Ex Parte Gargiulo

Board of Patent Appeals and Interferences

Feb 12, 2009

09965753 (B.P.A.I. Feb. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH L. GARGIULO
____________________

Appeal 2008-2608
Application 09/965,753
Technology Center 3600
____________________

Decided: 1 February 12, 2009
____________________

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Before: WILLIAM F. PATE, III, JENNIFER D. BAHR and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2008-2608
Application 09/965,753

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
27. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a system and method for increasing the
functionality of traditional postage metering systems. (Spec. pg. 5).
Claim 1 is illustrative of the claimed subject matter and is reproduced
below:

1. A postage metering system for dispensing postage, the
system comprising:

a modem for receiving an incoming telephone call;

a printer module for printing on a recording medium;

a control system in operative communication with the
modem and the printer module; the control system for:

storing a voice message associated with the telephone
call;

translating the voice message into a computer based
text;

printing a print message from the computer based text
using the printer module; and

sending the voice message and print message to a
central server.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Appeal 2008-2608
Application 09/965,753

3
Daniels US 4,556,944 Dec. 3, 1985
Kulpa US 4,744,554 May 17, 1988
Doeberl US 5,310,128 May 10, 1994
McCutcheon US 6,161,007 Dec. 12, 2000
Dietz US 6,175,820 B1 Jan. 16, 2001
Pigos US 6,370,521 B1 Apr. 9, 2002

The Examiner rejected claims 1, 5, 6, 10, 14-15, 19 and 23-24 under
35 U.S.C. 103(a) over Daniels in view of Dietz and further in view of Pigos;
claims 2-3, 11-12 and 20-21 under 35 U.S.C. 103(a) over Daniels in view of
Dietz and Pigos and further in view of Kulpa; claims 4, 7-8, 13, 16-17, 22
and 25-26 under 35 U.S.C. 103(a) over Daniels in view of Dietz, Pigos and
Kulpa and further in of Doeberl; claims 9, 18 and 27 under 35 U.S.C. 103(a)
over Daniels in view of Dietz, Pigos, Kulpa, and Doeberl and further in of
McCutcheon.
Appellant contends the Examiner erred in making each of the above
rejections.

ISSUES
1. Has Appellant established that the Examiner erred in rejecting claims 1,
5-6, 10, 14-15, 19 and 23-24 under 35 U.S.C. 103(a) over Daniels in
view of Dietz and further in view of Pigos?
2. Has Appellant established that the Examiner erred in rejecting claims 2-
3, 11-12 and 20-21 under 35 U.S.C. 103(a) over Daniels in view of Dietz
and Pigos and further in view of Kulpa?
Appeal 2008-2608
Application 09/965,753

4
3. Has Appellant established that the Examiner erred in rejecting claims 4,
7-8, 13, 16-17, 22 and 25-26 under 35 U.S.C. 103(a) over Daniels in
view of Dietz and Pigos and Kulpa and further in of Doeberl?
4. Has Appellant established that the Examiner erred in rejecting claims 9,
18 and 27 under 35 U.S.C. 103(a) over Daniels in view of Dietz and
Pigos and Kulpa and Doeberl and further in view of McCutcheon?

FINDINGS OF FACT
1. An object and advantage of Appellant’s invention is to leverage the
investment that the customer has already made in a postage metering system
by using the embedded systems that are already present in new ways (Spec.
p. 5, ll. 9-11). The postage metering system 100 used to practice the
invention may be of any conventional architecture (Spec. p. 7, l. 14)
including an envelope hopper 112 of conventional design, envelope feeder
122 of conventional design, tape hopper 114 of conventional design, tape
feeder 124 of conventional design, transport 130 of conventional design
(Spec. p. 7, l. 4 – p. 8, l. 2), and a control system 160 of conventional design
(Spec. p. 9, ll. 10-12). In a preferred embodiment the invention may be
practiced by using existing systems associated with the postage metering
system 100, such as the processor 162, modem 180 (Spec. p. 3, ll. 5-6), user
interface 170, printing system 140, recording medium 30, network and data
center 50, and modifying only software. (p. 11, l. 13 et seq.).
2. Daniels describes an improvement to postage metering systems (col.
1, ll. 6-23) whereby a postage metering system (col. 1, ll. 43-61) having a
printer 32 connected to a control system (processor 16) with memory 15,
Appeal 2008-2608
Application 09/965,753

