Ex Parte Manduley

Board of Patent Appeals and Interferences

Feb 22, 2010

10295673 (B.P.A.I. Feb. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte FLAVIO M. MANDULEY 8
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Appeal 2009-004122 11
Application 10/295,673 12
Technology Center 3600 13
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Decided: February 23, 2010 16
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Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU 20
R. MOHANTY, Administrative Patent Judges. 21
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CRAWFORD, Administrative Patent Judge. 23
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DECISION ON APPEAL26
Appeal 2009-004122
Application 10/295,673

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STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 2-4, 6, 7, 11, and 13-17. We have jurisdiction under 35 U.S.C. 3
§ 6(b) (2002). 4
Appellant invented systems and methods for securing devices such as 5
postal meters and, more particularly, to transferring funds or other 6
information between security devices (Spec. [001]). 7
Claim 11 under appeal is further illustrative of the claimed invention 8
as follows: 9
11. A postal metering system comprising: 10
a safekeeping device for storing and releasing funds; 11
a secure communication device for ensuring that 12
communications with the safekeeping device are secure; 13
an input/output communication module, operatively 14
connected to the safekeeping device, to allow funds to be 15
transferred from a data center to the safekeeping device via the 16
input/output communication module; and 17
a control device, operatively connected to the secure 18
communication device, for causing the safekeeping device to 19
release funds through the secure communication device when 20
the control device receives a request for said fund release, 21
wherein the safekeeping device further comprises an external 22
communication link so as to allow the postal metering system 23
to directly receive funds from another postal metering system 24
via the secure communication device thereof through the 25
external communication link. 26
The prior art relied upon by the Examiner in rejecting the claims on 27
appeal is: 28
Bator US 5,826,246 Oct. 20, 1998 29
Hansen US 2003/0024979 A1 Feb. 6, 2003 30
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Appeal 2009-004122
Application 10/295,673

