Ex Parte Lu et al

Board of Patent Appeals and Interferences

Dec 8, 2008

10725047 (B.P.A.I. Dec. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BINH T. LU, THOMAS J. OTTERLEE and CASIMER F. LASKA
____________

Appeal 2009-0216
Application 10/725,047
Technology Center 2800
____________

Decided: December 8, 2008
____________

Before JAMESON LEE, RICHARD TORCZON and SALLY C. MEDLEY,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL
A. Statement of the Case
Lockheed Martin Corporation (“Lockheed”), the real party in interest,
seeks review under 35 U.S.C. § 134(a) of a Final Rejection1 of claims 1, 3-7,
11-20, and 22-282, the only claims remaining in the application on appeal.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Final Rejection, mailed October 19, 2004.
2 Lockheed argues that the Examiner erred in refusing to enter its claim
amendment made after Final Rejection. (App. Br. 11-12, Reply Br. 4).

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Lockheed’s inventions are a trackable postage stamp, a dispensing
system for trackable postage stamps and a method of tracking a postage
stamp. The trackable postage stamp has a first surface, a second surface and
a passive tracking device with stamp identification (ID) information. The
dispensing system includes a plurality of postage stamps each including a
passive radio frequency identification (RFID) tracking device. The
dispensing system also includes a stamp dispenser and a reader operatively
associated with the stamp dispenser that reads ID information from the
postage stamp tracking device. The method of tracking a postage stamp
includes coupling stamp tracking to a stamp, storing the tracking information
in a passive RFID device, dispensing the stamp to a customer, reading the
tracking information and storing the stamp ID in a database. (Spec. 1-3, 8-
9).
Representative claim 1, reproduced from the Claim Appendix of the
Appeal Brief, reads as follows:
A trackable postage stamp comprising:
a first surface;
a second surface opposite the first surface and adapted to
adhere to a piece of mail; and
a passive tracking device including stamp identification (ID)
information.

The Examiner relies on the following prior art in rejecting the claims on
appeal:
Levasseur et al. (“Levasseur”) 4,008,792 Feb. 22, 1977
Tuttle 5,497,140 Mar. 5, 1996
Porter 5,774,053 Jun. 30, 1998
Barcelou 6,048,271 Apr. 11, 2000

Such matters are decided by petition to the Director, not by the Board. See
37 C.F.R. § 1.127.
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Conwell et al. (“Conwell”) 2002/0135481 Sep. 26, 2002
Fite 6,467,684 Oct. 22, 2002

