Ex Parte Critelli et al

Patent Trial and Appeal Board

Apr 3, 2013

12055540 (P.T.A.B. Apr. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL J. CRITELLI, JUDITH D. AUSLANDER,
ROBERT A. CORDERY, and LEON A. PINTSOV
____________________

Appeal 2011-006960
Application 12/055,540
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006960
Application 12/055,540

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates generally to mail processing systems,
and more particularly to networked mail processing systems that operate to
increase the efficiency of mail delivery (Spec., para. [0001]).
Claims 1 and 9, reproduced below, are representative of the subject
matter on appeal:
1. A method for a sender of a mail piece to
prepare the mail piece for delivery to a recipient
entity, the method comprising:
sending a request, using a mail processing
system of the sender that is coupled to a network,
to a mail processing system of the recipient entity
that is coupled to the network, for a recipient
address within the recipient entity;
receiving a response, at the mail processing
system of the sender, from the recipient entity mail
processing system, the response including a
recipient address that the receiving entity desires
the sender to use for the mail piece; and
indicating the recipient address on the mail
piece.

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed October 15, 2010) the Examiner’s Answer (“Ans.,” mailed
December 9, 2010).
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9. A method for providing a sender of a mail
piece with a recipient address within a recipient
entity, the sender and recipient entity each having
a respective mail processing system coupled to a
network, the method comprising:
receiving at the recipient entity mail
processing system a request from the sender mail
processing system for the recipient address within
the recipient entity;
comparing, in the recipient entity mail
processing system, information included in the
request with information stored in a database to
determine, based on the information included in
the request, a correct recipient address; and
providing the correct recipient address from
the recipient entity mail processing system to the
sender mail processing system.

THE REJECTIONS
The following rejections are before us for review:
Claims 9-12 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Payne (US 2008/0033885 Al, pub. Feb. 7, 2008) in view
of Wheeler (US 2002/0032623 A1, pub. Mar. 14, 2002).
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Payne in view of Wheeler and further in view of Ruping
(US 200l/0027487 A1, pub. Oct. 4, 2001).

Appeal 2011-006960
Application 12/055,540

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ANALYSIS
Non-Statutory Subject Matter
Appellants argue that the Examiner erred in rejecting claims 9-12
under 35 U.S.C. § 101 because independent claim 9 is tied to a particular
machine, i.e., a mail processing system (Br. 4-5). In contrast, referencing
the machine-or-transformation test, the Examiner maintains that the rejection
is proper because “the machine is not particular” in the context of claim 9
and the claim fails to disclose a transformation (Ans. 4-5 and 10).
The Supreme Court clarified in Bilski that the machine-or-
transformation test “is not the sole test for deciding whether an invention is a
patent-eligible ‘process’ under § 101.” Yet the Court explained that this test
remains a “useful and important clue or investigative tool.” See Bilski v.
Kappos, 130 S. Ct. 3218, 3221 (2010).
We are persuaded that the Examiner erred in rejecting claims 9-12
under 35 U.S.C. § 101 by Appellants’ argument that the “receiving,”
“comparing,” and “providing” steps in claim 9 explicitly require the use of a
recipient entity mail processing system and, therefore, tie the claim to a
particular machine (Br. 4-5).
A mail processing machine is described in Appellants’ Specification
as a “mail processing system 30,” which can be “for example, a dedicated
mailing machine, a separate computer system, a combination of the two, or
any other type of device that can be utilized to process outgoing and/or
incoming mail pieces” (Spec., para. [0014]). Referring to Figure 2, the
Specification thus describes that the MPS 30 “includes a central processing
unit 32, which can include, for example, one or more special or general
purpose processing devices” (Spec., para. [0014]).
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A general purpose computer, by itself, would be insufficient to meet
the “particular machine” prong of the machine-or-transformation test, See
Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972). However, the
Specification sets forth specifics in paragraphs [0017] through [0023] and
Figure 3 regarding the processing that is performed in providing a sender of
a mail piece with a recipient address within a recipient entity. We find that
the “receiving,” “comparing,” and “providing” steps in claim 9 amount to
more than mere data-gathering steps, which cannot confer patent eligibility
to a claim through the use of a computer. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). “[B]ecause a general
purpose computer in effect becomes a special purpose computer once it is
programmed to perform particular functions pursuant to instructions from
program software,” we find that the recited “recipient mail processing
system” is a special purpose computer or “particular machine” sufficient to
satisfy § 101. See In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994).
Therefore, we will not sustain the Examiner’s rejection of claims 9-12
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.

