Ex Parte Obrea et al

Board of Patent Appeals and Interferences

Mar 15, 2011

11142619 (B.P.A.I. Mar. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P Alexandria, 0 Box 1450 Virginia 22313- 1450
www uspto gov
919 7590 03/17/2011
PITNEY BOWES INC.
APPLICATION NO.
EXAMINER
INTELLECTUAL PROPERTY & TECH. LAW DEPT. HUANG, TSAN- w J
111142,619 0513 112005 Andrei Obrea F-923 6867
FILING DATE
35 WATERVIEW DRIVE
MSC 26-22
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
SHELTON, CT 06484 3685
ATTORNEY DOCKET NO.
Please find below andlor attached an Office communication concerning this application or proceeding.
CONFIRMATION NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
031171201 1 ELECTRONIC
PTOL-90A (Rev. 04107)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte ANDRE1 OBREA and
FREDERICK W. RYAN JR.
Appeal 2010-003678
Application 1 11142,619
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-003678
Application 1 11142,619
Andrei Obrea and Frederick W. Ryan Jr. (Appellants) seek review under
35 U.S.C. 5 134 (2002) of a final rejection of claims 1-20, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. 5 6(b) (2002).
The Appellants invented a way of printing custom images on a mail
piece and accounting for the printing of such images (Specification ¶ 0002).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A method of controlling the use of a custom image by a user
at a user location in a value dispensing system, said value
dispensing system being operated by a provider, comprising:
[I] receiving a hash of the custom image
at a provider location from said user location,
said hash being generated from said custom image at the
user location and
said custom image stored at the user location and not
transmitted to the provider location;
[2] assigning a unique custom image identifier
to the custom image,
wherein the unique custom image identifier is uniquely
associated with the user;
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed June 2, 2009) and the Examiner's Answer ("Ans.," mailed
October 19, 2009).
Appeal 2010-003678
Application 1 11142,619
[3] generating a digital signature
at said provider location,
said digital signature being generated solely from
said hash and
a provider cryptographic key; and
[4] transmitting
said unique custom image identifier,
said digital signature and
at least said hash used to generate said digital
signature,
to said user location.
The Examiner relies upon the following prior art:
Antognini US 5,649,185 Jul. 15, 1997
Ratzenberger, Jr. US 6,178,412 B l Jan. 23,2001
Hunter US 2005101 14276 A1 May 26,2005
Claims 1-19 stand rejected under 35 U.S.C. 5 112, first paragraph, as
lacking a supporting written description within the original disclosure.
Claims 1-19 stand rejected under 35 U.S.C. 5 112, second paragraph, as
failing to particularly point out and distinctly claim the invention.
Claims 1, 3,7, 8, 11, 14-16, 19, and 20 stand rejected under 35 U.S.C.
5 102(b) as anticipated by Ratzenberger.
Claims 2, 6, 12, and 13 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Ratzenberger and Hunter.
Claims 4, 5, 9, 10, 17, and 18 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Ratzenberger and Antognini.
Appeal 2010-003678
Application 1 11142,619
ISSUES
The issue of written description turns on whether the Specification
supports uniquely identifying the user. The issue of indefiniteness turns on
whether a claim may be amended to incorporate a different invention. The
issue of anticipation turns on whether the Examiner made art findings as to
all limitations in the claims. The issues of obviousness turn on whether the
Examiner provided a rational reason for modifying or elaborating on
Ratzenberger.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellants' Disclosure
01. The custom image identifier includes data that uniquely
identifies printer 25, such as the serial number assigned to the
printer 25, so that the custom image identifier can be distinguished
from any other identifiers. The data center accounts for the
purchase of the custom image so that the user can be charged
appropriately. Specification ¶ 00 17.
Facts Related to the Prior Art
Ratzenberger
02. Ratzenberger is directed to value dispensing systems including
a postage metering system that protects against the loss of postal
funds.
Appeal 2010-003678
Application 1 11142,619
03. We adopt the Examiner's findings as to what Ratzenberger
describes at Ans. 7-19 and 23-26.
Hunter
04. Hunter is directed to the personal customization of postage
stamps. Hunter ¶ 0003.
05. Hunter describes knocking out images that contain matter in a
database of non-acceptable or non-compliant image and text data.
Hunter ¶ 0028.
Antognini
06. Antognini is directed to electronic library services which
manage collections of data representing informational media of
durable value. In particular, Antognini describes inter-process
communications necessary for access, security, integrity
authentication, and consistency of library data. Antognini 1 : 13-
20.
07. Antognini describes generating an image identifier at a library
server site that maps to the stores where the image is resident.
Antognini 16:2-9.
ANALYSIS
Claims 1-19 rejected under 35 U.S.C. $112, first paragraph, as lacking a
