Ex Parte Reisinger

Board of Patent Appeals and Interferences

Jan 16, 2009

09340782 (B.P.A.I. Jan. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FRANK REISINGER
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Appeal 2008-3053
Application 09/340,782
Technology Center 3600
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Decided: January 21, 2009
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Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Frank Reisinger (Appellant) seeks our review under 35 U.S.C. § 134
of the Final Rejection of claims 1-32. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
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SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
The present invention relates “to a method … for dependable
transmission of service data to terminal equipment from a remote location,
and in particular to a method and arrangement for transmitting and storing a
new postage fee table in a postage computer in a secure manner.”
Specification 1:6-10. The Specification discusses various prior art methods
of loading postage fee tables to a postage fee machine. Specification 1-3.
Their disadvantages include requiring the postage machine to remain
constantly activated; storing a fee schedule apart from the postage meter
machine before it takes effect, requiring updating; storing fee schedules in a
scale but which relate to separate mail carriers that need to be selected by a
keyboard; and, transmitting fee schedules from a data center to terminal
equipment but without the data center able to check if the current postage fee
schedule table was in fact properly stored in the terminal equipment.
Specification 1-3. To overcome these disadvantages, the Specification
describes using an “electronic postage computer.” Specification 4:4.
The processing module is an electronic
postage computer. The terminal equipment [e.g., a
postage meter machine] is connected to a postage
computer, or the terminal equipment can contain a
microprocessor serving as a postage computer, the

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 25, 2007) and Reply Brief (“Reply Br.,” filed Oct. 30, 2007),
and the Examiner’s Answer (“Answer,” mailed Sep. 6, 2007).
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postage computer being programmed to undertake
a storage of the new postage fee schedule table
data in a memory of the terminal equipment or of
the postage computer, and to form a checksum
over the stored, new postage fee schedule table
data and to communicate the checksum to the data
central, as well as to implement a received (OK)
message and switch the terminal equipment or the
postage computer into an operating mode.

Specification 4.
Claim 1, reproduced below, is illustrative of the claims on appeal.
1. A method for dependably transmitting service
data from a data center to remotely-located
terminal equipment, comprising the steps of:
offering new service data at a data center for future
use at terminal equipment;
forming a request for new service data at the
terminal equipment;
establishing a first communication between the
terminal equipment and the data center and in said
first communication transmitting said request
data from the terminal equipment to the data
center, receiving the request data at the data center,
transmitting the new service data requested in the
request data from the data center to the terminal
equipment, and receiving and storing the new
service data at the terminal equipment; and
establishing a second communication between the
terminal equipment and the data center and in said
second communication forming a message at the
terminal equipment that refers to the new service
data stored at the terminal equipment,
communicating said message from the terminal
equipment to the data center, receiving the
message from the terminal equipment at the data
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center and checking the message at the data center
by comparison of information contained in the
message with information generated from the new
service data at the data center and, given a positive
comparison result, transmitting a follow-up
message from the data center to the terminal
equipment allowing said terminal equipment, when
appropriate, to use said new service data, and
registering at the data center the valid transmission
of the new service data to the terminal equipment.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Wright US 4,802,218 Jan. 31, 1989

The following rejection is before us for review:
1. Claims 1-32 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Wright.

ISSUES
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1-32 under 35 U.S.C. § 102(b) as being
anticipated by Wright. The issue turns on whether Wright expressly or
inherently describes terminal equipment remotely-located from a data center.