The Examiner rejected claims 1 and 3-7 under 35 U.S.C. § 103(a) as
unpatentable over Tuttle and Conwell.
The Examiner rejected claims 11-17, 19, 22 and 26-28 under 35 U.S.C. §
103(a) as unpatentable over Tuttle, Levasseur, Fite and Conwell.
The Examiner rejected claims 18 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Tuttle, Levasseur, Fite, Conwell and Barcelou.
The Examiner rejected claims 23-25 under 35 U.S.C. § 103(a) as
unpatentable over Tuttle, Levasseur, Fite, Conwell and Porter.
B. Issues
Would it have been obvious to one with ordinary skill in the art at the
time the invention was made to substitute a passive RFID device for Tuttle’s
active RFID device in a postage stamp?
Would it have been obvious to one with ordinary skill in the art at the
time the invention was made to combine Tuttle’s postage stamp with a
tracking device and associated interrogator with Levasseur’s postage stamp
vending machine based on Fite’s teaching of a combined vending machine
and reader?
Would it have been obvious to one with ordinary skill in the art at the
time the invention was made to combine an imaging device with the Tuttle,
Levasseur, Fite and Conwell combined device?
Would it have been obvious to one with ordinary skill in the art at the
time the invention was made to read tracking information as the stamp is
deposited into a postal mailbox based on the teachings of Porter in
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combination with the combined method of Tuttle, Conwell, Levasseur and
Fite?
C. Findings of Fact (“FF”)
Tuttle
1. Tuttle describes a postage stamp, mailing label or shipping label with an
active radio frequency identification (RFID) system 14 mounted
between cover member 10 and base 12 member. (Col. 1, ll. 12-16; col.
3, ll. 44-64; Fig. 1).
2. Prior art large RFID packages that reflect RF signals have been used for
monitoring the location and movement of railroad cars. (Col. 1, ll. 58-
61).
3. Prior art smaller passive RFID packages have been used for tracking
automobiles. (Col. 1, ll. 61-64).
4. Reflective passive RFID packages are generally inefficient in operation,
require large amounts of power to operate and have limited data
handling capability. (Col. 1, ll. 64-67).
5. The RFID tracking device stores data including an identification
number, sender’s name, point of origin, weight, size, route and
destination. (Col. 3, ll. 61-64).
6. An interrogator (i.e., reader) reads information stored in the RFID
tracking device to ensure that the item of shipment or luggage is most
ensuredly and efficiently put in the hands of the desired recipient at the
earliest possible time. (Col. 6, ll. 29-65, Fig. 6).
7. Interrogators (i.e., readers) can be located at the point of origin, points
along the shipment route and a point of destination. (Col. 1, ll. 12-16,
46-50; col. 6, ll. 14-44).
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Conwell
8. Conwell describes using passive RFID labels for tracking parcels.
(¶¶ 0006, 0013).
9. Conwell also describes that passive RFID devices are small and
inexpensive with limited range, resolution and data storage capacity.
(¶ 0006).
Official Notice
10. We take official notice that parcels are often transported via the postal
service and would require mailing labels and/or postage stamps.
Levasseur
11. Levasseur describes a vending machine that dispenses postage stamps.
(Col. 1, ll. 11-18, 23-30; col. 2, ll. 5-11; col. 4, ll. 45-68; col. 7, ll. 58-
60, 63-68; col. 9, ll. 10-27).
Fite
12. Fite describes a prepaid card 20 vending and dispensing system
including a card vendor terminal 14, a host database 12 and at least one
merchant station 16. (Col. 2, ll. 60-65).
13. The vendor terminal 14 has a card reader to read a unique identity
number from a readable memory on a plastic card 20 and to activate the
card. (Col. 3, ll. 3-15, 19-27).
14. When the plastic card is read by the card reader, the vendor or activation
terminal 14 connects to a host computer provided with a database 12.
(Col. 1, ll. 41-52; col. 3, ll. 25-26).
15. The card identification number is transferred from the vendor terminal
14 to the host computer and is compared to the identification numbers
stored in the host computer database 12. (Col. 1, ll. 43-49).
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16. If the read card identification number matches an identification number
stored in the host database 12, the corresponding record in the host
database 12 is switched from an inactive state to an active state. (Col. 1,
ll. 46-52).
17. The vendor terminal 14 may include an unattended kiosk type
automated card dispenser which permits data entry by the customer to
select a card denomination value and to insert payment to activate and
dispense a card 20. (Col. 3, ll. 29-33)
18. When a customer makes a purchase using a merchant station 16, the
card identification number is transferred to the host database 12. (Col.
1, ll. 52-62).
19. The host database 12 compares the card identification number from the
merchant station 16 with the stored card identification numbers to find a
matching card number that is both in an active state and has a sufficient
value to make the purchase. (Col. 1, l. 62-col. 2, l. 3).
Barcelou
20. Barcelou describes a kiosk 10 including two play stations 12, a card
reader 16, an ATM machine 22 and a standard security camera 31. (Col.
5, ll. 26-43; Fig. 1)
Porter
21. Porter describes an enclosure 14 for the delivery and pick-up of goods
and a communication apparatus 16 for controlling access to the
enclosure 14 and for providing notification that goods are to be
delivered or picked up. (Col. 3, ll. 55-60).
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22. The enclosure 14 has a door lock operator 24 that can unlock the door
lock 22 by a keypad entry, card reader, voice recognition, embedded
microchip, etc. (Col. 4, ll. 10-22).
23. The communication apparatus 16 includes a controller 46 and a
transmitting device 48. (Col. 5, ll. 26-31).
24. The controller 46 has a memory for storing vendor codes that are
assigned to vendors and a plurality of vendor messages. (Col. 5, ll. 38-
64; col. 7, ll. 46-50).
25. When a vendor enters a key code, a corresponding vendor message is
sent from the controller 46 and transmitter 48 to a remote location such
as a phone. (Col. 6, ll. 6-29).
C. Principles of Law
In KSR, the Supreme Court rejected the rigid application of the “teaching
suggestion or motivation” (TSM) test, instead favoring the “expansive and
flexible approach” used by the Court. KSR Int’l Co. v. Teleflex Inc., 127
S.Ct. 1727, 1739 (2007).
Based on its precedent, the Court reaffirmed the principle that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. In U.S. v.
Adams, 383 U.S. 39, 40 (1966), “[t]he Court recognized that when a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR at 1739-40.
In an obviousness analysis, it is not necessary to find precise teachings in
the prior art directed to the specific subject matter claimed because
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inferences and creative steps that a person of ordinary skill in the art would
employ can be taken into account. Id. at 1741.
“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 1742.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citations omitted).

Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.

Id.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Argument of counsel cannot take the place of evidence lacking in the
record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
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“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . .” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
D. Analysis
Rejection of Claims 1 and 3-7 as obvious over Tuttle and Conwell
Independent claim 1 is representative and recites “[a] trackable postage
stamp comprising . . . a passive tracking device including stamp
identification (ID) information.” (App. Br. 41).
Tuttle describes a postage stamp that includes an active radio frequency
identification (RFID) system. (FF3 1). Tuttle also describes that passive
RFID devices are known in the prior art and have been used to track and
locate railroad cars and automobiles. (FFs 2-3). Conwell explains that
passive RFIDs offer the advantages of being small and inexpensive. (FF 9).
It would have been obvious to one with ordinary skill in the art at the time
the invention was made to substitute a passive RFID device for the active
RFID device in Tuttle’s postage stamp since substituting one element for
another known in the field is likely to be obvious when it does no more than
yield predictable results. Lockheed has not presented evidence that
substituting a passive RFID for an active RFID in a stamp provides an
unpredictable result.
To the extent that the Examiner erred in concluding that it would have
been obvious to add a passive tracking device to Tuttle’s postage stamp
already having an active tracking device, such error is harmless because the
applied prior art references otherwise support an obviousness rejection.

3 FF denotes Finding of Fact.
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Lockheed argues that Tuttle teaches away from using passive tracking
devices. (App. Br. 16). Lockheed argues that Tuttle’s description of the
drawbacks of passive RFIDs would lead one with ordinary skill in the art to
conclude that passive tracking devices are not suitable for postage stamp and
mailing label applications. (App. Br. 16, 18, 20). Lockheed further argues
that that there is no reasonable expectation of success based on the
combination of Tuttle and Conwell. (App. Br. 17, 20).
Lockheed’s arguments are unpersuasive. Lockheed does not explain why
a person of ordinary skill, upon reading Tuttle, would be discouraged from
following the path set out in Tuttle or would be led in a direction divergent
from the path that was taken by Lockheed. Lockheed also does not explain
how Tuttle suggests that the line of development flowing from the Tuttle
disclosure is unlikely to be productive of the result sought by Lockheed.
Although, Tuttle describes passive RFIDs as having some undesirable
properties compared to active RFIDs, one with ordinary skill in the art might
reasonably conclude that active RFIDs have properties that are not needed or
desirable in some applications. It has been held that a known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product. Lockheed also does
not present objective evidence to support its assertion that there is no
reasonable expectation of success.
Lockheed further argues that (1) Conwell describes a passive RFID
transponder but does not teach or suggest applying passive RFID
transponders to postage stamps or mailing labels; (2) Tuttle does not suggest
a passive tracking device; and (3) the Examiner has not shown a teaching or
suggestion from the references themselves without using hindsight that
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would lead one of ordinary skill in the art to combine Tuttle and Conwell.
(App. Br. 16, 17, 19).
Lockheed’s arguments are unpersuasive because in evaluating the
question of obviousness, it is not necessary to find precise teachings in the
prior art directed to the specific subject matter claimed because inferences
and creative steps that a person of ordinary skill in the art would employ can
be taken into account. Additionally, Lockheed attacks each of the Conwell
and Tuttle references individually when the rejection is based on the
combination of the references. Attacking references individually is
insufficient to establish non-obviousness when the rejection is based upon a
combination of references.
Moreover, Conwell describes using passive RFID labels for tracking
parcels while Tuttle describes using active RFID devices for tracking
postage stamps, mailing labels or shipping labels on luggage or shipment
items. (FFs 1, 8). Parcels are frequently transported or shipped via the
postal service and would require mailing labels and/or postage stamps. (FF
10). A person of ordinary skill in the art at the time the invention was made
would readily appreciate that using passive RFID labels for tracking parcels
is suggestive of using passive RFIDs for shipping labels, mailing labels or
postage stamps. A person of ordinary skill is a person of ordinary creativity.
