 18 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Sansone ‘880, Kuebert, Sansone ‘613, and Nguyen.
6. Claim 29 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Sansone ‘880, Kuebert, Sansone ‘613, and Lala.
7. Claims 6, 9, 16, and 19 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Sansone ‘880, Kuebert, Sansone ‘613, and Theimer.
8. Claims 21, 22, 25, and 26 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Sansone ‘880 and Kuebert.
9. Claim 23 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Sansone ‘880, Kuebert, and Kan.
10. Claim 30 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Sansone ‘880, Kuebert, and Lala.
11. Claims 24 and 27 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Sansone ‘880, Kuebert, and Theimer.

ISSUE
Was an error committed in rejecting the claims on appeal under §103
over the cited prior art in error?

FINDINGS OF FACT
We adopt and rely on the Examiner’s factual findings stated in the
Answer. Additional findings of fact may appear in the Analysis below.

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ANALYSIS
The rejection of claims 1, 3, 4, 7, 8, 11, 12, and 14 under 35 U.S.C. §103(a)
as being unpatentable over Sansone ‘880, Kuebert, and Sansone ‘613.
The Appellants argued claims 1, 3, 4, 7, 11, 12, and 14 as a group
(App. Br. 14-16). We select claim 1 as the representative claim for this
group, and the remaining claims 3, 4, 7, 11, 12, and 14 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Analysis begins with a key legal question -- what is the
invention claimed? Courts are required to view the claimed
invention as a whole. 35 U.S.C. § 103. Claim interpretation, in
light of the specification, claim language, other claims, and
prosecution history, is a matter of law and will normally control
the remainder of the decisional process.
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir.
1987).
Claim 1 is directed to a method comprising 6 steps.
Step 1 (“detecting an event which occurs during transportation of a
mailpiece on the way from a sender to an addressee”). There is no express
definition in the Specification limiting the claim term “event”. Accordingly,
it covers any happening or occurrence of a mailpiece on the way from a
sender to an addressee. For example, a crash would be an event.
Step 2 (“then determining alternate contact information for the
sender by reading said alternate contact information from the mailpiece”).
The Specification describes a telephone number as an alternate contact
information. Specification [0024]. Thus this step covers reading a sender’s
telephone number from the mailpiece.
Step 3 (“then sending a request including information regarding the
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event to the sender using the alternate contact information”). If step 1
covers a crash involving a mailpiece on the way from a sender to an
addressee and step 2 covers reading a sender’s telephone number from the
mailpiece, then this step covers calling the sender of the mailpiece and
asking for information relative to the mailpiece involved in the crash.
Step 4 (“receiving instructions from the sender in response to the
request regarding at least one action to be taken upon occurrence of said
event”). If step 3 covers calling the sender of the mailpiece and asking for
information relative the mailpiece involved in the crash, then this step covers
a sender instructing that the mailpiece be destroyed.
Step 5 (“determining if the mailpiece is in a condition to allow the
received instructions to be followed”). If step 3 covers calling the sender of
the mailpiece and asking for information relative the mailpiece involved in
the crash and step 4 covers a sender instructing that the mailpiece be
destroyed, then this step covers determining whether the mailpiece can be
destroyed.