supporting written description within the original disclosure.
We agree with the Appellants that Specification ¶ 0017 describes an
association between a user and a custom image sufficiently unique to
Appeal 2010-003678
Application 1 11142,619
account for billing the user. FF 01. Thus we are persuaded that the
Specification provides sufficient written description support for the claims.
Claims 1-19 rejected under 35 U.S. C. $112, second paragraph, as failing to
particularly point out and distinctly claim the invention.
We agree with the Appellants that whether the claims as amended are
outside the scope of the originally filed claims does not affect whether one
of ordinary skill would be able to determine the metes and bounds of the
claims as currently drafted.
We are unpersuaded by the Examiner's findings that the amendments to
the claims were outside the scope of the original claims. The Examiner is
directed to MPEP 2172 (111). The second paragraph of 35 U.S.C. 112 does
not prohibit applicants from changing what they regard as their invention
during the pendency of the application. In re Saunders, 444 F.2d 599
(CCPA 1971).
Claims 1, 3, 7, 8, 11, 14-16, 19, and 20 rejected under 35 U.S. C. $102(b) as
anticipated by Ratzenberger.
We are unpersuaded by Appellants' argument that the Examiner admits
that several limitations are not found in Ratzenberger, and that all of the
limitations must be given weight. The Examiner made no such admission,
and has shown where each of the limitations in claim 1 is found in
Ratzenberger. In particular, the Examiner provided greater detailed findings
at Ans. 23-24 in response to the limitations argued by the Appellants at
Appeal Br. 12- 13. We adopt those findings and reach the same conclusion
of anticipation as the Examiner.
Appeal 2010-003678
Application 1 11142,619
Claims 2, 6, 12, and 13 rejected under 35 U.S. C. $103(a) as unpatentable
over Ratzenberger and Hunter.
We are unpersuaded by the Appellants' argument that one of ordinary
skill would not modify Ratzenberger with Hunter. Appeal Br. 13. The
Examiner applied Hunter for evidence of the notoriety of accounting for use
of a product or service. The Examiner provided a rational reason in that
accounting is necessary for compensation. Ans. 13. Such accounting would
neither discourage one from practicing this with Ratzenberger's metering
systems nor would it render Ratzenberger inoperable as the Appellants
argue. As to whether Ratzenberger could support a different revenue model
as suggested by the Appellants, since that is all the Appellants' suggestion
is, an alternative, this would not detract from the predictability of accounting
for the use of Ratzenberger's images, as such a revenue model was too
widely known to be set aside.
We are also unpersuaded by the Appellants' argument (Appeal Br. 14)
that Hunter fails to provide a knock-out hash search function. FF 05. See
Ans. 25.
Claims 4, 5, 9, 10, 1 7, and 18 rejected under 35 U.S. C. $103(a) as
unpatentable over Ratzenberger and Antognini.
We are unpersuaded by the Appellants' argument that one of ordinary
skill would not modify Ratzenberger with Antognini. Appeal Br. 15. The
Examiner applied Antognini for evidence of the notoriety of generating
image identifiers at the source of the image. The Examiner provided a
rational reason in that there are only two locations at which such an
identifier may be created. Ans. 16. As in Antognini, generating an image
Appeal 2010-003678
Application 1 11142,619
identifier at the place where the image originates was a predictable
alternative among the two choices. FF 07.
CONCLUSIONS OF LAW
Rejecting claims 1-19 under 35 U.S.C. 5 112, first paragraph, as lacking
a supporting written description within the original disclosure is improper.
Rejecting claims 1-19 under 35 U.S.C. 5 112, second paragraph, as
failing to particularly point out and distinctly claim the invention is
improper.
Rejecting claims 1, 3,7, 8, 1 1, 14- 16, 19, and 20 under 35 U.S.C.
5 102(b) as anticipated by Ratzenberger is proper.
Rejecting claims 2, 6, 12, and 13 under 35 U.S.C. 5 103(a) as
unpatentable over Ratzenberger and Hunter is proper.
Rejecting claims 4, 5, 9, 10, 17, and 18 under 35 U.S.C. 5 103(a) as
unpatentable over Ratzenberger and Antognini is proper.
DECISION
To summarize, our decision is as follows.
The rejection of claims 1- 19 under 35 U.S.C. 5 112, first paragraph, as
lacking a supporting written description within the original disclosure
is not sustained.
The rejection of claims 1- 19 under 35 U.S.C. 5 1 12, second
paragraph, as failing to particularly point out and distinctly claim the
invention is not sustained.
Appeal 2010-003678
Application 1 11142,619
The rejection of claims 1, 3,7, 8, 11, 14-16, 19, and 20 under 35
U.S.C. 5 102(b) as anticipated by Ratzenberger is sustained.
The rejection of claims 2, 6, 12, and 13 under 35 U.S.C. 5 103(a) as
unpatentable over Ratzenberger and Hunter is sustained.
The rejection of claims 4, 5, 9, 10, 17, and 18 under 35 U.S.C.
5 103(a) as unpatentable over Ratzenberger and Antognini is
sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
AFFIRMED
mev
Address
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & TECH. LAW DEPT.
35 WATERVIEW DRIVE
MSC 26-22
SHELTON CT 06484