Ex Parte Stringham

Board of Patent Appeals and Interferences

Mar 12, 2012

10418542 (B.P.A.I. Mar. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GARY GLEN STRINGHAM
____________________

Appeal 2009-012562
Application 10/418,542
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
JEFFREY S. SMITH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012562
Application 10/418,542

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-3, 5-8, 13, 47-52, 54, 57, and 59-65. The rejection of claims 4, 53, and 55
has been withdrawn. (Ans. 15). We have jurisdiction under 35 U.S.C.
§ 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. A method of distributing mail, comprising:
electronically transmitting a first print job and a first list of
postal addresses of multiple addressees to which the first print job is
desired to be delivered from a first user's location;
routing the first print job to respective postal facilities separate
from the first user's location, the postal facilities being selected based
on the postal addresses; and
at a postal facility, printing out a plurality of copies of the first
print job for respective ones of the addressees in an order
corresponding to a postal facility delivery route; and
for an individual one of the addressees, bundling the copy of
the first print job intended for delivery to the one of the addressees
with a copy of another print job intended for delivery to the one of the
addressees.

Rejections at Issue in the Appeal 1
The Examiner rejected claims 1, 3, 8, 54, 64, and 65 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Rosenbaum (US
6,807,459 B2) and Kelleher (US 2004/0085580 A1).

1 Separate patentability is not argued for claims 2, 5-7, 13, 47-52, 57, and
59-63.
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Appellant’s Admissions
Appellant admits that it is known for “users [to] create a document on
their own computer, e-mail the document and their mailing lists to the post
office, and pay the post office to print, stuff, and mail the document.”
(Appellant’s Spec. ¶ [0004]).
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because (i) the references are not in the same field
of endeavor (i.e., the references are non-analogous art), (ii) the rejection fails
to set forth a proper articulated reasoning with a rational underpinning in
support of the rejection, (iii) Kelleher teaches away from the system used by
Rosenbaum. (App. Br. 3-7).
2. Appellant contends that the Examiner erred in rejecting claim 3
under 35 U.S.C. § 103(a) because:
The Office relies upon the teachings of paragraphs 0025-0026
and 0032 of Kelleher as allegedly teaching the above-recited
[postal facility] limitations. Appellants have failed to uncover
any teaching in these paragraphs of Kelleher that a postal
facility performs the printing as claimed.
(App. Br. 7).
3. Appellant contends that the Examiner erred in rejecting claim 8
under 35 U.S.C. § 103(a) because:
The Office relies upon the teachings of paragraphs 0025-0026
and 0032 of Kelleher as allegedly teaching the above-recited
[mail-merging] limitations. Paragraphs 0025-0226 teach
merging of plural print jobs and paragraph 0032 teaches
merging of lists of several vendors together and merging print
jobs together. Appellants have failed to uncover any teachings
in the prior art of merging addresses let alone the claimed
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limitations of electronically mail-merging respective addresses
from the list with the first print job for respective ones of the
plurality of copies of the first print job.
(App. Br. 8).
4. Appellant contends that the Examiner erred in rejecting claim 54
under 35 U.S.C. § 103(a) because:
At page 7 of the Office Action, the Office identifies col.
8, lines 16-21 of Rosenbaum as allegedly teaching the above-
recited [printing] limitations. These teachings are a limitation of
claim 19 of Rosenbaum and refer to generically printing "data"
and fail to teach printing a plurality of print jobs for plural
individual addressees (“the first addressee” and “the second
addressee”) according to the order as recited in the claims. The
Office also generically refers to Figs. 4-7 of Rosenbaum which
also fail to disclose the above-recited limitations with respect to
a plurality of print jobs.
Appellants respectfully submit that positively-recited
limitations of the claims are not disclosed nor suggested by the
prior art even if the prior art references of Rosenbaum and
Kelleher are combined.
(App. Br. 9-10).
5. Appellant contends that the Examiner erred in rejecting claim 64
under 35 U.S.C. § 103(a) because:
The Office on page 8 of the Office Action relies upon the
teachings of Fig. 2 of Kelleher in support of the rejection.
However, Fig. 2 of Kelleher discloses merging of print jobs
together in a print run and fails to teach or suggest merging one
of the addresses for one of the addressees with plural print jobs
including the first and another print jobs (sic) as claimed.
(App. Br. 11).
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6. Appellant contends that the Examiner erred in rejecting claim 65
under 35 U.S.C. § 103(a) because:
The Office relies upon the teachings of paragraphs 0011-
12 and 0032 of Kelleher as allegedly teaching the above-recited
[mail-merging] limitations. The teachings of paragraph 0011-
0012 disclose merging print jobs together and merging of mail
recipient lists together but fails to teach or suggest the claimed
mail-merging the addresses with the print job after the
transmitting the first print job and the first list of postal
addresses as claimed. Similarly, paragraph 0032 merging of
jobs together and a merged mail list fails to teach the claimed
limitations of mail-merging after the transmitting.
(App. Br. 11).

