Ex Parte Chrosny et al

Patent Trial and Appeal Board

Jan 22, 2013

10996275 (P.T.A.B. Jan. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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Ex parte WOJCIECH M. CHROSNY and KAREN D’ANDREA 7
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Appeal 2011-003609 10
Application 10/996,275 11
Technology Center 3600 12
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16
MICHAEL W. KIM, Administrative Patent Judges. 17
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FETTING, Administrative Patent Judge. 19
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DECISION ON APPEAL22
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STATEMENT OF THE CASE1 1
Wojciech M. Chrosny and Karen D’Andrea (Appellants) seek review 2
under 35 U.S.C. § 134 of a final rejection of claims 1-15, the only claims 3
pending in the application on appeal. We have jurisdiction over the appeal 4
pursuant to 35 U.S.C. § 6(b). 5
The Appellants invented a way of printing information on a mail 6
piece, and, in particular, to a system and method for automatically selecting 7
advertising slogans to be printed on a mail piece. (Spec., para. 0001). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A method of printing an ad slogan on a mail piece, 12
comprising: 13
[1] establishing 14
one or more date ranges 15
and 16
one or more pre-selected ad slogans, 17
each of said one or more date ranges 18
having one of said one or more pre-selected ad 19
slogans corresponding thereto; 20
[2] determining a current date, 21
said current date being 22
a date on which an ad slogan is to be printed on 23
said mailpiece [sic, mail piece]; 24
[3] determining whether 25
said current date falls within 26
a particular one of said one or more date ranges; 27
and 28

