Ex Parte Brandt

Patent Trial and Appeal Board

Jul 20, 2017

12367270 (P.T.A.B. Jul. 20, 2017)

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.
12/367,270 02/06/2009 William R. Brandt 29094-0037 9524
73552 7590 07/24/2017
Schwabe, Williamson & Wyatt/SFC
1211 SW Fifth Ave.
Suite 1900
Portland, OR 97204
EXAMINER
BUTLER, MICHAEL E
ART UNIT PAPER NUMBER
3653
NOTIFICATION DATE DELIVERY MODE
07/24/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDocketing @ S CHWABE.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM R. BRANDT
Appeal 2016-002425
Application 12/367,270
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL1
1 The present matter is related to Application No. 11/932,970 filed October
31, 2007 that was subject to Appeal No. 2014-008980. A Decision in that
Appeal was mailed September 22, 2016. See also Br. 3.
Appeal 2016-002425
Application 12/367,270
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
14—29. Br. 1. Claims 1—13 have been canceled. See Amendment dated
January 9, 2013. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).
THE CLAIMED SUBJECT MATTER
The claims are directed “to methods and apparatus for sorting and
handling items, such as mail pieces, and more specifically to improvements
in automated processing of first pass DPS (Delivery Point Sequence) reject
items.” Spec. 13. Method claim 14 and system claim 22 are independent.
Claim 14, reproduced below, is illustrative of the claimed subject matter:
14. A method for sorting of mail pieces into a Delivery Point
Sequence (DPS), comprising:
(a) in an initial processing system, automatically reading an
address of a mailpiece, and applying a bar code to the mailpiece, the
bar code indicating a postal delivery point corresponding to the
address;
(b) assembling a plurality of such bar-coded mail pieces into
a batch for further processing;
(c) processing the batch of mail pieces in a delivery bar code
sequence (DBCS) sorting machine, in which the DBCS reads the bar
code of each mailpiece, and directs each mailpiece into a selected
output bin based on the bar code;
(d) detecting a rejected mailpiece for which the bar code is
illegible;
(e) in response to said detecting, feeding the rejected
mailpiece directly into a reject encoding machine, so as to avoid
manual sort;
(f) in the reject encoding machine, resolving the address of
the rejected mailpiece;
2
Appeal 2016-002425
Application 12/367,270
(g) in the reject encoding machine, applying a new bar code
to the rejected mailpiece, the new bar code indicating a postal delivery
point corresponding to the resolved address; and
(h) transporting the rejected mailpiece back into the DBCS
sorting machine while the DBCS sorting machine is still processing
the first pass of delivery point sequencing of the batch of mail pieces
from which the rejected mailpiece came, so as to continue automated
processing without manual sorting.2
REFERENCES
Allen et ah, US 5,703,783 Dec. 30, 1997
Pippin et al., US 2003/0038065 A1 Feb. 27, 2003
Stemmle US 2008/0230449 Al Sept. 25, 2008
REJECTIONS
Claims 14—29 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Allen and Pippin.
Claims 14—21 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Allen and Stemmle.
ANALYSIS
The rejection of claims 14—29
as unpatentable over Allen and Pippin
Each independent claim 14 and 22 includes the limitation of
assembling a plurality of bar-coded mail pieces3 “into a batch for further
processing.” Each such claim also includes the limitation of transporting
2 “Appellant admits that steps labeled (a)-(d) above are known in the prior
art; they provide context for the remainder of the claim.” Br. 4.
3 It is noted that when claims 14 and 22 refer to a single item, the term
“mailpiece” is employed, but when reference is to several such items, the
term “mail pieces” is employed. While the parties do not fastidiously follow
this distinction, we attempt to abide by it wherever possible.
3
Appeal 2016-002425
Application 12/367,270
previously rejected mail pieces back to the sorting machine in a timely
manner, i.e., “while the DBCS sorting machine is still processing the first
pass of delivery point sequencing of the batch of mail pieces from which the
rejected mailpiece came.” In other words, a “batch” of mail pieces is
processed and, during such processing, a rejected mailpiece is detected. The
rejection of this mailpiece is resolved and transported back to the sorting
machine while this “sorting machine is still processing the first pass of
delivery point sequencing of the batch of mail pieces from which the
rejected mailpiece came.” Hence, the amount of time in which the return
occurs depends on the size of the “batch” being processed, and on how
quickly this “batch” is being processed.