Issue on Appeal
Did the Examiner err in rejecting claims 1, 3, 8, 54, 64, and 65 as
being obvious because the references fail to teach or suggest the claim
limitations at issue?

ANALYSIS
We have reviewed the Examiners’ rejections in light of Appellant’s
argument (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellant’s conclusion. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellant’s Appeal Brief. We
concur with the conclusions reached by the Examiner.
As to Appellant’s above contention 1, other than the Examiner’s
misstatement of the law regarding a requirement of some “teaching,
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suggestion, or motivation” to show obviousness, we agree with the
Examiner’s responses at pages 11-12 of the Answer. The Court’s decision
in KSR repudiated reliance on a “teaching, suggestion or motivation” as a
requirement to show obviousness. KSR International Co. v. Teleflex Inc.,
550 U.S. 398 (2007).
As to above contentions 2-6, we agree with the Examiner’s responses
at pages 12-15 of the Answer.

NEW GROUND OF REJECTION
Claims 4, 53, and 55, each depend from claim 1. We have already
affirmed the Examiner’s rejection of claim 1.
The Examiner withdrew the rejection of claims 4, 53, and 55 under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Rosenbaum and Kelleher. (Ans. 15). We reinstate this rejection.
As to claim 4, we have reviewed Appellant’s argument that
Rosenbaum does not teach using P.O. Boxes. (App. Br. 7-8). While
Rosenbaum does not explicitly use the term “P.O. Boxes”, we conclude that
Rosenbaum does suggest the use of post office box numbers as claimed.
Rosenbaum explicitly teaches sorting by the line of mail route distribution
(abstract) and we take official notice that P.O. Boxes are an old and well-
known form of mail route. As such, use of P.O. Boxes would have been
obvious to artisans at the time the invention was made.
As to claims 53 and 55, we have reviewed Appellant’s argument that
Rosenbaum does not teach the claimed printing sequences. (App. Br. 9-10).
Rosenbaum explicitly teaches sorting mass mail by the line of mail route
distribution and printing the mail in the sequence of the sorted order (claim
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1; col. 5, l. 64, to col. 6, l. 8). Kelleher teaches merging and printing
multiple postal (mail) print jobs from plural senders to plural recipients
(Abstract and paragraph [0012]). We take official notice that it is an old and
well-known form that a single addressee (recipient) may receive mail from
plural senders. As such, use of the claimed printing sequences would have
been obvious at the time the invention was made because artisans would
recognize that the printing sequence of Rosenbaum combined with the plural
senders of Kelleher would result in the claim printing sequences when plural
senders are sending mail to the same addressee (recipient).

37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-3, 5-8, 13,
47-52, 54, 57, and 59-65 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-8, 13, 47-55, 57, and 59-65 are not patentable.

DECISION
The Examiner’s rejections of claims 1-3, 5-8, 13, 47-52, 54, 57, and
59-65 are affirmed.
Claims 4, 53, and 55 are rejected as being unpatentable under
35 U.S.C. § 103(a) over the combination of Rosenbaum and Kelleher.

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

AFFIRMED
37 C.F.R. § 41.50(b)

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