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Refunds and Exchanges for Metered Postage, 66 Fed. Reg. 42,817, 1
42,820 (Aug. 15, 2001) (to be codified at 39 C.F.R. pt. 111) 2
(hereinafter “the Federal Register”). 3
The Examiner rejected claims 2-4, 6, 7, 11, and 13-17 under 35 4
U.S.C. § 103(a) as being unpatentable over Hansen in view of Bator and the 5
Federal Register. 6
We AFFIRM. 7
8
ISSUE 9
Did the Appellant show the Examiner erred in asserting that a 10
combination of Hansen, Bator and the Federal Register renders obvious the 11
subject matter of independent claims 11 and 17, and dependent claims 2-4, 12
6, 7, and 13-16? 13
14
FINDINGS OF FACT 15
Specification 16
Appellant invented systems and methods for securing devices such as 17
postal meters and, more particularly, to transferring funds or other 18
information between security devices (Spec. [001]). 19
20
PRINCIPLES OF LAW 21
Obviousness 22
When a work is available in one field of endeavor, design incentives 23
and other market forces can prompt variations of it, either in the same field 24
or a different one. If a person of ordinary skill can implement a predictable 25
variation, and would see the benefit of doing so § 103 likely bars its 26
Appeal 2009-004122
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patentability. Moreover, for the same reason, if a technique has been used to 1
improve one device, and a person of ordinary skill in the art would recognize 2
that it would improve similar devices in the same way, using the technique is 3
obvious unless its actual application is beyond his or her skill. KSR Int’l Co. 4
v. Teleflex Inc., 550 U.S. 398, 417 (2007). 5
During examination, the examiner bears the initial burden of 6
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 7
1443, 1445 (Fed. Cir. 1992). 8
Once a prima facie case of obviousness is established, the burden 9
shifts to Appellant to rebut it. In re Keller, 642 F.2d 413, 426 (CCPA 1981). 10
11
Claim Construction 12
While the specification can be examined for proper context of a claim 13
term, limitations from the specification will not be imported into the claims. 14
CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 15
2005). 16
17
ANALYSIS 18
We are not persuaded of error on the part of the Examiner by 19
Appellant’s argument that that a combination of Hansen, Bator, and the 20
Federal Register does not render obvious the subject matter of independent 21
claims 11 and 17, and dependent claims 2-4, 6, 7, and 13-16 (App. Br. 11-22
15). Pages 3-5 and 9-11 of the Examiner’s Answer set forth the portions of 23
Hansen, Bator, and the Federal Register relied upon by the Examiner in 24
rejecting independent claim 11. The reason for combining Hansen and 25
Bator, as set forth by the Examiner, is that 26
Appeal 2009-004122
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it would have been obvious to one having ordinary 1
skill in the art at the time the invention was made 2
for Hansen et al[.] to include the ATM structure as 3
disclosed by Bator et al. Hansen et al[.] would be 4
motivated to use such structure because it is an 5
ATM that is capable of performing various usual 6
ATM functions. 7
(Ex. Ans. 4, 10-11). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 417. The 8
reason for combining Hansen and Bator with the Federal Register, as set 9
forth by the Examiner, is that 10
it would have been obvious at the time of the 11
invention for Hansen et al[.] combined with Bator 12
to directly transfer funds from one postal meter to 13
another postal meter. Hansen et al[.] and Bator 14
would be motivated to perform such modification 15
to incorporate known features in the market and to 16
provide convenience and efficient service to 17
customers of fund transfer. 18
(Ex. Ans. 5, 11). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 417. A 19
similar analysis with identical reasons for combining are set forth, with 20
respect to independent claim 17, on pages 6-8 of the Examiner’s Answer. 21
The Examiner has met the initial burden of establishing a prima facie case of 22
obviousness. See In re Oetiker, 977 F.2d at 1445. 23
Appellant recites the limitations of independent claims 11 and 17, and 24
generally asserts that the combination of Hansen, Bator, and the Federal 25
Register do not disclose or anticipate the claimed invention (App. Br. 13-26
14). However, the Appellant has not shown exactly which limitations of 27
independent claims 11 and 17 are not disclosed or anticipated. As the 28
Examiner has established a prima facie case of obviousness, the Appellant 29
must set forth specific technical arguments of Examiner error in order to 30
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meet the burden of rebutting the prima facie case. See In re Keller, 642 F.2d 1
at 426. Appellant has not done so here. Moreover, to the extent that 2
Appellant does set forth some the arguments with regard to the rejection, 3
these arguments are not persuasive of error on the part of the Examiner. 4
Appellant asserts that the claimed invention has certain advantages 5
(App. Br. 13-14). First of all, these advantages are not set forth in the 6
claims. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d at 1231. 7
Moreover, since the Examiner has set forth a prima facie case of 8
obviousness for the claimed invention, the Examiner’s combination 9
inherently has the same advantages. See, e.g., Catalina Mktng. Int’l, Inc. v. 10
Coolsavings.com, Inc., 289 F.3d 801, 809-10 (Fed. Cir. 2002) (“[s]uppose 11
Inventor B discovers that the polish also repels water when rubbed onto 12
shoes. Inventor B could not likely claim a method of using the polish to 13
repel water on shoes because repelling water is inherent in the normal use of 14
the polish to shine shoes.”) 15
Appellant generally asserts that the Examiner has not set forth a 16
factual basis for reasons for combining Hansen, Bator, and the Federal 17
Register (App. Br. 14-15). However, the Examiner has set forth both a 18
factual basis and reasons for combining, as referenced above, and the 19
Appellant has not set forth specific technical errors in the Examiner’s 20
reasoning as required to meet the burden of rebutting the prima facie case. 21
See In re Keller, 642 F.2d at 426. 22
23
CONCLUSION OF LAW 24
On the record before us, Appellant has not shown that the Examiner 25
erred in rejecting claims 2-4, 6, 7, 11, and 13-17. 26
Appeal 2009-004122
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DECISION 1
The decision of the Examiner to reject claims 2-4, 6, 7, 11, and 13-17 2
is affirmed. 3
No time period for taking any subsequent action in connection with 4
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 5
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AFFIRMED 7
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hh 13
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PITNEY BOWES INC. 15
35 WATERVIEW DRIVE 16
MSC 26-22 17
SHELTON, CT 06484-3000 18