Lockheed also argues that (1) applications that use one type of RFID
(i.e., an active RFID) will not necessarily work if the other type of RFID
(i.e., a passive RFID) is employed, and (2) one with ordinary skill would not
assume that an application employing an active RFID would also work using
a passive tracking device. (App. Br. 15, 16). Lockheed’s arguments are
unpersuasive because Lockheed has not presented objective evidence to
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support its arguments. Argument of counsel cannot take the place of
evidence lacking in the record.
For all these reasons, Lockheed has not sustained its burden in showing
that the Examiner erred in determining that claims 1 and 3-7 are obvious
over Tuttle and Conwell.
Rejection of Claims 11-17, 19, 22 and 26-28 as obvious over Tuttle,
Levasseur, Fite and Conwell
Claims 11-17
Independent claim 11 is representative and recites “[a] postage stamp
dispensing system comprising: a plurality of postage stamps, each stamp
including a tracking device . . . a stamp dispenser . . . a reader operatively
associated with the stamp dispenser to read the stamp ID information when
the relative position between the stamp and the reader changes; and a
database operable to store the read stamp ID information, wherein each
tracking device includes a . . . (RFID) device, and wherein the RFID device
is passive.” (App. Br. 43).
As explained above in the analysis addressing claims 1 and 3-7, Tuttle
and Conwell render obvious a postage stamp including a passive RFID.
Neither Tuttle nor Conwell describes a dispensing system, but Levasseur
teaches a postage stamp vending system. (FF 11). As explained by the
Examiner, it would have been obvious to one with ordinary skill in the art at
the time the invention was made to employ a vending machine to dispense
stamps as taught by Levassuer in order to provide an efficient and
convenient way for consumers to make a purchase when a conventional
store is closed. (Final Rejection 6, Ans. 7).
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Tuttle further describes an interrogator (i.e., reader) which reads
information stored in the RFID tracking device memory 86 to ensure that the
item of shipment is most ensuredly and efficiently put in the hands of the
desired recipient at the earliest possible time. (FF 6). Tuttle further
describes that the interrogators (i.e., readers) can be located at the point of
origin, points along the shipment route and a point of destination. (FF 7). It
would have been obvious to one of ordinary skill that in order to ensure that
an item is put in the hands of a recipient at the earliest possible time, the
interrogator must provide the information through a computing network to a
central database that stores the read information so that the tracking
information can otherwise be accessed should the item of shipment become
lost.
However, neither Tuttle nor Levasseur describe a reader that is
operatively associated with a stamp dispenser to read the stamp ID
information when the relative position between the stamp and the reader
changes, or a database operable to store the read stamp ID information. Fite
describes a prepaid card 20 vending and dispensing system including a card
vendor terminal 14, a host database 12 and at least one merchant station 16.
(FF 12). The vendor terminal 14 has a card reader to read a unique identity
number from a readable memory on the plastic card 20 and to activate the
card. (FF 13). When the plastic card is read by the card reader, the vendor
or activation terminal 14 connects to a host computer provided with a
database 12 and the card identification number is transferred from the
vendor terminal 14 to the host computer. (FFs 14-15). The identification
number is compared to the identification numbers stored in the host
computer database 12. (FF 15). If the card identification number matches
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an identification number stored in the host database 12, the corresponding
record in the host database 12 is switched from an inactive state to an active
state. (FF 16).
As explained by the Examiner, in view of the teaching of Fite, it would
have been obvious to one with ordinary skill in the art at the time the
invention was made to modify the combined Tuttle and Levasseur invention
to employ a reader for reading ID information and storing the ID
information in a database because it is favorable to track an object purchased
by a consumer to ensure correct handling and operation. (Final Rejection 8,
Ans. 9). Also, as explained by the Examiner, it would have been obvious to
one with ordinary skill in the art at the time the invention was made to vend
stamps and pre-paid cards in the same manner because the combination of
Tuttle and Levasseur teach a vending system for vending stamps to be
tracked and Fite describes a vending system for pre-paid cards that are
tracked. (Final Rejection 8-9, Ans. 9).
Lockheed presents identical arguments for claims 11-17 as those
