Ex Parte Fogel et al

Patent Trial and Appeal Board

Oct 29, 2013

11299934 (P.T.A.B. Oct. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS C. FOGEL,
STEWART H. GIBSON,
JOANN MARTIN,
JEFF STANGLE, and
PAUL A. KOVLAKAS
____________

Appeal 2013-003649
Application 11/299,934
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Thomas C. Fogel, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 3, 5-8, 11-15, 17, 18, 23 and 24. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer implemented method comprising:
receiving from a carrier via electronic transmission at the
computer a first code which indicates an intended delivery address for
an item that the carrier determines to be undeliverable;
receiving from the carrier via electronic transmission a second
code at the computer which indicates a reason why the item is not
deliverable; and
receiving from the carrier via electronic transmission a third
code at the computer which includes information indicative of a
shipping campaign to which the item belongs,
wherein the carrier comprises a postal authority and the item
comprises a mailpiece processed by the carrier and further
comprising,
selecting, using the computer, a first course of action regarding
further handling of the mailpiece based solely on said third code.

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Oct. 8, 2012), the Examiner’s Answer (“Ans.,” mailed Oct. 23, 2012),
and the Final Rejection (“Final,” mailed May 10, 2012).
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kuebert
Cordery
Reynolds
Baker
Shada
Keller

US 2002/0165729 A1
US 2004/0093312 A1
US 2004/0225624 A1
US 2004/0230543 A1
US 7,974,882 B1
WO 2005/105329 A1
Nov. 7, 2002
May 13, 2004
Nov. 11, 2004
Nov. 18, 2004
Jul. 5, 2011
Nov. 10, 2005
The following rejections are before us for review:
1. Claims 1, 3, 5-7, 14, 15, 17, 18, 23, and 24 are rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
2. Claims 1 and 8 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.2
3. Claims 1, 3, 5-8, and 11-13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Keller and Kuebert.
4. Claims 14, 15, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Keller, Cordery, and Baker.
5. Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Keller, Cordery, Baker, and Kuebert.
6. Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Keller, Kuebert, and Reynolds.

2 Claims 1 and 8 are independent claims. Claims depending therefrom
presumably raise similar issues but have not been included in the statement
of the rejection.
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7. Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Keller, Kuebert, and Shada.

ISSUES
Did the Examiner err in finding that claims 1, 3, 5-7, 14, 15, 17, 18,
23, and 24 do not recite patent-eligible subject matter?
Did the Examiner err in finding that the application fails to provide
adequate written descriptive support for selecting, using the computer, a first
course of action regarding further handling of [a] mailpiece based solely on a
third code?
Did the Examiner err in rejecting the claims for obviousness over the
cited prior art combinations?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1, 3, 5-7, 14, 15, 17, 18, 23, and 24 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
The Appellants argue claims 1, 3, 5-7, 14, 15, 17, 18, 23, and 24 as a
group (Br. 11). We select claim 1 as the representative claim for this group,
and the remaining claims 3, 5-7, 14, 15, 17, 18, 23, and 24 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
We are not persuaded that the Appellants have shown error in the
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rejection. The Appellants argue that the claims do not recite abstract ideas
and in support thereof indicate that the claims “focus on information and
handling relating to items such as mail pieces as they move around being
processed by a carrier - not abstract ideas at all, but necessary steps in a
system of efficient processing of physical items such as mail” (Br. 11).
Representative claim 1 does not describe handling information relating to
items such as mailpieces as they move around being processed by a carrier
or steps in a system of efficient processing of physical items such as mail.
The method of claim 1 involves the use of three codes –
distinguishing from each other by the type of information they describe. A
computer receives all three codes via electronic transmission and then, using
the computer, a course of action “regarding further handling of [a]
mailpiece” (claim 1) is “select[ed] ... based solely on said third code” (claim
1). Claim 1 reasonably broadly covers receiving three types of information
and using one of them to select a course of action for a mailpiece.
In light of the claim’s broadest reasonable construction, we agree with
the Examiner’s statement that “no transformation occurs during the process
of independent claim 1” (Final 7) and the suggestion that the process is not
tied to a particular apparatus (Final 7). These are factors weighing against
the patent-eligibility for claim 1. The Appellants’ arguments, which are not
commensurate in scope with what is claimed (which is much broader), are
insufficient in showing factors weighing in favor of the patent-eligibility for
claim 1. The Appellants have not shown error in the rejection.
We note the Appellants’ argument as to claim 14 – that it includes
“physically disposing of the item” (Br. 11). Claim 14 does indeed include a
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limitation to “physically dispos[e] of the item without first requesting or
receiving a response from the third party to the disposition information.”
But we do not see, nor do the Appellants explain, how – as the Examiner
points out (Ans. 5) - a change in position of an article is a factor weighing in
favor of patent eligibility.

The rejection of claims 1 and 8 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
The Appellants argued claims 1 and 8 as a group (Br. 11-15). We
select claim 1 as the representative claim for this group, and the remaining
claim 8 stands or falls with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner takes the position that the application provides written
descriptive support for selecting, using the computer, a first course of action
regarding further handling of a mailpiece based on a third code but not based
“solely” (see claims 1 and 8) on a third code (Ans. 6).
The Appellants take the position that Figure 2, step 208, and the
associated disclosure at paragraphs [0026], [0027], [0043], and [0049] of the
application reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter whereby a first course of action
regarding further handling of a mailpiece based solely on a third code is
selected (Br. 12-15).
Compliance with the written description requirement is a question of
fact. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.
Cir. 1985). The question is whether the application reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
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subject matter whereby a first course of action regarding further handling of
a mailpiece is selected based solely on a third code, the third code including
information indicative of a shipping campaign to which the item belongs.
We have reviewed the disclosure, including the passages cited by the
Appellants. As the Appellants argue, the Specification provides examples of
the various types of information on which to base remedial action. But there
is no explicit disclosure that the remedial action be solely based on a third
piece of information, one that includes information indicative of a shipping
campaign to which the item belongs. While it may be obvious to base
remedial action solely on a third piece of information that includes
information indicative of a shipping campaign to which the item belongs
given disclosure of basing remedial action on information, “[o]ne shows that
one is ‘in possession’ of the invention by describing the invention, with all
its claimed limitations, not that which makes it obvious.” Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
For the foregoing reasons, we are not persuaded that the rejection was
made in error.

