Ex Parte Briley

Board of Patent Appeals and Interferences

Mar 12, 2010

10086311 (B.P.A.I. Mar. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte DANIEL LEE BRILEY 8
___________ 9
10
Appeal 2009-005646 11
Application 10/086,311 12
Technology Center 3600 13
___________ 14
15
Decided: March 12, 2010 16
___________ 17
18
Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
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STATEMENT OF THE CASE 1
Daniel Lee Briley (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1, 4-11, and 14-20, the only claims 3
pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a mail and postage system, including non-visible 10
marks in postage evidence of a mail piece (Specification 1:5-6). 11
An understanding of the invention can be derived from a reading of 12
exemplary claims 1 and 11, which are reproduced below [bracketed matter 13
and some paragraphing added]. 14
1. A mail system configured to process postage evidence on a 15
mail piece, the mail system comprising: 16
[1] a handling system configured to receive the mail piece, 17
scan the postage evidence for visible marks and non-visible 18
marks to read visible mark information indicated by the visible 19
marks and non-visible mark information indicated by the non-20

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed July 7, 2008) and Reply Brief (“Reply Br.,” filed November 4,
2008), and the Examiner’s Answer (“Ans.,” mailed September 4, 2008), and
Final Rejection (“Final Rej.,” mailed February 4, 2008).
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visible marks, and transfer the visible mark information and the 1
non-visible mark information; and 2
[2] a processing system coupled to the handling system and 3
configured to process the visible mark information and the non-4
visible mark information to generate postage information for 5
the mail piece; 6
[3] wherein the handling system is further configured to scan 7
the non-visible marks using an Ultra Violet (UV) or an Infrared 8
(IR) light, and to process information in the non-visible marks 9
to validate information in the visible marks; and 10
[4] wherein the non-visible marks are also detectable by 11
human eye using a UV light for human confirmation of the non-12
visible marks. 13
14
11. A method for processing postage evidence on a mail piece, 15
the method comprising: 16
[1] receiving the mail piece; 17
[2] scanning the postage evidence for visible marks and non-18
visible marks to read visible mark information indicated by the 19
visible marks and non-visible mark information indicated by 20
the non-visible marks, wherein the non-visible marks are 21
scanned using an Ultra Violet (UV) or an Infrared (IR) light, 22
and wherein the non-visible marks are also detectable by human 23
eye using a UV light for human confirmation of the non-visible 24
marks; and 25
[3] processing the visible mark information and the non-26
visible mark information to generate postage information for 27
the mail piece. 28
29
THE REJECTIONS 30
The Examiner relies upon the following prior art: 31
Leon US 6,701,304 B2 Mar. 2, 2004
32
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Claims 1, 4-11, and 14-20 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Leon. 2
ISSUE 3
The issue pertinent to this appeal is whether the Examiner erred in 4
rejecting claims 1, 4-11, and 14-20 under 35 U.S.C. § 103(a) as unpatentable 5
over Leon. This pertinent issue turns on whether Leon describes, 6
“generat[ing] postage information for the mail piece”, as required by 7
limitation [2] of claim 1. 8
FACTS PERTINENT TO THE ISSUES 9
The following enumerated Findings of Fact (FF) are believed to be 10
supported by a preponderance of the evidence. 11
Facts Related to the Prior Art 12
Leon 13
01. Leon is directed to a postage metering system that authenticates 14
postage labels (Leon 1:58-60). 15
02. The postage metering system includes a secure metering device 16
(SMD) coupled to a printer, where the SMD generates an indicium 17
and the printer prints the indicium onto a label (Leon 2:46-49). 18
The indicium includes a human-readable portion, a machine-19
readable portion, and an identifier portion (Leon 2:50-52). A user 20
enters mail parameters, such as class of the mail and zip-code 21
information, and the system incorporates the input information 22
with weight information to determine the amount of postage for 23
the indicium (Leon 7:4-9). The SMD updates its revenue registers 24
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to account for the requested indicium value and generates the user 1
requested indicium (Leon 7:35-37). The generated indicium is 2
further printed by either a host computer or under the direction of 3
the SMD l on to a postage label (Leon 7:41-53). 4
