Ex Parte Hansen et al

Patent Trial and Appeal Board

Jan 29, 2015

11968151 (P.T.A.B. Jan. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GARY G. HANSEN, ARTHUR J. PARKOS,
JEAN-HIRAM COFFY, LUIS A. SANCHEZ,
CLAUDE ZELLER, and RONALD REICHMAN
____________________

Appeal 2012-008880
Application 11/968,151
Technology Center 2600
____________________

Before JEAN R. HOMERE, JEFFREY S. SMITH, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 7–10. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.2

1 The real party in interest is Pitney Bowes Inc.
2 Our Decision refers to the Appeal Brief filed Jan. 25, 2012 (“App. Br.”),
the Examiner’s Answer mailed Mar. 14, 2012 (“Ans.”), the Reply Brief filed
May 9, 2012 (“Reply Br.”), and the Specification filed Dec. 31, 2007
(“Spec.”).
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CLAIM SUMMARY
The claims are directed to authenticating and tracking physical
documents through a multiple party work flow across a geographically
dispersed area using digital pens and radio-frequency identification (RFID)
tags (Spec. Abstract). Claim 7, reproduced below, is illustrative of the
claimed subject matter:
7. A method implemented using a computer for
authenticating and tracking documents comprising:
associating a plurality of documents with a completion
task using the computer; and
tracking whether and to what extent each of said
documents progresses through a document processing work
flow system by authenticating such progress, wherein
authenticating such progress comprises authenticating that an
authorized worker has processed the plurality of documents at a
particular work stage in the work flow.

REJECTIONS
The Examiner made the following rejections:
1. Claims 7, 8, and 10 stand rejected under 35 U.S.C. § 102(e) based
on Obrea3 (Ans. 5).
2. Claims 7–9 stand rejected under 35 U.S.C. § 103(a) based on
Royall4 and Critelli5 (Ans. 7).
3. Claims 7, 9, and 10 stand rejected under 35 U.S.C. § 103(a) based
on Campbell6 and Critelli (Ans. 9).

3 US 2008/0059212 A1 published Mar. 6, 2008.
4 US 2002/0040301 A1 published Apr. 4, 2002.
5 US 6,275,745 B1 issued Aug. 14, 2001.
6 US 2001/0041993 A1 published Nov. 15, 2001.
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4. Claims 7, 8, and 10 stand provisionally rejected for nonstatutory
obviousness-type double patenting over claims 11, 12, and 16 of
Appellants’ copending U.S. Application No. 11/513,755 (“’755
Application”) (Ans. 12).
5. Claims 7–10 stand provisionally rejected for nonstatutory
obviousness-type double patenting over claims 11, 12, and 16 of
the Appellants’ ’755 Application in view of Furukawa7 (Ans. 12).

ANALYSIS
1. Rejection of Claims 7-8 and 10 under 35 U.S.C. § 102(e) based on
Obrea.
Appellants state Obrea discloses “scanning the PLANET code of the
documents authenticates that the worker has processed the receiving stage of
the work flow of the documents.” (App. Br. 10 citing Obrea ¶¶ 33, 47–48).
Appellants argue this disclosure of Obrea fails to suggest how such a
scanning would authenticate that a particular authorized worker was
operating the scanner.
The Examiner finds that Obrea discloses “the college admissions
office may use scanners to read PLANET codes to track application
components within the admissions office itself.” (Ans. 14 citing Obrea
¶ 33). The Examiner finds that claim 7 does not recite authenticating that a
particular worker is authorized separately from “authenticating that an
authorized worker has processed the plurality of documents.” The Examiner
finds that any worker at the college admissions office operating a scanner to
process documents is inferred to be an authorized worker (id.).

