Ex Parte Kresina

Board of Patent Appeals and Interferences

Mar 14, 2012

11243456 (B.P.A.I. Mar. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROMAN KRESINA
____________

Appeal 2010-005356
Application 11/243,456
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005356
Application 11/243,456

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-20 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a system for
providing franking services (Spec. [0005]). Claim 1, reproduced below, is
representative of the subject matter on appeal.

1. A system for providing franking services comprising:
at least one postal meter configured to generate a log file
containing information other than information about funds available
for producing postage indicia; and
at least one data center connected to the at least one postal
meter via at least one network;
wherein the at least one postal meter automatically initiates
communication with the data center and sends a notification
communication including the log file to the data center.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Cordery US 5,454,038 Sep. 26, 1995
Brand US 6,061,670 May 9, 2000
Heiden US 6,408,286 B1 Jun, 18, 2002
Pintsov US 6,463,354 B1 Oct. 8, 2002
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The following rejections are before us for review:
1. Claims 1, 4-5, 7, 9, and 16-17 are rejected under 35 U.S.C.
§102(b) as anticipated by Cordery.
2. Claims 2-3 and 20 are rejected under § 103(a) under Cordery
and Pintsov.
3. Claims 6 and 18-19 are rejected under § 103(a) as unpatentable
over Cordery.
4. Claims 8 is rejected under §103(a) as unpatentable over
Cordery and Brand.
5. Claims 10-15 are ejected under § 103(a) as unpatentable over
Cordery and Heiden.

THE ISSUES
With regards to claim 1, the issue turns on whether a broadest
reasonable construction of the term “postal meter” shows the claimed
element in Cordery. Claims 2-15 and 19-20 turn on a similar issue.
With regards to claims 16-18, the issue turns on whether the argued
claim limitations are non-functional descriptive material.
With regards to claims 10-15, the issue turns on when whether the
cited combination of Cordery and Heiden would have been obvious.

FINDINGS OF FACT
We adopt the Examiner’s finding of facts at page 3 ll.16-20 and page
10 ll.12-14. Additional facts may appear in the Analysis section below.

Appeal 2010-005356
Application 11/243,456

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ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art does not disclose a “postal meter” (Br. 3-5, Reply Br. 2-3).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 3-4, 12-13).
We agree with the Examiner. We first construe the meaning of the
term “postal meter” as used by the Appellant in the claims. We determine
the scope of the claims in patent applications “not solely on the basis of the
claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316
(Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004)). We must be careful not to read a
particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. See Superguide Corp.
v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The
Appellant argues that Specification at pages 2 ll.16-24, 3 ll.19-22, and 4
ll.16-8:10 would require that the “postal meter” generate postal indicia based
on value stored or provided in the meter and cites to ascending and
descending registers as storing the postage value (Br. 4).
The Specification at [00013] states that the postage meter 115 “may
include…a microprocessor for performing electronic accounting functions”
(emphasis added) which shows that it is not required that the postage meter
contain such elements. Further, the Specification at [00011] states that the
postal meters may be connected to a corresponding network and at [00018]
states that the postal meter utilizes a printer and is capable of franking a
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label. Thus, we find that under a broadest reasonable interpretation of the
claim that there is no requirement that the “postal meter” must include
ascending and descending registers for storing the postage value. Further,
there is nothing in the claim that prevents the postal meter from being
composed of constituent parts, such as a distinct printing unit and distinct
accounting unit, which together would form the claimed “postal meter”.
As Cordery has disclosed that the “mailer unit” can establish the
postal value to be imprinted on the mail piece, receive the processed
information needed to prepare mail pieces, and produce the mail pieces this
is considered to serve as the claimed “postage meter” (page 4 ll. 8-23, Fig.
1). Regardless, the “postage meter” could also be considered to be the
mailer 112 and data center 116 together (Fig. 1) and meet the argued claim
limitation in this manner as well as there is no requirement in the claim for
the postal meter to be stored in one location only. For these reasons the
rejection of claim 1, and claims 4-5, 7, and 9 which have not been argued for
or contain a similar limitation is sustained.
With regards to claim 16-17 the Appellant argues that Cordery fails to
disclose information in the log files regarding user action and device failure
respectively. The cited information contained in the log file is non-
functional descriptive material and not a positive limitation to the claim.
The PTO need not give patentable weight to descriptive material absent a
new and unobvious functional relationship between the descriptive material
and the substrate. See In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983).
See also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32
F.3d 1579, 1583-84 (Fed. Cir. 1994). Claim 18 contains a similar limitation
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drawn to information in the file that is also non-functional descriptive
material. For these above reasons the rejection of claims 16-18 is sustained.
With regards to claim 10, the Examiner has modified Cordery’s
system to use the ascending and descending registers taught in Heiden for
the benefit of providing greater security (Ans. 9-10). The Appellant argues
that such a combination would not have been made since Cordery’s system
already uses the accounting functions of the data center. Here, the particular
accounting system used in the Cordery reference has not been disclosed and
the use of the conventional ascending and descending registers taught in
Heiden as part of the accounting system would have been an obvious,
predictable substitution if desired to use that type of accounting system and
provide security in the device. For these reasons the rejection of claims 10,
and claims 2-3, 6, 8, 11-15, and 19-20 which have not been argued is
sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims listed in the Rejection section above.

DECISION
The Examiner’s rejection of claims 1-20 is sustained.

AFFIRMED

MP