Obviousness
Independent claim 1 and dependent claims 2-7
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) by Appellants’ argument that neither Payne nor
Wheeler discloses or suggests “receiving a response, at the mail processing
system of the sender, from the recipient entity mail processing system, the
response including a recipient address that the receiving entity desires the
sender to use for the mail piece,” as recited in the claim (Br. 5-9).
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Payne discloses a method and system for providing business senders
with secondary address information, e.g., apartment numbers, zip codes
(see, e.g., Payne, paras. [0002] and [0021], and describes that a delivery
service provider, e.g., the U.S. Postal Service (the “USPS”), maintains a
database, e.g., a ZIP+4™ database, that stores conventional address
information of recipients, including a recipient name, street information, and
a geographical code, such as a zip code, along with a corresponding
ZIP+4™ code in a 9 digit format (Payne, para. [0020]). To obtain the
ZIP+4+2™ code, the business sender forwards an address of a recipient,
which is received by the ZIP+4™ database. The database is queried and, if
a match is found, valid secondary information for the recipient is returned to
the sender. Payne describes that access to the ZIP+4™ database is available,
for example, via an internet (see Payne, paras. [0031] and [0032]).
The Examiner concedes that Payne fails to disclose a mail processing
system of the recipient entity, and cites paragraphs [0010], [0035], [0036],
and [0079] through [0083] of Wheeler to cure this deficiency (Ans. 6).
Wheeler discloses a system for managing and tracking interoffice and
other mail items (see Wheeler, Abstract), and describes in paragraph [0010],
cited by the Examiner, that the system maintains current addresses of office
users in an office directory. Thus, when a mail item from an outside
location is received with an address, the system checks the address provided
on the mail item against the current address for the user (stored in the office
directory) and sends the item to the user’s current address even if that
address is different from the address on the mail item (see also Wheeler,
paras. [0079] through [0083]). Wheeler describes in paragraphs [0035] and
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[0036] that the system is configured to include a plurality of end user
workstations connected to the mail processing system via a network.
We agree with the Examiner that modifying Payne to receive address
information from a recipient mailing processing system, as taught by
Wheeler, rather than from a carrier system, is nothing more than a
combination of prior art elements according to their established functions,
and yields a predictable result (Ans. 6 and 10-12). Therefore, it would have
been obvious at the time of Appellants’ invention. See KSR Int’l Co. v.
Teleflex Inc., 550 U. S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results”).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of dependent claims 2-7, which were not separately argued.

Independent claim 9 and dependent claims 10-12
Appellants’ arguments with respect to claim 9 are substantially
identical to Appellants’ arguments with respect to claim 1. Because we
found those arguments unpersuasive as to claim 1, we find them equally
unpersuasive as to claim 9. Therefore, we will sustain the Examiner’s
rejection of claim 9 under 35 U.S.C. § 103(a). We also will sustain the
Examiner’s rejection of dependent claims 10-12, which were not separately
argued.

Appeal 2011-006960
Application 12/055,540

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Dependent claim 8
Claim 8 depends from claim 1. Appellants do not present any
arguments in the Appeal Brief for the separate patentability of claim 8
except to assert that Ruping does not cure the alleged deficiencies of Payne
and Wheeler and that claim 8, therefore, is allowable for the same reasons as
set forth with respect to claim 1. Because we found Appellants’ arguments
unpersuasive as to claim 1, we find them equally unpersuasive as to claim 8.
Therefore, we will sustain the Examiner’s rejection of claim 8 under
35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 9-12 under 35 U.S.C. § 101 is
reversed.
The Examiner’s rejection of claims 1-12 under 35 U.S.C. § 103(a) is
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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