presented for claims 1 and 3-7. (App. Br. 21-22). For the same reasons
explained before with respect to claims 1 and 3-7, Lockheed fails to show
that the Examiner erred in determining that claims 11-17 are obvious over
Tuttle, Conwell, Levasseur and Fite.
Lockheed additionally argues that the Examiner (1) has not provided any
motivation within the references themselves that would lead one of ordinary
skill in the art to combine the four references; and (2) relies on
impermissible hindsight and fills in the motivation to combine with the
problems solved by Lockheed’s invention. (App. Br. 22-25, 27-29).
Lockheed more specifically argues that there is no teaching that would
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suggest vending and tracking stamps in a similar manner to Fite’s pre-paid
cards. (App. Br. 24, 28). Lockheed argues that the stamps would therefore
have to have a magnetic strip. (App. Br. 24, 28).
As explained before, it is not necessary to find precise teachings in the
prior art directed to the specific subject matter claimed because inferences
and creative steps that a person of ordinary skill in the art would employ can
be taken into account. Lockheed has not presented evidence to dispute the
Examiner’s conclusion that it would have been obvious to one with ordinary
skill in the art at the time the invention was made to (1) to modify the
combined Tuttle and Levasseur invention to employ a reader for reading ID
information and storing the ID information in a database; and (2) to vend
stamps and pre-paid cards in the same manner. (Final Rejection 8-9, Ans.
9). Lockheed also has not presented evidence to show that such a
modification is beyond the level of one with ordinary skill in the art.
Moreover, in light of the facts that (1) Tuttle describes an interrogator
(i.e., reader) for reading stamp information which obviously transmits the
read information to a central database for storage; and (2) Levasseur
describes a stamp vending machine, it would have been obvious to one with
ordinary skill in the art at the time the invention was made to combine
Tuttle’s interrogator (i.e., reader) with Levasseur’s stamp vending machine
since Fite teaches a combined reader and vending machine. The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predicable results. Lockheed has
not presented evidence that the combination yields an unpredictable result.
Additionally, Lockheed’s argument that the stamps would necessarily
have a magnetic strip presumes that Fite’s card magnetic strip must be
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bodily incorporated into Tuttle’s postage stamp. However, obviousness does
not require the features of a secondary reference to be bodily incorporated
into the structure of the primary reference.
Lockheed argues that Fite does not describe (1) reading a passive RFID
that is positioned on a stamp or other product; and (2) storing read
information in a database. (App. Br. 22, 24). Lockheed also argues that
Levasseur does not describe (1) passive RFIDs or active RFIDs; (2) reading
a passive RFID that is positioned on a stamp; (3) storing the read data in a
database; and (4) vending stamps. (App. Br. 22-23, 27).
Lockheed’s arguments attack each of the Fite and Levasseur references
individually, when the rejection is based on the combination of the Tuttle,
Conwell, Levasseur and Fite. Attacking references individually is
insufficient to establish non-obviousness when the rejection is based upon a
combination of references. In addition, Lockheed misapprehends the
Lavasseur reference because Levasseur describes a vending machine that
dispenses postage stamps. (FF 11).
Lockheed also argues that Fite does not suggest (1) tracking the cards
after purchase (App. Br. 24, 28). Lockheed’s argument is not commensurate
in scope with the claim language because the claim language does not
require tracking the stamps after purchase. Moreover, Fite describes that the
cards are tracked after purchase because when a user enters the ID
information at the merchant station, the host database has to check to see if
the card is valid and that the card value is at least equal to the purchase price.
(FFs 18-19).
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For all these reasons, we find that the Lockheed has not met its burden in
showing that the Examiner erred in determining that claims 11-17 are
obvious over Tuttle, Levasseur, Fite and Conwell.
Claims 19 and 26-28
Independent claim 19 is representative and recites “[a] method of
tracking a postage stamp, the method comprising . . . reading the tracking
information as the stamp is dispensed . . . .” (App. Br. 45). The Examiner
rejected claims 19 and 26-28 as obvious over Tuttle, Conwell, Fite and
Levasseur utilizing the same rationale as was used for claims 11-17. (Final
Rejection 5-10 and Ans. 6-11).
Lockheed makes identical arguments for claims 19 and 26-28 as those
made for claims 1, 3-7 and 11-17. (App. Br. 26-29). For the same reasons
explained above with respect to claims 1, 3-7 and 11-17, Lockheed fails to
