Ex Parte Quine

Patent Trial and Appeal Board

Apr 9, 2014

11955420 (P.T.A.B. Apr. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DOUGLAS B. QUINE1
__________

Appeal 2011-010086
Application 11/955,420
Technology Center 2100
__________

Before DEMETRA J. MILLS, MELANIE L. McCOLLUM, and
ULRIKE W. JENKS, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge McCOLLUM.

Opinion Concurring filed by Administrative Patent Judge MILLS.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
and system for preparing a mailing. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellant identifies the real party in interest as Pitney Bowes Inc. (App.
Br. 2.)
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STATEMENT OF THE CASE
The Specification discloses:
Mass mailers must balance between tradeoffs associated with
different presorted mailing classes such as first class and
standard class. For example, first class mail provides fast
delivery and free forwarding if a mail recipient has moved
while standard class mail does not provide automatic
forwarding of the mail piece but does provide a lower postage
cost than first class. This balancing act is further complicated
by several factors including mail recipients that move
frequently and mandates by the USPS that the mailers shall
obtain address updates within a specific timeframe in order to
qualify for the cost savings of presorted mail.
(Spec., ¶ [0002].)
Claims 1-7 and 9-19 are pending and on appeal (App. Br. 2 & 4).
Claim 1 is illustrative and reads as follows:
1. A method for a mailer to prepare a mailing for sending to
recipients on a mailing list, the method comprising:
determining, by a processing device, a class of mail that will be
utilized to send the mailing for each of the recipients on the mailing list, the
class of mail being determined based on first stored data; and
determining, by the processing device, whether to request an address
correction service for the mailing to each of the recipients based on (a) a
planned date for the mailing and (b) second stored data including at least one
pattern associated with the mailer or the recipient on the mailing list.
Claim 13, the only other independent claim on appeal, is directed to a system
and recites the determining steps of claim 1.
Claims 1-7 and 9-19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Orbke et al. (US 2009/0057207 A1, Mar. 5, 2009) in view of
Elliot et al. (US 7,301,115 B2, Nov. 27, 2007) (Ans. 3).
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The Examiner relies on Orbke for teaching aspects of the claimed
method (Ans. 3-4). However, the Examiner finds that “Orbke does not
specifically teach ‘determining, by a processing device, a class of mail that
will be utilized to send the mailing for each of the recipients on the mailing
list, the class of mail being determined based on first stored data . . .’” (id. at
4). Instead, the Examiner relies on Elliot for teaching this (id.). The
Examiner concludes:
It would have been obvious for one of ordinary skill in the art to
combine Orbke’s method of processing a mailing including one
or more mail pieces to capture address data and provide address
correction if needed with Elliot’s ability to determine a class of
mail that is applied to a mailing based on analyzing a mailing.
This gives the user the advantage of being able to assign and
change a mail-class applied to a mailing. The motivation for
doing so would be [to] provide savings to a user utilizing a mail
processing system.
(Id. at 5.)
FINDINGS OF FACT
1. Orbke discloses “processes for address correction feedback . . .
[that] include postal sorters 24 or Computer Forwarding Systems (CFS) 27
to process the mail and return move update data (e.g., revised address data
for an addressee from a previous address to a new address . . . ) to a national
customer support center (NCSC) 30” (Orbke, ¶ [0026]).
2. In particular, Orbke discloses:
An address change service data record may be sent from the
national customer support center 30 to a data center
processor 33. Data center processor 33 may be
communicatively coupled to the customer address database 18,
and may accordingly update address data for one or more
addressees using the address change service [ACS] data record
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. . . received from the nation[al] customer support center 30.
Additionally, data center processor 33 may be configured to
generate a move file 19 from the received address change
service data record. The move file 19 may be, for example, [a]
collection of the corrected addresses received from NCSC 30
that were not updated in the customer address database 18 due
to lack of permission from the customer to change the
customer’s permanent address record.
(Id.)
3. Orbke also discloses:
The NCSC 30 is communicatively coupled to the move update
processing systems, such as sorters 24, CFS 27, or other
systems. . . . The NCSC . . . will compile the move update data
for each Mailer ID over a predetermined period of time and
make this data available to the participant . . . . The data
returned to the participant may include the Mailer ID, unique
identifier . . . , name for addressee, old address, new address,
move type—family/individual, or move effective date—month
and year, or any combination thereof.
(Id. at ¶ [0043] (emphasis added).)
4. In addition, Orbke discloses:
The move file 19 is transferred via communication link 35 to
the data files 21 before the sorter (e.g., sorter 10 shown in
FIG. 1) processes this mailing. The move file 19, which
contains move data not incorporated into the customer address
database 18, may be used by the imaging system 13 to replace
the old address from the customer address database 18 with the
new address 66 obtained from the ACS data record 64 (as
shown in FIG. 5). The new address will be used for encoding
in the IMB [Intelligent Mailpiece Barcode] before it is printed
on the mail piece (e.g., by printer 14 in FIG. 1).
(Id. at ¶ [0044].)
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5. Orbke also discloses:
FIG. 6 illustrates an exemplary process for job setup before
processing one or more mail pieces for a mailing. An ACS job
may not be run without the client, service provider, or third
party address maintenance service obtaining a registered Mailer
ID from the postal authority (i.e., USPS) at block 70. With the
Mailer ID available . . . , the mail sorter setup may begin at
