Ex Parte 7478140 et alDownload PDFPatent Trial and Appeal BoardJan 29, 201495001300 (P.T.A.B. Jan. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,300 01/22/2010 7478140 ZUMBOX-001 1554 919 7590 01/29/2014 PITNEY BOWES INC. INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT. 37 EXECUTIVE DRIVE MSC 01-152 DANBURY, CT 06810 EXAMINER WORJLOH, JALATEE ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 01/29/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ ZUMBOX, INC. Requester, Appellant, and Cross-Respondent v. PITNEY BOWES SOFTWARE, INC. Patent Owner, Respondent, and Cross-Appellant ____________ Appeal 2013-010661 Inter partes Reexamination Control 95/001,300 United States Patent 7,478,140 B2 Technology Center 3900 ____________ Before RICHARD M. LEBOVITZ, JOHN A. JEFFERY, and ERIC B. CHEN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 2 DECISION ON APPEAL Third Party Requester Zumbox, Inc. (―Requester‖) appeals under 35 U.S.C. §§ 134 and 315 the Examiner‘s decision declining to adopt Requester‘s proposed rejections of claims 1, 7-15, 19, 20, 56-59, 61, and 106. TPR App. Br. 5-6. 1 Patent Owner Pitney Bowes Software, Inc. (―Patent Owner‖) cross-appeals under 35 U.S.C. §§ 134 and 315 the decision to reject claims 1-8, 16-19, 21-55, 60, 62-105, and 107-110 under different grounds. PO App. Br. 2. We have jurisdiction under 35 U.S.C. §§ 134 and 315, and we heard the appeal on January 8, 2014. We affirm-in-part. STATEMENT OF THE CASE An inter partes reexamination was filed on behalf of Requester, on January 22, 2010, of United States Patent 7,478,140 B2 (―the ‘140 patent‖), issued to Tim King et al. on January 13, 2009 (―Request‖). The ‗140 patent describes routing electronic mail (email), and, in particular, using a recipient‘s physical mailing address to send an email 1 Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed August 6, 2012 (―RAN‖); (2) Requester‘s Appeal Brief filed November 6, 2012 (―TPR App. Br.‖); (3) Patent Owner Respondent‘s Brief filed December 6, 2012 (―PO Resp. Br.‖); (4) the Examiner‘s Answer mailed February 19, 2013 (―Ans.‖) (incorporating the RAN by reference); (5) Requester‘s Rebuttal Brief filed March 19, 2013 (―TPR Reb. Br.‖); (6) Patent Owner‘s Appeal Brief filed November 6, 2012 (―PO App. Br.‖); (7) Requester‘s Respondent Brief filed December 6, 2012 (―TPR Resp. Br.‖); and (8) Patent Owner‘s Rebuttal Brief filed March 19, 2013 (―PO Reb. Br.‖). Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 3 message. See generally ‘140 patent, Abstract; col. 1, ll. 14-16, col. 1, l. 45– col. 2, l. 4. Claim 1 is illustrative of the invention and is reproduced below: l. A system for routing e-mails, comprising: a server that includes a database, said database including a mapping from a physical mailing address to an e-mail address, wherein said server including means for mapping a physical mailing address to an address of an electronic mailbox upon receipt of an e-mail from a party, said server is connected to a network, said server further including an electronic mailbox for each physical mailing address, wherein said electronic mailbox is associated with an account number and password; and a recipient host that includes a web browser, said recipient host connected to said network, wherein said host can access said electronic mailbox on said server using said account number and said password. RELATED PROCEEDINGS This appeal is said to be related to stayed pending litigation involving three patents, namely (1) the ‘140 patent; (2) U.S. Patent 7,058,586; and (3) U.S. Patent 6,690,773. The ‘586 patent is said to be the subject of Reexamination Control No. 95/001,301, and the ‘773 patent is said to be the subject of Reexamination Control No. 95/001,302. TPR App. Br. 2 (citing Pitney Bowes Inc. & Pitney Bowes Software Inc. v. Zumbox, Inc., No. CV09- 7373 MMM (RCx) (C.D. Cal.). THE APPEALED REJECTIONS AND PROPOSED REJECTIONS Requester appeals the Examiner‘s not adopting the following proposed rejections: Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 4 Claims 8, 9, 11, 12, and 14 under 35 U.S.C. § 102(b) as anticipated by Kanevsky et al. (US 6,285,777 B2; issued Sept. 4, 2001; filed Nov. 26, 1997) (―Kanevsky‖). Claims 10 and 15 under 35 U.S.C. § 103(a) as obvious over Kanevsky and Admitted Prior Art (APA). Claims 56 and 61 under 35 U.S.C. § 102(a) as anticipated by Benjamin et al. (WO 99/40527 A1; published Aug. 12, 1999) (―Benjamin‖). Claim 57 under 35 U.S.C. § 103(a) as obvious over Kanevsky and THE LEAVE MAIL ON SERVER (LMOS) FAQ (1998), http://www.labridge.com (―LMOS‖). Claim 58 under 35 U.S.C. § 103(a) as obvious over Benjamin and Kanevsky. Claim 59 under 35 U.S.C. § 103(a) as obvious over Benjamin, Kanevsky, and APA. Claim 13 under 35 U.S.C. § 103(a) as obvious over Kanevsky and Yu et al. (US 5,930,804; issued July 27, 1999) (―Yu‖). Claims 1, 7, and 19 under 35 U.S.C. § 102(b) as anticipated by Robert H. Anderson et al., Universal Access to E-Mail Feasibility and Societal Implications, Rand Research Report (1995) (―RAND‖). Claim 19 under 35 U.S.C. § 103(a) as obvious over Agraharam et al. (US 5,987,508; issued Nov. 16, 1999) (―Agraharam‖), RAND, and APA. Requester also raises additional grounds regarding unpatentability of various claims in this appeal, namely whether: (1) claim 8 contains new matter under 35 U.S.C. § 112(a), and Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 5 (2) claims 20 and 106 are indefinite under 35 U.S.C. § 112(b). TPR App. Br. 5-6. Patent Owner cross-appeals the Examiner‘s rejecting the claims as follows: Claims 8 and 16 under 35 U.S.C. § 102(a) as anticipated by Benjamin. Claim 1 under 35 U.S.C. § 103(a) as obvious over Agraharam and RAND. Claims 1-4 and 7 under 35 U.S.C. § 103(a) as obvious over Agraharam, Kanevsky, and RAND. Claims 1 and 7 under 35 U.S.C. § 103(a) as obvious over Agraharam, Benjamin, and RAND. Claims 1 and 7 under 35 U.S.C. § 103(a) as obvious over Agraharam, C. Allocchio, GSTN ADDRESS ELEMENT EXTENSIONS IN E-MAIL SERVICES V.3.10, NETWORK WORKING GROUP INTERNET DRAFT (May 1998) (―Allocchio‖), and RAND. Claims 1 and 7 under 35 U.S.C. § 103(a) as obvious over Agraharam, Allocchio, and The Postal Proposal, Wired News Report (June 19, 1998) (―Wired‖). Claim 19 under 35 U.S.C. § 103(a) as obvious over Agraharam, Kanevsky, RAND, and APA. Claims 17, 18, 22, 27, 68, 71, 72, 76, and 79-82 under 35 U.S.C. § 103(a) as obvious over Kanevsky and APA. Claims 5 and 6 under 35 U.S.C. § 103(a) as obvious over Agraharam, Kanevsky, RAND, and APA. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 6 Claims 21, 23, 24, and 26 under 35 U.S.C. § 102(e) as anticipated by Kanevsky. Claim 25 under 35 U.S.C. § 103(a) as obvious over Kanevsky and Yu. Claims 29, 30, 36, and 38-44 under 35 U.S.C. § 103(a) as obvious over Agraharam, RAND, and Gardner et al. (US 6,725,429 B1; issued Apr. 20, 2004; filed Dec. 29, 1998) (―Gardner‖). Claims 28, 31-34, 37, and 45-48 under 35 U.S.C. § 103(a) as obvious over Agraharam and RAND. Claims 60 and 62-67 under 35 U.S.C. § 103(a) as obvious over Benjamin and Gardner. Claims 70, 73-75, 77, and 78 under 35 U.S.C. § 103(a) as obvious over Kanevsky, APA, and Gardner. Claims 83, 86-89, 92-95, and 103-105 under 35 U.S.C. § 103(a) as obvious over Agraharam, Kanevsky, RAND, and APA. Claims 84, 85, 91, and 96-102 under 35 U.S.C. § 103(a) as obvious over Agraharam, Kanevsky, RAND, APA, and Gardner. Claims 107-110 under 35 U.S.C. § 103(a) as obvious over Kanevsky and Gardner. Claim 35 under 35 U.S.C. § 103(a) as obvious over Agraharam, RAND, and LMOS. Claim 69 under 35 U.S.C. § 103(a) as obvious over Kanevsky, APA, and LMOS. Claim 90 under 35 U.S.C. § 103(a) as obvious over Agraharam, Kanevsky, RAND, APA, and LMOS. Claims 8 and 55 under 35 U.S.C. § 102(a) as anticipated by Benjamin. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 7 Claims 51-54 under 35 U.S.C. § 103(a) as obvious over Benjamin and RAND. Claim 49 under 35 U.S.C. § 103(a) as obvious over Benjamin and Agraharam. Claim 50 under 35 U.S.C. § 103(a) as obvious over Benjamin and Kanevsky. THE PROPOSED ISSUES UNDER § 112 Requester contends that the amendment to claim 8 adding the phrase ―in a physical mailing address field‖ impermissibly introduced new matter into the claims and the amended claims are, therefore, unpatentable under § 112(a). TPR App. Br. 6, 19-21; TPR Reb. Br. 14-15. According to Requester, the Examiner never examined the claims for compliance with § 112—an alleged failure that is said to be ―properly raised by the appeal.‖ TPR Reb. Br. 14 (emphasis added). Requester also argues that amended claim 20 likewise raises issues under § 112(b). TPR App. Br. 6, 21; TPR Reb. Br. 16. Because these particular grounds of rejection do not appear in the RAN and are raised for the first time on appeal as Patent Owner indicates (PO Resp. Br. 17, 19), they are waived as untimely. See 37 C.F.R. § 41.67(c)(1)(vi) (―No new ground of rejection can be proposed by a third party requester appellant, unless such ground was withdrawn by the examiner during the prosecution of the proceeding, and the third party requester has not yet had an opportunity to propose it as a third party requester proposed ground of rejection.‖); see also 37 C.F.R. § 41.61(d). Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 8 Requester‘s identified statements on page 39 of the Comments filed October 11, 2011 (―Oct. 2011 TPR Comments‖) are unavailing in this regard. TPR Reb. Br. 14, 16 (citing these comments). First, these comments omit claim 8 as Requester acknowledges. Id. at n.1. Second, Requester provides only two sentences in the comments that merely generally allege that the proposed amendments ―raise issues‖ regarding compliance with 35 U.S.C. 112, ¶¶ 1 and 2. Oct. 2011 TPR Comments, at 39 (emphasis added). This lack of specificity hardly rises to the level of particularity required to adequately identify the purported deficiencies in the claims to propose new grounds of rejection, let alone based on new matter or indefiniteness. That the first paragraph of 35 U.S.C. § 112 contains distinct enablement and written description requirements 2 only further underscores Requester‘s failure to raise a ground of rejection under § 112(a) with sufficient particularity during prosecution, let alone a specific ground based on that statute‘s written description requirement (new matter). In any event, that the Examiner did not specifically comment on the unspecified ―issues‖ under § 112 raised in Requester‘s comments during prosecution does not mean that the claims were not examined for compliance with that statute as Requester contends. As with any examination, claims are presumed to comply with applicable statutory requirements absent specific notice to the contrary, namely by the Examiner rejecting the claims. See 35 U.S.C. § 132(a); see also MPEP 2658(II)-(III) (noting that new or amended claims are examined for compliance under 35 2 See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 9 U.S.C. § 314 to determine whether they enlarge the original claims‘ scope and comply with § 112). Therefore, because the Examiner did not reject amended claims 8, 20, and 106 under § 112, the Examiner implicitly found that they complied with that statute. THE PROPOSED ANTICIPATION REJECTION OVER KANEVSKY The Examiner finds that Kanevsky does not anticipate independent claim 8 (and dependent claims 9, 11, 12, and 14) because Kanevsky‘s internet email system does not necessarily have a field for entering a physical mailing address as claimed. RAN 8, 35-39. Requester argues that because Kanevsky necessarily uses email software applications that use address fields to receive data input as evidenced by Dr. Jeffay‘s declaration, Kanevsky inherently allows users to specify a physical mailing address in a physical mailing address field as claimed. TPR App. Br. 6-7; TPR Reb. Br. 1-2. As an alternative argument, Requester adds that Kanevsky‘s Figure 5 expressly shows a ―Destination Post Address‖ field in which users specify a physical mailing address. TPR App. Br. 8; TPR Reb. Br. 2-3. Patent Owner argues, among other things, that the Examiner was correct in finding that Kanevsky‘s paper mail disclosure is unrelated to Kanevsky‘s email embodiment upon which Requester relies for the proposed rejection. PO Resp. Br. 4-5. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 10 ISSUE Under § 102, has the Examiner erred in declining to reject claims 8, 9, 11, 12, and 14 by finding that Kanevsky does not allow a user to specify, in a physical mailing address field, a physical mailing address of a recipient to whom an email is to be sent? ANALYSIS We begin by noting that, despite Patent Owner‘s arguments to the contrary (PO Resp. Br. 5), we are unpersuaded of error in the Examiner‘s considering Requester‘s Declarations, including that of Dr. Jeffay. RAN 5- 6. In any event, the alleged impropriety of these declarations constituting impermissible comments is a petitionable—not appealable—matter, and is, therefore, not before us. See MPEP § 1201 (―The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .‖). Accordingly, we consider Requester‘s declarations in connection with this appeal, as did the Examiner. Turning to the merits, we find the Examiner‘s position problematic on this record. First, it is undisputed that Kanevsky maps recipients‘ physical mailing addresses to their email addresses. Second, although the Examiner acknowledges that Kanevsky‘s post mail addresses are physical mailing addresses, we disagree with the Examiner that Kanevsky‘s internet mail system does not necessarily have a field to enter that address. RAN 37. The term ―field‖ is defined, in pertinent part, as ―a particular area (as of a record in a database) in which the same type of information is regularly recorded.‖ MERRIAM WEBSTER‘S COLLEGIATE DICTIONARY 433 (10th ed. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 11 1993). Notably, nothing in this definition requires a field to be associated with an electronic system; the database record in this definition is exemplary—not required. Given the plain meaning of ―field,‖ nothing in the claim precludes Kanevsky‘s paper form and its ―Destination Post Address‖ ―field‖ on the envelope in Figure 5 to constitute a field as Requester indicates, for it is a particular area in which the same type of information is regularly recorded, namely by allowing users to specify a physical mailing address of a recipient to whom an internet email message is sent. TPR App. Br. 8. As Requester indicates (id.), this information is scanned into the system as digital information that is used for routing purposes, which can include using the post mail address to find a corresponding email address. See Kanevsky, col. 4, ll. 30-53; col. 2, ll. 55-59; col. 3, ll. 18-20. We find unavailing the Examiner‘s and Patent Owner‘s position that information represented on an envelope in Kanevsky‘s Figure 5 is unrelated to the ―email embodiment‖ upon which Requester relies. PO Resp. Br. 5 (quoting RAN 39). As Requester indicates, there are not two mutually exclusive paper and email embodiments in Kanevsky, but rather a dual delivery system that uses, among other things, the sender‘s information in Figure 5. TPR Reb. Br. 2-3. That Kanevsky‘s post mail address is electronically scanned into the system and is used to find a corresponding email address as noted above only bolsters this conclusion. See Kanevsky, col. 2, ll. 30-34; col. 3, ll. 18-20; col. 4, ll. 32-44. Therefore, Kanevsky‘s Figure 5 relates to Kanevsky‘s relied-upon email capabilities, contrary to the Examiner‘s assertion. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 12 It is irrelevant that Kanevsky‘s physical mailing address is part of an email header as the Examiner indicates (RAN 38) because claim 8 is not directed to how the physical mailing address is later manipulated or transmitted, but rather how it is entered in the system in the first instance. Requester‘s point in this regard is well taken. TPR Reb. Br. 7. As noted above, nothing in claim 8 precludes this address entry via Kanevsky‘s paper form and its ―Destination Post Address‖ field in Figure 5 that, after its conversion to digital form, is used to determine a corresponding destination email address. Therefore, this aspect of Kanevsky fully meets the disputed limitations of claim 8 regardless of whether email software used in connection with Kanevsky‘s ―Internet Assisted Email‖ functionality inherently has address fields to receive input data according to Requester‘s alternative position (TPR App. Br. 7) that we need not address here. Therefore, we are persuaded that the Examiner erred by not rejecting claims 8, 3 9, 11, 12, and 14 as anticipated by Kanevsky. THE PROPOSED OBVIOUSNESS REJECTION OVER KANEVSKY AND APA We also do not sustain the Examiner‘s decision declining to reject dependent claims 10 and 15 as obvious over Kanevsky and APA. RAN 10- 11, 70. Claim 10 recites, in pertinent part, (1) associating email with one of plural classes via an E-designator tag, and (2) specifying the classes for 3 Although Requester appeals the Examiner‘s decision declining to reject dependent claims 9, 11, 12, and 14 as anticipated by Kanevsky, we nonetheless include independent claim 8 (from which claims 9, 11, 12, and 14 depend) because the Examiner‘s error applies to this claim as well. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 13 which the recipient desires to receive a physical mail piece and email, respectively. Although Patent Owner contends that Requester failed to articulate a reason to combine the teachings of Kanevsky and APA (PO Resp. Br. 7-8), that was not the reason the Examiner declined to reject claims 10 and 15 over these references. 4 Rather, as noted on Page 10 of the RAN, the Examiner did not adopt this rejection ―for reasons explained below under ‗Discussion of Issues‘‖—a separate section of the RAN that begins on page 25. As noted in that section, the Examiner indicates that ―the claims are patentable over the cited references for at least the same reasons described above with respect to amended independent claim 8 in Issue D‖ (RAN 70) that corresponds to the proposed anticipation rejection over Kanevsky. See RAN 35-39. But as noted previously, we find the Examiner‘s position in this regard problematic—an error regarding the physical mailing address field limitation that likewise applies to this rejection as well. That said, we disagree with Requester‘s contention that the ―E- designator tag‖ in claim 10 is non-functional descriptive material and not given patentable weight. TPR App. Br 8-9; TPR Reb. Br. 3-4. We see no error in the Examiner‘s finding that the recited ―E-designator tag‖ is 4 Indeed, this position is consistent with the Examiner‘s other statements during prosecution and in the RAN regarding Kanevsky‘s and APA‘s combinability. See, e.g., RAN 11-12 (articulating a reason why skilled artisans would have combined Kanevsky‘s and APA‘s teachings in connection with the recited classes in claim 17); RAN 10 (articulating a reason for combining APA with Agraharam/Kanevsky/RAND in connection with claim 19). Accord Non-Final Action mailed Mar. 15, 2010, at 12 (articulating a similar rationale for combining Kanevsky and APA in connection with claim 10). Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 14 functional, at least with respect to associating email with classes—classes that are also used in the claim‘s specifying clause as Patent Owner indicates. PO Resp. Br. 6. Notably, claim 10 requires associating email with a particular class via an E-designator tag—an association that is based on this tag. The ‗140 patent states that each class is represented by an E-designator stamp, clearly defining the term. ‗140 patent, col. 3, ll. 59-61. We see no error in the Examiner‘s position that an ―E-designator‖ tag is functional by affecting mail piece processing that determines whether mail falls within a particular class. RAN 11. That this tag is electronic as indicated by its ―E-‖ prefix only bolsters the Examiner‘s position in this regard, at least with respect to processing and classifying mail associated with the electronic tag. In sum, we find no error in the Examiner‘s basis for declining to reject claims 10 and 15 as obvious over Kanevsky and APA regarding the disputed combinability and non-functional material issues. We are, however, persuaded of error in the Examiner‘s additional basis for not rejecting these claims based on Kanevsky‘s perceived shortcomings regarding the physical mailing address field limitation as noted above. Accordingly, we are persuaded that the Examiner erred by not rejecting claims 10 and 15 as obvious over Kanevsky and APA solely on this basis. THE PROPOSED ANTICIPATION REJECTION OF CLAIMS 56 AND 61 OVER BENJAMIN The Examiner finds that Benjamin does not explicitly disclose (1) the user specifying a physical mailing address by selecting that address from a Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 15 list using a mailer host, and (2) the email address is not a traditional email address as recited in claims 56 and 61, respectively. RAN 22-23, 91-92. Requester argues that claim 56 is fully met by, among other things, Benjamin‘s teaching of a user‘s entering descriptor information into an email client‘s field, where the descriptor may be a street address. TPR App. Br. 11; TPR Reb. Br. 6. Requester adds that claim 61 is fully met by Benjamin given the breadth of the negative limitation reciting that the email address is not a traditional email address. TPR App. Br. 11-12; TPR Reb. Br. 6. Patent Owner argues that the Requester‘s reliance on Benjamin is flawed because Benjamin‘s sender selects a complete/correct email address—not a physical mailing address as claimed. PO Resp. Br. 9. Patent Owner adds that the Examiner properly found that Benjamin does not disclose a non-traditional email address—an address that is not just any data string as Requester asserts. PO Resp. Br. 10. ISSUES Under § 102, has the Examiner erred in declining to reject claims 56 and 61 by finding that Benjamin does not disclose: (1) the user specifying a physical mailing address by selecting that address from a list using a mailer host as recited in claim 56? (2) the email address is not a traditional email address as recited in claim 61? Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 16 ANALYSIS Claim 56 On this record, we see no error in the Examiner‘s declining to reject claim 56 as anticipated by Benjamin. First, we agree with Patent Owner (PO Resp. Br. 9-10) that the relied-upon passage in Benjamin at page 31, line 31 through page 14, line 2 pertains to selecting a correct/complete email address, not a physical mailing address—a point that Requester apparently acknowledges. See TPR Reb. Br. 5 (acknowledging Patent Owner‘s ―fair‖ criticism regarding this relied-upon passage in Benjamin). Nor do we find Requester‘s reliance on Benjamin‘s pages 6 and 15 (TPR Reb. Br. 6) persuasive in this regard. That customers can select from a list of possible matches as noted on Benjamin‘s page 15, lines 3 and 4 does not necessarily mean that a physical mailing address is selected from a list from a mailer host. We reach a similar conclusion regarding Benjamin‘s teaching of entering only descriptor information into an email client‘s field as a basis to formulate an email address via a database lookup on page 6, lines 20 through 29. Although Benjamin‘s descriptors can include a recipient‘s street address (see Benjamin 4:29–5:1; 7:17, 29), Requester has not shown that Benjamin‘s address entry functionality on Page 6 is necessarily associated with the list-selection functionality on Benjamin‘s Page 15 upon which Requester relies to anticipate the recited elements as arranged in claim 56. It is well settled that to anticipate under § 102, the prior art reference ―must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.‖ Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 17 1359, 1369 (Fed. Cir. 2008) (citation and internal quotation marks omitted). ―Thus, it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.‖ Id. at 1371. As such, Requester‘s reliance on various disparate teachings in Benjamin as allegedly anticipating the claimed invention falls short. Therefore, we are not persuaded that the Examiner erred in declining to reject claim 56 as anticipated by Benjamin. Claim 61 We also sustain the Examiner‘s declining to reject claim 61 reciting that the email address is not a traditional email address as anticipated by Benjamin. First, we note that because the particular ground of rejection regarding the alleged lack of support for the recited negative limitation under § 112 (TPR App. Br. 11-12) is raised for the first time on appeal as Patent Owner indicates (PO Resp. Br. 10), it is waived as untimely. See 37 C.F.R. § 41.67(c)(1)(vi). Turning to the proposed anticipation rejection, as a negative limitation, the recited ―non-traditional‖ email address is broad and encompasses any email address that is not a ―traditional‖ email address—a term that is not defined in the ‘140 patent‘s Specification. As Requester indicates (TPR Reb. Br. 7), Patent Owner does not explain the meaning of a ―traditional‖ or ―non-traditional‖ email address apart from referring to a passage in column 5, lines 43 through 49 of the ‘140 patent that merely Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 18 indicates that a recipient‘s traditional email address can be stored in a database. PO Resp. Br. 10. Given this lack of specificity, we construe the term ―traditional‖ email address with its plain meaning: a construction that will then inform the meaning of its counterpart—a ―non-traditional‖ email address. An email address is ―[a] series of characters that precisely identifies the location of a person‘s electronic mailbox. On the Internet, e-mail addresses consist of a mailbox name (such as rebecca) followed by an at sign (@) and the computer‘s domain name (as inrebecca@hummer.virginia.edu).‖ Bryan Pfaffenberger & David Wall, QUE‘S COMPUTER & INTERNET DICTIONARY 173 (6th ed. 1995) (italics omitted). Based on this definition, we construe a ―traditional‖ email address as consisting of a mailbox name followed by an ―at‖ sign (@) and a computer‘s domain name. Therefore, a ―non-traditional‖ email address is a series of characters that precisely identifies the location of a person‘s electronic mailbox, but is not in the traditional email address format noted above (i.e., not in the traditional ―mailbox name@domain name‖ format). As such, a ―non-traditional‖ email address is not just any data string that is not an email address as Requester asserts (TPR App. Br. 12), but rather a series of characters that precisely identifies the location of a person‘s electronic mailbox, but not in the above-noted traditional email address format. Based on this construction, we disagree with Requester (TPR App. Br. 12; TPR Reb. Br. 7) that Benjamin‘s descriptors, especially-formatted email messages, or responses to those messages described on Page 6, lines 7 Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 19 through 29 constitute ―non-traditional‖ email addresses as claimed, for they are not necessarily character strings that precisely identify the electronic mailbox location, but not in the traditional format. To be sure, the Examiner‘s rationale for finding Requester‘s position unpersuasive based on the common use of an operating system‘s file system to store and access user mailboxes (RAN 22-23, 92) does not squarely address Requester‘s position on appeal that is based on the scope and breadth of non-traditional email addresses and Benjamin‘s descriptor-based email message functionality noted above. Nevertheless, we see no harmful error in the Examiner‘s position at least to the extent that Benjamin fails to anticipate claim 61 for the reasons noted above. Therefore, we are not persuaded that the Examiner erred in declining to reject claim 61 as anticipated by Benjamin. THE PROPOSED OBVIOUSNESS REJECTIONS OF CLAIMS 13 AND 57-59 Because the Examiner‘s rationale in declining to adopt the proposed obviousness rejections of (1) claim 57 over Kanevsky and LMOS; (2) claim 58 over Benjamin and Kanevsky; (3) claim 13 over Yu and Kanevsky; and (4) claim 59 over Benjamin, Kanevsky, and APA is based on the same erroneous findings regarding Kanevsky noted above (RAN 20-24, 73-74, 90, 92-93, 95-96; PO Resp. Br. 11-13), we are likewise persuaded that the Examiner erred in not rejecting these claims as obvious over these references for similar reasons. See TPR App. Br. 12-14; TPR Reb. Br. 7-9. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 20 THE PROPOSED OBVIOUSNESS REJECTION OVER BENJAMIN, KANEVSKY, AND APA Although the Examiner‘s rationale in declining to adopt the proposed obviousness rejections of claim 59 over Benjamin, Kanevsky, and APA is based partly on the same erroneous findings regarding Kanevsky noted above (RAN 24, 95-96; PO Resp. Br. 12), the Examiner also notes that Requester did not explain the reliance on APA in the proposed rejection. RAN 24. Requester fails to address—let alone persuasively rebut—this additional deficiency (see TPR App. Br. 13; TPR Reb. Br. 8-9) that is related to our previous discussion regarding APA and Kanevsky. Because those references are at issue here, our previous discussion in that regard likewise applies here. The Examiner‘s error in relying on the erroneous findings from Kanevsky is deemed harmless here, for the Examiner‘s additional basis for declining to adopt the proposed obviousness rejection of claim 59 over Benjamin, Kanevsky, and APA has not been persuasively rebutted. Accordingly, we sustain that decision. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 21 THE PROPOSED ANTICIPATION REJECTION OVER RAND The Examiner finds that RAND does not disclose a server that includes a mapping from a physical mailing address to an email address, where the server includes means for mapping a physical mailing address to an electronic mailbox address upon receipt of an email from a party, as claimed. RAN 7, 28-30. According to the Examiner, RAND‘s server does not necessarily include a database with the recited mapping. RAN 29. Requester argues that not only can RAND‘s Internet Domain Name System (DNS) servers be used to map addresses containing street addresses to actual email addresses, but also RAND teaches using a person‘s physical mailing address as an input to a directory service that can be used to locate that person‘s email address. TPR App. Br. 14-16; TPR Reb. Br. 10-12. Requester adds that because the recited ―means for mapping‖ is not linked explicitly to an algorithm, the claim is indefinite under § 112. TPR App. Br. 17; TPR Reb. Br. 10. Patent Owner argues that the Examiner correctly declined to reject claim 1 as anticipated by RAND. PO Resp. Br. 13-14. According to Patent Owner, RAND‘s adherence to an email-addressing scheme would not use a database lookup of the recited data structures, and describes an alternative of relying on external directories that may or may not work. PO Resp. Br. 14. Patent Owner adds that Requester‘s indefiniteness argument is inappropriate for an original claim in re-examination, untimely, and unpersuasive in any event in view of the support for this functionality in the ‘140 patent‘s specification. PO Resp. Br. 15. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 22 ISSUE Under § 102, has the Examiner erred in declining to reject claims 1, 7, and 19 by finding that RAND does not necessarily disclose a server that includes a mapping from a physical mailing address to an email address, where the server includes means for mapping a physical mailing address to an electronic mailbox address upon receipt of an email from a party? ANALYSIS We begin by noting that the particular proposed ground of rejection regarding alleged indefiniteness of claim 1 under § 112 due to the purported lack of algorithmic support for the ―means for mapping‖ limitation (TPR App. Br. 17; TPR Reb. Br. 10) is inappropriate for an original claim in re- examination and, in any event, is untimely as Patent Owner correctly indicates. PO Resp. Br. 15 (citing 37 C.F.R. §§ 1.906 and 41.67(c)(1)(vi)). Turning to the merits of the proposed anticipation rejection, we see no error in the Examiner‘s declining to adopt the proposed anticipation rejection of claim 1 essentially for the reasons indicated by the Examiner and Patent Owner. RAN 28-30; PO Resp. Br. 13-15. Although RAND notes that there must be good directory services so that names and other attributes of people can be used effectively to locate their email addresses (RAND, at 62), that does not mean that a server with a database necessarily includes the recited physical-to-email address mapping, let alone that the server includes a means for mapping a physical mailing address to an electronic mailbox address upon receipt of an email from a party as claimed. Rather, as Patent Owner indicates, RAND‘s standard email address Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 23 formatting convention does not necessarily use the recited physical-to-email address mapping using a server-based database, much less upon receiving an email as claimed. PO Resp. Br. 14 (citing Richter Decl. ¶¶ 7-8). Although RAND‘s system constructs email addresses using home addresses, the home addresses are part of the standard email address text as shown in the example on Page 62 (―John.Doe@123_Main_Street.02356-2344.us‖). As the Examiner indicates (RAN 29), this standardized format enables users to make educated guesses about particular email addresses. RAND at 63. But we fail to see—nor has Requester shown—that this formatting scheme necessarily uses the recited server and database that includes the recited mapping from a physical mailing address to an email address. To the extent that Requester‘s arguments are directed to the obviousness of such a feature, such arguments are irrelevant here, for the proposed rejection is based on anticipation—not obviousness—as the Examiner correctly indicates. RAN 28. We reach a similar conclusion regarding RAND‘s forwarding or remailing functionality on page 63. At best, these features map one email address to another, but do not necessarily map a physical mailing address to an email address as claimed. Accord Richter Decl. ¶¶ 8, 10. For these reasons, we are similarly unpersuaded by RAND‘s mapping described in Paragraphs 23 and 24 of the Jeffay declaration, for these mappings are, at best, between email addresses—not necessarily between a physical mailing address and email address. Lastly, even assuming, without deciding, that DNS uses a database to map names to IP addresses as Dr. Jeffay indicates Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 24 (Jeffay Decl. ¶ 22), that does not mean that physical mailing addresses are necessarily mapped to email addresses as claimed. Therefore, we are not persuaded that the Examiner erred in declining to reject claims 1, 7, and 19 as anticipated by RAND. THE PROPOSED OBVIOUSNESS REJECTION OVER AGRAHARAM, RAND, AND APA We are also not persuaded that the Examiner erred in declining to reject claim 19 as obvious over Agraharam, RAND, and APA. Even if the recited E-designators are non-functional descriptive material as Requester asserts (App. Br. 17-18; TPR Reb. Br. 12), we still see no error in the Examiner‘s position regarding Requester‘s failure to adequately articulate a reason to combine the references to establish a prima facie case of obviousness. RAN 8, 47-48. Requester has failed to persuasively rebut the Examiner‘s and Patent Owner‘s position that the ‗140 patent specification does not admit using traditional mail classes as applied to email is prior art, let alone the Examiner‘s position that skilled artisans would not have had a reason to combine these classes with RAND‘s disclosure. RAN 8, 47-48; PO Resp. Br. 17. Despite Requester‘s contentions (TPR App. Br. 18-19; TPR Resp. Br. 12-14), merely identifying each recited element in the prior art is insufficient to establish obviousness absent a reason to combine the references‘ teachings which has not been adequately articulated on this record. See KSR, 550 U.S. at 418. We also do not find the claim chart or technological independence of mail classes sufficient to establish an implicit motivation to Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 25 combine the references as Requester asserts. TPR App. Br. 18; TPR Reb. Br. 12-13. Requester‘s reference to the relevant legal principles from the KSR opinion on page 22 of the Request is unavailing in this regard. Leaving aside the fact that page 22 of the Request pertains to a proposed rejection of claim 1—not claim 19—and omits APA, merely generally reciting legal principles from the case law without explaining how these principles specifically apply regarding combining the particular teachings from the references at issue hardly suffices to establish a prima face case of obviousness. Therefore, we are not persuaded that the Examiner erred in declining to reject claim 19 as obvious over Agraharam, RAND, and APA. THE EXAMINER‘S ANTICIPATION REJECTION OVER BENJAMIN The Examiner finds that Benjamin anticipates claims 8 and 16. RAN 7 (incorporating pages 15 and 16 of the Request by reference). According to the Examiner, Benjamin allows a user to specify an email recipient‘s physical mailing address in a physical mailing address field by entering descriptors in an email client‘s address field, where the descriptors can be partial street addresses associated with email recipients. RAN 30-33. Requester concurs with these findings, but adds that while Benjamin is not limited to user‘s entering partial street addresses, the claim is nonetheless fully met even if Benjamin were so limited. TPR Resp. Br. 5-7. Patent Owner argues that Benjamin does not allow a user to specify a physical mailing address in a physical mailing address field as claimed Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 26 because the user must enter an email address—not a physical mailing address—in the ―To:‖ line of an email; otherwise an error would result. PO App. Br. 8-12; PO Reb. Br. 2-3. Patent Owner adds that Benjamin differentiates between the ―street address‖ in a database field from the partial street address that is entered by the sender. Id. ISSUE Has the Examiner erred in rejecting claims 8 and 16 under § 102 by finding that Benjamin allows a user to specify, in a physical mailing address field, a physical mailing address of a recipient to whom an email is to be sent as claimed? ANALYSIS We sustain the Examiner‘s anticipation rejection of claims 8 and 16 over Benjamin. We first note that, unlike other terms, 5 the term ―physical mailing address‖ is not defined in the ‘140 patent, let alone a ―physical mailing address field.