Ex Parte Ryan et al

Board of Patent Appeals and Interferences

Sep 22, 2010

10707510 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P Alexandria, 0 Box 1450 Virginia 22313- 1450
www uspto gov
919 7590 09/24/20 10
PITNEY BOWES INC.
APPLICATION NO.
EXAMINER
INTELLECTUAL PROPERTY & TECH. LAW DEPT. JABR, FADEY s
10/707,510 12/18/2003 Frederick W. Ryan JR. F-775 1509
FILING DATE
35 WATERVIEW DRIVE
MSC 26-22
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
SHELTON, CT 06484 3628
ATTORNEY DOCKET NO.
Please find below andlor attached an Office communication concerning this application or proceeding.
CONFIRMATION NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
09/24/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Exparte FREDRICK W. RYAN, JR.,
BRADLEY R. HAMMELL, and
ANUJA S. KETAN
Appeal 2009-013417
Application 10/707,5 10
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 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 2009-013417
Application 10/707,5 10
STATEMENT OF THE CASE
Fredrick W. Ryan, Bradley R. Hammell, and Anuja S. Ketan
(Appellants) seek review under 35 U.S.C. 5 134 (2002) of a final rejection of
claims 1, 3-12, 14, and 16-23, the only claims pending in the application on
appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. 5 6(b)
(2002).
We AFFIRM-IN-PART.
THE INVENTION
The Appellants invented systems and methods for processing refund
requests in a postage system. Specification ¶ 0020.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A method for processing a postage refund request for a mail
piece comprising:
[I] receiving a refund request including a tracking identifier
from a user system;
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed March 9, 2009) and the Examiner's Answer ("Ans.," mailed April
20, 2009), and Final Rejection ("Final Rej.," mailed October 9, 2008).
Appeal 2009-013417
Application 101707,5 10
[2] processing and paying the refund request substantially
immediately after receiving the request and before review of the
refund request to determine validity;
[3] then determining if the refund request is valid;
[4] if the refund request is not valid, initiating a refund error
process, wherein,
[a] the determination of whether the refund request is
valid includes determining whether the tracking identifier
has been observed in a mail stream; and
[b] monitoring the tracking identifier after processing
the refund request in order to determine if the mail piece
is used after a refund payment.
THE REJECTIONS
The Examiner relies upon the following prior art:
Gullo et al. US 200410044586 A1 Mar. 4, 2004
Montgomery et al. US 200310101147 A1 May 29,2003
Claim 1 stands rejected under 35 U.S.C. 5 112, first paragraph, for
failing to comply with the written description requirement.
Claim 1 stands rejected under 35 U.S.C. 5 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the Appellants regard as the invention.
Claims 1, 3-12, 14, and 16-23 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Gullo and Montgomery.
Appeal 2009-013417
Application 10/707,5 10
ISSUES
The issue of whether the Examiner erred in rejecting claim 1 under 35
U.S.C. 5 112, first paragraph, for failing to comply with the written
description requirement turns on whether the Appellants were in possession
of the feature of paying a refund request after receiving it and subsequent to
payment determining whether the request is valid.
The issue of whether the Examiner erred in rejecting claim 1 under 35
U.S.C. 5 112, second paragraph, as failing to particularly point out and
distinctly claim the subject matter which the Appellants regard as the
invention turns on whether a person with ordinary skill in the art would have
understood what was being claimed by the terms "substantially"
immediately.
The issue of whether the Examiner erred in rejecting claims 1, 3-12, 14,
and 16-23 under 35 U.S.C. 5 103(a) as unpatentable over Gullo and
Montgomery turns on whether Gullo and Montgomery describe paying a
refund after receiving it and later determine whether the request is valid.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellants' Disclosure
01. Tracking information is used in determining whether to honor a
refund request in a preferred embodiment. Specification ¶ 0092.
In an alternative embodiment, a refund request may be honored
Appeal 2009-013417
Application 101707,5 10
and data collected for later use to detect any fraud. Specification ¶
0092.
Facts Related to the Prior Art
Gullo
02. Gullo is directed to a method of processing refunds online,
including processing refunds for unused postage. Gullo ¶ 0002.
Gullo is concerned with automatically tracking labellindicia use,
approve refunds, and monitor fraud. Gullo ¶ 0010.
03. Gullo describes the method begins with an Information Based
Indicia (IBI) postage that is sold to a user and the user affixes this
IBI on to the shipping label on the article to be mailed. Gullo ¶
0015. A unique tracking number or label number is associated
with the IBI such that the IBI can be identified. Gullo ¶ 001 5. A
user seeking a refund will provide sufficient information to verify
the identity of the user and the trackingllabel number for an IBI as
evidence of the purchase. Gullo ¶'s 001 5-00 16. The provided
information is further processed to determine whether the
trackingllabel number has been previously voided or refunded.