PRINCIPLES OF LAW
Anticipation
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“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 Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

ANALYSIS
Like the Appellant (App. Br. 6-9), we, too, have struggled to discern
precisely what in Wright the Examiner is using as evidence for the
conclusion that Wright expressly or inherently describes the claimed subject
matter. The Final Rejection/Answer appear to present copies of the claims
on appeal preceded with an assertion that Wright discloses the claimed
subject matter and followed with a string of column/line numbers. For
example, in the Answer, pp. 3-4, the Examiner states that “Wright discloses
a [claim 1] (e.g. col 2 ln 65 – col 4 ln 30, col 3 ln 35-60, col 3 ln 60-col 4 ln
5, col 5 ln 18-30).” From our reading of the disclosure in Wright to which
the Examiner cites, it is not so apparent that it describes, expressly or
inherently, the claimed subject matter. For one, terms are used in Wright
that are different from those used in the claims. For example, a central
element of the claimed subject matter is a “data center,” something Wright
nowhere recites. The Examiner’s position would have been made more
clear, and perhaps strengthened, had it included a claim construction
analysis.
Be that as it may, claims 1, 12, 17, and 28 all have one thing in
common: they require that terminal equipment be “remotely-located” to a
data center. We find that Wright does not expressly or inherently describe
this claim limitation.
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The claimed methods and apparatuses involve two pieces of
equipment: a data center and a terminal. They seek to “dependably
transmit[] service data from a data center to remotely-located terminal
equipment” (claims 1, 12, 17, and 28). The procedure method claims 1 and
12 describe comprises the terminal requesting new data from the data center
and the data center sending the new data to the terminal. Then the terminal
sends a message regarding the new data to the data center which compares
the message with the new data it originally sent to the terminal. If they
match, the data center sends a follow-up message allowing the terminal to
use the new data it originally sent. Apparatus claims 17 and 28 mirror the
claimed methods but are presented in means-plus-function format.
Notwithstanding that we have been unable to find express disclosure in
Wright for the procedures set forth in the method claims or for the structures
the Specification discloses as corresponding to the means set forth in the
apparatus claims, and the Examiner has not explained why Wright inherently
describes these features of the claimed subject matter, nevertheless all the
claims require the terminal to be “remotely-located” to the data center and
that, at least, must be expressly or inherently described in Wright for Wright
to be an anticipatory reference.
This – that Wright does not expressly or inherently describe the
terminal “remotely-located” to the data center - is Appellant’s major
argument challenging the Examiner’s rejection. App. Br. 7 and Reply Br. 2.
In response to the Appellant’s argument, the Examiner cites a line in Wright
that says “the handshake procedure can be performed with an operations
microprocessor for the terminal, or one remote to the terminal” (col. 7, ll.
57-60)(see Answer 17) in support of the contention that Wright describes
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remote communication between card and terminal. But on closer
examination that is not what is occurring.
Wright describes a transaction procedure which, like the claims, may
involve, for example, the use of a postage metering terminal. However,
there is no remote data center disclosed in Wright. What is disclosed is a
user microprocessor card to be inserted into the terminal. It is this card
which communicates with the terminal via a “handshake” procedure (see
section beginning at col. 9, line 43). Given the Examiner’s reliance on
Wright’s disclosure of a handshake procedure between the user
microprocessor card and the terminal, it appears that the Examiner is
equating the user microprocessor card to the claimed data center. However,
for the “handshake” procedure to be effected, the card must be inserted into
the terminal. (See col. 13, ll. 54-55: “terminal 20’ includes a slot 11 for a
user card 10, a terminal MPU 30, ….”) Thus, even if the card is equated to
the claimed data center, it is not remote to the terminal but rather made a
part of it. We understand the disclosure in Wright to which the Examiner
refers (i.e., col. 7, ll. 57-60) to be describing a system whereby the user
microprocessor card – when inserted in the terminal – may communicate
either with the terminal’s microprocessor, as it is located within the terminal,
or if the terminal’s microprocessor is located remote to the terminal itself.
However, the user microprocessor card (if equated to the claimed data
center) remains a part of the terminal and is not remote to it. Accordingly,
on that basis alone, i.e., that Wright does not show a terminal “remotely-
located” to the data center as required by the claims, Wright does not
anticipate the claimed subject matter.
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We conclude that the Examiner has not made out a prima facie case of
anticipation.

CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 1-32 under 35 U.S.C. §102(b) as being anticipated by
Wright.

DECISION
The decision of the Examiner to reject claims 1-32 is reversed.

REVERSED

hh

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