block 72. The job parameters for running the mail process are
entered, for example, into mail sorter processor 12 illustrated in
FIG. 1. These parameters may define the mail type (Standard
or First Class, etc.), client data, sort scheme, any combination
thereof, or any other parameters to prepare and sort the mail in
accordance with predefined USPS requirements.
(Id. at ¶ [0045].)
6. Elliot discloses “a method of properly identifying the correct
parties to whom charges for business reply mail services should be assessed”
(Elliot, col. 6, ll. 8-10).
7. In particular, Elliot discloses “mail pieces 20A, 20B and 20C[,
each of which] is identifiable as a business reply mail piece 20 and further
exhibits on its front face 22 various business-reply mail-signatures including
. . . a business reply license plate 40,” the “business reply license plate 40
[being] a field of information which, when correctly composed, at least in
the United States, typically includes the addressee’s permit/license
number 42, an indication as to the license-issuing postal facility 44, a mail-
class indication 46 and the phrase ‘BUSINESS REPLY MAIL’” (id. at
col. 13, ll. 13-26 (emphasis added)).
8. Elliot also discloses:
[T]he maintenance of a license database 160 containing data
accessible to interpretation algorithms 170 and automated
sorting machinery 240 and the incoming mail center 200
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facilitates at least one of (i) the accurate sortation of business
reply mail pieces 20 that would otherwise be mis-sorted, or at
least not automatically sorted in accordance with the highest
available level of sortation refinement, and (ii) automated
charge-assessment associated with mail pieces 20 passing
through mail streams for which charge-assessment is currently
handled manually.
(Id. at col. 14, ll. 35-44 (emphasis added).)
9. In addition, Elliot discloses:
Referring to mail piece 20A, . . . the business reply license plate
indicates “PERMIT NO. 30” issued in El Paso, Tex. for first
class mail. At some point during the processing of this mail
piece 20A by the automated sorting machinery 240, [a] unique
identification mark 60 is scanned to “call up” from memory 120
the resolved data set 70 associated with the computer memory
record 60' of the unique identification mark 60 exhibited on
mail piece 20A. The data contained in the resolved data set 70
is then compared to data listed in the reply license data base 160
in accordance with the sortation protocol 180. . . . [A] unique
match indicates that the corresponding account identification is
“1A0001” and that dedicated collection point 250A is
associated with the account. With the account identification
positively resolved, a signal is communicated to the automated
postal charge assessment apparatus 280 shown in FIG. 3 and an
appropriate charge is assessed to account “1A001.”
(Id. at col. 16, l. 48, to col. 17, l. 3.)
PRINCIPLES OF LAW
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). Obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Instead, it
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proper to “take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. “A person of ordinary skill is
also a person of ordinary creativity, not an automaton.” Id. at 421.
ANALYSIS
With regard to the second determining step of claim 1, we understand
that the Examiner is relying on a communication within Orbke’s mailer-side
processing device to correct an address based on information provided by
the postal service’s ACS system to be a request for address correction
service (Ans. 13-14; see also Findings of Facts (FF) 2 & 4). In addition, the
Examiner states:
Address change services information is utilized to determine
whether an address correction service is to be applied to a mail
piece, based on information such as dates, names, old and new
addresses, and mailer ID, which are interpreted as parameters
that can be applied when determining whether to apply an
address correction service, a pattern that can be utilized in the
determination.
(Ans. 13 (emphasis added); see also FF 3.)
We conclude that Appellant has not adequately explained why the
Examiner’s position is in error. In this regard, we note that it would have
been obvious to correct the address when the planned date for a mailing is
after the effective move date provided by the ACS system (a pattern of
correction) and that it would have been obvious to not correct the address
when the planned date for the mailing is sufficiently in advance of the
effective move date provided by the ACS system.
With regard to the first determining step of claim 1, Orbke discloses
that the “job parameters for running the mail process . . . may define the mail
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type (Standard or First Class, etc.), client data, sort scheme, any combination
thereof, or any other parameters to prepare and sort the mail in accordance
with predefined USPS requirements” (FF 5). In addition, we agree with the
Examiner that Elliot discloses determining, by a processing device, a class of
mail that will be utilized to send the mailing (Ans. 4; see also FF 7-9).
Appellant argues that “in Elliot, all of the processing is performed
after the mail pieces have been received into the postal system. The system
in Elliot is in no way related to a mailer preparing a mailing for sending to
recipients on a mailing list.” (App. Br. 6.) While we recognize that Elliot
relates to a determination by a postal service rather than the mailer, we agree
with the Examiner that it would have been obvious for the mailer’s
processing device to determine the class of mail to be utilized based on the
postal service’s requirements in order to “provide savings to a user utilizing
a mail processing system” (Ans. 5), and because it was known in the art at
the time of the invention, both from Orbke (FF 5) and Elliot (FF 7-9), to sort
and determine mail class according to USPS requirements using a
processing device.
CONCLUSION
The evidence of record supports the Examiner’s position that the
method of claim 1 would have been obvious. We therefore affirm the
obviousness rejection of claim 1. For the same reasons, we affirm the
obviousness rejection of claim 13. Claims 2-7, 9-12, and 14-19 have not
been argued separately and therefore fall with claims 1 and 13. 37 C.F.R.
§ 41.37(c)(1)(vii).
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc

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MILLS, Administrative Patent Judge, concurring.
While I agree with the majority that the Examiner’s rejection should
be affirmed, I would affirm the rejection for the reasons herein.

PRINCIPLES OF LAW
The Board “determines the scope of claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004). The Federal Circuit held in In re
Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) that “[t]his court’s
predecessor long acknowledged the right of the Board to make additional
findings of fact based upon the Board’s own knowledge and experience to
‘fill in the gaps’ that might exist in the examiner’s evidentiary showing.”
See, e.g., In re Ahlert, 424 F.2d 1088, 1091-92 (CCPA 1970); see also In re
Moore, 444 F.2d 572, 574-75 (CCPA 1971).
During ex parte prosecution, claims are to be given their broadest
reasonable interpretation consistent with the description of the invention in
the specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
“Without evidence in the patent specification of an express intent to impart a
novel meaning to a claim term, the term takes on its ordinary meaning.”
Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1334 (Fed. Cir.
2000).
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As to motivation to combine references or teachings of a reference,
the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007), rejected a rigid application of the teaching-suggestion-motivation
test. The Court recognized that it is often necessary to look at the
interrelated teachings of multiple references; the effects of demands of the
marketplace; and the background knowledge possessed by a person of
ordinary skill, “all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed.” Id. at 418.
Moreover, the “obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.” Id. at 419. Finally, one “of the ways in which a
patent’s subject matter can be proved obvious is by noting that there existed
at the time of the invention a known problem for which there was an obvious
solution encompassed by the patent’s claims.” Id. at 419-420.
As noted by the United States Supreme Court,
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

Id. at 417. “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416.

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FINDINGS OF FACT
The following facts supplement the facts in the Decision above.
10. Orbke discloses a mail processing system that includes a sorter for
implementing the USPS Address Change Service (ACS) by a postal
client.
11. Orbke discloses
[A]n exemplary process for job setup before processing one or
more mail pieces for a mailing. An ACS job may not be run
without the client, service provider, or third party address
maintenance service obtaining a registered Mailer ID from the
postal authority (i.e., USPS) . . . . With the Mailer ID available
. . ., the mail sorter setup may begin . . . 72. The job parameters
for running the mail process are entered, for example, into mail
sorter processor 12 illustrated in FIG. 1. These parameters may
define the mail type (Standard or First Class, etc.), client data,
sort scheme, any combination thereof, or any other parameters
to prepare and sort the mail in accordance with predefined
USPS requirements.

