Ex Parte Polis et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201709776956 (P.T.A.B. Feb. 28, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 09/776,956 02/05/2001 Jared Schutz Polis 00040-0111 2313 98359 7590 TechLaw LLP 11622 El C amino Real Suite 100 San Diego, CA 92130 EXAMINER PHAM, THIERRY L ART UNIT PAPER NUMBER 2673 NOTIFICATION DATE DELIVERY MODE 03/02/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): Peter @ T echLawLLP.com GPADocketing @ TechLawLLP.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JARED SCHUTZ POLIS and DAVID MCCARTER Appeal 2014-0025311 Application 09/776,956 Technology Center 2600 Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and ADAM J. PYONIN, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—20 and 22—61. Claim 21 is cancelled. (App. Br. 25.) We have jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b). We affirm-in-part and enter a NEW GROUND OF REJECTION within the provisions of 37 C.F.R. § 41.50(b) (2012). 1 Appellants identify Provide Commerce, Inc., as the real party in interest. (App. Br. 1-2.) Appeal 2014-002531 Application 09/776,956 THE INVENTION Appellants’ disclosed and claimed invention is directed to generating shipping labels and associated documents. (Abstract.) Claims 1 and 18, reproduced below, are illustrative of the claimed subject matter: 1. A process including: receiving, electrical signals from an ordering center computer system, the electrical signals formatting a singular sheet to comprise a waybill area and at least one of a packing list or product code area and a customizable component area, and printing, from the electrical signals received from the ordering center, a packing list or product code on the packing list or product code area, and a customizable component on the customizable component area, the customizable component comprising a customer-specified personalized message, and on the waybill area, a carrier's waybill and a ship date and a customer-specified delivery date, wherein the printing includes printing on the singular sheet, such that the carrier's waybill is configured for waybill shipping from a distribution center by the carrier. 18. A process including: printing a sheet comprising parts that include a packing list or product code, a customizable component, and a carrier's waybill configured for waybill shipping from a distribution center by the carrier; packing at the distribution center, in response to information on the sheet, including separating the parts prior to shipment of a package such that the waybill part is located outside the package during the shipment, but no other of said parts is located outside the package during the shipment. 2 Appeal 2014-002531 Application 09/776,956 REJECTIONS The Examiner rejected claims 18—20 and 46 under 35 U.S.C. § 103(a) as being unpatentable over Bain et al. (US 5,315,508, issued May 24, 1994) and Wright et al. (US 4,802,218, issued Jan. 31, 1989). (Final Act. 2-4.) The Examiner rejected claims 1—17, 22-45, and 47—61 under 35 U.S.C. § 103(a) as being unpatentable over Bain, Wright, and Kara (US 6,208,980 Bl, issued Mar. 27, 2001). (Final Act. 4—8.) ISSUES ON APPEAL Appellants’ arguments present the following dispositive issues:2 Issue One: Whether the Examiner erred in finding the combination of Bain and Wright teaches or suggests the limitations of independent claims 18 and 46. (App. Br. 15—20.) Issue Two: Whether the Examiner erred in finding the combination of Bain, Wright, and Kara teaches or suggests the limitations of independent claims 1, 22, 25, 30, 45, 47, 48, and 54—61. (App. Br. 21—22.) ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments that the Examiner errs. As to the obviousness rejection of claims 18—20 and 46, we agree with Appellants. As to the obviousness rejection of claims 1—17, 22-45, and 47—61, we disagree with Appellants’ arguments, 2 Rather than reiterate the arguments of Appellants and the findings of the Examiner, we refer to the Appeal Brief (filed July 26, 2013); the Reply Brief (filed Dec. 16, 2013); the Final Office Action (mailed June 25, 2012); and the Examiner’s Answer (mailed Oct. 16, 2013) for the respective details. 3 Appeal 2014-002531 Application 09/776,956 and we adopt as our own (1) the pertinent findings and reasons set forth by the Examiner in the Action from which this appeal is taken (Final Act. 21— 22) and (2) the corresponding reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 11—14). We concur with the applicable conclusions reached by the Examiner and emphasize the following. Issue One In finding the combination of Bain and Wright teaches or suggests the limitations of independent claims 18 and 46, the Examiner relies on the disclosure in Bain of a purchase order processing system which generates shipping labels and packing lists, printed on “a web of record members such as tags, labels or the like that are affixable to a container such as a box or a skid to mark the container.” (Final Act. 2—3; Bain Abstract, Figs. 2, 3, col. 1,11. 6—17, col. 8,11. 12—34.) The Examiner also relies on the disclosure in Wright of a transaction system which prints a waybill. (Final Act. 3; Wright Fig. 9, col. 13,11.51-54.) Appellants argue the Examiner errs in relying on Bain as teaching or suggesting locating only the waybill outside the package during shipment — to the contrary, argue Appellants, Bain instead specifies that the packing list is attached to the outside of the package. (App. Br. 16, 18.) We are not persuaded that Bain is so constrained. The paragraph of Bain that discussed affixing labels to packages refers to shipping labels and packing lists, and therefore Bain at least teaches or suggests locating no other parts of the printed sheet than the waybill — i.e., the shipping label — outside the package. (Bain col. 8,11. 