Ex Parte Mayes

Board of Patent Appeals and Interferences

Aug 12, 2009

10284940 (B.P.A.I. Aug. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT C. MAYES
____________

Appeal 2009-002888
Application 10/284,940
Technology Center 3600
____________

Decided: August 12, 2009
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-27 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
1
Appeal 2009-002888
Application 10/284,940

SUMMARY OF THE DECISION
We REVERSE.
THE INVENTION
The Appellant’s claimed invention is directed to a mail processing
system that includes a weight system, postage system, and control system.
The system weighs first mail pieces, applies postage corresponding to a
weight range to the mail pieces, and in response to an instruction, transfers
second mail pieces without weighing them (Spec. 10-17). Claim 1,
reproduced below, is representative of the subject matter of appeal.
1. A method of processing mail pieces comprising:
weighing a plurality of first mail pieces;
determining if the plurality of first mail pieces are within a
weight range;
if the plurality of first mail pieces are within the weight range,
applying postage that corresponds to the weight range to the first mail
pieces; and
if the plurality of first mail pieces are within the weight range,
applying the postage to a plurality of second mail pieces without
weighing the second mail pieces.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Freeman US 4,956,782 Sep. 11, 1990
Manduley US 5,308,932 May 3, 1994
Berson US 5,819,239 Oct. 6, 1998
Picoult US 6,810,390 B1 Oct. 26, 2004
2
Appeal 2009-002888
Application 10/284,940

The following rejections are before us for review:
1. Claims 1-6, 9-15, 18-24, and 27 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Freeman and Manduley.
2. Claims 7, 16, and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Freeman, Manduley, and Berson.
3. Claims 8, 17, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Freeman, Manduley, Picoult.

THE ISSUE
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
This issue turns on whether it would have been obvious to combine
Freeman and Manduley to meet the claimed limitations which include
determining if a plurality of first mail pieces are within a weight range.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Freeman discloses a mailing system for mixed weight mail (Title).
FF2. Freeman discloses several modes of operation depending on the
characteristics of the items to be mailed. In a mixed mail system, each item
is weighed. For uniform mail, only the first piece is weighed and the postal
meter set for the rest of the batch (Col. 3:27-43).

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal 2009-002888
Application 10/284,940

FF3. Freeman discloses a mode where a batch of uniform mail has the first
mailpiece weighed and the following mailpieces are not weighed but set at
the same meter rate for postage (Col. 13:23-30).
FF4. Freeman discloses in Col. 10:41-Col. 11:2 that an improved weigh
time may be achieved by taking care of the incremental nature of postal
rates. Three successive signals indicate a stable weight. It is not disclosed
that the first mail pieces are weighed to see if they are within a weight range.
FF5. Manduley discloses a mail processing system for verifying postage
amounts (Title).
FF6. Manduley discloses that entire batches of mailpieces may be used but
that instead sampling may also be used for adequate verification. (Col. 5:13-
20).
FF7. Manduley discloses that sample sizes can be determined through well-
known statistical procedures (Col. 5:32-40).
FF8. Manduley does not disclose determining if the plurality of first mail
pieces are within a weight range, and if the plurality of first mail pieces
are within the weight range then applying postage that corresponds to the
weight range to the first mail pieces.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
4
Appeal 2009-002888
Application 10/284,940

factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415-16, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415, (citing Graham, 383 U.S.
at 12), and reaffirmed principles based on its precedent 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. at 416.
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
5
Appeal 2009-002888
Application 10/284,940

obviousness”). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
Freeman fails to teach “weighing a plurality of first mail pieces” and
“determining if the plurality of mail pieces fall within a weight range” (Br.
6, Reply Br. 3-4). The Appellant argues that Manduley describes two
embodiments, one in which each mail piece is weighed and an appropriate
postage is calculated, and a second in which the user manually enters a
postage amount (Br. 7-8). The Appellant acknowledges that Manduley
weighs a plurality of mail pieces but argues that is not to determine if there
is a common postage rate (Br. 8). The Appellant argues that since Manduley
presumes different postage rates one would not look to use the reference to
modify Freeman (Br. 8).
In contrast, the Examiner has determined that Freeman and Manduley
are properly combined to meet the claimed invention. The Examiner has
determined that “[i]n essence, the only difference between claim 1 and the
disclosure of Freeman et al. is that claim 1 checks multiple mail pieces to
establish the proper postage amount for a batch of mail pieces, while
Freeman only checks a single mail piece” (Ans. 17). The Examiner has
found that Manduley discloses the possibility of using a sample size of mail
pieces (Ans. 18) and determined that it would have been obvious to modify
Freeman this way to increase accuracy (Ans. 19). The Examiner states that
6
Appeal 2009-002888
Application 10/284,940

the combination has been made not to combine every feature of the two
references, but only the portions used to show the features of the claim (Ans.
20). The Examiner states that statistical sampling is a well-known concept
and the Manduley further even shows it applied to postal processing making
it applicable to the Freemen reference (Ans. 21-22).
We agree with the Appellant. Claim 1 requires more than just
“weighing a plurality of first mail pieces” it also requires “determining if the
plurality of first mail pieces are within a weight range” and further requires
that “if the plurality of first mail pieces are within the weight range,
applying postage that corresponds to the weight range to the first mail
pieces.” While Manduley does disclose weighing plural mail pieces to
obtain a sample (FF6, FF7) and statistical sampling is well known. Here
however, the claim also requires “determining if the plurality of first mail
pieces are within a weight range; [and] if the plurality of first mail pieces are
within the weight range, applying postage that corresponds to the weight
range to the first mail pieces” which is not shown by Manduley (FF8).
While Freemen does disclose in (Col. 10:41-Col. 11:2) that an improved
weigh time may be achieved by taking care of the incremental nature of
postal rates and that three successive signals indicate a stable weight, it is
not specifically disclosed that the first mail pieces are weighed to see if they
are within a weight range (FF4).
The modification of Freeman and Manduley to have a statistical
sampling of the first mail pieces and then determining if the mail pieces
are within a weight range lacks a articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness without
impermissible hindsight. For these reasons the rejection of claim 1 is not
7
Appeal 2009-002888
Application 10/284,940

sustained. Claims 10 and 19 contain similar limitations and the rejection
of these claims is not sustained for these same reasons. The rejection of
dependent claims 2-6, 9, 11- 15, 18, 20-24, and 27 is not sustained for these
same reasons as well. The Examiner has not asserted that Berson or Picoult
disclose the claimed features of the independent claims and the rejection of
claims 7-8, 16-17, and 25-26 is not sustained for the same reasons given
above.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-6, 9-15, 18-24, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Freeman and Manduley.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 7, 16, and 25 under 35 U.S.C. § 103(a) as unpatentable over
Freeman, Manduley, and Berson.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 8, 17, and 26 under 35 U.S.C. § 103(a) as unpatentable over
Freeman, Manduley, Picoult.

DECISON
The Examiner’s rejection of claims 1-29 is reversed.

REVERSED

JRG

8
Appeal 2009-002888
Application 10/284,940

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
3404 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528

9