Ex Parte Brandt

Patent Trial and Appeal Board

Sep 20, 2016

11932970 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111932,970 10/31/2007
73552 7590 09/22/2016
Schwabe, Williamson & Wyatt/SFC
1211 SW Fifth Ave.
Suite 1900
Portland, OR 97204
FIRST NAMED INVENTOR
William R. Brandt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
29094/31:2 3107
EXAMINER
BUTLER, MICHAELE
ART UNIT PAPER NUMBER
3653
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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@SCHWABE.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM R. BRANDT
Appeal2014-008980
Application 11/932,970
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final rejection of claims 1, 4--9, and 22-29. App. Br. 3. Claims
2, 3 and 10-21 have been canceled. App. Br. 3. Claims 30 and 31 have
been withdrawn from consideration. App. Br. 3. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates to "methods and apparatus for
sorting and handling items, such as mail pieces, and more specifically to
improvements in reject processing and labeling of mail piece items so as to
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Application 11/932,970
reduce expensive manual sorting." Spec. if 3. Claims 1 and 4 are
independent. Independent claim 1 is illustrative of the claims on appeal and
is reproduced below:
1. A method, comprising:
receiving a mail piece rejected from an automatic sorting
machine of an automated mail stream, wherein the rejected mail
piece was rejected based on both an unresolvable Machine
Readable Indicia (MRI) from a POSTNET Clear Zone barcode
on a front side of the rejected mail piece and an unresolvable ID
Tag from an ID Tag Clear Zone on a back side of the rejected
mail piece;
performing, by a unitary automated mail reject encoding
machine, optical character recognition (OCR) on an image of the
front side of the rejected mail piece in a single pass of the rejected
mail piece through the unitary automated mail reject encoding
machine to determine mailing address data corresponding to the
rejected mail piece;
over-labeling, by the unitary automated mail reject
encoding machine, a new MRI over the unresolvable MRI on the
POSTNET Clear Zone in the single pass through the unitary
automated mail reject encoding machine, \'I/herein the ne\'l/ ~,.1RI
provides automatic mail sorting information corresponding to the
mailing address data; and
returning the rejected mail piece to the automated mail
stream for further processing based on the new MRI.
REFERENCES RELIED ON BY THE EXAMINER
Allen et al. US 5,703,783 Dec. 30, 1997
("Allen")
Edmonds
Barnum et al.
("Barnum")
Avant et al.
("Avant")
US 2003/0208298 Al
US 6,671,577 B2
US 2005/0209977 Al
2
Nov. 6, 2003
Dec. 30, 2003
Sept. 22, 2005
Appeal2014-008980
Application 11/932,970
THE REJECTIONS ON APPEAL
Claims 1, 4--9, 22, 23, and 27-29 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Avant and Edmonds.
Claims 24--26 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Avant, Edmonds and Barnum.
Claims 1 and 27-29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Allen and Edmonds.
ANALYSIS
The rejection of claims 1, 4-9, 22, 23, and 27-29
as unpatentable over Avant and Edmonds
Appellant does not present separate arguments for independent claims
1 and 4 or for dependent claims 5-9, 22, 23, and 27-29. Appeal Br. 18; see
also Reply Br. 6. We select independent claim 1 for review with claims 4--9,
22, 23, and 27-29 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
The Examiner primarily relies on Avant for disclosing the recited
method steps except that the Examiner relies on Edmonds for the step of
"performing, by a unitary automated mail reject encoding machine, optical
character recognition (OCR) on an image of the front side of the rejected
mail piece in a single pass ... to determine mailing address data
corresponding to the mail piece." Final Act. 2-5. The Examiner provides
several reasons to employ Edmonds' OCR reading of the character
destination of the rejected mail instead of Avant's automated reading of a
barcode of a rejected mail piece. Final Act. 5---6. These include it being
obvious: (1) "to substitute" the one for the other so as "to reduce
manpower;" (2) "to automate the human reading" via an OCR "to reduce
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manpower;" (3) "to reduce hardware costs and reduce on site interfacing
time and assembly;" and, ( 4) to "resolve the unreadable indicia via
automated resolution," all "as taught by Edmonds." Final Act. 5---6.
