Ex Parte Foth et al

Board of Patent Appeals and Interferences

Dec 20, 2010

11322084 (B.P.A.I. Dec. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P Alexandria, 0 Box 1450 Virginia 22313- 1450
www uspto gov
919 7590 12/22/20 10
PITNEY BOWES INC.
APPLICATION NO.
EXAMINER
INTELLECTUAL PROPERTY & TECH. LAW DEPT. JARRETT, SCOTT L
111322,084 12/29/2005 Thomas J. Foth C-160 2830
FILING DATE
35 WATERVIEW DRIVE
MSC 26-22
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
SHELTON, CT 06484 3624
ATTORNEY DOCKET NO.
Please find below andlor attached an Office communication concerning this application or proceeding.
CONFIRMATION NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
12/22/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte THOMAS J. FOTH,
CHRISTOPHER J. CAPELLI, and
CHARLES R. MALANDRA JR.
Appeal 2010-000838
Application 1 11322,084
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-000838
Application 1 11322,084
Thomas Foth, et a1 (Appellants) seek review under 35 U.S.C. 5 134
(2002) of a final rejection of claims 1-2,4-18, 20, and 46-5 1, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. 5 6(b) (2002).
The Appellants invented a method of communicating information from
an intended recipient of a mail piece. Specification ¶ 0001. An
understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A method of communicating information regarding a mail
piece comprising:
[I] sending a first electronic file regarding the mail piece
from a mailer of the mail piece to a service provider before the
mail piece is created;
[2] receiving, by the mailer, a second electronic file
containing information from the first electronic file and
information regarding a communication from an intended
recipient of the mail piece;
[3] changing a content of the mail piece based on the
communication from the intended recipient; and
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed May 22, 2009) and the Examiner's Answer ("Ans.," mailed July
22, 2009), and Final Rejection ("Final Rej.," mailed December 29, 2008).
Appeal 2010-000838
Application 1 11322,084
[4] creating the mail piece having the changed content.
The Examiner relies upon the following prior art:
Pintsov et al. US 6,385,504 B1 May 7,2002
Cordery et al. US 6,954,742 B2 Oct. 1 1, 2005
Claims 1-2, 16-17, 20, and 46-51 stand rejected under 35 U.S.C.
5 102(b) as being anticipated by Pintsov.
Claims 4-15 and 18 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Pintsov and Cordery.
ISSUES
The issue of whether the Examiner erred in rejecting claims 1-2, 16-17,
20, and 46-51 under 35 U.S.C. 5 102(b) as being anticipated by Pintsov
turns on whether Pintsov describes limitations [2] and [3] of claim 1 and as
recited in claim 46.
The issue of whether the Examiner erred in rejecting claims 4-15 and 18
under 35 U.S.C. 5 103(a) as unpatentable over Pintsov and Cordery turns on
whether Cordery describes limitations [2] and [3] of claim 1 and as recited in
claim 46.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Pintsov
Appeal 2010-000838
Application 1 11322,084
01. Pintsov is directed to mail processing systems employing a
unique mailpiece authorization for each mailpiece of a series of
mailpieces. Pintsov 1: 16-19.
02. Pintsov describes that a mailer's computer generates a mailing
list of mailpieces to be created at a later point in time and
subsequently submitted to a carrier service for delivery. Pintsov
10:s-11. The mailer's computer is in communication with the
data center of a carrier service, including an address database and
a mail identification database. Pintsov 10: 1 1 - 15. The mailer's
transmits a mailing file to the data center. Pintsov 10:28-30. The
mailing list includes a list of particular addressees or destinations.
Pintsov 10:44-46. A mailing identification file is generated by the
data center and the mail identification file includes a unique
number associated with each address. Pintsov 10:30-32 and
10: 60-65. The mailer receives the mailing identification file and
uses this file to print the mail. Pintsov 12:3-6 and 12: 11- 13.
03. Pintsov further describes that the system handles change-of-
address notifications. Pintsov 750-52. A change-of-address
notification is received from a recipient and is entered and
communicated to the data center. Pintsov 752-56. When a
mailing list for upcoming mail is received, the data center searches
all addresses and assigns a new delivery point postal code for all