show that the Examiner erred in determining that claims 19 and 26-28 are
obvious over Tuttle, Conwell, Levasseur and Fite.
Lockheed additionally argues that neither Fite nor Levasseur describe
reading a passive RFID that is positioned on a stamp or other product as the
product is dispensed. (App. Br. 26-29).
The Examiner did not rely on Levasseur for describing that information
is read as the product is dispensed, but instead relied on Fite. (Final
Rejection 7-9, Ans. 7-9). Lockheed’s arguments attack the Levasseur and
Fite references individually. The rejection was based on the combination of
the Tuttle, Conwell, Levasseur and Fite references. Attacking references
individually is insufficient to establish non-obviousness when the rejection is
based upon a combination of references.
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Lockheed appears to understand the limitation “as the stamp is
dispensed” to mean that the information is read at the same time as when the
vending machine is passing the stamps from the machine. However, the
broadest reasonable interpretation of the aforementioned limitation includes
the entire dispensing process that begins when a customer inserts money into
the vending machine and makes their purchase selection and ends when the
desired product is passed from the machine.
Lockheed also argues that Fite describes reading a magnetic strip on a
card after the card is dispensed to a customer. (App. Br. 26, 28). Fite
describes a card reader that reads a unique identity number from a readable
memory on a plastic card 20 and activates the card. (FF 13). Fite describes
vendor terminals 14 as unattended kiosk type automated card dispensers
which permit data entry by the customer to select a card denomination value
and payment insertion to activate and dispense a card 20. (FF 17). Thus,
Fite describes that the card is activated by the card reader prior to being
dispensed from the automated card dispenser. Lockheed has not directed us
to, and we can not find, where Fite describes reading a magnetic strip on a
card after the card is dispensed to a customer.
For all these reasons, we find that the Lockheed has not met its burden in
showing that the Examiner erred in determining that claims 19 and 26-28 are
obvious over Tuttle, Levasseur, Fite and Conwell.
Claim 22
Claim 22 is dependent on claim 19 and recites “storing a dispensing
location within the database.” (App. Br. 45).
Lockheed argues that Tuttle, Fite, Levasseur and Conwell do not alone or
in combination teach or suggest each and every limitation of claim 22.
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(App. Br. 30). Lockheed argues that Fite does not describe storing a
dispensing location within the database, or does not suggest storing data
related to where the card was sold or dispensed. (App. Br. 30).
Lockheed’s arguments attack the Fite reference individually. The
rejection was based on the combination of the Tuttle, Conwell, Levasseur
and Fite references. Attacking references individually is insufficient to
establish non-obviousness when the rejection is based upon a combination of
references.
In addressing the claim, the Examiner directs attention to Tuttle which
describes the data stored in the stamp RFID memory includes an
identification number, the sender’s name, point of origin, weight, size, route
and destination. (Final Rejection 10, Ans. 11, FF 5). Thus, the citation to
Tuttle describes that the dispensing location (i.e., point of origin) is stored in
the postage stamp RFID memory. (FF 5). Tuttle also describes an
interrogator (i.e., reader) that reads information stored in the stamp RFID
memory to ensure that the item of shipment is most ensuredly and efficiently
put in the hands of the desired recipient at the earliest possible time. (FF 6).
It would have been obvious to one of ordinary skill that in order to ensure
that the items are put in the hands of a recipient at the earliest possible time,
the interrogator must provide the information through a computing network
to a central database that stores the read information so that the tracking
information can otherwise be accessed should the item of shipment become
lost. Thus, contrary to Lockheed’s arguments, it would have been obvious
to one with ordinary skill that the dispensing location (i.e., point of origin)
along with the other information read from the stamp would be transmitted
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to and stored within a central database so that the tracking information can
otherwise be accessed should the item of shipment become lost.
For all these reasons, we find that Lockheed has not shown that the
Examiner erred in determining that claim 22 is obvious over Tuttle,
Levasseur, Fite and Conwell.
Rejection of Claims 18 and 20 as obvious over Tuttle Levasseur, Fite,
Conwell and Barcelou
Claims 18 and 20 are dependent on claims 11 and 19 respectively.
Representative claim 18 recites “an imaging device operatively associated
with the stamp dispenser . . . .” (App. Br. 44).