Gullo ¶ 0019. If the customer does not meet the fraud-prevention
criteria, the refund request is denied. Gullo ¶ 0019. If the criteria
are satisfied, the refund request is queued for a designated scan
time period. Gullo ¶ 0020. Upon satisfaction of the scan period,
the request is approved, the account is credited, and the customer
is notified via email. Gullo ¶ 0020.
Appeal 2009-013417
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04. Security steps are taken to prevent fraud or misuses of the
refund method by tracking users who repeatedly submit improper
refund requests. Gullo ¶ 0021. Repeat abusers may have their
postage printing capabilities suspended or may be reported to a
body capable of taking further action. Gullo ¶ 0021. A provision
can be made where a user repays the amount they owe to have
their account reactivated. Gullo ¶ 0021.
Montgomery
05. Montgomery is directed to electronic postage metering systems
and personal computer (PC) based postage systems. Montgomery
¶ 0001. Montgomery is concerned with the fraudulent use of
copies of valid postage indicia. Montgomery ¶ 0020.
06. Montgomery describes a postage system that provides a refund
for unused postage. Montgomery ¶ 0169. A postage refund
inquiry consists of a unique tracking ID and a delivery status.
Montgomery ¶ 0169. A refund inquiry can be accessed by either
determining the transaction information meets specific criteria or
an audit review of all of the transactions for the account.
Montgomery ¶' s 0170 and 0175. Specific criteria for duplicate
transactions include (1) two or more transactions, (2) none of the
transactions have been refunded in the past, (3) issued for the
same account, (4) issued on the same day, (5) issued to the same
destination, (6) issued for the same service class, (7) issued for the
same postage amount, and (8) each transaction has an associated
unique tracking ID. Montgomery ¶ 0170. The account
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Application 10/707,5 10
administrator selects the refund option and the user's account will
be credited. Montgomery ¶ 0 170. Furthermore, the refunded
postage transaction is entered into a database for recording status
data such that the delivery status can be checked for six months.
Montgomery ¶'s 0170 and 0188.
ANALYSIS
Claim 1 rejected under 35 U.S. C. § 11 2, first paragraph, for failing to
comply with the written description requirement
The Examiner found that the specification fails to describe the feature of
"paying the refund request substantially immediately after receiving the
request and before review of the refund request to determine validity" in
such a manner to reasonable convey to a person with ordinary skill in the art
that the Appellants had possession of the invention. Ans. 3. The Appellants
contend that Fig. 8 and paragraph 0092 of the specification describe the
invention sufficiently and therefore the claimed invention complies with the
written description requirement. App. Br. 11. We agree with the
Appellants. The Appellants must convey to those skilled in the art that, as of
the filing date sought, he or she was in possession of the invention. Vas-
Cath Znc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The
Specification describes that in an alternative embodiment, a refund request
may be honored and tracking information can be collected to later detect any
fraud. FF 01. This description in the Specification is sufficient to convey
that the Appellants were in possession of the invention. A person with
ordinary skill in the art would have understood that the Appellants possessed
an invention that allows for immediate refund payment and the later
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Application 10/707,5 10
detection of fraud, as recited in claim 1. As such, claim 1 satisfies the
written description requirement of claim 1.
Claim 1 rejected under 35 U.S. C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the Appellants regard as the invention
The Examiner found that the term "substantially" is vague and indefinite
and therefore claim 1 is unclear. Ans. 3-4. The Appellants contend that a
person with ordinary skill in the art would read the sequence of Fig. 8 and
understand the term "substantially" immediately to refer to the time required
in the process. App. Br. 11-12. We agree with the Appellants. The test for
definiteness under 35 U.S.C. 5 112, second paragraph, is whether "those
skilled in the art would understand what is claimed when the claim is read in
light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986)(citations omitted). Claim 1 is
requiring that the processing and paying of the refined request is
"substantially" immediately after receiving the request. A person with
ordinary skill in the art would have understood the scope of how much time
can elapse in order to be "substantially" immediately. As such, we do not
find the scope of claim 1 to be indefinite.
Claims 1, 3-12, 14, and 16-23 rejected under 35 U.S.C. § 103(a) as
unpatentable over Gullo and Montgomery
The Appellants contend that Gullo and Montgomery fail to describe
limitations [2] and [3] of claim 1. App. Br. 14. We agree with the
Appeal 2009-013417
Application 101707,5 10
Appellants. Limitation [2] requires processing and paying a refund request
before the refund is reviewed for its validity. Limitation [3] further requires
determining whether the refund request is valid.
Gullo describes a postage refund method where a user submits a
trackingllabel number in order to receive a refund. FF 03. Gullo explicitly
describes that upon receipt of the trackingllabel number the system
processes the received information to determine whether the number has
been previously refunded or voided. FF 03. Gullo further describes that the
refund request is put in a queue for a scan period in order to determine the
validity of the request. FF 03. As such, Gullo fails to describe paying the
refund request substantially immediately after receiving the request and
before review of the refund request to determine its validity.