Step 6 (“if the mailpiece is in the condition to allow the received
instructions to be followed, then following said instructions and if the
mailpiece is not in the condition to allow the received instructions to be
followed, then destroying the mailpiece.”). If step 3 covers calling the
sender of the mailpiece and asking for information relative the mailpiece
involved in the crash, step 4 covers a sender instructing that the mailpiece be
destroyed, and step 5 covers determining whether the mailpiece can be
destroyed, then this step covers destroying the mailpiece if it can be
destroyed or, if not, destroying it.
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Putting it all together, claim 1, as reasonably broadly construed in
light of the Specification as it would have been interpreted by one of
ordinary skill in the art at the time of the invention, encompasses a method
whereby when a crash occurs during transportation of a mailpiece on the
way from a sender to an addressee, calling the sender for instructions via a
phone number indicated on the mailpiece, and if the instructions are to
destroy the mailpiece, then destroy it. To put it even more simply, the
method as claimed covers calling a sender’s number on a letter and
destroying the letter if so ordered.
That being claim 1 reasonably broadly construed, we turn to the
rejection.
The Examiner takes the position that Sansone ‘880 discloses steps 1
and 2, Kuebert discloses steps 3 and 4, and Sansone ‘613 discloses steps 5
and 6. Answer 3-4. The Examiner found that it would have been obvious to
combine these steps and thereby reach the claimed invention. Answer
5. The Appellants disagree, arguing that Kuebert does not disclose step 5
(“determining if the mailpiece is in a condition to allow the received
instructions to be followed”). App. Br. 15. “Keubert '729 suggests only
changing the delivery time or place of a mail item.” App. Br. 16. But as we
read the Answer, the Examiner relied on Sansone ‘613, not Kuebert:
the limitation taught by Sansone 2 [Sansone ‘613], determining
if the mailpiece is in a condition to allow instructions to be
followed, and if the mailpiece is in the condition to allow
instructions to be followed, then following said instructions and
if the mailpiece is not in the condition to allow the instructions
to be followed, then destroying the mailpiece (see para. 31-32).
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Answer 4. Paragraph [0031] describes a recipient having instructed the post
to destroy the mail and paragraph [0032] describes a situation where if a
security process determines that a mailpiece contains life-harming material
then it is sent to a proper authority disposal site. By implication, in the
situation that a mailpiece contains life-harming material, there necessarily
was a prior step of “determining if the mailpiece is in a condition to allow
the received instructions to be followed” (claim 1). In evaluating a reference
it is proper to take into account not only the specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826
(CCPA 1968). Accordingly, the argument is unpersuasive as to error in the
rejection.
The Appellants take issue with the Examiner’s position regarding
claim 8, but the Examiner’s position has not been addressed with any
specificity. The Examiner recognized that the prior art disclosed printing a
sender’s phone number and not that of a recipient but did not find the
difference patentably consequential. Answer 16. We agree. We do not see
the functional distinction between information representing a sender’s phone
number and not that of a recipient in the context of claim 8, which is drawn
to information printed on a mailpiece.
All the arguments having been addressed and found unpersuasive as
to error in the rejection, the rejection is affirmed.

