Ex Parte Deslandes et al

Patent Trial and Appeal Board

Jun 12, 2013

10376226 (P.T.A.B. Jun. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THIERRY DESLANDES and MARC LECARPENTIER
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Appeal 2011-007731
Application 10/376,226
Technology Center 2400
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 7 and 8. An oral hearing on this appeal was held on June 11, 2013.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2011-007731
Application 10/376,226

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STATEMENT OF THE CASE
Appellants’ claimed invention is a process for monitoring the
consumption of franking machines. (Spec. 1). Independent claim 7,
reproduced below, is representative of the subject matter on appeal:
7. A franking system, comprising:
a plurality of franking machines capable of communicating through a
public communications network, with a management server, to send invoice
indexes, each franking machine of said plurality of franking machines
sending an invoice index indicative of franking performed by itself; and

a supervision terminal adapted communicate, through the public
communications network, with the management server, the supervision
terminal being never in communication with the plurality of franking
machines;

wherein:

the supervision terminal is adapted to send at least one of a
password and a personal identification number, through the public
communications network to the management server; and

the supervision terminal is adapted to receive statistical data
from the management server, through the public communications
network, said statistical data comprising at least invoicing indexes
indicative of franking performed by all of the plurality of franking
machines and previously sent to the management server by each of the
plurality of franking machines.

Appeal 2011-007731
Application 10/376,226

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REJECTION
The Examiner rejected claims 7 and 8 under 35 U.S.C. § 103(a) based
upon the combined teachings and suggestions of Le Carpentier (U.S. Patent
Application No. 4,752,950, June 21, 1988) and Kim (U.S. Patent
Application No. 5,224,046, June 29, 1993).

PRIOR DECISION
Appeal No. 2007-2512 (Application No. 10/376,226), decided
November 27, 2007. (Examiner Affirmed).

CONTENTIONS
Appellants contend, inter alia:
LeCarpentier fails to teach or suggest any management
server which is connected through a public network to the
franking machines and connected through the public network to
a supervision terminal. LeCarpentier also fails to teach or
suggest any supervision terminal which is connected through
the public network to a management server for receiving all the
invoice indexes of the franking machines and which is not in
communication with the franking machines.

(App Br. 10).

Kim fails to teach or suggest at least a supervision terminal, as
claimed. As shown in Figure 2 of Kim, in the embodiment of
Figure 2 of Kim, the microcomputer 12 clearly communicates
with the meters 40a and 40b. For at least this reason, the
microcomputer fails to teach or suggest the claimed supervision
terminal which is "never in communication with the plurality of
franking machines".
The data processing center 30 of Kim is not "adapted to
send at least one of a password and a personal identification
Appeal 2011-007731
Application 10/376,226

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number, through the public communications network to [a]
management server" and is not "adapted to receive an invoicing
index, through the public communications network from [a]
management server". Therefore, the data processing center 30
of Kim also fails to teach or suggest the claimed supervision
terminal. Rather, the data processing center 30 of Kim is
comparable to the claimed management server.

(App Br. 13-14).

The Examiner disagrees:

Le Carpentier is quoted to disclose the limitation of "a
supervision terminal adapted to communicate, through the
public communications network, with the management server,
the supervision terminal being never in communication with the
plurality of franking machines" as (column 8, lines 1-7: a
keyboard and screen terminal or console for interchanging
information with a human operator; column 2, lines 58-66: each
franking machines meters and franking independently from the
local station). Le Carpentier has further shown in Fig. 3 the
keyboard and screen terminal or console is in a Central Station
which is separated from a Local Station and communicated
with each other via a telephone network.

(Ans. 6).
ANALYSIS
For reference, we reproduce the portion of Le Carpentier’s column 8
cited by the Examiner:
A set of synchronized emitter/receivers 24, comprising three
transmitter/receivers, for example, provides simultaneous
dialog with two local stations 4 and with at least one unit in a
conventional set of computer peripherals 26, for example a
keyboard and screen terminal or console for interchanging
information with a human operator.