Regarding the limitation of claim 1 above concerning performing
OCR on a "rejected mail piece in a single pass," the Examiner provides both
an explanation and an annotated version of Figure 1, of Edmonds, to indicate
how a mail piece (see AA) that could not be read at OCRl is diverted (see
BB) to OCRn for resolution (see CC) in a single pass before being delivered
to the appropriate streams DD (containerization) or EE (combining), without
manual sort. Ans. 6-7. Annotated Figure 1 of Edmonds also shows that if
the mail piece (AA) is properly read at OCRl, then it is delivered to the
appropriate streams DD or EE and would not be diverted as above. See Ans.
6-7. We thus understand that Figure 1 of Edmonds illustrates a unique path
for mail pieces that were initially unable to be processed into streams DD or
EE. Edmonds thus discloses the step of mail pieces that have been
"rejected" and consequently diverted for additional scanning "in a single
pass" before being properly processed.
Appellant disagrees with the Examiner's interpretation of Edmonds
(see, e.g., Reply Br. 5---6) and references paragraph 43, of a Declaration from
the inventor, 1 (hereinafter "Declaration") which states, "[ fJurthermore, the
single pass described in Edmonds, as well as the OCR process for reading
the barcode, is unrelated to sorting a rejected mail piece." App. Br. 14
(emphasis added). Appellant does not explain how a mail piece that initially
1 Appellant submits two Declarations, one focusing on Avant which is dated
October 25, 2011 (the above referenced "Declaration") and the other
focusing on Allen which is dated November 12, 2012. For present purposes,
we need only address the Declaration addressing Avant.
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could not be sorted, but was instead diverted for additional scanning via
another OCR machine before it could be further processed, "is unrelated to
sorting a rejected mail piece" as asserted. Id. Seemingly contradictory to
the above statement, Appellant also addresses paragraph 45 of the
Declaration which states, "[t]he 'single pass' described by Edmonds is
related to an initial sorting of the mail piece," but that it occurs prior to any
application of a code or tag. App. Br. 14. The Examiner did not rely on
Edmonds for the application of a code or tag, but instead for disclosing the
performance, "by a unitary automated mail reject encoding machine," of
optical character recognition of the mail piece so as "to determine mailing
address data corresponding to the rejected mail piece." Final Act 5. The
Examiner relies on Avant for disclosing the step of receiving a mail piece
that was rejected based on a code or tag, not Edmonds. See Final Act. 2-3.
Appellant does not explain how the Examiner's interpretation of Figure 1 of
Edmonds supra is incorrect. See Ans. 6-7.
Appellant also addresses inherency in conjunction with the teachings
of Edmonds (App. Br. 14--15), but as stated above, the Examiner relied on
the express disclosure in Figure 1 of Edmonds and hence, Appellant's
discussion regarding inherency is not persuasive of Examiner error. 2
As indicated, claim 1 identifies a "rejected mail piece" as one that
"was rejected based on both an unresolvable Machine Readable Indicia
2 It appears that Appellant's inherency argument is directed to printing a
correction onto the mail piece. App. Br. 14--15. Although Edmonds teaches
"spraying" a new/correct barcode onto the mail piece (see Edmonds i-f 92),
Edmonds was relied on for teaching the "performing" step, not the "over-
labeling" step. See Final Act. 3, 5. Consequently, neither Appellant's
inherency contentions, nor Appellant's discussion of Edmonds on this point,
are persuasive of Examiner error.
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(MRI) from a POSTNET Clear Zone barcode on a front side of the rejected
mail piece and an unresolvable ID Tag from an ID Tag Clear Zone on a back
side of the rejected mail piece." The Examiner relies on paragraph 69 of
Avant for teaching such a rejection of a mail piece. Final Act. 2-3.
Appellant does not dispute Avant' s disclosure of this type of mail piece
rejection. See Appeal Brief and Reply Brief generally.
Instead, Appellant addresses the limitation of "over-labeling, by the
unitary automated mail reject encoding machine[,] a new MRI over the
unresolvable MRI on the Postnet Clear Zone in the single pass through the
unitary automated mail reject encoding machine." App. Br. 12; see also
App. Br. 16. The Examiner relied on Paragraphs 68 and 70 of Avant for
disclosing this limitation. Final Act. 3. As understood, Appellant presents
two main arguments on this point, one directed to Avant' s teaching of
"manual processing" or being "manually fed," and the other to the limitation
directed to a "unitary" machine. App. Br. 12; see also App. Br. 13, 16;
Declaration i-f 38; and Reply Br. 2, 4--5.