5
also includes a voice recognition subsystem 38 (col. 3, ll. 5-10, 21, and 29-
30). See also Fig. 1.
3. Dietz is primarily concerned with improvements in existing voice
recognition systems, namely speech-to-text systems.
4. Dietz teaches that input data such as sounds (col. 4, ll. 10-11) or
speech audio events may be input to a computer 15 via input devices 301
such as a microphone 19, 53 or telephone 23, 49 (col. 4, ll. 30-34 and 47-
48). The input data may be stored (col. 4, l. 15), digitized (col. 4, l. 13),
transmitted via a telephone or modem (col. 4, l. 17-20), and subject to
speech-to-text conversion 305A (col. 6, l. 9).
5. Dietz additionally teaches that the text output from the speech-to-text
processing step 404 may be marked up 412 for example by bolding or
italicizing (col. 4, l. 67) text based on parameters of the captured sound 410
such as volume pitch and rate (col. 5, ll. 26-27).
6. Doeberl demonstrates that strips of tape (Abstract) are known to be
used in the art of postage metering machines (col. 1, ll. 9-10).
7. Pigos teaches a system which focuses on a job tracking data
application that collects data from mail processing devices such as postage
meters (col. 2, ll. 61-66) via a network (col. 3, ll. 6-7) on a central server 10,
100 for distribution (col. 4, ll. 11-12).
8. McCutcheon teaches control systems capable of retrieving 608,
storing and printing 610 header information. (col. 3, l. 33 – col. 4, l. 8; col. 6,
ll. 15-20; Fig. 6).

Appeal 2008-2608
Application 09/965,753

6
PRINCIPLES OF LAW
Where an Appellant’s remarks do not point to any specific language
within the claims to distinguish over the prior art, those remarks amount to a
general allegation that the claims define a patentable invention. Such
allegations will not be considered an argument for separate patentability.
37 C.F.R. § 41.37(c)(1)(vii) (2008).
In In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997), the court
stated:
It is well settled that the recitation of a new intended use
for an old product does not make a claim to that old product
patentable. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(“The discovery of a new property or use of a previously known
composition, even when that property and use are unobvious
from prior art, can not impart patentability to claims to the
known composition.”); Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) (composition claim
reciting a newly discovered property of an old alloy did not
satisfy section 102 because the alloy itself was not new); In re
Pearson, 494 F.2d 1399, 1403 (CCPA 1974) (intended use of
an old composition does not render composition claim
patentable); In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969)
(“[M]ere statement of a new use for an otherwise old or obvious
composition cannot render a claim to the composition
patentable.”); In re Sinex, 309 F.2d 488, 492 (CCPA 1962)
(statement of intended use in an apparatus claim failed to
distinguish over the prior art apparatus); In re Hack, 245 F.2d
246, 248 (CCPA 1957) (“the grant of a patent on a composition
or a machine cannot be predicated on a new use of that machine
or composition”); In re Benner, 174 F.2d 938, 942 (CCPA
1949) (“no provision has been made in the patent statutes for
granting a patent upon an old product based solely upon
discovery of a new use for such product”).

(Citations to reporters other than the Federal Reporter system omitted.)
Appeal 2008-2608
Application 09/965,753

7
To rely on a reference under 35 U.S.C. 103, it must be analogous prior
art. To determine what is “analogous prior art” for the purpose of analyzing
the obviousness of the subject matter at issue, any need or problem known in
the field of endeavor at the time of the invention and addressed by the patent
or application at issue can provide a reason for combining the elements in
the manner claimed. KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727,
1742 (2007). Thus a reference in a field different from that of applicant’s
endeavor may be reasonably pertinent if it is one which, because of the
matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his or her invention as a whole. In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).
While Patent Office classification of references and the cross-references in
the official search notes of the class definitions are some evidence of
“nonanalogy” or “analogy” respectively, the similarities and differences in
structure and function of the inventions carry far greater weight. In re Ellis,
476 F.2d 1370, 1372 (CCPA 1973).
Reliance on a large number of references in a rejection does not,
without more, weigh against the obviousness of the claimed invention. In re
Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991) (Court affirmed a rejection of a
detailed claim to a candy sucker shaped like a thumb on a stick based on
thirteen prior art references.).
ANALYSIS
Appellant makes a general allegation (Br. p. 9-10) that the references
are not properly combinable. As noted above in Finding of Fact 2, Daniels
discloses a postage metering system which can accept control commands
Appeal 2008-2608
Application 09/965,753

