Ex Parte Williams et al

Board of Patent Appeals and Interferences

Oct 29, 2009

09820377 (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL F. WILLIAMS, DAVID ALLISON BENNETT,
LYNN SHAINDELL GOLDHABER, DENNIS GLAVIN, LORY ELIZABETH
LORY KRETT, CHARLES D. MENTZER, STEPHEN M. TEGLOVIC,
JOHN M. DIETZ, WILLIAM W. SMITH, III, PAUL BILIBIN, JINYUE LIU,
PAUL R. MCLAUGHLIN, SCOTT MEYER, and SEAN HU
____________

Appeal 2008-001302
Application 09/820,377
Technology Center 3600
____________

Decided:1 May 29, 2009
____________

Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, 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. § 1.304, begins to run from the decided date shown on this
page of the decision. The time period does not run from the Mail Date (paper
delivery) or Notification Date (electronic delivery).

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DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 7, 10-14, 23-26. Claims 1-6, 8, 9, and 15-22 are withdrawn
from consideration. We have jurisdiction under 35 U.S.C. § 6(b). (2002)

SUMMARY OF DECISION
We AFFIRM-IN-PART.
THE INVENTION
Appellants claim a system and method for using computer systems for
shipping management, and specifically online computer systems for enterprise
parcel shipping management. (Specification 1:5-6)
Claims 7 and 10, reproduced below, are representative of the subject matter
on appeal.
7. An online, Internet-based, multi-carrier, multi-parcel shipping
management computer system, said computer system programmed to:
receive a request by a first user within an enterprise to ship a parcel, wherein
the first user is designated in a memory accessible by the computer system as
restricted from finalizing shipping labels, wherein the request comprises a set of
partial shipment information, and wherein the set of partial shipment information
comprises at least one of: a destination name, a destination address, a return name,
a return address, or package information;
in response to the request by the first user to ship the parcel: (A) generate a
printable bar-coded pre-processing traveler label, wherein the printable bar-coded
pre-processing traveler label comprises at least a machine-readable code that
corresponds to the request, (B) save in the memory accessible by the computer
system, a relationship between the machine-readable code and the set of partial
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shipment information, and (C) print the printable bar-coded pre-processing traveler
label, wherein said printed printable bar-coded pre-processing traveler label
comprises an expression of the machine-readable code;
receive an input for finalizing a shipping label for shipping the parcel from a
second user within the enterprise, wherein the second user is designated in the
memory accessible by the computer system as authorized to finalize shipping
labels, wherein said input comprises the machine-readable code;
retrieve from the memory the set of partial shipment information according
to the machine-readable code; and
generate a shipping label comprising at least a first item of information from
the set of partial shipment information and according to the input from the second
user.

10. (Previously Presented) An online, Internet-based, multi-carrier, multi-
parcel shipping management computer system, said computer system programmed
to: according to a first set of instructions input by an administrator of an enterprise,
designate in a memory accessible by the computer system, a first set of shipping
privilege settings identifying each user of a plurality of users within the enterprise
as restricted from printing shipping labels but authorized to submit pre-processing
shipping requests;
according to a second set of instructions input by the administrator,
designate in the memory, a second set of shipping privilege settings identifying at
least a second user within the enterprise as authorized to print shipping labels
according to a pre-processing shipping request by any user of the plurality of users;
and in response to an input by a first user of the plurality of users, display
interactive graphic user interface shipping selection options to the first user
according to the first set of shipping privilege settings.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Kara US 6,233,568 B1 May 15, 2001
Gendreau US 2001/0034608 A1 Oct. 25, 2001
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Stefik US 2003/0115144 A1 Jun. 19, 2003

