Ex Parte Biasi et al

Board of Patent Appeals and Interferences

Dec 15, 2010

10955730 (B.P.A.I. Dec. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
TJnited States Patent and Trademark Office
Add,&: COMMISSIONER FOR PATENTS
P 0 Box 1450
Alexandria, Virginia 22313-1450
www uspto go"
101955,730 09/30/2004 Theresa Biasi F-753-01 5851
APPLICATION NO.
919 7590 12/17/2010
PITNEY BOWES INC.
EXAMINER
FILING DATE
INTELLECTUAL PROPERTY & TECH. LAW DEPT. JITNG, ALLEN J
35 WATERVIEW DRIVE
MSC 26-22
FIRST NAMED INVENTOR
I ARTUNIT I PAPERNUMBER I
SHELTON, CT 06484 3628
ATTORNEY DOCKET NO. CONFIRMATION NO.
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
iptl@pb.com
12/17/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte THERESA BIASI,
THOMAS J. FOTH,
LINDA A. NAZARETH, and
RICHARD W. HEIDEN
Appeal 2009-015253
Application 101955,730
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-015253
Application 101955,730
STATEMENT OF THE CASE
Theresa Biasi, et al. (Appellants) seek our review under 35 U.S.C.
5 134 (2002) of the final rejection of claims 1, 2, 4-10, 13-14, and 16-17.
We have jurisdiction under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
This invention is "a secure temporary storage method for holding
objects." Specification [002].
Claim 13, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for providing a secure box for the
transfer of objects from a sender to a recipient, the
method comprising the steps of:
A) specifying recipient delivery object preference
which is a recipient stated media in which the
2 Our decision will make reference to the Appellants' Corrected Appeal
Brief ("Br.," filed Apr. 3, 2009) and the Examiner's Answer ("Answer,"
mailed Jun. 5, 2009).
3 Claim 1 reproduced in the Claims Appendix VIII of the Corrected Appeal
Brief (Br. 19) is not the currently pending version of claim 1. Claim 1
reproduced on page 21 of the Corrected Appeal Brief under the heading
"Claim 1 Appendix as claim 1 appeared in the December 11, 2008
Amendment After Final Rejection" is the currently pending version of claim
1 and is, therefore, addressed in this Decision. The Examiner entered the
Dec. 11, 2008 amendments to claim 1 in the Advisory Action mailed on Jan.
2,2009. See also Answer 2 and 3.
Appeal 2009-015253
Application 101955,730
recipient will be notified that the object is placed
in the box;
B) notifying by a sender the intention of delivering
an object to the recipient;
C) assigning a secure box having a unique
identification code to the recipient based upon the
recipient's preferences and current box
availability;
D) unlocking the assigned box;
E) placing an object having a unique package
identification code in the assigned box;
F) locking the assigned box;
G) recording via camera the placing of the object
in the assigned box by the sender or the sender's
agent, the unique package identification code of
the object, and the identification of the person who
placed the object in the assigned box;
H) notifying the recipient of the delivery of the
object to the assigned box;
I) unlocking the recipient assigned box upon the
recipient providing appropriate identification; and
J) recording via camera the recipient's removal of
the object,
K) sending an image of the recipient who removed
the object from the box to the sender; and
L) recording the date and time the image of the
recipient who removed the object from the box
was captured and sending the date and time the
image was captured to the recipient.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability :
Appeal 2009-015253
Application 101955,730
Hansen US 200210156645 A1 Oct. 24, 2002
Fong US 200410015393 A1 Jan. 22,2004
The Examiner took official notice that "it is old and well known in the
photography art that time and date of the image capture are recorded,
especially if the pictures are used for documentation purposes." Answer 8
and 1 1. [Hereinafter, Official Notice.]
The following rejections4 are before us for review:
1. Claim 1 is rejected under 35 U.S.C. 5 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 1, 2,4-10, 13-14, and 16-17 are rejected under 35
U.S.C. §103(a) as being unpatentable over Hansen, Fong, and
Official Notice.