8
from a voice recognition subsystem. Dietz discloses an improved voice
recognition and text-to-speech computer system. Findings 3-5. In view of
the limited vocabulary of commands that the system of Daniels can accept,
and the advanced text-to-speech capabilities disclosed in Dietz, it would
have been obvious to improve the capabilities of the Daniels postage
metering system by the inclusion of the known elements and techniques of
the Dietz text-to-speech system. The inclusion of these known elements and
techniques in Daniels would have yielded predictable results.
Claim 1 recites a control system “for” performing four method steps
on information received through the incoming telephone call. This is not a
case where the nature of a programmable general purpose control system
may have been altered by combination with software or instructions for
performing enumerated tasks. The Appellant’s use of the word “for” to
preface the four recited method steps signals that the method steps merely
represent new uses of the control system specifically and the postage
metering system in general. The Appellant does not suggest that
programming a control system such as Daniels’ to perform these method
steps would be beyond the level of skill in the art. The recitation of these
new uses for a component of an otherwise obvious postage metering system
do not impart patentability the claims. See Schreiber.
As to the Pigos reference, the connection of the postage meter of
Daniels to a central server would have been prima facie obvious as is clearly
suggested in Pigos.
In asserting that the Examiner erred in rejecting claims 1, 5-6, 10, 14,
15, 19 and 23-24 under 35 U.S.C. 103(a) over Daniels in view of Dietz and
Appeal 2008-2608
Application 09/965,753

9
further in view of Pigos (Brief p. 11-13), Appellant individually argues only
claims 1, 5 and 6. Accordingly, claims 10 and 19 will stand or fall with
claim 1; claims 14 and 23 will stand or fall with claim 5; and claims 15 and
24 will stand or fall with claim 6.
Appellant argues that the Examiner erred in rejecting claim 1 because
Dietz does not contemplate or suggest answering telephone calls or taking
telephone messages. Claim 1 does not require a telephone answering
machine, nor is such a machine mentioned in claim 1. A telephone
answering machine is generally understood to be a machine that records
telephone voice messages. Claim 1 does not include the function of
recording telephone voice messages. Claim 1 includes a modem which is a
device for receiving modulated data streams already in machine readable
form. Claim 1 further includes a control system which has a function of
storing voice messages “associated” with telephone calls. The limitation
“associated with the telephone call” fails to specify that the voice message is
part of the call—it could merely be a voice memo referencing the call—and
since the incoming telephone call of the claim was received by the modem,
it does not appear to be a voice message anyway. Indeed, the disclosures of
Daniels and Dietz, which both specify microphones, appear to be more
capable of recording voice messages than appellant’s claimed modem. The
Examiner relies on Daniels to teach the control system element of claim 1.
Dietz is relied upon to teach that use of a telephone input is known in the art
of speech-to-text systems, which Appellant does not contest. Appellant has
not shown any reason why, when combined with the system of Dietz, the
control system of Daniels would not be capable of answering telephone calls
Appeal 2008-2608
Application 09/965,753

10
or taking telephone messages in the event that claim 1 was construed to
require this. Appellant has therefore not established that the Examiner erred
in rejecting claim 1.
Appellant argues the Examiner erred in rejecting claim 1 because
Pigos is non-analogous art since it does not contemplate voice messages
(Brief p. 13). Appellant’s claimed invention relates to implementing systems
not commonly associated with a postage metering system into a postage
metering system. Some examples of those systems are speech-to-text
systems and voice and text messaging systems which utilize a telephone
network 40 and data center 50. The field of endeavor at the time of the
invention is not limited to systems associated with voice messages as
Appellant suggests. Like Appellant’s invention, the Pigos system is
concerned with using a central server to gather data from postage meter
systems via a network. Appellant has not shown any differences in structure
and/or function to demonstrate why Pigos would not commend itself to an
inventor’s attention in considering the invention as a whole. Appellant has
therefore not established that the Examiner erred in rejecting claim 1.
Appellant argues that the Examiner erred in rejecting claim 5 because
Dietz does not contemplate parsing in order to highlight critical data.
Appellant additionally argues that the Examiner erred in rejecting claim 6
because Dietz does not contemplate that the parsing parameter is names.
Appellant admits that Dietz uses voice cues to highlight critical data by
bolding the output text. In our view this is all that claim 5 requires.
Furthermore, with respect to parsing of names in the system of claim 6, it
can readily be seen that names, presumably proper names, are merely non-
Appeal 2008-2608
Application 09/965,753

