Ex Parte Pagel

Board of Patent Appeals and Interferences

Sep 17, 2009

09469561 (B.P.A.I. Sep. 17, 2009)

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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Ex parte MARTIN PAGEL 8
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Appeal 2009-003102 11
Application 09/469,561 12
Technology Center 3600 13
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Decided: September 18, 2009 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
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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 1 to 4, 6 to 14, 16 to 19, 21 to 27, 30 to 34 and 37 to 51. We have 3
jurisdiction under 35 U.S.C. § 6(b) (2002). Appellant appeared for oral 4
hearing on August 13, 2009. 5
Appellant invented a postal printer driver method (Spec. 1). 6
Claim 1 under appeal reads as follows: 7
1. A method of printing a data stream being 8
presented to a printer, said data stream adapted to 9
enable said printer to print on one or more sheets 10
of paper information in accordance with said data 11
stream, said data stream containing data bits useful 12
for controlling functions additional to said printing 13
information in accordance with said data stream, 14
said method comprising: 15
abstracting at least a portion of said data bits 16
from said data stream with a postal printer driver, 17
wherein said data stream is provided by an 18
application which has not been adapted to control 19
said additional functions and said abstracting 20
includes examining said data stream for data 21
patterns native to output of said application; 22
using at least some of said abstracted data 23
bits for controlling at least one of said additional 24
functions, wherein said at least one of said 25
additional functions comprises printing of a 26
postage indicia; and 27
creating, from said abstracted data bits, a 28
separate data stream for controlling the printing of 29
said postage indicia. 30
The prior art relied upon by the Examiner in rejecting the claims on 31
appeal is: 32
Harman US 5,684,706 Nov. 4, 1997 33
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The Examiner rejected claims 1 to 4, 6 to 14, 16 to 19, 21 to 27, 1
30 to 34 and 37 to 51 under 35 U.S.C. § 103(a) as being unpatentable over 2
Harman. 3
4
ISSUES 5
Has Appellant shown that the Examiner erred in rejecting claim 1 6
because Harman does not discloses a data stream provided by an application 7
which has not been adapted to control additional functions? 8
Has Appellant shown that the Examiner erred in rejecting claim 17 9
because Harman does not disclose abstracting which includes examining a 10
data stream for pre-established data patterns which include the beginning 11
and ending of postage data? 12
Has the Appellant shown that the Examiner erred in rejecting claim 23 13
because Harman does not disclose reviewing said data stream to create 14
therefrom a separate data stream for controlling additional functions with 15
respect to printing of documents? 16
17
FINDINGS OF FACT 18
Harman discloses a system having multiple user input stations and 19
multiple mail preparing apparatus for preparing and franking mail (col. 1, ll. 20
1 to 4). A word processing application 30 provides data to a driver 37 (Fig. 21
3). The word processing application 30 executes a conventional merge 22
application to merge variable data 32 which includes name, address, and 23
other variables to be printed on the documents with a previously input form 24
36 to create document data (col. 4, ll. 39 to 42). The driver 37 creates job 25
data (col. 4, ll. 44 to 45; Fig. 3). The job data includes a job header 12, mail 26
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piece header 18 and document data 20. The job header 12 includes mail 1
piece data defining default attributes for each mail piece in the job, including 2
the number of document sheets to be accumulated for each mail piece, 3
whether or not a pre-printed insert is to be added to the document sheets, the 4
manner in which the accumulated sheets are to be folded, whether or not a 5
business return envelope is to be inserted and whether or not the mail piece 6
is to be moistened and sealed (col. 3, ll. 57 to 65). The job header 12 may 7
also include whether or not an envelope data is present, whether mail pieces 8
include a uniform number of document sheets and whether or not inserts 9
vary among the mail pieces (col. 3, l. 66 to col. 4, l. 3). Mail piece header 18 10
includes the same (or a subset of the) mail piece data elements included in 11
the job header 12 regarding the specific mail piece (col. 4, ll. 14 to 17). 12
