Ex Parte Bodie

Board of Patent Appeals and Interferences

Apr 28, 2004

09134977 (B.P.A.I. Apr. 28, 2004)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KEVIN W. BODIE
__________
Appeal No. 2002-2258
Application 09/134,977
__________
ON BRIEF
__________
Before THOMAS, HAIRSTON, and DIXON, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 15 to 19 and 21 through 27.
Representative claim 15 is reproduced below:
15. A method for controlling an inserter system to regenerate
misprocessed mailpieces, comprising the steps of:
a) identifying said misprocessed mailpiece;
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b) writing a record identifying said misprocessed
mailpiece in a common data store accessible by a data
processing system;
c) inputting said record to said data processing
system;
d) said data processing system regenerating a control
document associated with said misprocessed mailpiece in
accordance with said record, said control document
specifying assembly of said misprocessed mailpiece;
e) inputting said regenerated control document to said
inserter system;
f) said inserter system assembling another mailpiece
substantially in accordance with specifications for
said misprocessed mailpiece on said regenerated control
document.
The following references are relied on by the examiner:
Schneiderhan 5,067,088 Nov. 19, 1991
Baker et al. (Baker) 5,175,691 Dec. 29, 1992
In what we shall consider as a first stated rejection,
claims 15, 19, 21 through 25 and 27 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Baker. In a second
stated rejection, this reference is used to reject claims 15, 19
and 21 through 27 under 35 U.S.C. § 103. In a third stated
rejection, the examiner utilizes Schneiderhan to reject under
35 U.S.C. 102(b) claims 15 through 18, 21 and 24. Schneiderhan
in turn is used as the basis to reject claims 15 through 18 and
21 through 25 under 35 U.S.C. § 103. Finally, in a fifth stated
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rejection, claims 15, 19 and 21 through 27 stand rejected under
35 U.S.C. § 103 as being obvious over Baker in view of
Schneiderhan.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answer for the
respective details thereof.
OPINION
We reverse all rejections of the claims on appeal.
At the outset, we observe that the subject matter the
examiner sets forth in the statements of the rejections beginning
at page 3 of the answer does not comport with the actual subject
matter of the presently identified claims on appeal.
Nevertheless, considering the five basic rejections set forth
earlier, we are mindful of the examiner’s positions with respect
to each feature actually recited in the claims on appeal.
Each claim on appeal relates to so-called “control
documents” and the regeneration of them. Each claim also relates
to “mailpieces” which are defined at specification, page 1,
lines 11 and 12 to mean “items intended to be delivered by a
postal service or private courier service.” Appellant’s prior
art Figure 1, as described at the middle of the specification
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page 1, identifies each group of documents shown there as a
particular mailpiece to include at least control document CD,
each of which includes code BC, the more complex version of which
serves as a pointer to a mailpiece record which in turn contains
information for controlling a physical inserter of the documents.
In association with appellant’s contribution in the art shown in
Figure 2, element 46 comprises a printed document set discussed
at specification, page 7, lines 22 to 33. Document set 46
includes control documents CD and associated documents P.
Control Documents are marked with bar code pointers to mailpiece
records in the same manner as discussed earlier as a part of the
prior art.
The focus of the claimed invention is set forth briefly at
specification, page 7, line 44 through page 8, line 3 where it is
indicated that the data processing system 42 of Figure 2 is
programmed with an Automatic Print Regeneration program APR which
monitors a common data store 62 to “identify misprocessed
mailpieces and control system 42 to regenerate the associated
document set [46], including the control document for the
misprocessed mailpiece.” In association with the description of
Figures 3A, B and C, it is noted at specification, page 9, lines
10 through 15, that the data processing system 42 generates
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document sets 46 for mailing, where each of sets 46 corresponds
to a particular mailpiece and includes a control document CD and
any associated pages P. Page 13, lines 1 through 7 of the
specification discusses briefly the flow chart functional block
element 178 (Figure 3B) which indicates that the APR program 43
causes a data processing system 42 to retrieve the original data
for document sets 46 associated with misprocessed mailpieces and
regenerates such document sets 46. Lines 27 through 32 of page
13 teaches that the control document can be a freight bill used
to control conventional automated picking systems to assemble
small items or packages to form a package for delivery.
With all of this in mind, it is apparent to us that the
“control document” of the claims on appeal comprises a tangible
or physical document associated with tangible, physical
mailpieces in claims 15 through 19 and 21 through 26. In claim
27, the control documents relate to an assembled group instead of
mailpieces per se. The systems of all claims on appeal relate to
specifications or information “on” regenerated control documents
as a control functionality.
As noted by appellant at the bottom of page 4 of the reply
brief, specification page 5, lines 19 and 20 state “[a]s used
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herein the term regenerate as applied to control documents means
reprinting or otherwise recreating control documents. . . .”
When all of this is considered in context, it is apparent that
generation of the control documents as required by each claim on
appeal requires the reprinting or some form of recreation of a
physical or tangible document called a control document once a
misprocessed mailpiece has been determined to exist.
As to the first two stated rejections of various claims on
appeal under 35 U.S.C. § 102 and 35 U.S.C. § 103 relying upon
Baker, appellant’s basic urging in the brief and reply brief is
that Baker expressly teaches away from using control documents.
“A reference may be said to teach away when a person of