ISSUES
The first issue is whether claim 1 fails to comply with the written
description requirement of 35 U.S.C. 5 112, first paragraph. Specifically,
the issue is whether the Specification contains a written description of
limitation L.
4 In the Brief, the Appellants list claim 1 as being rejected under 35 U.S.C.
5 112, second paragraph as failing to particularly point out and distinctly
claim the subject matter which appellant regards as the invention as a ground
of rejection to be reviewed. Br. 12. However, the rejection of claim 1 under
35 U.S.C. 1 12, second paragraph, was withdrawn by the Examiner in the
Advisory Action mailed on Jan. 2, 2009. Therefore, we will not address the
Appellants' argument related to this ground of rejection.
Appeal 2009-015253
Application 101955,730
The second issue is whether the Examiner erred in rejecting claims 1,
2,4-6, and 16-17 under 35 U.S.C. §103(a) as being unpatentable over
Hansen, Fong, and Official Notice.
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claim 1 under 35 U.S.C. 112, first paragraph, as failing to
comply with the written description requirement.
The Examiner rejected claim 1 as failing to comply with the written
description requirement because the Specification does not describe that the
date, time, and image of the recipient who removed the object is sent to the
recipient as recited in limitation L. Answer 4-5. The Examiner states "that
while there are disclosures of the date, time, and image of recipient being
sent to the sender, there is no disclosure that this information is sent to the
recipient as claimed in limitation L of claim 1." Answer 5. The Examiner
points to Figure 3C, step 125, page 8, and original claim 11 as disclosing the
information being sent to the sender. Answer 4-5.
The Appellants disagree with the Examiner assert that paragraphs
[021] and [027] of the Specification support the limitation that the date, the
time and the image of the recipient is sent to the recipient. Br. 13.
"What is claimed by the patent application must be the same as what
is disclosed in the specification; otherwise the patent should not issue."
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722,736
Appeal 2009-015253
Application 101955,730
(2002). All that is necessary to satisfy the description requirement is to show
that one is "in possession" of the invention. The decision in Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) accurately states the test.
One shows that one is "in possession" of the
invention by describing the invention, with all its
claimed limitations, not that which makes it
obvious. Id. ("[Tlhe applicant must also convey to
those skilled in the art that, as of the filing date
sought, he or she was in possession of the
invention. The invention is, for purposes of the
'written description' inquiry, whatever is now
claimed.") (emphasis in original). One does that by
such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set
forth the claimed invention. Although the exact
terms need not be used in haec verba, see
Eiselstein v. Frank, 52 F.3d 1035, 1038 . . .
(Fed.Cir. 1995) ("[TI he prior application need not
describe the claimed subject matter in exactly the
same terms as used in the claims . . . . "), the
specification must contain an equivalent
description of the claimed subject matter.
Lockwood v. Am. Airlines, Znc., 107 F.3d at 1572 (emphasis original).
Compliance with the written description requirement is a question of fact.
Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir.
We agree with the Examiner and find nothing in paragraphs [021] and
[027] that describe the portions of limitation L at issue. Paragraph [021]
describes that a camera can take an image of an individual that accesses the
box and paragraph [027] describes that the recipient can input the manner in
which the recipient will be notified of delivery. However, these paragraphs
do not describe that a manner in which the recipient will be notified of
Appeal 2009-015253
Application 101955,730
delivery will include the claimed image of the recipient. As the Examiner
points out, the Specification describes that the sender is notified with the
date, time, and image of the recipient. Specification [029] and Fig. 3C, step
125.
Accordingly, we affirm the Examiner's decision to reject claim 1
under 5 112, first paragraph, as failing to comply with the written
description requirement.
The rejection of claims 1, 2, 4-10, 13-14, and 16-1 7 under §103(a) as being
unpatentable over Hansen, Fog, and Oficial Notice.