Appellant does not provide a definition of “batch” or any indication as
to how large or small a quantity it might entail or how quickly it is
processed. The claims only recite that the return occurs “so as to continue
automated processing without manual sorting.” This is because, “[ujsing an
automated process to sort mailpieces is generally more cost effective than
using manual labor.” Spec. 111. Consistent with our understanding of the
claim language, Appellant states that the recited invention “provides very
fast turnaround so as to enable returning the mail to the DBCS in time to be
included in the first pass run.” Spec. 112. However, as with the claim
language employed, there is no indication as to how large or small this “run”
might be (or take) in order to provide a time line.4
4 Appellant states, “[i]n prior solutions, mail could not be labeled and re­
passed in time to make it practicable.” Spec. 112. However, in some
situations, Appellant discusses making a determination “if sufficient time
remains” (such as during “the afternoon shift” before cutoff occurs) and if
4
Appeal 2016-002425
Application 12/367,270
Dictionary definitions of “batch” include “the quantity of material
prepared or required for one operation,”* * 5 a “number of things or people
regarded as a group or set,”6 and “a quantity or number coming at one time
or taken together.”7 For guidance as to how one skilled in the art might
understand the scope of this term, we look to the cited art for clues. The
primary reference to Allen fails to employ the term “batch,” but Allen
discusses different mailpiece groupings, for example, “at the local post
office” or “where the mailpiece is first deposited into the mail stream by the
addressor.” Allen 5:7—10. Allen further discusses “roughly segregating]
the mailpieces into three major categories,” i.e., those having a machine-
readable address, those that do not, and those having a specific bar code.
Allen 5:29-34. The reference to Pippin discusses “an unordered batch of
unsorted mail” (Pippin 144) and “a batch of unsorted mail pieces” (Pippin |
108), but again, the size/quantity/processing time of such a “batch” is not
further detailed or elaborated upon. The reference to Stemmle expresses “a
batch of mail to 600 addresses” (Stemmle 1 7) and “three separate batches of
mail associated with three separate routes” (Stemmle 127), but again, no
further discussion as to the quantity of mail delivered to these 600 addresses
or via these three routes is expressed.
not, then “an operator may send the shiny mailpieces directly to a manual
mail processing section.” Spec. 1 50.
5 See https://www.merriam-webster.com/dictionary/batch (last visited July
12,2017).
6 See https://en.oxforddictionaries.com/defmition/batch (last visited July 12,
2017).
7 See http://www.dictionary.com/browse/batch?s=t (last visited July 12,
2017).
5
Appeal 2016-002425
Application 12/367,270
Regarding the timing issue, Appellant also does not provide guidance
as to the speed of the sorting machine (i.e., mail pieces per unit of time) such
that one skilled in the art might attempt to ascertain some of the constraints
imposed by the above claim language. To be sure, Appellant does not
dispute that a time limit is imposed because Appellant states, “[tjhere is no
disclosure in the reference even vaguely suggesting the timing limitation
expressed in the claim language.” Br. 13.
In such situations, guidance has been provided that “[i]t is of utmost
importance that patents issue with definite claims that clearly and precisely
inform persons skilled in the art of the boundaries of protected subject
matter.” MPEP § 2173. During prosecution, “[a] claim is indefinite when it
contains words or phrases whose meaning is unclear.” Id. Further, a
precedential decision states, “if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008). This
is because, “the patent drafter is in the best position to resolve the ambiguity
in . . . patent claims.” Halliburton Energy Servs., Inc. v. M—ILLC, 514 F.3d
1244, 1255 (CA Fed. 2008). In this case, the timing limitation of claim 14
(i.e., “transporting the rejected mailpiece back into the DBCS sorting
machine while the DBCS sorting machine is still processing the first pass of
delivery point sequencing of the batch of mail pieces from which the
rejected mailpiece came”), is unclear and appears open-ended because the
skilled artisan knows nothing about how a “batch” is being defined in the
claims. As such, the metes and bounds of the subject matter defined by
6
Appeal 2016-002425
Application 12/367,270
claims 14 and 22 are rendered unclear. For these reasons, we enter a new
ground of rejection under 35 U.S.C. § 112, second paragraph, because the
claims on appeal are indefinite. See In re Packard, 751 F.3d 1307 (Fed. Cir.