The following rejections are before us for review.
The Examiner rejected claim 7 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement because the claim
contains subject matter which was not described in the specification in such a way
as to reasonably convey to one skilled in the relevant art that the inventor(s), at the
time the application was filed, had possession of the claimed invention.
The Examiner rejected claims 7, 10-14, and 23-26 under 35 U.S.C. § 103(a)
as being unpatentable over Gendreau in view of Stefik.
The Examiner rejected claims 10-14 under 35 U.S.C. § 103(a) as being
unpatentable over Gendreau in view of Stefik, and further in view of Kara.
ISSUES
Have Appellants shown that the Examiner erred in rejecting claim 7 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written description
requirement because the claim contains subject matter which was not described in
the specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor(s), at the time the application was filed, had
possession of the claimed invention in that the claimed term “finalize” is a
broadened version of the disclosed step of printing the shipping labels?
Have Appellants shown that the Examiner erred in rejecting claims 7, 10-14,
and 23-26 under 35 U.S.C. § 103(a) as being unpatentable over Gendreau in view
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of Stefik on the ground that a person with ordinary skill in the art would
understand that the act of printing data onto a shipping label is itself a form of
copying, namely the data which resides in the buffer of the printer is copied onto
the label substrate in human-readable form and that usage rights disclosed by
Stefik are a restriction on who can copy a given data set?
Have Appellants shown that the Examiner erred in rejecting claims 10-14
under 35 U.S.C. § 103(a) as being unpatentable over Gendreau in view of Stefik,
and further in view of Kara on the ground that a person with ordinary skill in
the art would understand that Stefik discloses designating a first set of shipping
privilege settings identifying each user of a plurality of users within the enterprise
as restricted from printing shipping labels but authorized to submit pre-processing
shipping requests when it discloses content based access levels such as “next set of
rights” which cover how a work is used down stream of the initial copy?
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner’s rejection of claim 7 under 35 U.S.C. § 112, First
Paragraph is based upon an objection made under 35 U.S.C. § 132(a). (Ans. 4).
2. The objection under 132(a) states:
The amendment filed 1/18/05 is objected to under
35 U.S.C. 132(a) because it introduces new matter into
the disclosure. 35 U.S.C. 132(a) states that no
amendment shall introduce new matter into the disclosure
of the invention. The added material which is not
supported by the original disclosure is as follows: The
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claims have added the following limitations which are
not supported by the original specification "the first user
is designated in a memory accessible by the computer
system as restricted from finalizing shipping labels" the
specification talks about users being able to finalize
shipping labels, but not specifically disclose the system
designating users as being "restricted from finalizing the
shipping labels" does not appear in the specification,
therefore the appellant not having support for this phrase
in the original disclosure. (Ans. 3).

3. Claim 10 as originally filed recited in part: designate a particular user
within an enterprise as restricted from printing shipping labels according to
instructions input by an administrator of the enterprise.

4. Gendreau discloses that the scanned information regarding the addressee
is inputted into the computer in that it discloses “[a]fter the computer-readable
information is inputted into the computer system 18, the box 10 proceeds along the
conveying path on the conveyor 12 through a scanning device 24…” (Gendreau,
¶[0033]).

5. Gendreau discloses
[a]s the box 10 continues further down the conveyor 12
along the path, a label 27 is printed by a shipping label
printer 28 for the appropriate shipping carrier, which is
then attached to the box 10 by the operator 30. The label
may be applied by the operator 30 as shown or the
process of applying labels may be automated. The
printer 28 prints labels 27 that may include tracking
numbers, in accordance with the standards of the carriers.
The system 18 also sends manifest and invoicing
information in accordance with carrier standards. The
box 10 may then be directed to the appropriate shipping
carrier along the conveying path to the loading dock so
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that it may be shipped to its final destination. (Gendreau,
¶[0034]).

6. The Examiner found that Gendreau discloses in response to the request
by the first user to ship the parcel: (A) generate a printable bar-coded pre-
processing traveler label as invoice 22). (Ans. 5).
7. Gendreau discloses that the invoice has computer-readable
information and need not be attached to the parcel but rather “…the invoice 22
may be a printed document that travels with but is not connected to the parcel (i.e.,
at least associating computer-readable information with the parcel via an
associated order request). ((Gendreau, ¶[0032]).
8. The Examiner found that:
Gendreau however, fails to disclose the computer system
being capable of assigning printing rights to a user,
whether the user is designated as being able to print a
shipping label, and finalize a shipping label. Stefik,
discloses a first set of instructions input by an
administrator of an enterprise, designate in a memory
accessible by the computer system a setting for a user to
be restricted from printing but capable of submitting
requests (See Figure 4a and paragraphs 0016, 0040,
0065-0067). It would have been obvious to one having
ordinary skill in the art at the time the invention was
made to modify Gendreau, to allow for the restricting
of printing and finalizing documents, in order to control
the use of a digital work…. (Ans. 5).