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Application 10/376,226

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(col. 8, ll. 1-7, emphasis added).

We particularly observe that console 26 (computer peripherals 26, col.
8, ll. 4-5) is shown in Le Carpentier’s Figure 3 as an integral part of Central
Station 2, which the Examiner previously found teaches Appellants’ claimed
“management server” limitation. (Ans. 3). Because console 26 is part of
Central Station 2, it appears the Examiner is reading both the claimed
“management server” and “supervision terminal” on essentially the same
element: Central Station 2.
Figure 3 of Le Carpentier does not show console 26 (“supervision
terminal”) “adapted to communicate, through the public communications
network, with the management server” (i.e., Le Carpentier’s Central Station
2 as found by the Examiner), as required by independent claim 7. See Fig.
3, Telephone Network 3. Moreover, because Central Station 2 is shown
communicating with a plurality of franking machines via Telephone
Network 3 (Le Carpentier, Fig. 1), we are not persuaded that console 26 (the
“supervision terminal” as proffered by the Examiner) is “never in
communication with the plurality of franking machines,” as required by the
negative limitation of claim 7.1

1 We find sufficient § 112, first paragraph, written description support for
the recited negative limitation (“the supervision terminal being never in
communication with the plurality of franking machines”) in Appellants’
Specification, ¶[0009], including a reason to exclude. Santarus, Inc. v. Par
Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). ("Negative
claim limitations are adequately supported when the specification describes
a reason to exclude the relevant limitation. Such written description support
need not rise to the level of disclaimer. In fact, it is possible for the patentee
to support both the inclusion and exclusion of the same material.")
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Application 10/376,226

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To the extent the Examiner may be alternatively reading the claimed
“management server” (claim 7) on Le Carpentier’s Local Stations (Fig. 1,
4X, 4Y, 4Z), we observe these Local Stations are shown communicating
with the franking machines through local loops, rather than through a
“public communication network,” as required by the language of claim 7.
Cf. Le Carpentier, Fig. 1, “Telephone Network 3”
To the extent the Examiner may be alternatively reading the disputed
“supervision terminal” on the secondary Kim reference (Fig. 2, System 10a
and/or Microcomputer 12), we agree with Appellants’ contentions that
“microcomputer 12 clearly communicates with [postage] meters 40a and
40b” (franking machines) and data processing center 30 of Kim is not
“adapted to send at least one of a password and a personal identification
number, through the public communications network to [a] management
server . . . .” (App Br. 13-14). Regarding the claimed “invoice indexes” and
“statistical data”, the informational content of these data elements is non-
functional descriptive material intended for human interpretation. (Claim 7).
These data elements are not positively recited as changing or affecting any
machine or computer function.2 Thus, the informational content of the
recited “invoice indexes” and “statistical data” has no bearing on our
decision. (Claim 7).

2 See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008)
(precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative)
(Federal Circuit Appeal No. 2006-1003), aff’d, Rule 36 (June 12, 2006)); Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed.
Appx. 959 (Fed. Cir. 2006); see also MPEP §2111.05(III).
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Lastly, the Examiner proffers an additional alternative theory that
“applicant has admitted the connection of a supervision terminal through a
public network is [] prior art.” (Ans. 8). However, we find the Examiner has
not fully developed the record to establish that Appellants’ general
description of a “data-processing server managed by the Postal Service”
(Spec. ¶0005) is sufficient to remedy the aforementioned operative coupling
deficiencies of the proffered Le Carpentier and Kim combination.
We find the weight of the evidence supports Appellants’ position as
articulated in the Appeal Brief. On this record, we agree with Appellants the
Examiner has not provided sufficient evidence, considered alone or in
combination, that teaches or fairly suggests the “supervision terminal”
operatively coupled as claimed. (Claim 7).
Accordingly, we reverse the Examiner’s obviousness rejection of
independent claim 7, and claim 8 which depends thereon.

DECISION
We reverse the Examiner’s decision rejecting claims 7 and 8
under 35 U.S.C. §103(a).
REVERSED

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