In one embodiment, a mail center controller 4 appends postage value 13
for each mail piece in the appropriate field in header 18 (col. 5, ll. 21 to 23). 14
In another embodiment, a controller 100 accesses a per item weight data 15
base 117 and postal rate data base 119 to determine the weight of the mail 16
piece and determine the appropriate postage value for the mail piece (col. 5, 17
ll. 57 to 60). The postage costs are then sent to mail center controller 4 for 18
allocation of the costs to user accounts (col. 5, ll. 63 to 65). 19
Job data is sent to parser 112 from mail center controller 4 (col. 7, ll. 20
44 to 45; Fig. 5). Parser 112 outputs document data from field 20 to the 21
page description language interpreter 114, the envelope data from field 22 to 22
envelope data buffer 118, default attribute data from job header 12 and mail 23
piece data attribute data from mail piece header 18 to mail piece attribute 24
generator 116 (col. 7, ll. 47 to 55). 25
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PRINCIPLES OF LAW 1
An invention is not patentable under 35 U.S.C. § 103 if it is obvious. 2
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007). The facts 3
underlying an obviousness inquiry include: Under § 103, the scope and 4
content of the prior art are to be determined; differences between the prior 5
art and the claims at issue are to be ascertained; and the level of ordinary 6
skill in the pertinent art resolved. Against this background the obviousness 7
or nonobviousness of the subject matter is determined. Such secondary 8
considerations as commercial success, long felt but unsolved needs, failure 9
of others, etc., might be utilized to give light to the circumstances 10
surrounding the origin of the subject matter sought to be patented. Graham 11
v. John Deere Co., 383 U.S. 1, 17-18 (1966). In addressing the findings of 12
fact, “[t]he combination of familiar elements according to known methods is 13
likely to be obvious when it does no more than yield predictable results.” 14
KSR at 416. As explained in KSR: 15
If a person of ordinary skill can implement a 16
predictable variation, § 103 likely bars its 17
patentability. For the same reason, if a technique 18
has been used to improve one device, and a person 19
of ordinary skill in the art would recognize that it 20
would improve similar devices in the same way, 21
using the technique is obvious unless its actual 22
application is beyond his or her skill. Sakraida 23
and Anderson's-Black Rock are illustrative - a court 24
must ask whether the improvement is more than 25
the predictable use of prior art elements according 26
to their established functions. 27
KSR at 417. 28
A prior art reference is analyzed from the vantage point of all that it 29
teaches one of ordinary skill in the art. In re Lemelson, 397 F.2d 1006, 1009 30
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(CCPA 1968) (“The use of patents as references is not limited to what the 1
patentees describe as their own inventions or to the problems with which 2
they are concerned. They are part of the literature of the art, relevant for all 3
they contain.”). Furthermore, “[a] person of ordinary skill is also a person of 4
ordinary creativity, not an automaton.” KSR at 421. The obviousness 5
analysis need not seek out precise teachings directed to the specific subject 6
matter of the challenged claim, for a court can take account of the inferences 7
and creative steps that a person of ordinary skill in the art would employ. Id. 8
at 418. 9
On appeal, Applicants bear the burden of showing that the Examiner 10
has not established a legally sufficient basis for combining the teachings of 11
the prior art. Applicants may sustain their burden by showing that where the 12
Examiner relies on a combination of disclosures, the Examiner failed to 13
provide sufficient evidence to show that one having ordinary skill in the art 14
would have done what Applicants did. United States v. Adams, 383 U.S. 39, 15
52 (1966). 16
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ANALYSIS 18
We agree with the Appellant that the Examiner erred in rejecting 19
claim 1 because Harman does not disclose a data stream provided by an 20
application which has not been adapted to control additional functions. In 21
the Examiner’s view, the driver 37 combined with the word processing 22
application 30 can be considered the application recited in claim 1 and the 23
parser 112 is the postal driver that does the abstracting (Ans. 24). However, 24
even if the Examiner is correct that the driver 37 and word processing 25