Claim 1 is silent regarding any manual task and thus Appellant's
contention is not persuasive of Examiner error. Nevertheless, the Examiner
notes that each of Avant, Edmonds and Appellant's Specification discuss
reverting to manual processing should such be necessary. Ans. 6; see also
Avant i-fi-162, 68, and 70; Edmonds i-f 92; Spec. i-fi-127, 31, and 35; and Reply
Br. 3--4. The Examiner even indicates where "Appellant's own affidavit and
brief disclose manual processing as a backup." Ans. 3. Accordingly,
Appellant's contention that because Avant and Edmonds both discuss
resorting to manual processing is not persuasive the Examiner erred in
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relying on their combination for also teaching an automated process. 3 See
Ans. 6, 8.
Regarding Appellant's other argument regarding the recitation to a
"unitary" automated mail reject encoding machine, Appellant's
Specification does not employ (and thus also does not define) the claim term
"unitary." Hence, the Examiner resorts to its dictionary definition of "made
up of discrete units." Ans. 8 (referencing "Webster's Third International
Dictionary, 1971, p.2500"). The Examiner concludes, "[a] unitary machine
can be a single machine or it can mean [] plural devices integrated to work
as one or to function together as one unit."4 Ans. 8. As a consequence, the
Examiner finds, "[t]he teachings of Avant et al. and Edmonds are clearly
capable of functioning together as one and do function together as one unit."
Id. In summary, the Examiner states, "[t]he several subsystems of Avant et
al. and Edmonds are integrated together and as integrated together is
3 For example, Appellant contends that the ''problem" "is to reduce the
number of pieces that must be handled manually." Reply Br. 4. However,
Appellant's discussion of a problem is not persuasive that the Examiner
erred in relying on the combination of Avant and Edmonds for disclosing the
limitations of claim 1. The Supreme Court has stated, "[i]n determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007).
4 See also Howard v. Detroit Stove Works, 150 U.S. 164, 170 (1893) (The
prior art grate "is cast in two pieces, while the [claimed invention] is cast in
one piece. This does not involve patentable invention." In the present case,
Appellant admits that prior devices "were known individually in different
contexts or machines, but have never before been assembled so as to enable
the claimed method." Reply Br. 6.
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perfectly proper to nomer [sic] those subsets as comprising a single
machine." Ans. 9.
Appellant also addresses Paragraphs 68 and 70 of Avant which
discuss various operational steps and the devices used. App. Br. 12-13; see
also Declaration i-f 38; and Reply Br. 4. However, Appellant does not
explain how, based on the above understanding of the claim term "unitary,"
the Examiner erred in concluding, "the combination of Avant et al. and
Edmonds teaches a unitary machine."5 Ans. 9.
Appellant also discusses paragraph 39 of the Declaration stating,
"Avant's system relies upon a legible ID tag" and that Avant fails to disclose
where the rejected mail was based on "an unresolvable ID Tag." App. Br. 4,
13; see also Ans. 15. Presuming arguendo that Appellant's characterization
of Avant as relying upon a legible ID tag is correct, Appellant does not
indicate how Avant's discussion of rejected mail (Avant i-fi-168-70) fails to
address mail whose processing was initially unresolved, and hence required
further processing.6 Further, Appellant addresses paragraph 45 of the
Declaration which states, "Edmonds does not provide any teaching on how
to handle an illegible barcode or any other type of address verification
problem, other than this general reference to a manual solution." App. Br.
5 For example, Appellant addresses paragraph 11 of the Declaration which
states that an important distinction is that the claimed invention operates via
"a single pass through the REM machine as where previously these activities
were done by multiple machines and/or manually." Reply Br. 4. This is not
persuasive that, based on the reasons stated above (and Howard), the
Examiner erred in concluding that the cited limitations are obvious over
Avant and Edmunds.
6 We also note the Examiner's reliance on the dictionary definition of
"resolve" to ascertain the meaning of "unresolvable." Ans. 15-17.
Appellant does not indicate how this definition is in error.
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14. This contention is not persuasive for the reasons discussed supra, and
particularly the teachings depicted in Edmonds paragraph 92 and Figure 1
wherein initially unresolvable mail pieces are sent for further processing
before being properly sorted. The Examiner further states that if Appellant,
"wishes to distinguish from illegible, he should use narrower language that
does not read on a plurality of circumstances in which an address is
unresolvable." Final Act. 14. In short, Appellant's attempt to limit the
claim term "unresolvable" to that which is illegible is not persuasive.