The rejection of claims 1, 3, 5-8, and 11-13 under 35 U.S.C. § 103(a) as
being unpatentable over Keller and Kuebert
The Appellants argue that Keller (p. 5, ll. 9-14 and p. 15, ll. 10-14)
does not disclose a first course of action regarding further handling of a
mailpiece is selected based solely on a third code, the third code including
information indicative of a shipping campaign to which the item belongs
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(see claims 1 and 8) as the Examiner has argued (Final 10).
Keller, page 5, lines 9-14 discloses:
The possible mailpiece fates include, in addition to delivery on
the basis of a corrected recipient address, the return or
destruction of incorrectly addressed mailpieces. Destruction is
only an option for advertising as well as newspapers and other
press publications that are sent out in large volumes as identical
mailpieces and whose sender does not wish for the mailpieces
to be returned in case of an address error.
Page 15, lines 10-14 discloses:
the destruction of the mailpieces, although the applicant only
offers this for advertising and newspapers and other press
publications, not for letters (likewise if the incorrect recipient
address is neither, an address with a correctable flaw nor an
outdated address with a forwarding order, or instead of delivery
or return).
The passages above do not appear to disclose a first course of action
regarding further handling of a mailpiece is selected based solely on a third
code, the third code including information indicative of a shipping campaign
to which the item belongs (see claims 1 and 8) as the Examiner has argued
(Final 10). At best, they disclose possibilities of delivery on the basis of a
corrected recipient address and the return or destruction of incorrectly
addressed mailpieces. The Examiner (Ans. 7) also cites page 18, lines 1-16,
but there too, we can find no disclosure that further handling of a mailpiece
is selected based solely on a third code, the third code including information
indicative of a shipping campaign to which the item belongs. A shipping
campaign is described in the Specification in terms of conduct by a carrier
for a group of items. This type of information, which is included in the
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information on which the remedial action is solely based, as claimed, is not
disclosed in these Keller disclosures as the Examiner argued.
For the foregoing reasons, we do not find that a prima facie case of
obviousness has been made out in the first instance for claims 1, 3, and 5-7.
We reach a different conclusion as to the rejection of claims 8 and 11-
13. These claims are directed to apparatuses, not processes. The Appellants
argue only process distinctions over the cited prior art combination but
“apparatus claims cover what a device is, not what a device does.” Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
We do not find that error has been shown in the rejection for obviousness of
the subject matter of claims 8 and 11-13.

The rejection of claims 14, 15, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Keller, Cordery, and Baker.
The Appellants argue that Keller does not disclose using a shipping
campaign code to determine if a mailpiece may be destroyed. Br. 16-17.
However, the Appellants do not address any of the specific passages the
Examiner cited in support of the contrary view. See Final 12-14.
Furthermore, there is no dispute that Keller discloses destroying a
mailpiece where the address is incorrect. See supra. The difference between
destroying a mailpiece based on a shipping campaign code (as claimed) and
an incorrect address (Keller) is a difference in the content of the information
(i.e., nonfunctional descriptive material) used to make the determination to
destroy the mailpiece. Such a difference is not patentably consequential.

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The rejection of claim 17 under 35 U.S.C. § 103(a) as being unpatentable
over Keller, Cordery, Baker, and Kuebert.
The Appellants rely on the arguments challenging the rejection of
claim 14. Because those arguments were found unpersuasive as to error in its
rejection, we find them equally unpersuasive as to dependent claim 17.

The rejection of claim 23 under 35 U.S.C. § 103(a) as being unpatentable
over Keller, Kuebert, and Reynolds.
Claim 23 depends from claim 1 whose rejection has been reversed.
For the same reasons, we will not sustain the rejection of claim 23 over the
cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious.”).

The rejection of claim 24 under 35 U.S.C. § 103(a) as being unpatentable
over Keller, Kuebert, and Shada.
Claim 24 depends from claim 5 whose rejection has been reversed.
For the same reasons, we will not sustain the rejection of claim 24 over the
cited prior art. Ibid.

CONCLUSIONS
The rejection of claims 1, 3, 5-7, 14, 15, 17, 18, 23, and 24 under 35
U.S.C. § 101 as being directed to non-statutory subject matter is affirmed.
The rejection of claims 1 and 8 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement is affirmed.
The rejection of claims 1, 3, and 5-7 under 35 U.S.C. § 103(a) as
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being unpatentable over Keller and Kuebert is reversed.
The rejection of claims 8 and 11-13 under 35 U.S.C. § 103(a) as being
unpatentable over Keller and Kuebert is affirmed.
The rejection of claims 14, 15, and 18 under 35 U.S.C. § 103(a) as
being unpatentable over Keller, Cordery, and Baker is affirmed.
The rejection of claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over Keller, Cordery, Baker, and Kuebert is affirmed.
The rejection of claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over Keller, Kuebert, and Reynolds is reversed.
The rejection of claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Keller, Kuebert, and Shada is reversed.

DECISION
The decision of the Examiner to reject claims 1, 3, 5-8, 11-15, 17, 18,
23 and 24 is affirmed.

AFFIRMED

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