Ex Parte Charroppin

Patent Trial and Appeal Board

Feb 28, 2013

10767143 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PASCAL CHARROPPIN
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Appeal 2011-010932
Application 10/767,143
Technology Center 3600
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Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge MURRIEL E.
CRAWFORD.

Opinion Dissenting-In-Part filed by Administrative Patent Judge JOSEPH
A. FISCHETTI.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 10. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). Appellant appeared for oral hearing on January, 16,
2013.
We REVERSE.
Claim 1 is illustrative:
1. Device alerting to the expiration of tariffs for a
franking system, comprising:
a random access memory (RAM) for recording postal
data including:
a first table of postal tariffs relative to postal products
and services, said first table of tariffs comprising postal tariffs
applicable before a date of application,
a second table of postal tariffs relative to postal products
and services, said second table of tariffs comprising postal
tariffs applicable after said date of application; and
a processing unit comprising comparing means for
comparing one by one postal data in said first table of postal
tariffs with corresponding postal data in said second table of
postal tariffs,
wherein said processing unit further comprises:
means for emitting to the operator of the franking
system a message alerting that postal data corresponding
to the mail item to be franked has been changed, if it has
been determined from said comparison of said postal data
that at least one of the postal data corresponding to the
mail item to be franked has changed, and
means for receiving a decision of the operator
whether to replace the postal tariffs of the first table with
the postal tariffs of the second table, for updating the
postal tariffs at the operator's request,

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the device further comprising a flanking machine which
franks the mail item with the current postal data when it has
determined that the current postal data has not changed, even
though the date of the application of the current postal data is
out of date.

Appellant appeals the following rejections:
1. Claims 5 to 7, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over
Baum (US 7,103,583 B1; iss. Sep. 5, 2006), Boothby (US 5,684,990; iss.
Nov. 4, 1997), Dlugos (US 6,463,133 B1; iss. Oct. 8, 2002), and Official
Notice.
2. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Baum, Boothby,
Dlugos, Official Notice, and Eckert (US 4,516,014; iss. May 7, 1985).
3. Claims 1 to 3 under 35 U.S.C. § 103(a) as unpatentable over Baum,
Boothby, Dlugos, and Markl (US 5,710,706; iss. Jan. 20, 1998).
4. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Baum, Boothby,
Dlugos, Markl, and Thiel (US 6,321,214 B1; iss. Nov. 20, 2001).

ANALYSIS
Claims 1 to 3
The Appellant argues that a franking machine which franks the mail
item with the current postal data when it is determined that the current postal
data has not changed even though the date of the application of the current
postal date is out of date as required by claim 1. The Examiner relies on
Dlugos for teaching that an alert message is sent to an operator upon a
determination that there is a change in the tariffs and Markl for disclosing
that when an effective date of a postal table has been reached, an out of date
table may be used to continue to frank mail items.
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We find that Dlugos discloses that a central office communicates to a
postal scale or meter user that the postal rates have changed and will require
modification and downloads new rate data (col. 4, l. 31 to col. 5, l. 15).
Dlugos does not disclose a franking machine that franks a mail item with
current postal data after a determination that the postal data has not changed
even though the postal data is out of date.
We find that the portions of Markl relied on by the Examiner teaches
that out-of-date postal information can be used if servicing does not take
place on the effective date. Markl does not disclose a determination of
whether the postal data has not changed even though the date of the postal
data has changed.
In view of the foregoing, we will not sustain the rejection as it is
directed to claim 1 and claims 2 to 3 dependent thereon.
Claim 4
We will not sustain the rejection of claim 4 because claim 4 is
dependent on claim 1 and the Examiner has not established that Thiel cures
the deficiencies discussed above in regard to the rejection of claim 1.
Claim 5 to 7 and 9 to 10
We will also not sustain the rejection of claim 5 and claims 6 to 7, 9,
and 10 dependent thereon.
Claim 5 requires that when it has been determined that the current
postal data has not changed, franking the mail item with the current postal
data even though the date of application of the current postal data is out of
date. As discussed above, neither Dlugos nor Markl discloses franking the
mail item when it is determined that the postal data has not changed even
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though the postal data is out of date. The Examiner’s officially noticed facts
do not cure this deficiency.
In this regard, we interpret the phrases that begin with “when” to be
positive limitation. In our opinion, these phrases are not optional, or even
conditional, but instead a limitation as to the timing of the step. The claim
uses the adverb “when,” not the subordinating conjunction “if.”
Claim 8
We will not sustain the rejection of claim 8 because claim 8 is
dependent on claim 5 and Eckert does not cure the deficiency noted above
for the rejection of claim 5.

DECISION
We reverse the decision of the Examiner.

REVERSED

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FISCHETTI, Administrative Patent Judge, dissenting-in-part.

I respectfully dissent-in-part from the decision above because the
scope of independent claim 5 is different from that of independent claim 1,
and thus claim 5 cannot be said to include all the limitations which are
appurtenant to independent claim 1, and hence would remain unpatentable
over the proposed combination under 35 U.S.C. § 103(a).
Claims 1-4 are article claims and use the means-plus-function format
of 35 U.S.C. § 112, sixth paragraph, to cover a device which functions in
both modes of operation through either firmware or software.
However, the method of claim 5, uses two “when” clauses to cover
the two scenarios where the current postal data has either changed or not
changed. As such, I construe term “when” as an “if condition” limitation
meaning that the existence of a given condition causes the limitation to
become positive. Thus, because Markl discloses the automatic changing of
postal data (see col. 5, ll. 25-32), the second when condition, when it has
been determined that the current postal data has not changed, becomes
moot since the condition is not invoked. As under the broadest scenario, the
steps dependent on the “if” conditional would not be invoked, the Examiner
was not required to find these limitations in the prior art in order to render
the claims obvious. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (“[d]uring examination [of a patent application, a
pending claim is] given [the] broadest reasonable [construction] consistent
with the specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art”)
(internal citation and quotations omitted).
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Thus, using this claim construction, claim 5 would be unpatentable
under 35 U.S.C. § 103(a) based on the disclosure in Markl.
But the majority’s decision above does not have this problem because
it adopts a claim construction which construes the “when” conditions as
positive limitations and not as subordinating conjunctions like the word “if”
but instead views them as timing of the step. In my view however, this
claim construction is problematic from a 35 U.S.C. § 112, second paragraph,
standpoint because construing the two “when conditions” as positively
recited limitations means that the method claim must require two competing
conditions, namely, change or no change, which are mutually exclusive of
one another. Since a method claim is involved here, the claim operates
sequentially and thus cannot require both mutually exclusive modes of
operation. In my view, only the apparatus claim can cover both conditions
because it must have the firmware or software resident in memory to
accomplish either of the two conditions.

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