Further, Appellant does not indicate how this statement by the Examiner
fails "to be particularly on point" with respect to "the actual arguments
which have been presented by the Appellant." App. Br. 15, 16.
Appellant also discusses paragraph 43 of the Declaration which states,
"Avant fails to describe that the various operations described at paragraph
0068 occur in a single pass." App. Br. 14. As indicated supra, the
Examiner relies on Edmonds for performing a step "in a single pass."7 Final
Act. 5. Furthermore, Appellant does not identify where Avant teaches that
the mail piece must pass through the operation described in Avant paragraph
68 (or that described in Avant paragraph 70) multiple times before it is either
successfully processed or sent for manual processing. See also Edmunds
Fig. 1. Paragraph 45 of the Declaration is likewise not persuasive of
Examiner error. App. Br. 14.
7 When addressing Avant, the Examiner finds certain limitations occur "in
the single pass through the unitary automated mail reject encoding machine"
(such as that taught by Edmonds). Final Act. 3, 5.
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Declaration
and Secondary Considerations of Non-Obviousness
Appellant contends that the Declaration "does not appear to have been
considered or, at the very least, were not addressed by the Examiner with
any level of specificity." App. Br. 10; see also App. Br. 18. Appellant
submits that the Declaration demonstrates unexpected results in the
performance of Appellant's invention, long-felt need for the invention,
praise of the invention by others, and copying of the invention by others. 8
App. Br. 20-23.
"Evidence relating to all four Graham factors-including objective
evidence of secondary considerations-must be considered before
determining whether the claimed invention would have been obvious to one
of skill in the art at the time of invention." Transocean Offshore Deepwater
Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir.
2012); see also Reply Br. 7.
The record shows that the Examiner considered the Declaration and
found the declaration to be insufficient to overcome the prior art rejections.
Ans. 17-19. We now consider anew the issue of obviousness, carefully
evaluating and weighing both the evidence relied upon by the Examiner, and
the objective evidence of non-obviousness provided by Appellant.9
8 Appellant also contends that the Declaration "provides evidence to show
that the invention as claimed is not obvious in view of the combination of
[the] cited references to Avant and Edmonds." App. Br. 19. When such
contentions directed to Avant and Edmonds were addressed by Appellant
supra, the Declaration was also addressed at that time. We do not repeat any
such contentions here.
9 The Examiner notes that Appellant asserts that the Declaration "is
objective-but is supplied [] from the inventor [] himself, not an impartial
third party." Ans. 18; see also Reply Br. 7.
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Regarding unexpected results, Appellant asserts that "Appellant's
reject encoding machine (REM) was able to finalize over 55% of the
rejected mail that normally would have been manually processed, and
additionally was able to finalize over 30% of the return-to-sender (R TS)
mail." App. Br. 20 (citing Declaration i-fi-f 15-27). The Examiner does not
address Appellant's allegations of unexpected results. However, we are
instructed, "[u]nexpected results [that are probative of non-obviousness are
those that are] different in kind and not merely in degree from the results of
the prior art." Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d
1317, 1322 (Fed. Cir. 2004). See In re Harris, 409 F.3d 1339, 1344 (Fed.
Cir. 2005) (Finding increased efficacy, measured by percentages, to be a
difference of degree and not of kind.). Accordingly, we are unpersuaded
that the processing results achieved by Appellant's REM machines warrant
reversal of the Examiner's rejection.
Regarding long-felt need, Appellant refers to discussions between
Appellant and the United States Postal Service (USPS) "concerning the
development of the REM machines to address the failure of conventional
systems to process rejected mail date back at least until July 2002." App.
Br. 21 (citing Declaration i-f 17); see also Reply Br. 7. Appellant
additionally points to the Allen reference dating back to 1992 as evidence of
long-felt need. App. Br. 21. Appellant asserts that "the conventional mail
processing equipment used by the USPS prior to the introduction of the
REM machines, was unable to perform the same tasks as Appellant's REM
machines." App. Br. 21 (citing Declaration i132).
To establish long-felt need Appellant must present affidavits or other
factual evidence showing "a failure of others to provide a feasible solution to
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[a] long-standing problem." See Jn re Piasecki, 745 F.2d 1468, 1475 (Fed.