Montgomery also describes a postage refund method where a user
submits a refund request. FF 06. Montgomery describes that a refund
inquiry can be analyzed against specific criteria or an audit review of all
postage transactions can be performed. FF 06. In either processing method,
the refund inquiry is reviewed for validating before a refund is granted. The
Examiner argues that Montgomery describes that the end user's account will
be credited for the misprint and the transaction will be flagged as refunded in
the postage database. Ans. 15. However, these refunding steps are done
subsequent to a review and determination that the refund inquiry is valid.
FF 06.
As such, Gullo and Montgomery fail to describes limitations [3] and [4]
of claim 1. Dependant claims 3- 12, 14, and 16- 19 inherit the same
limitations by reference and therefore Gullo and Montgomery fail to
Appeal 2009-013417
Application 10/707,5 10
describe these claims for the same reasons. Since this issue is dispositive as
to the rejection against these claims, we need not reach the remaining
arguments in support of claims 3-12, 14, and 16-19.
The Appellants additionally contend that Gullo and Montgomery fail to
describe a tracking code lifetime period associated with the tracking
identifier, as per claim 20. App. Br. 15. We disagree with the Appellants.
Gullo describes queuing a refund request for a designated period of time to
determine if a scan event occurs. FF 03. Montgomery further describes
tracking refund inquiries by monitoring the tracking information for six
months to determine whether a mail piece associated with any refunded
postage has been received. FF 06. The Appellants fail to provide any
further rationale to distinguish this claimed feature from the prior art. As
such, both Gullo and Montgomery describe this feature of claim 20.
The Appellants further contend that Gullo and Montgomery fail to
describe or suggest the feature that the refund request corresponds to a prior
postage dispense operation test with regard to association with the user and
such variable test periods, as per claim 21. App. Br. 15-16. We disagree
with the Appellants. Gullo describes that the IBI may be purchased or
dispensed to the user and the user affixes the IBI on to the mailing piece. FF
03. As such, Gullo describes the refund request corresponds to a postage
dispense operation. As noted by the Examiner, Gullo further describes
queuing the refund request for a designated period of time that can be varied
and a person with ordinary skill in the art would have recognized that
different classes of mail will have variable delivery dates. Ans. 10-1 1, 17
and FF 03. Therefore, Gullo suggests variable test periods. The Appellants
fail to provide any further rationale to distinguish this claimed feature from
Appeal 2009-013417
Application 10/707,5 10
the prior art. As such, the combination of Gullo and Montgomery describes
claim 2 1.
The Appellants also contend that Gullo and Montgomery fail to describe
assessing a fine if a mail piece is used after a refund request, as per claims
22-23. App. Br. 16. We disagree with the Appellants. Gullo describes
taking security steps to prevent fraud or misuse of the refund method. FF
04. Gullo describes that repeat abusers may have their postage printing
capabilities suspended or be reported for further action. FF 04. Gullo also
describes a provision allowing a user to repay an amount owed. FF 04. A
fine encompasses any limitation of privilege or additional performance in
response to an abuse or misuse of a feature. These security measures,
including requiring a user to pay back an amount owed, are a fine. As such,
the combination of Gullo and Montgomery describe claims 22-23.
CONCLUSIONS OF LAW
The Examiner erred in rejecting claim 1 under 35 U.S.C. 5 112, first
paragraph, for failing to comply with the written description requirement.
The Examiner erred in rejecting claim 1 under 35 U.S .C. 5 1 12, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter which the Appellants regard as the invention.
The Examiner erred in rejecting claims 1, 3- 12, 14, and 16- 19 under 35
U.S.C. 5 103(a) as unpatentable over Gullo and Montgomery.
The Examiner did not err in rejecting claims 20-23 under 35 U.S.C.
5 103(a) as unpatentable over Gullo and Montgomery.
Appeal 2009-013417
Application 10/707,5 10
DECISION
To summarize, our decision is as follows.
The rejection of claim 1 under 35 U.S.C. 5 112, first paragraph, for
failing to comply with the written description requirement is not
sustained.
The rejection of claim 1 under 35 U.S.C. 5 112, second paragraph, as
failing to particularly point out and distinctly claim the subject matter
which the Appellants regard as the invention is not sustained.
The rejection of claims 1, 3-12, 14, and 16-19 under 35 U.S.C.
5 103(a) as unpatentable over Gullo and Montgomery is not sustained.
The rejection of claims 20-23 under 35 U.S.C. 5 103(a) as
unpatentable over Gullo and Montgomery is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a)(l)(iv).
AFFIRMED-IN-PART
mev
Appeal 2009-013417
Application 10/707,5 10
1 PITNEY BOWES INC.
2 INTELLECTUAL PROPERTY & TECH. LAW DEPT.
3 35 WATERVIEW DRIVE
4 MSC 26-22
5 SHELTON CT 06484