Ex Parte Quine et al

Board of Patent Appeals and Interferences

Sep 15, 2010

10980584 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DOUGLAS B. QUINE and CHRISTOPHER A. BAKER
____________________

Appeal 2009-006794
Application 10/980,584
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, STEVEN D.A. MCCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006794
Application 10/980,584
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 3-
7, 9, and 18-22. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a sorting method and system with
dynamically re-allocated sortation bins. Claim 18, reproduced below, is
illustrative of the claimed subject matter:
18. A sorter system, comprising:
at least one first sortation bin;
at least one second sortation bin;
at least one third sortation bin;
a feed path for transporting a plurality of media items to
the sortation bins; and
a controller to control sortation of the media items to the
sortation bins, wherein the at least one first sortation bin is
assigned to media items having a single attribute, and wherein
the at least one second sortation bin and the at least one third
sortation bin are dynamically reassigned to media items having
a varying attribute, different from the single attribute.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stevens
Gottlieb
Jirsa
US 5,810,173
US 6,283,304 B1
US 7,060,928 B2
Sep. 22, 1998
Sep. 4, 2001
Jun. 13, 2006
Fry US 2006/0070929 A1 Apr. 6, 2006

REJECTIONS
Claims 3, 6, 7, 9, and 18-20 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Gottlieb. Ans. 3.
Appeal 2009-006794
Application 10/980,584
3
Claims 3, 4, 6, 7, 9, 18-20, and 22 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Fry. Ans. 4.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gottlieb and Stevens. Ans. 5.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gottlieb and Jirsa. Ans. 5-6.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fry and Jirsa. Ans. 6.