‖ The ‘140 patent does, however, provide non-limiting examples of a recipient‘s ―physical address,‖ namely a ―street, P.O. box, rural route, and the like,‖ and notes that ―[t]he physical address could be the recipient‘s home or work address.‖ ‘140 patent, col. 2, ll. 43-48 (emphasis added). Based on this description, we construe a ―physical mailing address‖ as a ―physical address‖ (e.g., a street) to which mail can be delivered. Under 5 Compare ‘140 patent, col. 9, ll. 11-16 (defining the terms ―computer program medium‖ and ―computer usable medium‖). Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 27 this construction, nothing in the claim precludes Benjamin‘s address-based descriptors that are entered into an email client‘s address field (i.e., a ―physical mailing address field‖) to determine the associated email address. Not only can these descriptors be at least part of a recipient‘s street address as the Examiner indicates (RAN 31-32 (citing Benjamin 4:29–5:1; Richter Decl. ¶ 34)), they can also constitute a recipient‘s ―address‖ as Requester indicates. TPR Resp. Br. 5; Benjamin 7:16-17. In short, nothing in the claim precludes even a partial street address as constituting a ―physical mailing address,‖ for mail can be delivered to at least some partial street addresses. In any event, that Benjamin also indicates that (1) descriptors are ―addresses‖ (without the ―partial street‖ qualifier) as noted above, and (2) partial or entire addresses can be added to descriptors (Benjamin 11:17-26) 6 only further bolsters the Examiner‘s position in this regard. Even assuming, without deciding, that Benjamin‘s address-based descriptors are entered into the ―TO:‖ line of an email as Patent Owner asserts (PO App. Br. 11; Resp. Br. 3), that still does not preclude this field from constituting a ―physical mailing address field,‖ for nothing in the claim precludes an email address from including a physical mailing address (e.g., an address-based descriptor) as a constituent element of the email address as in Benjamin. See, e.g., Benjamin 6:20-29 (describing an example where an email address is constructed after the sender enters a descriptor by appending ―@invention.com‖); see also Benjamin 11:1-6 (appending the hostname ―@phoneserv.net‖ to a telephone number descriptor in an email 6 See Benjamin 11:20-21 (―To narrow the search, part or whole of his address can be added to the descriptor.‖) (emphasis added). Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 28 address); Benjamin 11:21-24 (describing an example of using a descriptor ―johnsmith.centennial.bankstown‖ if the sender knows that John Smith lives in Centennial Street, Bankstown). Patent Owner‘s contention that inserting physical mailing addresses in an email‘s ―TO:‖ line results in errors (PO App. Br. 11; Resp. Br. 3) is unavailing, for not only is this argument speculative, it ignores Benjamin‘s above-noted functionality that not only uses entire addresses as part of the descriptor-based addresses, but also appends the server‘s host name to the entered descriptor (with an ―@‖ symbol) to properly format the associated email address. Therefore, we are not persuaded that the Examiner erred by rejecting claims 8 and 16 as anticipated by Benjamin. THE EXAMINER‘S OBVIOUSNESS REJECTION OVER AGRAHARAM AND RAND Regarding claim 1, the Examiner finds that Agraharam discloses (1) a translation server 110 with a database 117 that includes a mapping from an alias address (i.e., a telephone number and server domain) to an email address, and (2) an email server 103 with user mailboxes corresponding to the alias addresses. RAN 8 (incorporating pages 22 through 26 of the Request by reference). In concluding that claim 1 would have been obvious, the Examiner reasons that because RAND‘s email addressing scheme uses either a person‘s home address (i.e., a ―physical mailing address‖) or telephone number, skilled artisans would have simply substituted a physical Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 29 mailing address for Agraharam‘s telephone number as suggested by RAND. RAN 8, 43-45. Requester concurs with this position. TPR Resp. Br. 7-13. Patent Owner argues that not only does Agraharam not map physical mailing addresses to email addresses, there is no reason to include physical mailing addresses in lieu of telephone numbers in Agraharam because Agraharam (1) links a telephone network with an email data network, and (2) teaches away from this modification to avoid users experiencing ―address overload.‖ PO App. Br. 13-16; PO Reb. Br. 3-6. Patent Owner adds that the Examiner failed to provide a reason why skilled artisans would have combined Agraharam and RAND to teach that the server includes an electronic mailbox for each physical mailing address. PO App. Br. 15; PO Reb. Br. 5. Lastly, Patent Owner argues that the claimed invention is not obvious in view of evidence of secondary considerations of non-obviousness, namely the commercial success, praise, and long-felt need associated with the Zumbox system that is said to be directly linked to mapping a physical mailing address to an email address as defined in the ‘140 patent. PO App. Br. 16-20 (citing the Declaration of George MacDonald (Ev. App‘x Doc. 1) (―MacDonald Decl.‖)); PO Reb. Br. 6. The Examiner, however, finds this evidence insufficient to show non-obviousness of the claimed invention. RAN 96-100. ISSUES 1. Under § 103, has the Examiner erred in rejecting claim 1 by finding that Agraharam and RAND collectively would have taught or Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 30 suggested a server that includes (1) a database including a mapping from a physical mailing address to an email address, and (2) an electronic mailbox for each physical mailing address? 2. Is the Examiner‘s combining the teachings of these references supported by articulated reasoning with some rational underpinning to justify the Examiner‘s obviousness conclusion? 3. Has the Examiner erred in finding that the submitted evidence of secondary considerations is insufficient to show non-obviousness of the claimed invention when considered with the other evidence of record? ANALYSIS We sustain the Examiner‘s obviousness rejection of claim 1 over Agraharam and RAND. In Agraharam, email messages are sent via an alias email address that is directly associated with the recipient‘s telephone number (e.g., ―2015558765@email.att.net‖). Agraharam, Abstract; col. 3, ll. 50-58; col. 4, ll. 42-49; Figs. 1-2 (steps 201-202). A translation server 110 uses a database 117 to translate the received alias telephone number name to the actual email address (e.g., ―steveg@attmail.com‖), and then forwards the email to the recipient at that email address via email server 103. Agraharam, Abstract; col. 3, ll. 1-27, 50-66; Fig. 1. Turning to the rejection, we see no error in the Examiner‘s position (RAN 43-45) that it would have been obvious to substitute a physical mailing address for Agraharam‘s telephone number-based identifier, particularly in view of the noted equivalency of these identifiers in RAND. See TPR Resp. Br. 8 (citing RAND, at 62). As Requester indicates (TPR Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 31 Resp. Br. 9), and despite Mr. Richter‘s statements (Richter Decl. ¶ 23), the Examiner‘s recognition that this modification involves a simple substitution of known elements for their established function to yield predictable results articulates adequate reasoning with some rational underpinning to justify the Examiner‘s obviousness conclusion. See KSR, 550 U.S. at 417. Nor do we find that Agraharam teaches away from this modification as Patent Owner asserts. It is well settled that a reference teaches away when one of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the inventor. In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation marks omitted). That is not the case here. Although Agraharam may prefer an email alias that includes the recipient‘s telephone number, that does not mean that Agraharam discourages or discredits other approaches to teach away from the proposed modification of using a physical mailing address in lieu of this phone number, particularly in view of Agraharam‘s teaching of including the recipient‘s geographic location in the identifier as Requester indicates. TPR Resp. Br. 7; Agraharam, col. 2, ll. 14-19; col. 8, ll. 41-44 (claim 8); col. 5, ll. 8-23. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Nor do we find that Agraharam teaches away from this modification to prevent users from experiencing ―address overload‖ as Patent Owner asserts (PO App. Br. 13-14; PO Reb. Br. 3-4) for, here again, we are unpersuaded that the cited passage from Agraharam‘s background section (col. 1, ll. 28-35) discourages or discredits the particular proposed Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 32 modification to teach away from that approach as the Examiner indicates. RAN 45. See also Fulton, 391 F.3d at 1201. Patent Owner‘s contention that the Examiner failed to provide a reason why skilled artisans would have combined Agraharam and RAND to teach that the server includes an electronic mailbox for each physical mailing address (PO App. Br. 15; PO Reb. Br. 5) is likewise unavailing. In short, Patent Owner does not persuasively rebut the Examiner‘s position that consolidating the functions of Agraharam‘s translation server 110 (which performs the mapping function) and email server 103 (which includes electronic mailboxes) in a single server would have been an obvious modification. RAN 44. This modification would predictably yield a single server with both the recited mapping and mailbox functions—a consolidation well within the level of ordinarily skilled artisans. We also see no error in the Examiner‘s position that the submitted evidence of secondary considerations is insufficient to establish non- obviousness on this record. RAN 96-100. Notably, Patent Owner‘s evidence of alleged commercial success, praise, and long-felt need for the claimed invention relies entirely on admissions or acts of the Requester. TPR Reb. Br. 10 (noting this fact). In this regard, Patent Owner‘s attempt to tie Requester‘s Zumbox product to the elements of at least independent claims 1, 8, and 19 by referring to a sentence in a paper filed by Requester in a district court that merely notes that eight asserted claims of the ‘140 patent accuse the main features of the Zumbox product is unavailing. See PO App. Br. 17 (citing MacDonald Decl. ¶ 16, Exh. K, at 1). As Mr. Payne indicates, merely accusing these products as infringing the claims does not mean that Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 33 they do, in fact, infringe—an accusation that Requester denies in any event. Payne Decl. ¶ 8. That Mr. Payne notes that the Zumbox system does not work by routing email (Payne Decl. ¶ 4)—a key claimed element—only further bolsters Requester‘s position in this regard. And even assuming, without deciding, that Requester‘s patent applications correspond to the product on its web site, and these applications can be characterized as including mapping as Patent Owner contends (PO App. Br. 18-19), that still falls well short of proving a nexus between that product‘s alleged commercial success and the claimed invention. The nexus between the Zumbox product and the recited elements of the claimed invention is, therefore, weak at best on this record. Patent Owner‘s contentions regarding the alleged commercial success of the Zumbox system are likewise unavailing. When commercial success is asserted to support nonobviousness, there must be a nexus (i.e., a legally and factually sufficient relationship) between the commercial success and the claimed invention. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A prima facie case of nexus is generally established when (1) there is commercial success, and (2) the thing (product or method) that is commercially successful is the invention disclosed and claimed. Id. Such evidence, however, ―must be commensurate in scope with the claims which the evidence is offered to support.‖ In re Tiffin, 448 F.2d 791, 792 (CCPA 1971). That is not the case here. Here, Zumbox‘s revenues are insignificant and, notably, it has not made any profits (TPR Resp. Br. 11; Payne Decl. ¶ 3)—a financial performance that could hardly be reasonably characterized as a commercial Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 34 success, let alone as a result of the claimed invention. Accord MacDonald Decl., Exh. A (noting that Zumbox is free for all qualified businesses and organizations except for advertisers and marketers from which Zumbox will derive revenues). But even if Zumbox was commercially successful as Patent Owner contends (an allegation that has not been demonstrated on this record), Patent Owner has still not evidenced a nexus between this alleged commercial success and the claimed invention apart from conclusory assertions as noted above and as the Examiner indicates. RAN 98. Patent Owner‘s contentions regarding the alleged long-felt need are likewise unavailing. To establish a long-felt need, three elements must be proven. First, the need must have been a persistent one that was recognized by ordinarily skilled artisans. In re Gershon, 372 F.2d 535, 538 (CCPA 1967). Second, the long-felt need must not have been satisfied by another before the claimed invention. See Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (―[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved . . . .‖). Third, the invention must, in fact, satisfy the long-felt need. In re Cavanaugh, 436 F.2d 491, 496 (CCPA 1971). Here, Patent Owner fails to satisfy this test. Mr. Payne acknowledges that there were attempts to implement electronic mail systems in the early 1970s, and these systems did not reach wide acceptance due to the limited availability of personal computing devices and Internet connectivity, as well as the relatively low cost of postage. Payne Decl. ¶ 5. If anything, these factors would reasonably be considered disincentives to change the then- existing status quo of postal delivery by mail as Mr. Payne indicates. Id. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 35 Nevertheless, to the extent that these efforts implicate a persistent, recognized need in the art that was not satisfied by another, Patent Owner has still not shown that the claimed invention that maps physical mailing addresses to email addresses (which is said to be embodied by the Zumbox system) satisfies that need apart from conclusory assertions. Although Zumbox stated that their system was ―revolutionary‖ and ―an idea whose time has come‖ (id.), such self-laudatory statements hardly prove that their device—let alone the claimed invention—satisfied a long-felt need as Patent Owner contends. In sum, considering the submitted evidence of secondary considerations along with the other evidence of record, we find that the weight of the evidence on this record favors the Examiner‘s position. Accordingly, we are not persuaded that the Examiner erred in rejecting claim 1 as obvious over Agraharam and RAND. THE EXAMINER‘S OBVIOUSNESS REJECTION OVER AGRAHARAM, KANEVSKY, AND RAND Claims 1, 4, and 7 We likewise are unpersuaded of error in the Examiner‘s rejecting claims 1, 4, and 7 as obvious over Agraharam, Kanevsky, and RAND. RAN 8-9 (incorporating pages 29 through 32 of the Request by reference); 7 RAN 50-53. First, Patent Owner‘s contentions that there is allegedly no reason why skilled artisans would have combined (1) Agraharam and RAND, and 7 This incorporation also applies to the obviousness rejection of claims 2 and 3 over these references that is separately discussed below. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 36 (2) Agraharam and Kanevsky (PO App. Br. 21-22; PO Reb. Br. 7) are unavailing for the reasons noted previously and by the Examiner. Second, Patent Owner‘s contention that Kanevsky does not teach that the recited server includes an electronic mailbox for each physical mailing address (PO App. Br. 21-22; PO Reb. Br. 7) is unavailing, for it is not germane to the reason why Kanevsky was cited. RAN 51-52 (noting that RAND was relied on for teaching the electronic mailbox limitation). Rather, Kanevsky was cited merely to show that substituting a post mail address for the Agraharam geographic identifier would have been an obvious modification yielding a predictable result, particularly in view of Kanevsky‘s database server means‘ mapping function associated with this postmail address, which is also a geographic identifier. See TPR Resp. Br. 13-14; RAN 51-53 (citing Jeffay Decl. ¶ 31). In any event, the recited server‘s mailbox feature is at least an obvious modification to Agraharam by consolidating that reference‘s email and translation server functionalities as noted previously. Accord Request, at 29 (―Agraharam also includes email server 103 with user mailboxes that correspond to the alias address.