change-of-address entries. Pintsov 757-60.
Appeal 2010-000838
Application 1 11322,084
Co rde ry
04. Cordery is directed to networked postage metering systems.
Cordery 1: 12- 14.
ANALYSIS
Claims 1-2, 16-1 7, 20, and 46-51 rejected under 35 U. S. C. § 102(b) as
being anticipated by Pintsov
The Appellants first contend that Pintsov fails to describe limitation [2]
of claim 1 and as recited in claim 46. App. Br. 10- 11. We disagree with the
Appellants. Limitation [2] requires receiving a second file containing
information from a first file and information regarding a communication
from an intended recipient of the mail piece. Limitation [2] further requires
that this information is received by the mailer.
Pintsov describes a mail processing system where a mailer creates a
mailing list file and transmits this file to a data center of a carrier service.
FF 02. The data center generates a second file, a mail identification file,
which includes updated addresses for each recipient. FF 02-03. The data
center receives notification files from recipients with change-of-address
information and uses this information to correct any old address in the mail
identification file. FF 03. The mailer then receives the mail identification
file from the data center, validates the information in the mail identification
file, and uses the information in the mail identification file to print the mail.
FF 02. That is, the mailer receives a second file from the data center that
includes mailing information from the mailing list file, the first file, and
notifications or communications from intended recipients for change-of-
address information. As such, Pintsov describes limitation [2].
Appeal 2010-000838
Application 1 11322,084
The Appellants further contend that Pintsov fails to describe limitation
[3] of claim 1 and as recited in claim 46. App. Br. 10-1 1. The Appellants
specifically argue that Examiner's construction of the term "content" is
inconsistent with the specification. App. Br. 10- 1 1. We disagree with the
Appellants.
Limitation [3] of claim 1 requires changing a content of the mail piece
based on the communication from the intended recipient. While the
specification provides examples of the meaning of "content" to include
enabling the mailer to "add an insert" or "replace an insert" (Specification ¶
0076), these descriptions are merely provided as examples of uses of the
term "content" and do not specially limit the scope of the term. The claims
fail to further limit the scope of "content." As such, the Examiner's
construction of the term "content" to encompass elements contained within
and upon the mail piece (Ans. 15) is both a reasonable construction and
consistent with the specification.
As discussed supra, Pintsov describes that an intended recipient
communicates change-of-address information and a mailer changes the
address content of a mail piece based on this communicated information. FF
02-03. As such, Pintsov describes limitation [3].
Claims 4-1 5 and 18 rejected under 35 U.S. C. § 103(a) as unpatentable
over Pintsov and Cordery
The Appellants contend that Cordery fails to describe limitations [2] and
[3] of claim 1 and as incorporated by claims 4- 15 and 18. App. Br. 12- 13.
We disagree with the Appellants. As discussed supra, the Examiner relied
Appeal 2010-000838
Application 1 11322,084
on Pintsov to describe limitations [2] and [3] of claim 1. As such, the
Appellants' contention does not persuade us of error on the part of the
Examiner because the Appellants are responding to the rejection by
attacking the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Znc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claim 1-2, 16-17, 20, and 46-5 1
under 35 U.S.C. 5 102(b) as being anticipated by Pintsov.
The Examiner did not err in rejecting claim 4-15 and 18 under 35 U.S.C.
5 103(a) as unpatentable over Pintsov and Cordery.
DECISION
To summarize, our decision is as follows.
The rejection of claim 1-2, 16-17, 20, and 46-51 under 35 U.S.C.
5 102(b) as being anticipated by Pintsov is sustained.
The rejection of claim 4- 15 and 18 under 35 U.S.C. 5 103(a) as
unpatentable over Pintsov and Cordery is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
Appeal 2010-000838
Application 1 11322,084
AFFIRMED
mev
Address
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & TECH. LAW DEPT.
35 WATERVIEW DRIVE
MSC 26-22
SHELTON CT 06484