Barcelou describes a kiosk 10 including two play stations 12, a card
reader 16, an ATM machine 22 and a standard security camera 31. (FF 20).
As explained by the Examiner, it would have been obvious to one with
ordinary skill in the art at the time the invention was made to employ an
imaging system in order to have a record of who is purchasing and utilizing
the vended product and to add security to the system. (Final Rejection 12-
13, Ans. 12-14).
Lockheed argues that Barcelou does not teach or suggest each and every
limitation of claim 11 or claim 18. (App. Br. 32). Lockheed also argues that
the Examiner uses hindsight to combine the references and that there is no
suggestion in Barcelou, Tuttle, Levasseur, Fite and Conwell that would lead
one of ordinary skill in the art to combine the teachings of the five
references. (App. Br. 32).
Lockheed’s arguments are unpersuasive. Lockheed’s arguments attack
the Barcelou reference individually instead of the combined teachings of the
references. This is insufficient to establish non-obviousness. Lockheed’s
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argument that there is no suggestion in the references themselves to combine
the teachings of the references is also unpersuasive. In evaluating the
question of obviousness, it is not necessary to find precise teachings in the
prior art directed to the specific subject matter claimed because inferences
and creative steps that a person of ordinary skill in the art would employ can
be taken into account. It would have been obvious to one with ordinary skill
in the art at the time the invention was made to combine the Tuttle, Conwell,
Levasseur and Fite invention with the security camera of Barcelou since the
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predicable results. Lockheed has
not presented evidence that the combination yields an unpredictable result.
For all these reasons, we find that the Lockheed has not met its burden in
showing that the Examiner erred in determining that claims 18 and 20 are
obvious over Tuttle, Levasseur, Fite, Conwell and Barcelou.
Rejection of Claims 23-25 as obvious over Tuttle, Levasseur, Fite, Conwell
and Porter
Claims 23-25 indirectly or directly depend on claim 19. Representative
claim 23 recites “reading the tracking information as the stamp is deposited
into a postal mailbox, and storing the stamp ID and a mailbox location
within a database.” (App. Br. 45).
Lockheed argues that Porter does not teach or suggest reading any
information associated with or attached to an object that is placed in a
storage space. (Appeal Br. 34). Lockheed argues that instead Porter
describes a storage device that uses and stores user information provided by
the user to provide tracking and access control for a storage space. (Appeal
Br. 34).
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Lockheed’s arguments are persuasive. The Examiner has not addressed
the limitations of claims 23-25. Instead, the Examiner finds that Porter
describes confirming the delivery of articles to the correct mailbox. (Final
Rejection 13, Ans. 14). The Examiner has not directed us to and we can not
find where Porter describes or suggests reading information from the object
as it is deposited in a storage space. Instead, Porter describes an enclosure
14 for the delivery and pick-up of goods that utilizes vendor key codes or
similar means for controlling access to the enclosure (FF 21-25).
For all these reasons, we find that the Examiner erred in determining that
claims 23-26 are obvious over Tuttle, Levasseur, Fite, Conwell and Porter.
E. Conclusions of Law
Based on the Findings of Fact and the Analysis above, it would have
been obvious to one with ordinary skill in the art at the time the invention
was made to (1) substitute a passive RFID device for Tuttle’s active RFID
device contained in a postage stamp; (2) combine Tuttle’s trackable postage
stamp and associated interrogator with Levasseur’s postage stamp vending
machine; and (3) combine an imaging device with the Tuttle, Conwell,
Levasseur and Fite combined device. It would not have been obvious to one
with ordinary skill in the art at the time the invention was made to read
tracking information as the stamp is deposited into a postal mailbox.
F. Decision
The decision of the Examiner rejecting claims 1 and 3-7 under 35 U.S.C.
§ 103(a) as unpatentable over Tuttle and Conwell is affirmed.
The decision of the Examiner rejecting claims 11-17, 19, 22 and 26-28
under 35 U.S.C. § 103(a) as unpatentable over Tuttle, Levasseur, Fite and
Conwell is affirmed.
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The decision of the Examiner rejecting claims 18 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Tuttle, Levasseur, Fite, Conwell and Barcelou
is affirmed.
The decision of the Examiner rejecting 23-25 under 35 U.S.C. § 103(a) as
unpatentable over Tuttle, Levasseur, Fite, Conwell and Porter is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

rvb

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