12—34.) 4 Appeal 2014-002531 Application 09/776,956 Appellants further argue: Neither Bain nor Wright teach or suggest a sheet comprising parts that include a packing list or product code, a customizable component, and a carrier's waybill. Further, neither Bain nor Wright teach or suggest separating the parts . . . such that the waybill part is located outside the package . . ., but no other of said parts is located outside the package during shipment. (App. Br. 20.) The Examiner responds that the disclosure in Bain that the labels are printed on a “web of record members” teaches or suggests printing the shipping and packing list labels on a single sheet. (Ans. 10.) The Examiner however does not point to any disclosure in Bain or Wright that would teach or suggest printing different types of labels on the same sheet, regardless of the use of a “web of record members.” As discussed below, combining Kara with Bain and Wright, as found by the Examiner in the rejection of claim 1, does teach or suggest the limitations at issue. However, the Examiner does not rely on Kara in rejecting claims 18 and 46. Accordingly, we are persuaded by Appellants’ contention that the Examiner does not provide prima facie support for the rejections of these claims. “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Therefore, on the record before us, we are constrained to find the Examiner errs in rejecting claims 18 and 46. 5 Appeal 2014-002531 Application 09/776,956 Issue Two In finding Bain, Wright, and Kara teach or suggest the limitations of independent claims 1, 22, 25, 30, 45, 47, 48, and 54—61, the Examiner relies on the above discussed disclosures of Bain and Wright, and also relies on the disclosure in Kara of printing different types of labels, including a personal message label, on the same sheet, and providing for the ability to separate the different portions, displaying only one portion on the outside of a container. (Final Act. 5; Ans. 12—14; Kara Figs. 16A, 16B, 21, col. 3,11. 15— 21, col. 7,1. 50-col. 8,1. 12, col. 20,11. 22-34.) Appellants repeat the argument that Bain discloses printing the labels separately. (App. Br. 21.) This argument is unpersuasive, given that the Examiner relies on Kara to teach or suggest printing the different labels on a single sheet. (Ans. 12—13.) Non-obviousness cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee’s invention to a person having ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Claims 22, 25, 47, 48, 54, 56, 57, 60, and 61 additionally recite limitations similar to the claim 18 limitation of “separating the parts prior to shipment of a package such that the waybill part is located outside the package during the shipment, but no other of said parts is located outside the package during the shipment.” With respect to these claims, Appellants repeat the argument that Bain fails to teach or suggest this limitation. (App. 6 Appeal 2014-002531 Application 09/776,956 Br. 22.) Also with respect to this limitation. Appellants argue the Examiner’s description of Kara is incorrect — whereas the Examiner described Figure 21 of Kara as providing for a top outbound address portion of a sheet for inside a container, and a bottom return address portion for outside, Appellants maintain it would “make[] no sense” to place the return address on the outside. (Rep. Br. 4.) Nonetheless, we are not persuaded the Examiner errs in finding the combination of Bain, Wright, and Kara teach or suggest this limitation. As discussed above, Bain, Wright, and Kara teach the required “waybill area”: the shipping labels of Bain and the waybill of Wright, the “packing list” (in Bain), and the “customizable component area” (e.g., the birthday greeting of Kara). (Bain Figs. 2, 3; Wright Fig. 9; Kara Fig. 16A.) In addition, as discussed above, Bain teaches or suggests affixing the shipping label to the outside of a container. Finally, Kara discloses printing different types of labels on the same sheet, and separating the different portions for selective display on the outside of a container. (Kara Fig. 21, col. 7,1. 50-col. 8,1. 12.) Accordingly, we sustain the rejections of claims 1, 22, 25, 30, 45, 47, 48, and 54—61. CONCFUSIONS For the reasons stated above, we do not sustain the rejections of independent claims 18 and 46 over Bain and Wright. We also do not sustain the rejections of dependent claims 19 and 20 over Bain and Wright, which claims depend from claim 18. 7 Appeal 2014-002531 Application 09/776,956 Also for the reasons stated above, we sustain the rejections of independent claims 1, 22, 25, 30, 45, 47, 48, and 54—61 as obvious over Bain, Wright, and Kara. We also sustain the rejections of dependent claims 2—17, 23, 24, 26—29, 31—44, and 49—53 as obvious over Bain, Wright, and Kara, which rejections are not argued separately with particularity. (App. Br. 22.) NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) Claims 18—20 and 46 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bain, Wright, and Kara for the same reasons as discussed above for claims 1—17, 22-45, and 47—61. We incorporate and adopt as our own the Examiner’s findings and reasoning with respect to the rejection of claim 1, in our rejection of claims 18—20 and 46. DECISION We affirm the Examiner’s rejection of claims 1—17, 22-45, and 47— 61. We reverse the Examiner’s rejection of claims 18—20 and 46. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). This decision contains a new ground of rejection of claims 18—20 and 46 pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground 8 Appeal 2014-002531 Application 09/776,956 of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED-IN-PART 37 C.F.R. §41.500?) 9 Copy with citationCopy as parenthetical citation