2014) (affirming the Board’s conclusion, in the context of an ex parte
appeal, that claims were indefinite on grounds that they contain words or
phrases whose meaning is unclear).
Additionally, before reviewing a rejection under 35 U.S.C. § 103(a)
can be made (as here), “it is essential to know what the claims do in fact
cover.” In re Steele, 305 F.2d 859, 862 (CCPA 1962). In Steele, the
predecessor to our reviewing court stated that their “analysis of the claims
indicates that considerable speculation as to meaning of the terms employed
and assumptions as to the scope of such claims were made by the examiner
and the board” and that “we do not think a rejection under 35 U.S.C. § 103
should be based on such speculations and assumptions.” Id. Consequently,
until it is made clear what the claims do, in fact, cover, we decline to address
the Examiner’s rejections under 35 U.S.C. § 103(a) or Appellant’s responses
in relation thereto.
For the foregoing reasons, we reverse the Examiner’s rejections under
35 U.S.C. § 103(a) (whether regarding claims 14—29 in view of Allen and
Pippin, or regarding claims 14—21 in view of Allen and Stemmle). We
instead issue a new ground of rejection that claims 14—29 are indefinite
under 35 U.S.C. § 112, second paragraph, for the above reasons.
Additionally, without addressing whether the cited art renders the
claims obvious or not, it is noted that each independent claim recites
language directed to the avoidance of manual sorting (“so as to avoid
manual sort” and “so as to continue automated processing without manual
7
Appeal 2016-002425
Application 12/367,270
sorting”). Appellant’s Specification makes a distinction between sorting the
mail and correcting the address of a rejected mailpiece. See 11, 26, 28.
Appellant also distinguishes between these operations stating, “Allen and
Pippin both teach holding (mechanically) a reject or unreadable mail piece
while a human operator reads the destination address” in an effort to
ascertain the proper address. Br. 13. Appellant further states, “[i]n short,
mail pieces that cannot be read in the automated sorting machine are referred
to human operators to try to read the captured image” and “awaiting the
resolution of the reject mail piece by a human operator before it can resume
sorting.” Br. 11, 12. Appellant also states that the prior art teaches human
involvement when seeking to resolve an unreadable address, but that sorting
of the mail is accomplished mechanically.8 See Br. 10—12; see also Allen
9:59 to 10:11; Pippin 1103; Stemmle 192. In view of the above
distinctions, Appellant does not explain how manually correcting an address
is a form of sorting.
Regarding Pippin, it is noted that the Examiner relies on this
citation for “[ajutomatically transporting the mailpiece back [to] the sorting
machine.” Final Act. 4 (referencing Pipping 106). However, paragraph 106
does not describe transporting the “mailpiece” back to the sorting machine.
Instead, this paragraph addresses transporting the “robot” (sans the
mailpiece that has previously been “discharged”) back to the loading station.
See also Pippin Abstract. The Examiner does not further identify where
Pippin teaches this recitation or how a return of an empty robot satisfies the
8 Regarding sorting, Appellant’s Specification describes one machine that
“sorts the mailpieces at step 420 using barcode 300” and “the mailpieces
may be sorted using the ID Tag data.” Spec. ^fl[ 27, 28.
8
Appeal 2016-002425
Application 12/367,270
limitation of “transporting the rejected mailpiece back” to the sorting
machine. Final Act. 4.
DECISION
For the above reasons, we reverse the Examiner’s rejections of claims
14—29 under 35 U.S.C. § 103(a). We enter a new ground of rejection for
claims 14—29 under 35 U.S.C. § 112, second paragraph.
FINALITY OF DECISION
This decision contains new grounds of rejection under 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R. § 41.50(b)
9