Ex parte Pileggi

Board of Patent Appeals and Interferences

Mar 29, 1999

08374039 (B.P.A.I. Mar. 29, 1999)

Application for patent filed January 18, 1995. 1
THIS OPINION WAS NOT W RITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DOMINIC J. PILEGGI
____________
Appeal No. 98-1528
Application No. 08/374,0391
____________
ON BRIEF
____________
Before MEISTER, ABRAMS, and FRANKFORT, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-6, 9-12 and 22-26, which constitute
all of the claims remaining of record in the application.
The appellant's invention is directed to a method of
providing acknowledgment from a recipient of an occupant’s
Appeal No. 98-1528 Page 2
Application No. 08/374,039
change of address (claims 1-6 and 9-12), and to a method of
reassuring a child that a change of residential address has
been received by an ethereal being (claims 22-26). Claims 1-6
and 9-12 of the claims on appeal have been reproduced in an
appendix to the Brief, and claims 22-26 in an appendix to the
Answer.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Scragg 867,613 Oct. 8, 1907
“Dear Santa; Did you get my e-mail?: Canada Post gets high-
tech,” The Vancouver Sun, Final Edition (December 1, 1994),
News, page B1. (The Vancouver Sun)
“The Men Dine, Women Shop,” Sacramento Bee, Metro Final
(November 27, 1994), Travel, page TR1. (Sacramento Bee)
“Stores trot out sleigh rides, Santa Dollars,” The Dallas
Morning News, Home Final Edition (December 16, 1992), Food, At
the Supermarket, page 5F. (The Dallas Morning News)
Official Notice that electronic mail or e-mail is a well known
method of providing acknowledgment from a recipient of an
occupant’s address when using the return receipt option
(Answer, page 5). (Official Notice)
Appeal No. 98-1528 Page 3
Application No. 08/374,039
Both of these rejections are new, appearing for the2
first time in the Answer. In view of the fact that the two
rejections set forth in Paper No. 5 (the final rejection) were
not repeated in the Answer, we shall treat them as having been
withdrawn by the examiner.
THE REJECTIONS
The following rejections stand under 35 U.S.C. § 103:2
(1) Claims 1-6, 9-12 and 22-26 on the basis of Scragg in view
of Sacramento Bee or The Dallas Morning News or The
Vancouver Sun.
(2) Claims 1-6, 9-12 and 22-26 on the basis of Official Notice
in view of The Vancouver Sun.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
OPINION
We have evaluated the two rejections on the basis that the
examiner bears the initial burden of presenting a prima facie
case of obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993)), which is established when
the teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
Appeal No. 98-1528 Page 4
Application No. 08/374,039
in the art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993)).
The first standing rejection of independent claims 1 and
22 is that they are unpatentable over the combined teachings of
Scragg and Sacramento Bee, The Dallas Morning News, or The
Vancouver Sun. In our view, none of the three combinations
advanced by the examiner establish a prima facie case of
obviousness with regard to the subject matter recited in these
two claims, and we therefore will not sustain this rejection.
We begin our analysis by noting that the problem to which
the appellant has directed his inventive energies is, as
specifically stated in the opening lines of claim 22,
reassuring a child that a change of residential address has
been received by an ethereal being, as an aid to assisting the
child in coping with residential relocation. Claim 1 sets
forth the invention in more broad language, in that the
preamble does not limit it to a child. The problem of
acknowledgment by an ethereal being of an occupant’s change of
address is not mentioned in any of the applied references. In
fact, none of the references are at all concerned with the
Appeal No. 98-1528 Page 5
Application No. 08/374,039
acknowledgment of a change of address. In Scragg, the
recipient of sent materials acknowledges receipt by returning
to the sender a self-addressed post card that the sender has
included with the materials. However, whether this is a new
address is of no interest or consequence insofar as Scragg is
concerned. Scragg also provides no teaching of involving an
ethereal being. In the case of the three newspaper references,
the sender’s letter to an ethereal being at the recipient’s
address provokes the recipient to respond on behalf of the
ethereal being to the address indicated in the sender’s letter.
While the response is, in effect, an acknowledgment that the
sender’s letter was received, it is not an acknowledgment that
this is a change in address. Therefore, it is our view that
the combined teachings of the references, in either of the two
rejections, would not have suggested to one of ordinary skill
in the art “[a] method for providing acknowledgment from a
recipient of an occupant’s change of address” wherein the
recipient is an ethereal being, which is the invention recited
in independent claim 1, or “[a] method of reassuring a child
that a change of residential address has been received by an
ethereal being,” as is the case in independent claim 22.
Appeal No. 98-1528 Page 6
Application No. 08/374,039
Nor do any of the references disclose or teach the first
step recited in each of the two independent claims, which is
“providing a . . . document” to be sent to the ethereal being
that identifies the ethereal being as the recipient and is
capable of accommodating change of address indicia. Scragg is
the only reference in which a document is “provided” to the
sender, and while it is capable of accommodating change of
address indicia, it does not identify an ethereal being as the
intended recipient. As for the other references, while they
teach that the sender should create a communication in which
the intended recipient is an ethereal being, they do not teach
providing such a document to the sender. These same comments
apply to the third step in each of the independent claims,
which requires “providing” a second document that is returned
by the recipient.
In the second rejection of the claims, the examiner begins
by proposing that since it is known to configure an e-mail
system to acknowledge to a sender receipt by the recipient of a
communication (Official Notice), it would have been obvious to
one of ordinary skill in the art to send the communication to
an ethereal being at an e-mail address, in view of The
Appeal No. 98-1528 Page 7
Application No. 08/374,039
Vancouver Sun. Be that as it may, our problem with the
rejection resides in the next portion of the examiner’s
position, which is that it further would have been obvious to
include change of address indicia in the sender’s communication
to notify the recipient of the sender’s relocation. No
evidentiary basis is provided for this conclusion.
The rationale we expressed above with regard to the first
rejection also applies here. Neither of the references is at
all concerned with acknowledging a change in address, which is
the focus of the appellant’s claims, and while their combined
teachings might give rise to a method of communicating with an
ethereal being, they do not render obvious a method for
providing acknowledgment of a change of address from any
intended recipient, much less an ethereal being. Moreover,
neither teaches “providing” the two documents required by the
claims.
SUMMARY
Neither rejection is sustained.
The decision of the examiner is reversed.
Appeal No. 98-1528 Page 8
Application No. 08/374,039
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
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