Ex Parte Ogg

Board of Patent Appeals and Interferences

Nov 20, 2011

10677619 (B.P.A.I. Nov. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CRAIG OGG
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Appeal 2010-009701
Application 10/677,619
Technology Center 3600
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Before: MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009701
Application 10/677,619

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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-7, 9-12, 14-20,
and 22. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and
6 (2002). Oral hearings were held on November 15, 2011.
The claimed invention is directed to high-speed mail processing
systems and, more particularly, to a high-speed mail handling system that
applies postage or Information-Based Indicia (IBI) to each mail piece on a
piece-by-piece basis (Spec., para. [0002]). Claim 1, reproduced below, is
further illustrative of the claimed subject matter.
1. A high-speed mail processing system having a
conveyor system for transferring a plurality of mail pieces
among two or more mail processing components and a
controller for directing the operations of the components, the
system comprising:
a postage computing device for separately calculating
postage value due for each individual mail piece of said
plurality of mail pieces, said postage computing device
operable to use said calculated postage value to generate an
information based postage indicia for a mail piece of said
plurality of mail pieces in parallel with the mail piece of said
plurality of mail pieces being physically created and processed
by at least one mail processing component of said two or more
mail processing components;
a postage application printer positioned to print said
information based postage indicia on the mail piece of said
plurality of mail pieces that is being moved by the conveyor
system, wherein said information based postage indicia is
available for printing by said postage application printer at the
time the mail piece of said plurality of mail pieces arrives at
said postage application printer; and
a computer processing system for storing information
related to the processing of each individual mail piece of said
plurality of mail pieces and for providing the controller with the
processing information.
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Application 10/677,619

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The Examiner relies upon the following prior art:
Freeman US 4,742,878 May 10, 1988
Manduley US 5,079,714 Jan. 7, 1992
Huggett US 5,468,945 Nov. 21, 1995
Chang US 5,612,888 Mar. 18, 1997
Freeman US 6,041,569 Mar. 28, 20001
Ryan US 6,173,274 B1 Jan. 9, 2001
Leon US 2001/0042052 A1 Nov. 15, 2001
Rasmussen US 2004/0088267 A1 May 6, 2004
Claims 1-7, 9-12, 14-18, and 22 stand rejected under 35 U.S.C. § 112,
second paragraph, for indefiniteness; claim 1 stands rejected under 35
U.S.C. § 103(a) as unpatentable over Freeman in view of Leon; claims 2 and
5-6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Freeman in
view of Leon and Chang; claim 7 stands rejected under 35 U.S.C. § 103(a)
as unpatentable over Freeman in view of Leon and Freeman 2; claims 3, 4,
9, and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Freeman in view of Leon and Ryan; claims 11, 12, 15, 16, and 18 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Ryan in view of
Freeman and Leon; claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ryan in view of Freeman, Leon, and Manduley; claim 17
stands rejected under 35 U.S.C. § 103(a) as unpatentable over Ryan in view
of Freeman, Leon, and Chang; claims 19 and 22 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Ryan in view of Freeman, Leon, and
Rasmussen; and claim 20 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ryan in view of Freeman, Leon, Rasmussen, and Official
Notice supported by Huggett.
We REVERSE.

1 The Examiner refers to this reference as “Freeman 2” (Exam’r’s Ans. 9).
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ISSUES
Did the Examiner err in asserting that independent claim 1 is
indefinite2? The issue turns on whether various recitations of “mail piece”
in the claims all refer to the same object.
Did the Examiner err in asserting that a combination of Freeman and
Leon render obvious independent claim 13? The issue turns on whether the
cited combination renders obvious
said postage computing device operable to use said calculated
postage value to generate an information based postage indicia
for a mail piece of said plurality of mail pieces in parallel with
the mail piece of said plurality of mail pieces being physically
created and processed by at least one mail processing
component of said two or more mail processing components[,]
as recited in independent claim 1.

ANALYSIS
Indefiniteness Rejection
We are persuaded the Examiner erred in asserting that independent
claim 1 is indefinite (App. Br. 7-10; Reply Br. 4-5). The Examiner asserts
that independent claim 1 recites three mailpieces:
 Mailpiece 1: The individual mail piece of the postage computing device.

2 In setting forth our analysis, we choose independent claim 1 as
representative, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
3 In setting forth our analysis, we choose independent claim 1 as
representative, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
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 Mailpiece 2: A mail piece that will contain generated information based
indicia.
 Mailpiece 3: The individual mail piece which is being physically created
and processed by at least one mail processing component.
(Exam’r’s Ans. 5-6, 16-18). However, independent claim 1 recites, at most,
two mail pieces. First of all, the various recitations of “the mail piece of said
plurality of mail pieces” clearly refers back to “a mail piece of said plurality
of mail pieces” recited after “said postage computing device operable to use
said calculated postage value to generate an information based postage
indicia for” in the first paragraph following the preamble of independent
claim 1. Accordingly, at least Mailpieces 2 and 3 referenced by the
Examiner are indeed the same mail piece.
Independent claim 1 does not recite “the individual mail piece” as
asserted by the Examiner (App. Br. 17-18). Independent claim 1 does
additionally recite “each individual mail piece of said plurality of mail
pieces.” However, claim context shows that the reference to “each
individual mail piece” is merely to generally recite that the postage
computing device and the computer processing system process and store
data for all mail pieces separately: they are not meant to serve as an
antecedent basis for other recitations of “mail piece.” See Phillips v. AWH
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (internal citations omitted)
(“[q]uite apart from the written description and the prosecution history, the
claims themselves provide substantial guidance as to the meaning of
particular claim terms. To begin with, the context in which a term is used in
the asserted claim can be highly instructive”); ACTV, Inc. v. Walt Disney
Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“the context of the surrounding
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words of the claim also must be considered in determining the ordinary and
customary meaning of those terms”). Thus, it is immaterial whether or not
“each individual mail piece” (Mailpiece 1) coincides with “a mail piece”
(Mailpieces 2 and 3). Accordingly, we will not sustain this rejection.

Obviousness Rejection
We are persuaded the Examiner erred in asserting that a combination
of Freeman and Leon renders obvious independent claim 1 (App. Br. 10-17).
The Examiner has construed the claims to be “able to generate indicia while
concurrently processing another mail piece” (Exam’r’s Ans. 18; emphasis
added). However, as set forth above, because Mailpieces 2 and 3 are the
same, independent claim 1 recites that the system must be capable of
generating postage indicia for a mail piece and physically create that same
mail piece in parallel. As the Examiner used an erroneous construction of
independent claim 1 in setting forth the obviousness rejection that excluded
the parallel aspect of independent claim 1, we cannot sustain this rejection.

DECISION
The rejections of claims 1-7, 9-12, 14-20, and 22 are REVERSED.

REVERSED

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