‖). Therefore, we are not persuaded that the Examiner erred in rejecting claims 1, 4, and 7 as obvious over Agraharam, Kanevsky, and RAND. Claim 2 We also sustain the Examiner‘s rejection of claim 2 reciting that the server provides means for allowing the recipient to request that the email be printed and forwarded via traditional mail using the physical mailing address. Patent Owner‘s contention that only senders—not recipients—in Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 37 Kanevsky can request printing and forwarding email via traditional mail (PO App. Br. 23; PO Reb. Br. 7-8) does not persuasively rebut the Examiner‘s and Requester‘s position that such recipient requests would have been obvious in view of the post office‘s stored information regarding receivers’ preferences. RAN 53; TPR Resp. Br. 14 (citing Kanevsky, col. 3, ll. 59-61; col. 6, l. 66 – col. 7, l. 2). That Kanevsky‘s users can indicate to the post office that their computers lack graphics capability thus resulting in the post office printing received electronic graphics for delivery as Requester indicates (TPR Resp. Br. 14 (quoting Kanevsky, col. 3, ll. 62-65)) only bolsters the Examiner‘s position that the recited recipient requests would have been obvious. Claim 3 We also sustain the Examiner‘s rejection of claim 3 reciting that the server provides a graphical user interface (GUI) that allows a recipient to select whether email is delivered to an electronic mailbox or delivered via traditional mail. First, Patent Owner‘s contention that only senders—not recipients—in Kanevsky can request printing and forwarding email via traditional mail (PO App. Br. 23; PO Reb. Br. 8) is unpersuasive for the reasons noted above. Second, Patent Owner‘s arguments regarding Kanevsky‘s alleged shortcomings regarding the recited GUI are inapposite, for the Examiner‘s rejection cites Agraharam—not Kanevsky—for this feature as Requester indicates. See RAN 8-9 (incorporating pages 29-32 of the Request by reference); TPR Resp. Br. 15. Accord Request, at 31 (noting that Agraharam‘s web browser is a GUI). Although the Examiner‘s Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 38 statement that ―selecting via a GUI is not recited in the claim‖ (RAN 53) is somewhat puzzling given the explicit GUI selection functionality recited in claim 3, we nonetheless deem any error associated with this statement harmless given the Examiner‘s reliance on Agraharam for the GUI limitation in the rejection as noted above. THE EXAMINER‘S OBVIOUSNESS REJECTION OVER AGRAHARAM, BENJAMIN, AND RAND We also sustain the Examiner‘s obviousness rejection of claims 1 and 7 over Agraharam, Benjamin, and RAND for the reasons noted previously as well as those indicated by the Examiner (RAN 9, 56-59) and Requester (TPR Resp. Br. 15-16). Despite nominally arguing this rejection separately, Patent Owner reiterates arguments similar to those made previously (PO App. Br. 24; PO Reb. Br. 8-9) which we find unpersuasive for the reasons previously discussed. THE EXAMINER‘S OBVIOUSNESS REJECTION OVER AGRAHARAM, ALLOCCHIO, AND RAND We also sustain the Examiner‘s obviousness rejection of claims 1 and 7 over Agraharam, Allocchio, and RAND for the reasons noted previously as well as those indicated by the Examiner (RAN 9, 59-63) and Requester (TPR Resp. Br. 16). Patent Owner reiterates arguments similar to those made previously (PO App. Br. 24-25; PO Reb. Br. 9) which we find unpersuasive for the reasons previously discussed. Moreover, Patent Owner‘s contention that Allocchio does not disclose any type of mapping Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 39 between physical mailing addresses and email addresses (PO App. Br. 25; PO Reb. Br. 9) does not persuasively rebut the Examiner‘s position in the rejection which is not based on Allocchio alone, but rather the collective teachings of the cited references, and in particular, Agraharam and Allocchio collectively for the recited mapping limitation. See RAN 9 (incorporating pages 35 through 37 of the Request by reference); see also In re Keller, 642 F.2d 413, 426 (CCPA 1981) (noting nonobviousness cannot be shown by attacking references individually where, as here, the obviousness rejection is based on the combination of references). Therefore, we are not persuaded that the Examiner erred in rejecting claims 1 and 7 over Agraharam, Allocchio, and RAND. Because our decision is dispositive regarding patentability of these claims based on these references (as well as Agraharam, Benjamin, and RAND), we need not reach the merits of the Examiner‘s additional cumulative obviousness rejection of these claims based on Agraharam, Allocchio, and Wired. RAN 9, 63-65. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). THE EXAMINER‘S OBVIOUSNESS REJECTION OVER AGRAHARAM, KANEVSKY, RAND, AND APA We also sustain the Examiner‘s obviousness rejection of claims 5, 6, and 19 over Agraharam, Kanevsky, RAND, and APA for the reasons noted previously as well as those indicated by the Examiner (RAN 10, 13-14, 66- 68, 72-73) and Requester (TPR Resp. Br. 11, 17). To be sure, the Examiner acknowledges that the request did not articulate an objective reason to combine the teachings of Agraharam/Kanevsky/RAND with APA. RAN 10. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 40 The Examiner, however, adds that skilled artisans would have nevertheless recognized that because Kanevsky teaches a system where email can be automatically printed and sent via conventional postal mail, it would have been obvious to employ the known features of a postal mail system, including the known traditional mail classes currently used by the U.S. Postal Service, and designate such classes as part of designating physical delivery. Id. We see no error in this reasoning. Moreover, despite nominally arguing this rejection separately, Patent Owner reiterates arguments similar to those made previously (PO App. Br. 27, 29; PO Reb. Br. 10-11) which we find unpersuasive for the reasons previously discussed. THE EXAMINER‘S OBVIOUSNESS REJECTION OVER KANEVSKY AND APA We also sustain the Examiner‘s obviousness rejection of claims 17 and 18 over Kanevsky and APA for the reasons noted previously as well as those indicated by the Examiner (RAN 10-13, 68-71) and Requester (TPR Resp. Br. 17-18). To be sure, the Examiner acknowledges that the request did not articulate an objective reason to combine Kanevsky and APA. RAN 11. The Examiner, however, adds that Kanevsky‘s identifiable types of documents, namely those that are (1) printed at the post office (including whether they are printed as regular text and high-quality pictures), and (2) emailed read on the recited classes, and that traditional mail classes currently used by the U.S. Postal Service are APA. Id. In light of these teachings, the Examiner concludes that because skilled artisans would have recognized that Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 41 Kanevsky‘s system can automatically print and send email via conventional postal mail, it would have been obvious to employ the known features of a postal mail system, including the known traditional mail classes currently used by the U.S. Postal Service, and designate such classes as part of designating physical delivery. RAN 11-12. We see no error in this reasoning. Moreover, Patent Owner‘s contention that only senders—not recipients—in Kanevsky can request printing and forwarding email via traditional mail (PO App. Br. 28; PO Reb. Br. 10-11) does not persuasively rebut the Examiner‘s and Requester‘s position that such recipient requests would have been obvious in view of the post office‘s stored information regarding receivers’ preferences as noted previously. See RAN 12 (citing Kanevsky, col. 3, ll. 52-61). Nor are we persuaded that the Examiner erred by finding that Kanevsky‘s ―Internet Mail‖ operations 20, 27 are servers, and that this functionality at least suggests storing email in a recipient‘s electronic mailbox in view of conventional Simple Mail Transfer Protocol (SMTP) and POP3 operations associated with internet mail. RAN 12, 70; TPR Resp. Br. 17-18; Jeffay Decl. ¶¶ 26-29. Even assuming, without deciding, that Kanevsky stores email in a general mailbox as Patent Owner contends (PO App. Br. 28; PO Reb. Br. 10), nothing in the claim precludes this generic mailbox, for it too would be ―an electronic mailbox of said recipient‖ in addition to other recipients. Therefore, we are not persuaded that the Examiner erred in rejecting claims 17 and 18 over Kanevsky and APA. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 42 THE EXAMINER‘S ANTICIPATION REJECTION OVER KANEVSKY Claims 21, 23, and 24 We also sustain the Examiner‘s anticipation rejection of representative claim 21 which recites, in pertinent part, storing email in an electronic mailbox for the recipient for the reasons noted previously as well as those indicated by the Examiner (RAN 14-15, 75-76) and Requester (TPR Resp. Br. 18). Despite nominally arguing this rejection separately, Patent Owner reiterates arguments similar to those made previously (PO App. Br. 30; PO Reb. Br. 11-12) which we find unpersuasive for the reasons previously discussed. Therefore, we are not persuaded that the Examiner erred in rejecting representative claim 21, and claims 23 and 24 not separately argued with particularity. Claim 26 We also sustain the Examiner‘s anticipation rejection of claim 26 reciting, in pertinent part, (1) performing a mapping function on a server, where the mapping function maps a recipient‘s physical mailing address to the recipient‘s email address, and (2) printing an email and mailing it to the recipient via traditional mail delivery means. RAN 14-15, 75-76. As Requester indicates, by the very terms of the claim, the printing and mailing step is not tied directly to the preceding mapping step. TPR Resp. Br. 18. That is, this last step is not conditioned on the preceding mapping step as Requester correctly indicates. Id. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 43 Therefore, even if all paper-mail recipients in Kanevsky lack email addresses as Patent Owner contends (PO App. Br. 30; PO Reb. Br. 11-12), nothing in the claim precludes (1) Kanevsky‘s postmail-to-email address mapping function (see Request, at 20 (citing Kanevsky, col. 3, ll. 18-21)), and (2) Kanevsky‘s acknowledged functionality of printing emails and mailing them to recipients via traditional mail. See Kanevsky, col. 4, ll. 13- 16. THE EXAMINER‘S OBVIOUSNESS REJECTION OVER AGRAHARAM, RAND, AND GARDNER We also sustain the Examiner‘s rejection of claims 29, 30, 36, and 38- 44 over Agraharam, RAND, and Gardner. RAN 18, 79-80. Patent Owner contends that (1) there is no reason why skilled artisans would have been motivated to combine Agraharam with Gardner‘s digital document delivery system to present electronic bills to a customer for payment, and (2) Gardner is non-analogous art to the claimed invention. PO App. Br. 31; PO Reb. Br. 12-13. We find these arguments unavailing. First, the Examiner‘s rejection incorporates pages 19 through 21 of Requester‘s response filed October 11, 2011 (―TPR Response‖) by reference. RAN 18. This incorporated response articulates various reasons why skilled artisans would have combined Gardner with the Agraharam and RAND as proposed, namely to (1) ensure that the Agraharam/RAND system operates more reliably for mass mailing senders; (2) ensure that mailing recipients are notified that they have new mail in their mailboxes; (3) improve scalability, availability, and reliability of such a system; (4) reduce Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 44 cost and enhance performance; and (5) improve ease of use of the overall system for both senders and recipients. TPR Response, at 20-21. As Requester indicates (TPR Response, at 21), the combination predictably uses prior art elements according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Accordingly, the Examiner‘s reason to combine the teachings of the cited references is supported by articulated reasoning with some rational underpinning to justify the Examiner‘s obviousness conclusion. We also agree with the Examiner and Requester that Gardner is analogous art to the claimed invention. Prior art is analogous if it is (1) from the same field of endeavor regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Here, not only is Gardner‘s digital document delivery system in the same field of endeavor as the claimed invention, namely routing electronic documents from senders to recipients (albeit in the form of email), but Gardner is also reasonably pertinent to the inventor‘s problem, namely managing delivering electronic messages from senders to recipients as Requester indicates. TPR Resp. Br. 19. That Gardner‘s electronic documents pertain to a billing system is of no consequence here, for they are nonetheless electronic documents that are routed to recipients. See Gardner, Abstract. Accord ‘140 patent, col. 4, ll. 14-20 (discussing an embodiment that sends electronic copies of bills or other electronic documents). Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 45 THE EXAMINER‘S REMAINING REJECTIONS We also sustain the Examiner‘s rejections of (1) claims 22 and 27 over Kanevsky and APA (RAN 15-17, 76-78); (2) claim 25 over Kanevsky and Yu (RAN 17-18, 78-79); (3) claims 28, 31-34, 37, and 45-48 over Agraharam and RAND (RAN 18, 80-82); (4) claims 60 and 62-67 over Benjamin and Gardner (RAN 18-19, 82-83); (5) claims 70, 73-75, 77, and 78 over Kanevsky, APA, and Gardner (RAN 19, 83-84); (6) claims 68, 71, 72, 76, and 79-82 over Kanevsky and APA (RAN 19, 84-85); (7) claims 83, 86-89, 92-95, and 103-105 over Agraharam, Kanevsky, RAND, and APA (RAN 19, 85-87); (8) claims 84, 85, 91, and 96-102 over Agraharam, Kanevsky, RAND, APA, and Gardner (RAN 20, 87); (9) claims 107-110 over Kanevsky and Gardner (RAN 20, 88); (10) claim 35 over Agraharam, RAND, and LMOS (RAN 20, 88-90); (11) claim 69 over Kanevsky, Agraharam, and LMOS (RAN 21, 90-91); (12) claim 90 over Agraharam, Kanevsky, RAND, APA, and LMOS (RAN 21-22, 90-91); (13) claims 8 and 55 over Benjamin (RAN 22-23, 91-92); (14) claims 51-54 over Benjamin and RAND (RAN 23, 93); (15) claim 49 over Benjamin and Agraharam (RAN 23-24, 94); and (16) claim 50 over Benjamin and Kanevsky (RAN 24, 94-95) for the reasons noted previously as well as those indicated by the Examiner and Requester (PO Resp. Br. 19-21). Despite nominally arguing these rejections separately, Patent Owner reiterates arguments similar to those made previously (PO App. Br. 30-34; PO Reb. Br. 12-15) which we find unpersuasive for the reasons previously discussed. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 46 CONCLUSION The Examiner erred in declining to reject (1) claims 8, 9, 11, 12, and 14 under § 102 as anticipated by Kanevsky; (2) claims 10 and 15 under 35 U.S.C. § 103(a) as unpatentable over Kanevsky and APA; (3) claim 57 under § 103 as unpatentable over Kanevsky and LMOS; (4) claim 58 under § 103 as unpatentable over Benjamin and Kanevsky; (5) claim 59 under 35 U.S.C. § 103(a) as unpatentable over Benjamin, Kanevsky, and APA; and (6) claim 13 under 35 U.S.C. § 103(a) as unpatentable over Kanevsky and Yu. Accordingly, we reverse that decision. The Examiner, however, did not err in declining to reject (1) claims 56 and 61 under 35 U.S.C. § 102(a) as anticipated by Benjamin; (2) claims 1, 7, and 19 under 35 U.S.C. § 102(b) as anticipated by RAND; and (3) claim 19 under 35 U.S.C. § 103(a) as unpatentable over Agraharam, RAND, and APA. Accordingly, we affirm that decision. The Examiner also did not err in rejecting (1) claims 8 and 16 under 35 U.S.C. § 102(a) as anticipated by Benjamin; (2) claim 1 under 35 U.S.C. § 103(a) as unpatentable over Agraharam and RAND; (3) claims 1-4 and 7 under 35 U.S.C. § 103(a) as unpatentable over Agraharam, Kanevsky, and RAND; (4) claims 1 and 7 under 35 U.S.C. § 103(a) as unpatentable over Agraharam, Benjamin, and RAND; (5) claims 1 and 7 under 35 U.S.C. § 103(a) as unpatentable over Agraharam, Allocchio, and RAND; (6) claim 19 under 35 U.S.C. § 103(a) as unpatentable over Agraharam, Kanevsky, RAND, and APA; (7) claims 17, 18, 22, 27, 68, 71, 72, 76, and 79-82 under 35 U.S.C. § 103(a) as unpatentable over Kanevsky and APA; (8) claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Agraharam, Kanevsky, Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 47 RAND, and APA; (9) claims 21, 23, 24, and 26 under 35 U.S.C. § 102(e) as anticipated by Kanevsky; (10) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Kanevsky and Yu; (11) claims 29, 30, 36, and 38-44 under 35 U.S.C. § 103(a) as unpatentable over Agraharam, RAND, and Gardner; (12) claims 28, 31-34, 37, and 45-48 under 35 U.S.C. § 103(a) as unpatentable over Agraharam and RAND; (13) claims 60 and 62-67 under 35 U.S.C. § 103(a) as unpatentable over Benjamin and Gardner; (14) claims 70, 73-75, 77, and 78 under 35 U.S.C. § 103(a) as unpatentable over Kanevsky, APA, and Gardner; (15) claims 83, 86-89, 92-95, and 103-105 under 35 U.S.C. § 103(a) as unpatentable over Agraharam, Kanevsky, RAND, and APA; (16) claims 84, 85, 91, and 96-102 under 35 U.S.C. § 103(a) as unpatentable over Agraharam, Kanevsky, RAND, APA, and Gardner; (17) claims 107-110 under 35 U.S.C. § 103(a) as unpatentable over Kanevsky and Gardner; (18) claim 35 under 35 U.S.C. § 103(a) as unpatentable over Agraharam, RAND, and LMOS; (19) claim 69 under 35 U.S.C. § 103(a) as unpatentable over Kanevsky, APA, and LMOS; (20) claim 90 under 35 U.S.C. § 103(a) as unpatentable over Agraharam, Kanevsky, RAND, APA, and LMOS; (21) claims 8 and 55 under 35 U.S.C. § 102(a) as anticipated by Benjamin; (22) claims 51-54 under 35 U.S.C. § 103(a) as unpatentable over Benjamin and RAND; (23) claim 49 under 35 U.S.C. § 103(a) as unpatentable over Benjamin and Agraharam; and (24) claim 50 under 35 U.S.C. § 103(a) as unpatentable over Benjamin and Kanevsky. Accordingly, we affirm that decision. Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 48 ORDER For the reasons noted above, the Examiner‘s decision regarding claims 1-106 is affirmed-in-part. Under 37 C.F.R. § 41.77(a), the above-noted reversal constitutes a new ground of rejection. Section 41.77(b) provides that ―a new ground of rejection . . . shall not be considered final for judicial review.‖ That section also provides that Patent Owner, WITHIN ONE MONTH 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 proceeding as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. In accordance with 37 C.F.R. § 41.79(a)(1), the ―[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of . . . [t]he original decision of the Board under § 41.77(a).‖ A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under 37 Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 49 C.F.R. § 41.79(e), the time periods for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141-44 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding ―commenced‖ on or after November 2, 2002 may not be taken ―until all parties‘ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.‖ 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. AFFIRMED-IN-PART 37 C.F.R. 41.77 alw Appeal 2013-010661 Reexamination Control 95/001,300 Patent US 7,478,140 B2 50 Third Party Requester: Law Office of David H. Judson 15950 Dallas Parkway Suite 225 Dallas, TX 75248 Patent Owner: Pitney Bowes Inc. Intellectual Property & Procurement Law Dept. 37 Executive Drive MSC 01-152 Danbury, CT 06810 Copy with citationCopy as parenthetical citation