OPINION
Initially we note that Appellants present arguments relating to the
objection of claim 18. Br. 9. This issue relates to petitionable subject matter
under 37 C.F.R. § 1.181 and not to appealable subject matter. See In re
Mindick, 371 F.2d 892, 894 (CCPA 1967).
Regarding the rejection of the sole independent claim, claim 18, as
being anticipated by Gottlieb, Appellants contend that Gottlieb fails to teach
“‘a controller to control sortation of the media items to the sortation bins,
wherein the at least one first sortation bin is assigned to media items having
a single attribute, and wherein the at least one second sortation bin and the at
least one third sortation bin are dynamically reassigned to media items
having a varying attribute, different from the single attribute.’” Br. 10.
Gottlieb discloses reading information on a mailpiece and comparing
that information to a database in order to determine the appropriate bin for
the mailpiece. Col. 2, ll. 25-30; Ans. 9. The Examiner contends that “[t]he
presence of the multiple alternate bins (c4 lines 34+) anticipates, ‘wherein
the at least one second sortation bin and the at least one third sortation bin
are dynamically reassigned to media items having a varying attribute,
Appeal 2009-006794
Application 10/980,584
4
different from the single attribute.’” Ans. 9. Appellants contend this teaches
only an overflow sortation arrangement. Br. 10. Either is possible since
Gottlieb does not make clear whether the “alternate bins” are dedicated
solely for overflow from specific bins or whether the alternate bins can be
used for overflow from any full bin, i.e., whether they are “dynamically
reassigned” as claimed.
“[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on.” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Nevertheless, before
an applicant can be put to this burdensome task, the examiner must provide
sufficient evidence or scientific reasoning to establish the reasonableness of
the examiner’s belief that the functional limitation is an inherent
characteristic of the prior art. The fact that a certain result or characteristic
may occur or be present in the prior art is not sufficient to establish the
inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534
(Fed. Cir. 1993).
Here, the Examiner has failed to provide sufficient evidence or
scientific reasoning to establish that Gottlieb’s system would be capable of
“dynamically reassigning” bins as claimed. We are therefore constrained to
reverse the Examiner’s rejection of claim 18, along with dependent claims 3,
6, 7, 9, 19, and 20, as being anticipated by Gottlieb. Since neither Stevens
nor Jirsa, as applied by the Examiner, cure this deficiency, the rejection of
claims 4 and 5 as being unpatentable over Gottlieb and Stevens, and the
Appeal 2009-006794
Application 10/980,584
5
rejection of claim 21 as being unpatentable over Gottlieb and Jirsa, must also
be reversed.
We turn to the alternate rejection of claim 18, as being anticipated by
Fry. Appellants argue claims 3, 4, 6, 7, 9, 18-20, and 22 as a group. Br. 10-
11. We select claim 18 as the representative claim, and claims 3, 4, 6, 7, 9,
19, 20, and 22 stand or fall with claim 18. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants’ arguments regarding the rejection of claim 21 as being
unpatentable over Fry and Jirsa are based solely upon the alleged
deficiencies of Fry. Br. 12-13.
Appellants contend that “Fry’s grouping of mail pieces by density
regions relates to an arbitrary grouping definition, not an attribute of the mail
pieces.” Br. 11. This statement is inaccurate since Fry indicates that the
density patterns are, in fact, based upon “address destination information”—
an attribute of the mail piece. In Fry’s system, if there is no additional space
(step 325) available in a bin assigned to receive a mail piece (step 320)
based upon the read information (step 315), a low density range bin or a
buffer bin may be reassigned to accommodate the mail piece (step 335)
during the sorting operation. P. 4, paras. [0054]-[0056]; fig. 3. Thus, Fry’s
bins may be “dynamically reassigned.”
Appellants additionally contend that “Fry’s ‘buffer bins’ do not
necessarily have a ‘varying attribute, different from the single attribute,’ as
claimed.” Br. 11. We acknowledge that Fry does not explicitly state that this
step occurs. However, it is implicit in Fry’s process. Reassignment of bins or
the use of buffer bins only occurs when mail destined for a particular
location is received when that location is full. Paras. [0038]-[0040], [0054]-
[0056]. If at least one location, a “first sortation bin . . . assigned to media
items having a single attribute,” never fills during Fry’s sorting process
Appeal 2009-006794
Application 10/980,584
6
while two other locations, a “second bin” and “third bin” fill, two of Fry’s
buffer bins are “dynamically reassigned” to items having “varying
attribute[s], different from the single attribute” of the location that never
filled. Based upon the disproportionality of permanently assigned bins and
buffer bins in Fry’s example, Fry clearly did not foresee that every
permanently assigned bin would reach capacity and require reassignment of
a buffer bin. Paras. [0062]-[0065].
Appellants have not supplied sufficient arguments or evidence that
Fry’s system does not or could not function in this manner. We therefore
agree with the Examiner’s finding that Fry’s controller 108 would be
capable of “control[ing] sortation of the media items to the sortation bins,
wherein the at least one first sortation bin is assigned to media items having
a single attribute, and wherein the at least one second sortation bin and the at
least one third sortation bin are dynamically reassigned to media items
having a varying attribute, different from the single attribute,” as claimed.
See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function); see also In re Swinehart, 439 F.2d at 213. For
these reasons, the Examiner’s rejection of claims 3, 4, 6, 7, 9, 18-20, and 22
as being anticipated by Fry, and the Examiner’s rejection of claim 21 as
being unpatentable over Fry and Jirsa are sustained.

DECISION
The rejection of claims 3, 6, 7, 9, and 18-20 under 35 U.S.C. § 102(b)
as being anticipated by Gottlieb is reversed.
The rejection of claims 3, 4, 6, 7, 9, 18-20, and 22 under 35 U.S.C.
§ 102(e) as being anticipated by Fry is affirmed.
Appeal 2009-006794
Application 10/980,584
7
The rejection of claims 4 and 5 under 35 U.S.C. § 103(a) as being
unpatentable over Gottlieb and Stevens is reversed.
The rejection of claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Gottlieb and Jirsa is reversed.
The rejection of claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Fry and Jirsa is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

nlk

PITNEY BOWES INC.
INTELLECTUAL PROPERTY & TECH. LAW DEPT.
35 WATERVIEW DRIVE
MSC 26-22
SHELTON CT 06484