Ex Parte Foth et alDownload PDFBoard of Patent Appeals and InterferencesDec 20, 201011322084 (B.P.A.I. Dec. 20, 2010) Copy Citation 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 Copy with citationCopy as parenthetical citation