Cir. 1984). Appellant has not provided factual evidence showing a failure of
others to provide a feasible solution to the problem of effectively sorting
rejected mail. Indeed, the Avant reference is evidence of a successful
resolution to such a problem. In addition, the Examiner notes: "the USPS
discontinued the program thereby refuting appellant [sic] allegation of long
felt need." Ans. 18.
We do not believe that Appellant has sufficiently demonstrated that
Appellant's invention fulfilled a long-felt but unresolved need in the prior
art. Moreover, we agree with the Examiner that the USPS' abandonment of
the REM program demonstrates a lack of long felt need for Appellant's
invention.
Regarding praise by others, Appellant submits:
On July 31, 2006, the USPS issued a statement of work
(SOW) which stated in part that the "Reject Encoding Machines
(REl\1) program \Vill support the Postal Service's corporate goal
of moving mail up the automation ladder by reducing the amount
of reject and non-read mail in the USPS mail stream, resulting in
reducing our overall production costs" which convinced them to
consider purchasing "166 Production REM machines"
(paragraph 28 of the 2011 Declaration).
Accordingly, the USPS intended to purchase 166 REM
machines based on the cost savings associated with the improved
mail processing efficiencies of the REM machines and therefore
a reduced reliance on manual processing of rejected mail.
Appellant respectfully submits that this demonstrates that the
USPS was so pleased with the results of the testing that it was
actively planning to make the large purchase order of the REM
machines.
App. Br. 22.
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The evidence offered is the anecdotal opinion of the inventor
regarding the opinion of others, it is not from an objective source, does not
contain objective data, and has little value without factual support. See In re
Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992); Cf In re Huang, 100 F.3d
135, 140 (Fed. Cir. 1996) (Inventor's opinion as to the purchasers' reason
for buying the product is insufficient to demonstrate a nexus between the
sales and the claimed invention.).
Regarding copying by the USPS, Appellant refers to paragraphs 31
and 32 of the Declaration as evidence that the USPS sought to develop their
own Low Cost REM machines (or LCREM) "to perform identical tasks" as
Appellant's REM machines. See App. Br. 22-23; see also Reply Br. 8.
According to Appellant, "LCREM reads, labels, and sprays a barcode on the
mail piece in a single operation. Prior to RAF's introduction of REM
technology, no USPS equipment had this capability." Reply Br. 8 (citing
Declaration i-f 32).
Even if accepted as true, the Declaration does not establish that the
LCREM is identical to Appellant's REM, i.e., that the LCREM
manufactured by the USPS is based on the "exact teachings and claims" of
the REM. As noted at paragraph 31 of the Declaration (emphasis added):
The LCREM is comprised of a small footprint transport and OCR
technology similar to what RAF developed for the REM. The
transport is a repurposed USPS machine formerly known as a
Carrier Sequence Bar Code Sorter (CSBCS). The CSBCS was
used to read barcodes and sort mail into the Carrier Route
Sequence, also referred to as Delivery Point Sequence.
Because the Declaration has not established that the LCREM is
identical to Appellant's REM, it is not persuasive evidence of copying.
Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 317 (Fed. Cir. 1985)
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(Alleged copying is not persuasive of nonobviousness when the copy is not
identical to the claimed product.). Additionally, "more than the mere fact of
copying ... is needed to make that action significant to a determination of
the obviousness issue." Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d
1015, 1028 (Fed. Cir. 1985), overruled on other grounds by Midwest Indus.,
Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1358-61 (Fed. Cir. 1999) (en
bane).
Further, "[fJor objective evidence of secondary considerations to be
accorded substantial weight, its proponent must establish a nexus between
the evidence and the merits of the claimed invention." Wyers v. Master Lock
Co., 616 F.3d 1231, 1242, 1246 (Fed. Cir. 2010). Accordingly, therefore,
we must determine whether Appellant establishes a nexus between the
evidence and the merits of the claimed invention.
Paragraph 22 of the Declaration provides a summary of the "Reject
Encoding Machine" allegedly constructed in accordance with the invention.
Paragraph 22 states, in relevant part:
The Reject Encoding Machine (REM) tested in the proof of
concept phase was an enhanced version of the pilot RJ-7
program. The testing including reading reject mail and
enhancing letter mail processing for mail with unreadable
POSTNET and ID tag barcodes. The REM machines were
configured for reading, over-labeling and bar-coding all
automation capable letter mail.