03. The human-readable portion of the indicium includes texts and 5
graphics, such as date, address, and postage amount, and can be 6
interpreted by an operator or auditor without the use of special 7
translation equipment (Leon 8:7-10). The machine-readable 8
portion includes graphical representations and encoded texts, such 9
as bar codes, FIM marks, data matrix, encoded texts, specifically 10
formatted texts, and unintelligible texts that are not readily 11
interpreted by an operator or auditor (Leon 8:10-15). The postage 12
labels further include identifier information that exhibits special 13
characteristics that can be used for authenticating the indicia 14
(Leon 8:15-18). The indicia includes various data fields, with 15
each field including any combination of elements, where an 16
element included in the bar code data can also by included in the 17
human-readable data (Leon 11:22-28 and Table 1). For example, 18
postage and date of mailing are included in both the bar code data 19
and the human-readable data, whereas the digital signature and 20
licensing zip code are only included in the bar code data (Leon 21
Table1). 22
04. Elements of the indicia can be printed using various types of 23
ink, including visible and invisible inks and fluorescent and non- 24
fluorescent inks (Leon 9:14-16). The invisible ink may become 25
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apparent to the human eye under light of a specified wavelength, 1
such as UV light (Leon 9:18-20). 2
05. Leon further describe an authentication system used to 3
authenticate indicia (Leon 13:18-20). The printed indicium label 4
is provided to an authentication system where a data reader reads 5
the human-readable portion, a symbology reader reads the 6
machine-readable portion, and a marking detector reads other 7
prints (Leon 13:21-27). The detected information is passed to a 8
computer that analyzes, verifies, and authenticates the information 9
(Leon 13:34-35). 10
PRINCIPLES OF LAW 11
Obviousness 12
A claimed invention is unpatentable if the differences between it and 13
the prior art are “such that the subject matter as a whole would have been 14
obvious at the time the invention was made to a person having ordinary skill 15
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 16
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 17
In Graham, the Court held that that the obviousness analysis is 18
bottomed on several basic factual inquiries: “[(1)] the scope and content of 19
the prior art are to be determined; [(2)] differences between the prior art and 20
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 21
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also, KSR, 550 22
U.S. at 406. “The combination of familiar elements according to known 23
methods is likely to be obvious when it does no more than yield predictable 24
results.” KSR, 550 U.S. at 416. 25
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ANALYSIS 1
Claims 1, 4-11, and 14-20 rejected under 35 U.S.C. § 103(a) as 2
unpatentable over Leon 3
The Appellant first contends that Leon fails to describe “generat[ing] 4
postage information for the mail piece”, as required by limitation [2] of 5
claim 1 (App. Br. 5-10 and Reply Br. 5-9). The Appellant specifically 6
argues that the recited “configured to” language is a structural limitation and 7
therefore should be given patentable weight (App. Br. 6-9). 8
We disagree with the Appellant. In constructing the structural 9
limitations of the recited system, we must first evaluate the Appellant’s 10
argument that the “configured to” language imparts a structural limitation 11
and therefore should be given patentable weight (App. Br. 6-9). Limitation 12
[2] requires a processing system, connected to the handling system, which 13
generates postage information by processing visible and non-visible mark 14
information for mail. Limitation [2] specifically requires the processing 15
system to be “configured to” process these marks. Since this functional 16
limitation is configured and associated to the programming system, it is part 17
of the structure thereby imparting a structural limitation and should be 18
afforded patentable weight. 19
Once the meaning of claim 1 has been construed, we must then 20
determine whether Leon describes claim 1. Leon describes a postage 21
metering and authentication system (FF 01). The postage metering system 22
uses a secured metering device to print a metering indicium on to the label 23
of a mailing piece (FF 02). The indicium can be printed using visible and 24
non-visible inks (FF 04). The indicium consists of a human-readable 25
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portion, a machine-readable portion, and an identifying portion (FF 02). The 1