application 30 together can be considered the application recited in claim 1, 26
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this combined application is adapted to control other functions. This is so 1
because the job data outputted from the application (30/37) includes data to 2
control various other additional functions i.e., the number of document 3
sheets to be accumulated for each mail piece, whether or not a pre-printed 4
insert is to be added to the document sheets, the manner in which the 5
accumulated sheets are to be folded, whether or not a business return 6
envelope is to be inserted, whether or not the mail piece is to be moistened 7
and sealed, whether or not an envelope data is present, whether mail pieces 8
include a uniform number of document sheets, and whether or not inserts 9
vary among the mail pieces (col. 3, l. 66 to col. 4, l. 3). 10
Therefore, we will not sustain the Examiner’s rejection as it is 11
directed to claim 1 and claims 2, 3, 4, 6 to 14, 16, 18, 19, 21, 22, 47 and 48 12
dependent thereon. We will likewise not sustain the rejection as it is 13
directed to claim 33 and claims 34, 37 to 40, 42 to 46 and 50 dependent 14
thereon because claim 33 also requires an application which has not been 15
adapted to control additional printing operations. 16
We agree with the Appellant that the Examiner erred in rejecting 17
claim 17 because Harman does not disclose abstracting which includes 18
examining a data stream for pre-established data patterns which include the 19
beginning and ending of postage data. The Examiner relies on the data 20
pattern depicted in Figure 2 for teaching these features. The Examiner 21
reasons that a pre-established data pattern in the job data stream is shown 22
and that job header 12 includes data relating to the postage indicia and is 23
separated from other data in the data stream by unique separators (Ans. 25). 24
Although the Examiner is correct that job data 12 includes data relating to 25
postage indicia and that job data 10 is separated by unique separators 26-1, 26
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26-2 . . . , the Examiner has not established that the postage data in job data 1
12 is separated by unique separators. In addition, the Examiner has not 2
established that the job data 10 is examined by the parser 112, which the 3
Examiner finds is the printer driver, for pre-established data patterns or that 4
these patterns include the beginning and ending of postage indicia data. 5
Parser 112 outputs data from job header 12 and mail piece data attribute data 6
from mail piece header 18 to mail piece attribute generator 116 (col. 7, ll. 47 7
to 55). There is no indication in Harman that any of the data is examined 8
and certainly no disclosure that the data is examined for pre-established 9
patterns that include a beginning and ending of postage indicia data. 10
Therefore, we will not sustain the Examiner’s rejection of claim 17 11
and claim 49 dependent thereon. We will likewise not sustain the rejection 12
of claim 41 and claim 51 dependent thereon because claim 41 also recites a 13
control program for examining a data stream for pre-established patterns 14
which includes the beginning and ending of postage indicia data. 15
We agree with the Appellant that the Examiner erred in rejecting 16
claim 23 because we agree with the Appellant that Harman does not disclose 17
reviewing said data stream to create therefrom a separate data stream for 18
controlling additional functions with respect to printing of documents. The 19
Examiner is of the view that a separate data stream is created when data 20
from postal rate data base 119 is added to the data stream. Even if the 21
Examiner is correct Harman does not disclose that the data stream is 22
reviewed and that the separate data stream for controlling additional 23
functions is created from the data steam. 24
Therefore, we will not sustain the rejection of claim 23 and claims 24 25
to 27 and 30 to 32 dependent thereon. 26
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CONCLUSION OF LAW 1
On the record before us, Appellant has shown that the Examiner erred 2
in rejecting the claims on appeal. 3
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DECISION 5
The decision of the Examiner is reversed. 6
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REVERSED 8
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hh 13
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FULBRIGHT & JAWORSKI, L.L.P 15
2200 ROSS AVENUE 16
SUITE 2800 17
DALLAS, TX 75201-2784 18
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