Paragraph 22 of the Declaration does not indicate that the REM
machines are "unitary" machines, that processing of the mail pieces was
conducted in a single pass on the REM machines, or that reading of the mail
pieces was performed on the machines by OCR reading.
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Paragraph 7 of the Declaration (emphasis added) also describes
characteristics of the REM, i.e.:
In some embodiments, my reject encoding machine includes an
automated transport assembly, digital camera arranged for image
capture, address recognition software, a labeling mechanism, and
a printer. It may have cameras on both sides to capture front and
back images, and may have labelers for front and back labels as
well. The REM is intended, depending on the particular
application, to provide a unitary or "single pass" solution to
overcome reject problems and get mail pieces back into the
automated processing stream in a condition to continue
automated processing. A large fraction of rejects that are
processed on the REM are able to be resolved and sorted for
distribution in this single pass without any manual review of the
address attributes.
Paragraph 7 of the Declaration indicates that in some embodiments the
REM possesses certain components common to the claimed invention.
However, it does not indicate that the REM machines are "unitary"
machines. Rather, paragraph 7 states that the REM is intended to provide a
unitary or "single pass" solution to overcome reject problems. That is, it
does not affirmatively state that processing of the mail pieces was conducted
in a single pass on the REM machines. Nor does paragraph 7 indicate that
reading of the mail pieces was performed on the machines by OCR reading.
For these reasons, we have doubts whether Appellant has established
a sufficient nexus between the evidence submitted in the Declaration and the
merits of the claimed invention. On this basis alone, we query whether,
within the four comers of the document itself, the Declaration provides a
sufficient foundation for the secondary considerations of non-obviousness
alleged to be attributed to the method claimed in independent claim 1. We
believe they do not.
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In comparison, our reviewing court has instructed us that "secondary
considerations of nonobviousness ... simply cannot overcome a strong
prima facie case of obviousness" and that for obviousness under§ 103, "all
that is required is a reasonable expectation of success" (Wyers v. Master
Lock Co., 616 F.3d 1231, 1242, 1246 (Fed. Cir. 2010)). Even assuming
Appellant has established a sufficient nexus between the Declaration and the
merits of the claimed invention, we are constrained by our reviewing court
that based on the record presented and our analysis supra, Appellant has not
overcome the strong case of obviousness presented by the Examiner.
Accordingly, in view of the record presented, we sustain the
Examiner's rejection of claims 1, 4--9, 22, 23, and 27-29 as unpatentable
over Avant and Edmonds.
The rejection of claims 24-26
as unpatentable over Avant, Edmonds, and Barnum
Appellant does not present arguments in favor of claims 24--26 in
either the Appeal Brief or the Reply Brief. Accordingly, we summarily
sustain this rejection.
The rejection of claims 1and27-29
as unpatentable over Allen and Edmonds
As indicated supra, independent claim 1 includes a limitation
referring to a particular type of rejection. The Examiner relies on Allen for
disclosing this type of rejection. 1° Final Act. 10. "Appellant respectfully
submits that an incorrectly addressed mail piece [as in Allen] is not the same
as a mail piece rejected from an automatic sorting machine" of the type
10 As above, the Examiner relies on Edmonds only for the "performing"
step. Final Act. 11.
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recited. App. Br. 16; see also Reply Br. 3. We agree with Appellant. Allen
is directed to a mail piece that should instead be delivered to a forwarding
address. Allen Abstract. More specifically, Allen states, "[i]f the read name
and address match a name and former address in the database, then the
mail piece is identified as having an incorrect address and intercepted from
the mail stream." Allen Abstract (emphasis added). This is not the type of
rejection recited in claim 1. Hence, we are persuaded of Examiner error in
rejecting claim 1 and dependent claims 27-29 as being unpatentable over
Allen and Edmonds. We reverse the Examiner's rejection of claims 1 and
27-29 as being unpatentable over Allen and Edmonds.
DECISION
The Examiner's rejection of claims 1, 4--9, 22, 23, and 27-29 as
unpatentable over Avant and Edmonds is affirmed.
The Examiner's rejection of claims 24--26 as unpatentable over Avant,
Edmonds, and Barnum is affirmed.
The Examiner's rejection of claims 1 and 27-29 as unpatentable over
Allen and Edmonds is reversed.
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).
AFFIRMED
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