human-readable portion includes texts and graphics, such as date, address, 2
and postage amount, and can be read by an operator (FF 02). The machine-3
readable portion included encoded texts that require special instruments to 4
read (FF 02). Leon further illustrates a list of possible values that can be 5
included in both the human-readable portion and the machine-readable 6
portion (FF 02). For example, postage and date of mailing are included in 7
both the bar code data and the human-readable data (FF 02). 8
Leon also describes a postage authentication system (FF 05). The 9
authentication system utilizes data readers and symbology readers to detect 10
information printed in the indicium on mailing labels, as described in the 11
generation of the indicium supra (FF 05). That is, Leon describes that the 12
authentication system is capable of recognizing or detecting any information 13
that the secure metering device prints on to a mailing label, whether the 14
information is printed using visible or invisible ink. The authentication 15
system further analyzes, verifies, and authenticates this detected information 16
(FF 05). 17
As such, Leon describes a system with a postage metering system and an 18
authentication system; where the postage metering system corresponds to the 19
handling system of the claimed invention and the authentication system 20
corresponds to the handling system of the claimed invention. The postage 21
metering system generates postage information, such as postage and date of 22
mailing information, and the authentication system detects this information. 23
The metering system generates information postage indicium using visible 24
and invisible marks, and the authentication system is capable of detecting 25
visible and invisible marks. Therefore, although we agree with the 26
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Appellant that the “configured to” language imparts structural limitations 1
and should be afforded patentable weight, Leon describes a processing 2
system, connected to the handling system, which generates postage 3
information by processing visible and non-visible mark information for a 4
piece of mail. As such the Examiner has established a prima facie case of 5
obviousness. 6
The Appellant further argues that (2) the invention in Leon and the 7
claimed invention are distinguished because Leon’s printed information is 8
not encoded in indicia and only machine readable information is encoded 9
(Reply Br. 5-7). The Appellant specifically argues that the security 10
information correlated by the Examiner is not postage information because it 11
only signals an on/off description (Reply Br. 8). We disagree with the 12
Appellant. Limitation [2] does not further narrow the scope of what postage 13
information is limited to be and as such any information that related to 14
postage is considered postage information. Leon describes that different 15
values can be printed as either human-readable values or machine-readable 16
values (FF 02). For example, postage and date of mailing are included in 17
both the bar code data and the human-readable data (FF 02). These values 18
are specific postage information and can be encoded or human-readable. As 19
such, Leon describes postage information in the same context as the claimed 20
invention. 21
The Appellant further contends that (3) Leon fails to describe the same 22
element as argued supra for claim 1 and since claim 11 is a method claim 23
the Examiner’s structural arguments are moot (App. Br. 8-10 and Reply Br. 24
9-10). As such the Appellant is arguing that the Examiner has failed to set 25
forth a prima facie case of obviousness (App. Br. 9-10 and Reply Br. 9-10). 26
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We disagree with the Appellant. As discussed supra, although the 1
Appellant’s structural arguments were persuasive, Leon described the 2
limitations of claim 1. The Appellant’s arguments were not found 3
persuasive supra and are not found persuasive here for the same reasons. 4
The Appellant has not sustained the burden of showing that the 5
Examiner erred in rejecting claims 1, 4-11, and 14-20 under 35 U.S.C. 6
§ 103(a) as unpatentable over Leon. 7
8
CONCLUSIONS OF LAW 9
The Examiner did not err in rejecting claims 1, 4-11, and 14-20 under 35 10
U.S.C. § 103(a) as unpatentable over Leon. 11
12
DECISION 13
To summarize, our decision is as follows. 14
• The rejection of claims 1, 4-11, and 14-20 under 35 U.S.C. § 103(a) as 15
unpatentable over Leon is sustained. 16
17
No time period for taking any subsequent action in connection with this 18
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 19
20
AFFIRMED 21
22
23
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