(Page 5, col. 2 [0045] to page 6, col. 1, l. 6, emphasis added.)
12. Orbke discloses at page 5, [0044] that (emphasis added):
The ASC data record 64 (as shown in FIG. 5) from NCSC
30 is processed by the business entity 32 (e.g. client, service
provider, or a third party address maintenance provider). The
ACS data record 64 is sent to the registered participant (the
business entity that requested the mailer ID at block 34) who
may forward the ACS data record 64 to the organization
responsible to update the customer address files in the customer
address database 18. These updates, as described above, may
be automatic (e.g., using various database update techniques)
or may be semi-automatic such as with computer assisted
manual updates.
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13. The Appellant’s Specification discloses at page 10, [0043], an
example of a business model mailing “pattern” (which discussion
begins on page 4 [0019], may be
For example, if a recipient is determined to be premium, then
the sender may be willing to send the envelope first class for
automatic forwarding and may desire to request address
correction on each solicitation to ensure that the premium
recipient’s address is always updated and that the premium
recipient always receives the solicitation.

ANALYSIS
I would begin with claim interpretation. Appellant’s claim 1 is
illustrative and reads as follows:
1. A method for a mailer to prepare a mailing for sending to
recipients on a mailing list, the method comprising:
determining, by a processing device, a class of mail that will be
utilized to send the mailing for each of the recipients on the mailing list, the
class of mail being determined based on first stored data; and
determining, by the processing device, whether to request an address
correction service for the mailing to each of the recipients based on (a) a
planned date for the mailing and (b) second stored data including at least one
pattern associated with the mailer or the recipient on the mailing list.

I look to case law precedent for guidance in interpreting the
“determining . . . whether” language of the second step of claim 1. In ePlus,
Inc. v. Lawson Software, Inc., 700 F.3d 509, 513 (Fed. Cir. 2012) the Court
reviewed a claim that recited:
26. A method comprising the steps of:
maintaining at least two product catalogs on a database
containing data relating to items associated with the respective
sources;
selecting the product catalogs to search;
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searching for matching items among the selected product
catalogs;
building a requisition using data relating to selected matching
items and their associated source(s);
processing the requisition to generate one or more purchase
orders for the selected matching items; and
determining whether a selected matching item is available in
inventory.

The Federal Circuit held in that case that a
[J]ury was free to rely on the plain and ordinary meaning of the
term “determining” and conclude that a user who prompts a
vendor to report whether a particular item is available
“determines” whether that item is available—much in the same
way, for example, that one may call and speak to a sales
representative at a local store to determine whether a certain
item is in stock.

Id. at 520 (emphasis added.) Similarly, I interpret the “determining . . .
whether” language in second step of Claim 1 before us, as a client or user’s
processing device or computer prompting a request to the USPS ACS or
other address database to determine whether an address change is available.
I broadly interpret the “pattern” in claim 1, consistent with the Appellant’s
Specification (FF13), as encompassing checking for an address change at the
time of each mailing.

Discussion
The Examiner has cited two highly relevant references to the claimed
invention. The Examiner concludes that
It would have been obvious for one of ordinary skill in
the art to combine Orbke’s method of processing a mailing
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including one or more mail pieces to capture address data and
provide address correction if needed with Elliot’s ability to
determine a class of mail that is applied to a mailing based on
analyzing a mailing. This gives the user the advantage of being
able to assign and change a mail-class applied to a mailing. The
motivation for doing so would be [sic] provide savings to a user
utilizing a mail processing system (paragraph 0002, 0005).

(Ans. 5.) The Examiner does appear to make the misstatement in the
Answer that
While Orbke teaches mailing information, Orbke does
not specifically teach “determining, by a processing device, a
class of mail that will be utilized to send the mailing for each of
the recipients on the mailing list, the class of mail being
determined based on first stored data;”
Elliot teaches “determining, by a processing device, a
class of mail that will be utilized to send the mailing for each of
the recipients on the mailing list, the class of mail being
determined based on first stored data;” (column 8 line 41 -
column 9 line 52, column 12 line 61 - column 13 line 26,
column 14 lines 13-44, column 16 line 42 - column 17 line 35,
wherein an outgoing mail center processes mail pieces and
determine a mail-class based on a mail-class indication,
recipient information, and account information of senders, the
information stored in a database).