11
functional descriptive matter that cannot impart patentability to an otherwise
obvious system. That Dietz possess the capability to bold or otherwise
highlight portions of captured text is not in dispute. The type of text whether
it be names, pronouns, adverbs or whatever does not impart nonobviousness.
See e.g., In re Ngai, 36 7 F.3d 1336, 1339, (Fed. Cir. 2004); Cf. In re Lowry,
32 F.3d 1579 (Fed. Cir. 1994).
In asserting that the Examiner erred in rejecting claims 2-3, 11-12 and
20-21 under 35 U.S.C. 103(a) over Daniels in view of Dietz and Pigos and
in further view of Kulpa (Br. p. 13-14), Appellant individually argues only
claim 2. Accordingly claims 3, 11-12 and 20-21 will stand or fall with
claim 2.
Appellant argues that the Examiner erred in rejecting claim 2 because
Daniels does not contemplate or suggest initiating printing of the print
message. (Br. p. 14). The Examiner relies on Daniels to teach a control
system in communication with a printer (Fact 2). Appellant has not
supported this argument with any reasoning to establish the control system
connected to the printer of Daniels would not be capable of initiating
printing of a print message. Appellant has not contested that Daniels
discloses a control system operative to control a printer for common print
operations including feeding and initiating printing. The exact text of the
message printed would appear to be irrelevant in a system claim such as
claim 2. This is simply a case of Appellant attempting to distinguish the
claimed system from that of the prior art based on a new use. However, it is
well settled that a new use for an old product does not make a claim to the
Appeal 2008-2608
Application 09/965,753

12
old product patentable. See Schreiber at 1477. Appellant has therefore not
established that the Examiner erred in rejecting claim 2.
In asserting that the Examiner erred in rejecting claims 4, 7-8, 13, 16-
17, 22 and 25-26 under 35 U.S.C. 103(a) over Daniels in view of Dietz and
Pigos and Kulpa and in further view of Doeberl, Appellant individually
argues only claims 4 and 7-8. With respect to claims 7 and 8, Appellant
repeats the arguments addressed above with respect to claims 5 and 6,
respectively. These arguments remain unpersuasive for the same reasons as
those discussed above with respect to claims 5 and 6. Claims 7-8, 13, 16-17,
22 and 25-26 will stand or fall with claim 4.
With respect to claim 4, Appellant notes that the Examiner has put
together a five reference rejection. The number of references in a rejection
does not, without more, weigh against the obviousness of the claimed
invention. Appellant additionally asserts (Brief p. 14) that none of the
references discloses, teaches or suggests “strip tape.” The Examiner relies
upon Doeberl to teach strip tape (Final Rej. p. 7). Appellant does not address
the teachings of Doeberl and therefore has not established that the Examiner
erred in relying on Doeberl to teach this feature.
In asserting that the Examiner erred in rejecting claims 9, 18 and 27
under 35 U.S.C. 103(a) over Daniels in view of Dietz and Pigos and Kulpa
and Doeberl and in further view of McCutcheon, Appellant individually
argues only claim 9. Accordingly claims 18 and 27 will stand or fall with
claim 9.
Appellant argues that the Examiner erred in rejecting claim 9 because
none of the applied references discloses, contemplates or suggests header
Appeal 2008-2608
Application 09/965,753

13
information including a duration indication and a message number
indication. Daniels discloses a control system capable of printing (Fact 2)
and McCutcheon teaches that it is known in the art to record and print
header information (Fact 8). Appellant has not supported this argument by
demonstrating any reason why the control system of Daniels, when
combined with the teachings of McCutcheon would not be capable of
creating and printing header information. Including a duration and message
number indication in the header information is a matter of design choice
which does not impart patentability to the claim. Furthermore, printed
duration and message number information are merely non-functional
descriptive matter that cannot impart patentability to an otherwise obvious
system. Appellant has therefore not established that the Examiner erred in
rejecting claim 9.
CONCLUSIONS OF LAW
On the record before us, Appellant has not established that the
Examiner erred in rejecting;
1. claims 1, 5-6, 10, 14-15, 19 and 23-24 under 35 U.S.C. 103(a) over
Daniels in view of Dietz and further in view of Pigos;
2. claims 2-3, 11-12 and 20-21 under 35 U.S.C. 103(a) over Daniels in view
of Dietz and Pigos and further in view of Kulpa;
3. claims 4, 7-8, 13, 16-17, 22 and 25-26 under 35 U.S.C. 103(a) over
Daniels in view of Dietz and Pigos and Kulpa and further in view of
Doeberl; and
4. claims 9, 18 and 27 under 35 U.S.C. 103(a) over Daniels in view of Dietz
and Pigos and Kulpa and Doeberl and further in view of McCutcheon.
Appeal 2008-2608
Application 09/965,753

14
DECISION
For the above reasons, the Examiner's rejection of claims 1-27 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

Vsh

PITNEY BOWES INC.
35 WATERVIEW DRIVE
P.O. BOX 3000
MSC 26-22
SHELTON CT 06484-8000