ordinary skill, upon [examining] 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 applicant.” In re Gurley, 27 F.3d 551, 553, 21
USPQ2d 1130, 1131 (Fed. Cir. 1994). (Brackets in original.)
Para-Ordnance Mfg. V. SGS Importers Int’l, 73 F.3d 1085, 1090,
37 USPQ 1237, 1241 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80
(1996).
We generally agree with this assessment of Baker. The
examiner appears to clarify his position with respect to control
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documents at the bottom of page 13 of the answer where he repeats
his urging that a control document is a sheet as discussed
according to column 2, lines 11 through 47 of Baker in his
assessment of the prior art, as well as an “electronic document”
that Baker appears to discuss according to his specific
teachings.
Baker’s discussion of prior art control documents at
column 2 is consistent with appellant’s usage of the term in
the disclosed and claimed invention as well as appellant’s own
assessment of the prior art. Baker’s column 2 discussion
indicates that a control document is transported from station
to station of an inserter system where, at selected stations
therein, pre-printed inserts may be accumulated with the control
document where eventually the entire accumulated set is inserted
into a preformed envelope.
On the other hand, Baker’s own approach is not consistent
with this in the sense of utilizing a tangible, physical control
document. Consistent with the examiner’s apparent view of
Baker’s specific teachings or contribution in the art relating to
electronic control documents, the rejection cannot be sustained
because of the earlier-noted requirements of the claims on
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appeal. Appellant’s mention of the teachings at columns 8 and 10
of Baker at page 7 of the principal brief on appeal is well-
taken. It is clear from these discussions alone that Baker does
not contemplate the physical or tangible use of a control
document as known in the art. The user generates, through the
use of the control application program in Baker, data structures
which are utilized for the actual configuration of the mailpiece
discussed. The control architecture, control systems and data
structures in Baker appear to us to be what the examiner regards
as an electronic document. Even though Baker’s discussion of
Figures 10G and 10H at the top of column 15 relating to error
determinations and recovery states, and further as to the
statement at lines 14 and 15 that “the data structure defining
the configuration for the mail run is reset . . .”, this
resetting or apparent regeneration of a physical control document
(i.e., the data structure) is not anywhere taught in Baker to be
related to a prior art control documents discussed at column 2.
In other words, the artisan within 35 U.S.C. § 102 and 35
U.S.C. § 103 would not, in our view, have considered what the
examiner considers to be an electronic control document to be a
control document that is reset or regenerated in accordance with
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the claims on appeal. Overall, Baker’s aim is to overcome the
known disadvantages of tangible control documents discussed at
column 2 essentially by not using them according to his specific
teachings. Therefore, as urged by appellant, Baker effectively
teaches away of the use of the control documents of the types set
forth in the claims on appeal. Because of this, their
regeneration as set forth in the claims on appeal is not taught
or otherwise contemplated or suggested in Baker as well.
In view of these findings, we cannot sustain the examiner’s
rejection of various claims, including each independent claim on
appeal, as being anticipated by or obvious over Baker alone.
We turn next to the third and fourth stated rejections of
various claims on appeal under 35 U.S.C. § 102 and 35 U.S.C.
§ 103 as being anticipated by or obvious over Schneiderhan alone.
To simplify our consideration of the issues with respect to
this reference, we find ourselves in general agreement with the
urgings of appellant at pages 8 and 9 of the principal brief and
at pages 5 and 6 of the reply brief. The examiner appears to
urge that the alpha-numeric sequence indicators 52 through 58 in
Figure 2 of Schneiderhan correspond to the so-called control
documents of the claims on appeal. We read this reference
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essentially in the same manner as noted by appellant at pages 8
and 9 of the principal brief on appeal where it appears that the
system will stop automatically if there is some kind of a
mismatch determined by the overall system and the operator
implicitly must manually put the documents into a proper order
rather than the system performing automatically any kind of
regeneration of apparently misprocessed mailpieces. The
misprocessing or mismatching occurs when the correct documents
collected according to the alpha-numeric sequence indicators are
determined to be out of sequencing order. To the extent the
examiner’s views may be considered to be correct that an alpha-
numeric sequence indicator is some kind of a control document,
there appears to be no teaching or suggestion in this reference
of the regeneration of them in accordance with the requirements
of the claims on appeal. As such, we must reverse the rejection
of various claims on appeal as being anticipated by or rendered
obvious over Schneiderhan alone.
Lastly, we consider this rejection under 35 U.S.C. § 103 of
claims 15, 19 and 21 through 27 as being obvious over the
combined teachings and showings of Baker in view of Schneiderhan.
It should be apparent to the reader that there is thus no basis,
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in accordance with our previous discussion of these references
individually, that can be found among their collective teachings
and showings to have rendered obvious the subject matter of each
independent claim 15, 21 and 27 on appeal. Thus, this rejection
as well is reversed.
In summary, we have reversed each of the examiner’s stated
rejections of the claims on appeal under 35 U.S.C. § 102 and
35 U.S.C. § 103. Therefore, the decision of the examiner is
reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JDT:svt
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Application No. 09/134,977
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Christopher J. Capelli
Pitney Bowes Inc.
Intellectual Property and Technology
Law Department
35 Waterview Drive
P.O. Box 3000
Shelton, CT 06484