7 US 2005/0093832 A1 published May 5, 2005.
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Considering Appellants’ arguments and the Examiner’s findings, we
are not persuaded the Examiner erred in the rejection of claims 7, 8, and 10
under 35 U.S.C. § 102(e). As the Examiner noted, authenticating that a
worker is authorized to process documents is not the same as authenticating
that an authorized worker has processed the documents, as claimed.
Accordingly, Appellants’ argument is not commensurate in scope with the
claims as recited.
In addition, we agree with the Examiner that workers in a college
admissions office, as taught by Obrea, may be inferred to be authorized
workers absent any further claim limitation that would exclude them.
During examination, claims are given their broadest reasonable
interpretation consistent with the Specification. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Reviewing the
Specification, we find no definition of “authorized worker.” Therefore,
authenticating that an authorized worker has processed the documents can be
broadly, but reasonably construed as verifying that the documents have been
processed by a worker who is imputed with the authority to perform such
function. Accordingly, we are not persuaded the Examiner erred in the
rejection, and we sustain the Examiner’s rejection on this ground.
2. Rejection of Claims 7-9 under 35 U.S.C. § 103(a) based on Royall
and Critelli.
Appellants argue Royall and Critelli do not teach tracking documents
through a work flow or authenticating authorized workers (App. Br. 12).
Appellants state Royall tracks only receipt of completed applications for the
purposes of marketing effectiveness, and that Royall does not concern itself
with processing of applications through a work flow (id.). Appellants argue
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that mail delivery should not be equated with work flow processing, and that
the application is clear in distinguishing delivery from work flow (id.).
The Examiner finds Royall teaches associating documents with
completion of a task (Ans. 7 citing Royall ¶ 44), and Critelli teaches using a
computer to associate the documents with a completion task (Ans. 7–8 citing
Critelli Fig. 6, col. 4, ll. 25–48). The Examiner also finds Royall teaches
applications are mailed to a college or university, and Critelli teaches
authenticating reception of mail, which the Examiner finds sufficient to meet
the claim limitations (see Ans. 15). Similarly to the first rejection, the
Examiner finds the claims recite no authentication of authorized workers
separately from the claimed authenticating that an authorized worker has
processed documents (id.). According to the Examiner, any worker at the
college or university that processes the received mail, including application
documents, is considered an authorized worker (id.). The Examiner further
finds that receiving of completed applications in the mail is considered
processing of the applications through a work flow (id.). In addition, the
Examiner finds the claims do not distinguish delivery from work flow
processing, and that the Examiner’s interpretation of the claims is reasonable
given their breadth (id.).
We are not persuaded of any error in the Examiner’s rejection of
claims 7–9 under 35 U.S.C. § 103(a) based on Royall and Critelli.
Specifically, we agree with the Examiner that the claims do not recite
authenticating workers, and that any worker at a college or university
authorized to receive mail including applications is an authorized worker as
broadly claimed. We further agree that receiving completed applications in
the mail is part of the work flow of processing the applications absent any
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claim recitation necessitating a different interpretation, as there is no formal
definition of “work flow” in Appellants’ Specification. We also note that
Appellants’ work flow process expressly includes intake department 54
which receives documents (see Spec. Figs. 1, 5, ¶¶ 18–19, 34). Accordingly,
we are not persuaded the Examiner erred in this rejection.
3. Rejection of Claims 7 and 9-10 under 35 U.S.C. § 103(a) based on
Campbell and Critelli.
Appellants argue Campbell teaches away from physical mailing,
requiring instead Internet efficiencies (App. Br. 13 citing Campbell ¶ 5).
Appellants also argue the references teach no tracking of documents through
a work flow process or authenticating authorized workers (App. Br. 13).
Appellants further argue the Examiner’s interpretation of the claims is
unreasonable because mail delivery is not the same as work flow processing
(App. Br. 14).
We agree with the Examiner that the claims do not recite
authenticating a worker, and that any worker at a college or university
authorized to receive mail including applications is an authorized worker as
broadly claimed (Ans. 16). We further agree with the Examiner that
receiving completed applications in the mail is part of the work flow of
processing the applications absent any claim recitation necessitating a
different interpretation, as there is no formal definition of “work flow” in
Appellants’ Specification (id.). We also note that Appellants’ work flow
process expressly includes intake department 54 which receives documents
(see Spec. Figs. 1, 5, ¶¶ 18–19, 34). Accordingly, we are not persuaded the
Examiner erred in this rejection.
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4. Provisional Rejection of Claims 7-8 and 10 for Non-Statutory
Obviousness-Type Double Patenting over Claims 11-12 and 16 of
Appellants’ Copending U.S. Application No. 11/513,755 (“’755
Application”).
Appellants argue that because this non-statutory obviousness-type
double patenting rejection is provisional, it should not be considered on
appeal, citing as authority for this proposition Ex parte Moncla, Appeal No.
2009-006448 (BPAI June 22, 2010)(precedential, expanded panel)(App. Br.
14). The Examiner maintains the provisional obviousness-type double
patenting rejection, noting that a properly filed Terminal Disclaimer would
overcome the rejection (Ans. 16).
The U.S. Patent and Trademark Office mailed a notice of
abandonment on April 10, 2014, for U.S. Application No. 11/513,755, the
application upon which this provisional obviousness-type double patent
rejection is based. As the application that forms the basis of this rejection
has been abandoned, the contentions presented by Appellants and the
Examiner regarding this rejection are moot. Accordingly, we dismiss the
appeal with respect to this rejection.
5. Provisional Rejection of Claims 7-10 for Non-Statutory
Obviousness-Type Double Patenting over Claims 11-12 and 16 of
Appellants’ ’755 Application in view of Furukawa
As previously noted, U.S. Application No. 11/513,755 received a
notice of abandonment mailed April 10, 2014. Accordingly, this rejection is
moot and we dismiss the appeal pertaining thereto.
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DECISION
For the above reasons, the Examiner’s prior art rejections of claims 7–
10 are affirmed. However, we dismiss the appeal as to the double patenting
rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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