The rejection of claim 5 under 35 U.S.C. §103(a) as being unpatentable over
Sansone ‘880, Kuebert, Sansone ‘613, and Kan.
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The Appellants rely on the arguments challenging the rejection of
claim 1 to challenge this rejection. App. Br. 17. Those arguments having
been found unpersuasive, they are equally unpersuasive as to error in the
rejection of claim 5.
The Appellants also argue that “one of ordinary skill in the art would
not look to Kan ‘890 to modify the other cited references because Kan ‘890
does not suggest or contemplate delivery instructions at all, but merely
carries information used in a method for processing returned mail - after
delivery has been aborted.” App. Br. 17. But, as the Examiner points out,
“Kan was relied upon to show that printing an electronic mail address on a
mail piece would have been obvious at the time of invention. Fig. 2C, of
Kan, plainly describes this feature.” Answer 17. “When a work is available
in one field of endeavor, design incentives and other market forces can
prompt variations of it, either in the same field or a different one. If a person
of ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).

The rejection of claims 10 and 15 under 35 U.S.C. §103(a) as being
unpatentable over Sansone ‘880, Kuebert, Sansone ‘613, and Official
Notices I and II.
The Appellants rely on the arguments challenging the rejection of
claim 1 to challenge this rejection. App. Br. 17. Those arguments having
been found unpersuasive, they are equally unpersuasive as to error in the
rejection of claims 10 and 15.
Moreover, with regard to claim 10, the Examiner's reliance on
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Official Notice is misplaced. While the United States Postal Service may
place damaged envelopes in clear envelopes for further delivery, such steps
are taken at postal service discretion and do not result in opening the
mailpiece. Furthermore, such steps are not taken in response to instructions
from the sender.
With regard to claim 15, the Appellants argue that the Examiner's
reliance on Official Notice is misplaced at least because such barcodes are
not used along with receiving instructions from the sender in response to a
request regarding action to be taken upon occurrence of an event. App. Br.
17-18. But the arguments are not persuasive as to error in the rejection
because “[t]he question in a §103 case is what the references would
[c]ollectively suggest to one of ordinary skill in the art.” In re Ehrreich, 590
F.2d 902, 909 (CCPA 1979).

The rejection of claim 13 under 35 U.S.C. §103(a) as being unpatentable
over Sansone ‘880, Kuebert, Sansone ‘613, and MacKlin.
The Appellants rely on the arguments challenging the rejection of
claim 1 to challenge this rejection. App. Br. 18. Those arguments having
been found unpersuasive, they are equally unpersuasive as to error in the
rejection of claim 13.

The rejection of claims 17 and 18 under 35 U.S.C. §103(a) as being
unpatentable over Sansone ‘880, Kuebert, Sansone ‘613, and Nguyen.
The Appellants rely on the arguments challenging the rejection of
claim 1 to challenge this rejection. App. Br. 19. Those arguments having
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been found unpersuasive, they are equally unpersuasive as to error in the
rejection of claims 17 and 18.
The Appellants also argue that “one of ordinary skill in the art would
not look to Nguyen ‘320 to modify the other cited references because it
suggests only class of service upgrade before an item is inducted, not after
an item is mailed and an event detected.” App. Br. 19. But “[w]hen a work
is available in one field, design incentives and other market forces can
prompt variations of it, either in the same field or in another. If a person of
ordinary skill in the art can implement a predictable variation… § 103 likely
bars its patentability.” KSR at 401.

The rejection of claim 29 under 35 U.S.C. §103(a) as being unpatentable
over Sansone ‘880, Kuebert, Sansone ‘613, and Lala.
The Appellants rely on the arguments challenging the rejection of
claim 29 to challenge this rejection. App. Br. 20. Those arguments having
been found unpersuasive, they are equally unpersuasive as to error in the
rejection of claim 29.
The Appellants also argue that “one of ordinary skill in the art would
not look to Lala ‘908 to modify the other cited references because it suggests
only electronic commerce purchases and has no suggestion of delivery
services or agreed payment for processing new delivery instructions.” App.
Br. 20. But “[w]hen a work is available in one field, design incentives and
other market forces can prompt variations of it, either in the same field in
another. If a person of ordinary skill in the art can implement a predictable
variation…§ 103 likely bars its patentability.” KSR at 401.
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The rejection of claims 6, 9, 16, and 19 under 35 U.S.C. §103(a) as being
unpatentable over Sansone ‘880, Kuebert, Sansone ‘613, and Theimer.
The Appellants rely on the arguments challenging the rejection of
claim 1 to challenge this rejection. App. Br. 20. Those arguments having
been found unpersuasive, they are equally unpersuasive as to error in the
rejection of claims 6, 9, 16, and 19.
The Appellants also argue that “one of ordinary skill in the art would
not look to Theimer '517 to modify the other cited references because it does
not apparently involve receiving new delivery instructions at all.” App. Br.
20. But “[w]hen a work is available in one field, design incentives and other
market forces can prompt variations of it, either in the same field or another.
If a person of ordinary skill can implement a predictable variation… § 103
likely bars its patentability.” KSR at 401.