The Appellants argued claims 1, 2,4- 10, 13- 14, and 16- 17 as a group
(Br. 14). We select claim 1 as the representative claim for this group, and
the remaining claims 2,4-10, 13- 14, and 16-17 stand or fall with claim 1. 37
C.F.R. 5 41.37(c)(l)(vii) (2010).
The Brief reproduces passages from the cited prior art that the
Examiner cited in support of the rejection. Br. 14-17. Then the Brief
concludes by saying that "Hansen, Fong and/or Official Notice do not
disclose and/or anticipate steps A, C, E, G, J, K and [sic] of claim 1 ." Br. 17.
The Brief does not persuade us of error in the rejection.
The question here is one of obviousness, not anticipation. In that
regard, "[tlhe obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents." KSR Znt'l Co. v. Telejlex Znc., 550 U.S. 398,419
(2007). "As our precedents make clear, however, the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
Appeal 2009-015253
Application 101955,730
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'l Co., 550 U.S. at
418.
Furthermore, the test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary skill in the art.
See In re Young, 927 F.2d 588,591 (Fed. Cir. 1991) and In re Keller, 642
F.2d 413,425, (CCPA 1981). Here the Appellants have focused on each of
the cited references without considering what the combined teachings of the
references would have suggested to one of ordinary skill in the art. This is
important because the Examiner relied on a combination of references to
reject claim 1. For example, with respect to step (G), the Examiner's
position was that the step is obvious over the combination of Hansen and
Fogg. The Examiner relied on Hansen as disclosing the "recording via
camera the placing of the object in the assigned box by the sender or the
sender's agent, and the unique package identification code of the object"
portion of step (G). Answer 5-6. The Examiner conceded that Hansen does
not disclose the limitation "recording via camera . . . the identification of the
person who placed the object in the assigned box" of step (a). Answer 8.
Instead, the Examiner relied on Fong. Answer 8-9. The Examiner found
that
[i]t would have been obvious to one of ordinary skill in the art at the
time of invention to combine Hansen's delivery system with Fong's
photographic recording feature. As Fong discloses, one would be
motivated to do so because the locker would then provide "selective
access" with enhanced security, allowing only authorized deliverers to
access the item in the locker.
Answer 9.
Appeal 2009-015253
Application 101955,730
Accordingly, the Appellants' argument that the references do not
disclose or anticipate the claimed subject matter does not persuade us of
error in the rejection.
Further, the Appellants appear to traverse the Official Notice. Br. 17.
The Appellants state: "Applicants disputes the statement of Official Notice
especially if intended to meet the limitations of step K and L of claim 1." Id.
However, Appellants' statement does not appear to traverse what the
Examiner regards as knowledge that would have been generally available to
one of ordinary skill in the art at the time the invention was made. Even if
one were to interpret Appellants' statement as constituting a traverse,
Appellants' statement does not appear to constitute an adequate traverse
because the Appellants have not specifically pointed out the supposed errors
in the Examiner's action, which would include stating why the noticed fact is
not considered to be common knowledge or well-known in the art. 27 CFR
1.104(d)(2), MPEP 707.07(a). An adequate traverse must contain adequate
information or argument to create on its face a reasonable doubt regarding
the circumstances justifying Examiner's notice of what is well known to one
of ordinary skill in the art. In re Boon, 439 F.2d 724, 728 (CCPA1971).
Accordingly, we will affirm the Examiner's decision to reject claim 1,
and claims 2, 4- 10, 13- 14, and 16- 17 stand or fall with claim 1, under 5 103
over the combination of Hansen, Fong, and Official Notice.
DECISION
The decision of the Examiner to reject claims 1, 2,4-10, 13- 14, and
16- 17 is affirmed.
Appeal 2009-015253
Application 101955,730
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2010).
AFFIRMED
mev
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & TECH. LAW DEPT.
35 WATERVIEW DRIVE, MSC 26-22
SHELTON CT 06484