Ex Parte 7478140 et al

Patent Trial and Appeal Board

Jan 29, 2014

95001300 (P.T.A.B. Jan. 29, 2014)

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