Ex Parte Ogg

Board of Patent Appeals and Interferences

May 26, 2011

10677829 (B.P.A.I. May. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CRAIG OGG
____________

Appeal 2010-004077
Application 10/677,829
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on May 5, 2011.

STATEMENT OF THE CASE
Craig Ogg (Appellant) seeks our review under 35 U.S.C. § 134 of the
final rejection of claims 14-27. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

Appeal 2010-004077
Application 10/677,829

2

SUMMARY OF DECISION
We AFFIRM.1

THE INTVENTION
The invention relates to “postage usage, and more specifically to a
system for choosing between a remote postage account and a local postage
account.” Specification [0002].
Claim 14, reproduced below, is illustrative of the subject matter on
appeal.
14. A method of accessing a remote postage account from a local
postage evidencing device, comprising:
configuring the local postage evidencing device to
communicate with a plurality of vendors providing access to a
plurality of remote postage accounts;
connecting to a remote postage evidencing system via a local
postage evidencing device, said local postage evidencing device
having a local postage account;
identifying a remote postage account administered by a selected
vendor of said plurality of vendors on the remote postage evidencing
system that is to be used to print postage on the local postage
evidencing device;
selecting a desired postage amount to be printed on the local
postage evidencing device;
reducing a balance on the remote postage account without
transferring the value of the postage amount to the local account,
thereby maintaining a same local postage account balance; and

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jun. 22, 2009) and Reply Brief (“Reply Br.,” filed Nov. 2, 2009),
and the Examiner’s Answer (“Answer,” mailed Sept. 2, 2009)
Appeal 2010-004077
Application 10/677,829

3
printing the desired postage amount on the local postage
evidencing device.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Pierce
Lee
Eddy
US 6,151,591
US 5,742,683
US 5,812,400
Nov. 21, 2000
Apr. 21, 1998
Sep. 22, 1998
Willoughby WO 02/093498 A2 Nov. 21, 2002
The following rejections are before us for review:
1. Claims 14-18, 20, 21, and 24-27 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Pierce and Willoughby.
2. Claim 19 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Pierce, Willoughby, and Lee.
3. Claims 22 and 23 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Pierce, Willoughby, and Eddy.

ISSUE
The issue is whether the cited prior art would lead one to
“configure[e] [a] local postage evidencing device to communicate with a
plurality of vendors providing access to a plurality of remote postage
accounts” (claim 14).

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer
(Answer 3-7). Additional findings of fact may appear in the Analysis below.
Appeal 2010-004077
Application 10/677,829

4

ANALYSIS
The rejection of claims 14-18, 20, 21, and 24-27 under 35 U.S.C. §103(a) as
being unpatentable over Pierce and Willoughby.
Independent claim 14
The Examiner’s position is that Pierce discloses all the claim
limitations but for (1) “configuring the local postage evidencing device to
communicate with a plurality of vendors providing access to a plurality of
remote postage accounts” (claim 14), and (2) and “identifying a remote
postage account administered by a selected vendor of said plurality of
vendors on the remote postage evidencing system that is to be used to print
postage on the local postage evidencing device” (claim 14). For these two
steps, the Examiner relied on Willoughby. Answer 3-4. Given Pierce and
Willoughby, the Examiner concluded that:
It would have been prima facie obvious to one having ordinary skill in
the art at the time of invention to incorporate the above teachings of
Willoughby so that a user can select another vendor if a particular
remote postage provider suffers downtime or exits the industry (as
taught by Willoughby; ¶ 0012). Moreover, this is merely a
combination of old elements in which each would serve the same
function as it did separately, and the addition of this feature to the
method disclosed by Pierce could be implemented through routine
engineering producing predictable results.
Answer 4.
The Appellant disagrees on the grounds that (a) the combination of
Pierce and Willoughby does not disclose “configuring the local postage
evidencing device to communicate with a plurality of vendors” (claim 14)
(App. Br. 6-8; Reply Br. 3); (b) the combination of Pierce and Willoughby
would not lead one of ordinary skill in the art to the claimed invention (App.
Appeal 2010-004077
Application 10/677,829

5
Br. 8-11; Reply Br. 3-4); and, (c) “the Office has failed to provide a
plausible reason for why a person of ordinary skill would have been
motivated to combine Pierce and Willoughby.” (App. Br. 11; Reply Br. 5).
We do not find these arguments persuasive as to error in the rejection.
In arguing that the combination of Pierce and Willoughby does not
disclose “configuring the local postage evidencing device to communicate
with a plurality of vendors,” the Appellant explains that Willoughby
“discloses a system in which a user computer is configured to communicate
only with a shipping system, and not a plurality of vendors as required by
claim 14.” App. Br. 7. See also Reply Br. 3. “In other words, Willoughby
discloses a system in which a user computer is configured to communicate
with only a single entity, not a plurality of vendors.” App. Br. 7.
The difficulty with this argument is that the rejection is over the
combination as a whole, not Willoughby alone. The Examiner found that
Pierce “teaches a method of accessing a remote postage account from a local
postage evidencing device” (Answer 3). This finding has not been disputed.
Accordingly, we take as accepted that Pierce discloses accessing a remote
postage account from a local postage evidencing device. To one of ordinary
skill in the art, remote postage accounts are presumably associated with and
under the control of an entity, and it is generally known that vendors per se
are among the entities known to have postage accounts. Thus, when given
Pierce’s disclosure of a local postage evidencing device accessing a remote
postage account, one of ordinary skill in the art would understand that that
local postage evidencing device is configured to communicate with an entity
such as a vendor providing access to a remote postage account. In
evaluating such references, it is proper to take into account not only the
Appeal 2010-004077
Application 10/677,829