(Ans. 4-5; emphasis added.) The italicized portion of the above quote does,
however, appear to be taught by Orbke (FF11), where
The job parameters for running the mail process are entered, for
example, into mail sorter processor . . . . These parameters may
define the mail type (Standard or First Class, etc.), client data,
sort scheme, any combination thereof, or any other parameters
to prepare and sort the mail in accordance with predefined
USPS requirements.

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Be that as it may, I do not find this misstatement by the Examiner to be
unfair to Appellant, as the Examiner has relied on the teachings of Elliot for
the step of “‘determining, by a processing device, a class of mail that will be
utilized to send the mailing for each of the recipients.’” (Ans. 4.)
Thus, Orbke teaches that it is known that any parameters may be
entered into a processor to sort mail in accordance with predefined USPS
requirements. One well known USPS requirement is whether a piece of mail
qualifies for a certain mail class (e.g., business reply status Elliot). If one of
ordinary skill in the art is familiar with USPS requirements for mailing
classes, one would have set up the mail parameters and a sort scheme in
Orbke consistent with them, including the mail class (Orbke) and business
reply class license parameter known from Elliot. Elliot discloses that it is
well known for a mail processor to be able to sort mail by class and make
corrections to the class to properly sort mail based on proper mail class
parameters. Thus, we agree with the Examiner’s evidence and conclusion as
stated in the Answer that
It would have been obvious for one of ordinary skill in
the art to combine Orbke’s method of processing a mailing
including one or more mail pieces to capture address data and
provide address correction if needed with Elliot’s ability to
determine a class of mail that is applied to a mailing based on
analyzing a mailing. This gives the user the advantage of being
able to assign and change a mail-class applied to a mailing. The
motivation for doing so would be [sic] provide savings to a user
utilizing a mail processing system (paragraph 0002, 0005).

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(Ans. 5.) In addition, it was well known in the art at the time of the
invention, both from Orbke (FF5) and Elliot (FF8), to sort and determine
mail class according to USPS requirements using a processing device.
Regarding Orbke, Appellant argues that
[A]t no point in Orbke does a processing device determine
“whether to request an address correction service for the
mailing to each of the recipients based on (a) a planned date for
the mailing and (b) second stored data including at least one
pattern associated with the mailer or the recipient on the
mailing list” as is recited in claim 1.

(App. Br. 5.) I am not persuaded. As broadly interpreted, claim 1
encompasses a “pattern” of requesting an address change at the time of each
mailing (planned date). This “pattern” is encompassed by Appellant’s
Specification FF13.
Appellant’s argue that, “Orbke does not disclose, teach[,] or suggest
determining a class of mail that will be utilized to send the mailing for each
of the recipients on the mailing list, the class of mail being determined based
on first stored data.” (App. Br. 8.) I am not persuaded by this argument as
Orbke does teach determining a class of mail that will be utilized to send the
mailing for each of the recipients on the mailing list. The class of mail being
determined based on first stored parameter data of mailing class consistent
with USPS requirements. FF11. Moreover, the Examiner relies on Elliot for
the teaching of “determining a class of mail,” and Appellant admits in the
Brief, page 8 that “Elliot is directed to properly determining if a mail piece is
a business reply mail piece” (class of mail) through a licensed database
which is stored data (col. 14, l. 45).
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Appellant argues that “in Elliot, all of the processing is performed
after the mail pieces have been received into the postal system. The system
in Elliot is in no way related to a mailer preparing a mailing for sending to
recipients on a mailing list.” (App. Br. 6.)
As noted by the United States Supreme Court,
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

KSR, 550 U.S. at 417.
Thus, we apply the law of obviousness set forth in KSR to the facts of
the present case. Here, it would have been obvious to modify Orbke’s client
mail sorter with Elliot’s mail sorter class determination capabilities FF8,
notwithstanding the fact that Orbke’s sorting is done by the mailer and
Elliot’s sorting is done by the post office, as one of ordinary skill in the art
would have recognized that the postal mail sorter class determination of
Elliot would improve the similar sorter device of the client mailer in the
same way, consistent with USPS mail requirements.
Thus, the Examiner’s conclusion of obviousness in the Answer is
supported by the cited references and I would affirm the obviousness
rejection of the Examiner.
I would affirm the Examiner’s rejection for the reasons set forth in the
concurrence.