The rejection of claims 21, 22, 25, and 26 under 35 U.S.C. §103(a) as being
unpatentable over Sansone ‘880 and Kuebert.
The Appellants rely on the arguments challenging the rejection of
claim 1 to challenge this rejection. App. Br. 22. Those arguments having
been found unpersuasive, they are equally unpersuasive as to error in the
rejection of claims 21, 22, 25, and 26.
The Appellants argue that
the Examiner has not established that the cited references teach
or fairly suggest, alone or in any proper combination, the
element of “determining whether the mailpiece belongs to a
category of scan-and-forward mail pieces.” The Examiner cites
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to paragraph 0036 in Kuebert ‘729, but that citation does not
suggest determining a category of the mailpiece at all.
App. Br. 21-22. But, in fact, the Examiner relied on Sansone ‘880: “As per
Claim 21, Sansone teaches detecting an event which occurs during
transportation of a mailpiece on the way from a sender to an addressee (see
para. 5 and 7); determining whether the mailpiece belongs to a category of
scan-and-forward mail pieces (see para. 28 and 30) ....” Answer 11.

The rejection of claim 23 under 35 U.S.C. §103(a) as being unpatentable
over over Sansone ‘880, Kuebert, and Kan.
The Appellants rely on the arguments challenging the rejection of
claim 1 to challenge this rejection. App. Br. 22-23. Those arguments
having been found unpersuasive, they are equally unpersuasive as to error in
the rejection of claim 23.

The rejection of claim 30 under 35 U.S.C. §103(a) as being unpatentable
over Sansone ‘880, Kuebert, and Lala.
The Appellants rely on the arguments challenging the rejection of
claims 1 and 29 to challenge this rejection. App. Br. 23. Those arguments
having been found unpersuasive, they are equally unpersuasive as to error in
the rejection of claim 30.

The rejection of claims 24 and 27 under 35 U.S.C. §103(a) as being
unpatentable over Sansone ‘880, Kuebert, and Theimer.
The Appellants rely on the arguments challenging the rejection of
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claim 1 and claims 6, 9, 16, and 19 to challenge this rejection. App. Br. 24.
Those arguments having been found unpersuasive, they are equally
unpersuasive as to error in the rejection of claims 24 and 27.

CONCLUSIONS
The rejections of claims 1, 3, 4, 7, 8, 11, 12, and 14 under 35 U.S.C.
§103(a) as being unpatentable over Sansone ‘880, Kuebert, and Sansone
‘613; claim 5 rejected under 35 U.S.C. §103(a) as being unpatentable over
Sansone ‘880, Kuebert, Sansone ‘613, and Kan; claims 10 and 15 under 35
U.S.C. §103(a) as being unpatentable over Sansone ‘880, Kuebert, Sansone
‘613, and Official Notices I and II; claim 13 under 35 U.S.C. §103(a) as
being unpatentable over Sansone ‘880, Kuebert, Sansone ‘613, and
MacKlin; claims 17 and 18 under 35 U.S.C. §103(a) as being unpatentable
over Sansone ‘880, Kuebert, Sansone ‘613, and Nguyen; claim 29 under 35
U.S.C. §103(a) as being unpatentable over Sansone ‘880, Kuebert, Sansone
‘613, and Lala; claims 6, 9, 16, and 19 under 35 U.S.C. §103(a) as being
unpatentable over Sansone ‘880, Kuebert, Sansone ‘613, and Theimer;
claims 21, 22, 25, and 26 under 35 U.S.C. §103(a) as being unpatentable
over Sansone ‘880 and Kuebert; claim 23 under 35 U.S.C. §103(a) as being
unpatentable over over Sansone ‘880, Kuebert, and Kan; claim 30 under 35
U.S.C. §103(a) as being unpatentable over Sansone ‘880, Kuebert, and Lala;
and, claims 24 and 27 under 35 U.S.C. §103(a) as being unpatentable over
Sansone ‘880, Kuebert, and Theimer, are affirmed.

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DECISION
The decision of the Examiner to reject claims 1, 3-19, 21-27, 29, and
30 is affirmed.

AFFIRMED

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