6
specific teachings of the references but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom. In re Preda, 401
F.2d 825, 826 (CCPA 1968). “A court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Thus, the question
comes down to whether one of ordinary skill in the art would be led to a
local postage evidencing device configured to communicate with “a plurality
of vendors providing access to a plurality of remote postage accounts”
(claim 14). In our view, one of ordinary skill in the art would be aware that
various vendors with remote postage accounts exist and communicating with
any one of them would simply be a matter of repeating what Pierce
discloses; that is, configuring Pierce’s local postage evidencing device to
communicate with another vendor. Merely duplicating Pierce’s remote
account access such that another vendor provides access to a postage
account would yield a local postage evidencing device configured to
communicate with “a plurality of vendors providing access to a plurality of
remote postage accounts” as claimed. Nothing unpredictable has been
shown for repeating the familiar step Pierce discloses for a single entity in
order to communicate with another. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR, 550 U.S. at 415-416.
In arguing that “the combination of Pierce and Willoughby would not
lead one of ordinary skill in the art to the claimed invention,” the Appellant
points out that Pierce and Willoughby cannot be combined. According to
the Appellant, “the teachings of Willoughby cannot simply be substituted or
added into the system of Pierce because the two systems are fundamentally
Appeal 2010-004077
Application 10/677,829

7
different.” App. Br. 8. The Appellant explains that the combination would
not work nor function as claimed because, for example, “the vendors of
Willoughby would not function as the asserted remote part of the network of
Pierce because when a local PSD is attempting to utilize a remote account's
funds, the shipping system API of Willoughby would attempt to meter the
postage (which is the task of the local PSD of Pierce)” (App. Br. 10).
The difficulty with this argument is that the only issue is whether the
cited prior art would lead one to “configure[e] [a] local postage evidencing
device to communicate with a plurality of vendors providing access to a
plurality of remote postage accounts”. The Examiner found that Pierce
“teaches a method of accessing a remote postage account from a local
postage evidencing device” (Answer 3) and this finding has not been
disputed. Thus the question comes down to whether one of ordinary skill in
the art would be led to take Pierce’s local postage evidencing device and
configure it to communicate with “a plurality of vendors providing access to
a plurality of remote postage accounts” (claim 14). That the Appellant
acknowledges that Willoughby teaches “vendors” further supports the view
(see supra) that it is generally known that vendors per se are among the
entities known to have postage accounts. Given that knowledge, it would
have been obvious to repeat Pierce’s configuring of the local postage
evidencing device with a single vendor such that it communicates with
another vendor. In that respect, the combination of Pierce and Willoughby
would lead one of ordinary skill in the art to the claimed invention.
In arguing that “the Office has failed to provide a plausible reason for
why a person of ordinary skill would have been motivated to combine Pierce
and Willoughby,” the Appellant challenges the logical reasoning
Appeal 2010-004077
Application 10/677,829

8
underpinning the conclusion of obviousness stated in the Final Rejection:
“‘it would have been prima facie obvious to one having ordinary skill in the
art at the time of the invention to incorporate the above teachings of
Willoughby, so that a user can select another vendor if a particular remote
postage provider suffers downtime.’ Final Action at 4.” App. Br. 11.
We are not persuaded by this argument because the Examiner
furthermore also stated that “this [selecting another vendor] is merely a
combination of old elements in which each would serve the same function as
it did separately, and the addition of this feature to the method disclosed by
Pierce could be implemented through routine engineering producing
predictable results.” (Final Rejection 4 and Answer 4). For the reasons
discussed above, we find the record supports finding that it would have been
obvious to take Pierce’s local postage evidencing device and repeat the
configuration with a single vendor such that it communicates with another
vendor and thereby meet the claim limitation of “configuring the local
postage evidencing device to communicate with a plurality of vendors”
(claim 14).
The rejection of claim 14 is sustained.

Dependent claims 15-18, 20, 21, and 24-27
The Appellant argues only claim 25. App. Br. 12. According to the
Appellant, claim 25 calls for “Internet-based postage service” and that is not
met by Pierce’s disclosure of “a PSD attached to a host computer can be
refilled through a network connection to a data center. App. Br. 12. This is
not a persuasive argument. Given Pierce’s disclosure of refilling over a
“network” and that the Internet is a known network, it would have been
Appeal 2010-004077
Application 10/677,829

9
obvious to use an “Internet-based postage service” as the means for
achieving a refill over a network.
The rejection of claims 15-18, 20, 21, and 24-27 is sustained
The rejection of claim 19 under 35 U.S.C. §103(a) as being unpatentable
over Pierce, Willoughby, and Lee.
The Appellant argued against the rejection of claim 19 for the same
reasons used to argue against the rejection of claim 14. App. Br. 13.
Accordingly, because we found them unpersuasive as to that rejection, we
find them equally unpersuasive as to error in the rejection of claim 19.
The rejection of claims 22 and 23 under 35 U.S.C. §103(a) as being
unpatentable over Pierce, Willoughby, and Eddy.
The Appellant argued against the rejection of claims 22 and 23 for the
same reasons used to argue against the rejection of claim 14. App. Br. 13.
Accordingly, because we found them unpersuasive as to that rejection, we
find them equally unpersuasive as to error in the rejection of claim 19.

DECISION
The decision of the Examiner to reject claims 14-27 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

erc