9. Stefik discloses that a user interface is provided and is “…broadly defined
as the mechanism by which a user interacts with a repository in order to invoke
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transactions to gain access to a digital work, or exercise usage rights.” (Stefik,
¶[0095]).
10. Stefik further discloses that
At a minimum, the user interface must permit a user to
input information such as access requests and alpha
numeric data and provide feedback as to transaction
status. The user interface will then cause the repository
to initiate the suitable transactions to service the request.
Other facets of a particular user interface will depend on
the functionality that a repository will provide. (Stefik,
¶[0097]).
11. Stefik discloses that copying of a work is controlled by usage rights
attached to that work. (Stefik, ¶[0041]).
12. Stefik discloses content based access levels, such as “next set of rights”,
which are attached to the work as it is transported and control the digital work to
prohibit any further rights to loan out the copy (Stefik, [¶¶0065-0067]).

PRINCIPLES OF LAW
The factual inquiry for determining whether a specification provides
sufficient written description for the claimed invention is whether the specification
conveys with reasonable clarity to those skilled in the art that, as of the filing date
sought, applicant was in possession of the invention as now claimed. Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). An applicant shows
possession of the claimed invention by describing the claimed invention with all of
its limitations using such descriptive means as words, structures, figures, diagrams,
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and formulas that fully set forth the claimed invention. Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997).
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made
to a person having ordinary skill in the art to which said subject matter pertains.’”
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations including
(1) the scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of
these questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
The rejections are affirmed as to claims 7, 23-26, and reversed as to claims
10-14. The Appellants do not provide a substantive argument as to the separate
patentability of claims 23-26 that depend from claim 7, which is the sole
independent claim among those claims. Therefore, regarding the claims whose
rejection is affirmed, we address only claim 7. Claims 23-26 fall with claim 7.
See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).
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Claim 7 rejected under 35 U.S.C. § 112, first paragraph.
In rejecting claim 7 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement, the Examiner reasons that the
“…claims have added the following limitations which are not supported by the
original specification ‘the first user is designated in a memory accessible by the
computer system as restricted from finalizing shipping labels’….” (FF 1,2).
We disagree with the Examiner that an amendment to the claims is new
matter. “Broadening a claim does not add new matter to the disclosure. Disclosure
is that which is taught, not that which is claimed. An applicant is entitled to claims
as broad as the prior art and his disclosure will allow. In re Rasmussen, 650 F.2d
1212, at 1214 (CCPA, 1981).
In addition, we find that the claims as originally filed recited designate a
particular user within an enterprise as restricted from printing shipping labels
according to instructions input by an administrator of the enterprise. (FF3) Thus,
clear basis exists for restricting a user from printing shipping labels as claimed
here. Appellants further cite to numerous instances in the Specification asserting
that the Specification supports finalizing shipping labels being covered by the
printing of shipping labels. (App. Br. 22-25). We agree with Appellants. Among
these is the description that is cited to at ¶00447 wherein the Specification equates
failure to print shipping labels as a non-finalized condition. Thus, the amendment
did not broaden the scope of the invention beyond that which is supported in the
initial disclosure. See Schering Corp. v. Amgen, 222 F.3d 1347, 1352-53
(Fed.Cir.2000).
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Accordingly, we will not sustain the rejection of claim 7 under 35 U.S.C.
112, First Paragraph.