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 3, 2010) and the Examiner’s Answer (“Ans.,” mailed
September 15, 2010).
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[4] if said current date falls within a particular one of said one 1
or more date ranges, 2
printing on said mail piece 3
the one of said one or more pre-selected ad slogans 4
that corresponds to said particular one of said one or 5
more date ranges. 6
7
The Examiner relies upon the following prior art: 8
Ryan US 6,816,838 B1 Nov. 9, 2004 9
Claims 1-4 stand rejected under 35 U.S.C. § 101 as directed to non-10
statutory subject matter. 11
Claims 1-12 stand rejected under 35 U.S.C. § 102(e) as anticipated by 12
Ryan. 13
Claims 13-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable 14
over Ryan. 15
ISSUES 16
The issue of statutory subject matter turns primarily on whether 17
affixing an advertisement to a mail piece is insignificant post solution 18
activity. The issues of novelty and obviousness turn primarily on whether 19
the claims require a one to one correspondence. 20
FACTS PERTINENT TO THE ISSUES 21
The following enumerated Findings of Fact (FF) are believed to be 22
supported by a preponderance of the evidence. 23
Facts Related to the Prior Art - Ryan 24
01. Ryan is directed to putting ads on mail pieces and subsidizing this. 25
Ryan 1:15-18. 26
02. Ryan improves the effectiveness of third party advertising on mail 27
pieces by facilitating the selection and application of third party 28
messages for printing on envelopes. Various restriction data, 29
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based upon user preferences, third party advertiser preferences, 1
recipient parameters, non-addressee parameters or some 2
combination of the above, may be employed during the message 3
selection process. The document includes a control code and the 4
inserter includes a scanner located adjacent the path of travel for 5
reading the control code on the document and a printer for printing 6
a selected message on the envelope corresponding to the control 7
code. A third party advertiser database has plural ad data profiles 8
where each of the ad data profiles includes message data and 9
restriction data. The message data is representative of a message, 10
respectively, for printing on the envelope. The control system 11
uses the restriction data from the plurality of ad data profiles in 12
combination with the recipient address to identify a subset of 13
messages available for printing, and receives an indication of the 14
selected message from the subset of messages authorized for 15
printing on the envelope; and incorporates within the control code 16
an indication of the selected message. Ryan 3:55 – 4:20. 17
03. The date restriction data provides an indication of what dates the 18
third party advertiser wants to advertise on. For example, 19
expiration dates could be established beyond which the message 20
will not be dispensed. As another example, periodic cycles could 21
be established during which the message is available for printing. 22
Ryan 10:40-48. 23
24
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ANALYSIS 1
Claims 1-4 rejected under 35 U.S.C. § 101 as directed to non-statutory 2
subject matter. 3
We are persuaded by the Appellants’ argument that these claims are 4
directed to more than an abstract idea without significant transformational 5
activity. These claims automatically select an advertisement, and then, most 6
significantly actually print that advertisement on a mail piece. 7
We can see how the Examiner might have considered this a close case 8
as merely printing something in general is insignificant post solution 9
activity. Thus, in view of the prior art rejection as well, raising this statutory 10
subject matter issue as a subsidiary issue, cumulative to the art rejection, was 11
reasonable for essentially requesting a dispositive resolution of the issue. 12
But here the whole invention is automatically putting the appropriate 13
advertisement on an actual mail piece. In this context, we find this to be 14
more than an abstract concept. 15
Claims 1-12 rejected under 35 U.S.C. § 102(e) as anticipated by Ryan. 16
We are not persuaded by the Appellants’ argument that “the claim 17
positively recites a one-to-one correspondence of an ad slogan with each 18
particular non-overlapping date range as would be necessary with an 19
automatic selection of an ad slogan based upon the date.” Appeal Br. 10. 20
As Examiner pointed out at Answer 9, this is not the case. The actual claim 21
limitation is “each of said one or more date ranges having one of said one or 22
more pre-selected ad slogans corresponding thereto.” This expresses a many 23
to many relationship, and not a one to one relationship as argued. First, each 24
date range may explicitly have plural (many) corresponding slogans. The 25
phrase “having one” means there exists at least one, not that there is a limit 26
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of exactly one; it requires existence rather than uniqueness. To one of 1
ordinary skill in the programming arts, this is floor on the number of slogans 2
and not a ceiling. Second, there is no restriction on how many of the date 3
ranges may correspond to any particular slogan. Thus there is a many to 4
many relationship implied. 5
There is additionally an argument that “the cited reference apparently 6
describes overlapping date ranges since each third party slogan is associated 7
with date ranges not associated with the other stored slogans.” Id. 8
However, again as Examiner pointed out at Answer 9, there is no such claim 9
limitation disallowing overlapping ranges. It may be that Appellants are 10
referring to the limitation “determining whether said current date falls within 11
a particular one of said one or more date ranges,” but this does not mention 12
whether such ranges overlap, and to the extent the limitation refers to falling 13
with a particular range, this simply determines whether there is at least one 14
such range. It does not exclude additional ranges. Those of ordinary skill in 15
the art of programming routinely provide tie breaking schemes or protocols 16
when plural ways of satisfying a condition are met. 17
Claims 13-15 rejected under 35 U.S.C. § 103(a) as unpatentable over Ryan. 18
Each of these claims simply add the limitation of ad slogans from an 19
authorized agency. In the method claim 13 this requires having the ad 20
slogans entered into the data somehow. The step is exactly the same 21
irrespective of the source of the data. Further, any source from which data 22
successfully enters is a source or agency that the software recognizes as 23
authorized to interact with it. 24
As to system claims 14 and 15, it is only required the system have the 25
capacity for entering data from an authorized agency. “[A]pparatus claims 26
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cover what a device is, not what a device does.” Hewlett-Packard Co. v. 1
Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). See also In re 2
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (functional language 3
does not confer patentability if prior art structure has capability of 4
functioning in the same manner). Therefore, the issue is whether Ryan 5
teaches a system that has structures that are capable of being operated to 6
perform these functions 7
In fact, these claims are ambiguous hybrid claims that the Examiner 8
should review for definiteness. See Rembrandt Data Techs., LP v. AOL, 9
LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011) (“reciting both an apparatus and 10
a method of using that apparatus renders a claim indefinite under section 11
112, paragraph 2”) (internal citation and quotations omitted). 12
Thus, we are not persuaded by the Appellants’ argument that the 13
Examiner’s official notice of the use of authorized sources is notorious is 14
improper. 15
CONCLUSIONS OF LAW 16
The rejection of claims 1-4 under 35 U.S.C. § 101 as directed to non-17
statutory subject matter is improper. 18
The rejection of claims 1-12 under 35 U.S.C. § 102(e) as anticipated 19
by Ryan is proper. 20
The rejection of claims 13-15 under 35 U.S.C. § 103(a) as 21
unpatentable over Ryan is proper. 22
23
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DECISION 1
The rejection of claims 1-15 is affirmed. 2
No time period for taking any subsequent action in connection with 3
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 4
§ 1.136(a)(1)(iv) (2011). 5
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AFFIRMED 7
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hh 11