Claims 7, 10-14, and 23-26 rejected under 35 U.S.C. 103(a) over Gendreau
in view of Stefik.
Appellants argue that
Claim 7 is directed to indicating for a particular user,
whether or not the user is restricted from taking a
particular action, namely, "finalizing shipping labels." As
compared to attaching a Stefik usage right to a particular
pre-existing digital work, such as, for example, a Stefik
"...right to make [a copy]..." of the digital work, Claim 7
is directed to "...generat[ing] a printable bar-coded pre-
processing traveler label ..." for a user that is "restricted
from finalizing shipping labels." (App. Br. 31).
We disagree with Appellants. The act of printing data onto a shipping label
is itself a form of copying, namely, the data which resides in the buffer of a printer
is copied onto the label substrate in human-readable form as part of the printing
process. Additionally, we find that Stefik generally discloses a restriction on who
can copy as controlled by usage rights (FF 11) similarly to how Appellants’ second
user is designated as authorized to finalize shipping labels. Appellants however
argue because in Stefik, a “…usage right is directly related to the existing digital
work to which it is attached…”, Stefik is incongruent with the claimed second
user’s authorization to copy (Appeal Br. 31). We disagree with Appellants
because Appellants’ arguments are not based on limitations appearing in the claims
and are not commensurate with the broader scope of claim 7 which merely recites
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wherein the second user is designated in the memory accessible by the computer
system as authorized to finalize shipping labels, and not designated to finalize only
a given label as argued. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants further argue that Gendreau
as compared to the subject matter of Claim 7 wherein the
machine readable code is generated and saved by the
claimed system, the information in Gendreau pre-exists,
e.g., was created as the box is manufactured or when an
order is packaged in the box (see, e.g., Gendreau,
paragraph 0032) and must be "input" into the Gendreau
system. (App. Br. 37).
First, we disagree with Appellants’ assessment of the disclosure in
Gendreau. While one embodiment in Gendreau discloses creating the machine
readable code indicia as the box is manufactured, another embodiment however
discloses that the invoice which includes a separate printable bar-coded pre-
processing traveler label or invoice 22, which bar-code is machine-readable code
that corresponds to the request (FF 7).
Appellants next argue that Gendreau fails to disclose the limitation “save
in the memory accessible by the computer system, a relationship between the
machine-readable code and the set of partial shipment information…”. (Appeal Br.
37). We disagree with Appellants. As found supra (FF 7), Gendreau explicitly
discloses that the computer-readable information on the invoice 22 is associated
with the parcel via an associated order request. Further, Gendreau discloses that
the computer-readable information is inputted into the computer system 18 (FF 4).
We infer that a computer system which receives the machine readable code and
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which maintains a relationship between the code and the shipment information
would somehow save this information either in a database or in a printer buffer as
the label is printed. See KSR Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741
(2007) (In making the obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”).
Appellants next argue that claim 10 requires privilege settings by users as set
forth by the claim language: designate in a memory accessible by the computer
system, a first set of shipping privilege settings identifying each user of a plurality
of users within the enterprise as restricted from printing shipping labels but
authorized to submit pre-processing shipping requests. The Examiner maintains
that Stefik discloses this feature at ¶¶ 0016, 0040, 0065-0067. (Answer 6)
However, the access levels discussed in these paragraphs of Stefik are content
based access levels such as “next set of rights” which are attached to the work as it
is transported and control the digital work to prohibit any further rights to loan out
the copy (FF 12). Thus, these rights do not control who gets access to a given
piece of data, let alone identifying users who are restricted from copying and
authorizing users to submit pre-processing work not involving copying.
Accordingly, we cannot agree with the Examiner that Stefik discloses these
features, and thus we are persuaded of error as to the rejection of claim 10. Since
claims 11-14 depend from claim 10, and since we cannot sustain the rejection of
claim 10, the rejection of claims 11-14 likewise cannot be sustained.

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Claims 10-14 rejected under 35 U.S.C. § 103(a) over Gendreau in view of
Stefik and Kara.
For the above reasons we find that Gendreau and Stefik fail to disclose the
feature of designate in a memory accessible by the computer system, a first set of
shipping privilege settings identifying each user of a plurality of users within the
enterprise as restricted from printing shipping labels but authorized to submit pre-
processing shipping requests. The addition of Kara to the combination fails to
cure the deficiency of the rejection of claim 10 based on Gendreau and Stefik.
Thus we cannot not sustain the rejection of claim 10 based on Gendreau in view of
Stefik and Kara. Since claims 11-14 depend from claim 10, and since we cannot
sustain the rejection of claim 10, the rejection of claims 11-14 likewise cannot be
sustained.
CONCLUSIONS OF LAW
We conclude the Appellants have not shown that the Examiner erred in
claims 7 and 23-26 under 35 U.S.C. § 103(a) as being unpatentable over Gendreau
in view of Stefik; Appellants have shown that the Examiner erred in claims 10-14
under 35 U.S.C. § 103(a) as being unpatentable over Gendreau in view of Stefik;
Appellants have shown that the Examiner erred in rejecting claim 7 under 35
U.S.C. § 112, first paragraph, and claims 10-14 under 35 U.S.C. § 103(a) as being
unpatentable over Gendreau in view of Stefik, and further in view of Kara.
DECISION
The decision of the Examiner to reject claims 7, 23-26, is AFFIRMED and
to reject claims 10-14 is REVERSED.
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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) (2006).
AFFIRMED–IN-PART

JRG

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