Ex Parte Ramsden et al

Board of Patent Appeals and Interferences

Jan 29, 2008

10696894 (B.P.A.I. Jan. 29, 2008)

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 GARY W. RAMSDEN 8
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Appeal 2007-3141 11
Application 10/696,894 12
Technology Center 3600 13
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Decided: January 29, 2008 16
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Before TERRY J. OWENS, ANTON W. FETTING, and JOSEPH A. FISCHETTI, 19
Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON REQUEST FOR REHEARING 22
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The Appellant filed a REQUEST FOR REHEARING PURSUANT TO 37 24
C.F.R. § 14.52 on December 10, 2007. 25
The Examiner rejected claims 77, 79, and 80. We affirmed these rejections in 26
our October 10, 2007 Decision. The Appellant seeks reconsideration of the 27
decision to affirm these rejections. 28
Appeal 2007-3141
Application 10/696,894

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We CONSIDER the arguments in the REQUEST FOR REHEARING, and 1
DENY the REQUEST FOR REHEARING. 2
ISSUES 3
The issue pertinent to this request is whether the Appellant has sustained his 4
burden of showing that we misapprehended the art or the claims and thus erred in 5
sustaining the rejections of claims. 37 C.F.R. § 41.52(a). 6
ANALYSIS 7
We found in our decision that claims 77, 79, and 80 were unpatentable under 8
35 U.S.C. § 103(a) over the prior art (Decision 12). 9
The Appellant argues that (1) the Board failed to find that the prior art 10
described a printer for printing a shipping receipt for an amount including at least 11
the cost of delivering said parcel or envelope to said destination via the delivery 12
option chosen by said customer (Request 2); (2) the Board failed to find the level 13
of skill in the art at the time of the invention (Request 3); and (3) the Board 14
misconstrued the calculation of cost in FF 02 of the Decision (Request 4). 15
Argument (1) the Board failed to find that the prior art described a printer for 16
printing a shipping receipt for an amount including at least the cost of delivering 17
said parcel or envelope to said destination via the delivery option chosen by said 18
customer 19
Apparently, the Appellant, after admitting that Pusic does describe a printer, 20
contends that the Board failed to make a finding that the printer printed a receipt 21
(Request 2: Bottom ¶, fifth to seventh lines). 22
Appeal 2007-3141
Application 10/696,894

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However, the Appellant fails to explain, and we do not see how the finding of 1
this element affects the Board’s decision affirming the rejection of claim 77. 2
Regarding the teachings of Hsieh and Pusic, the Appellant does not contend that 3
we misapprehended Appellant’s arguments in the Brief. 4
As the Decision (p. 9) states, the Appellant only contended that Hsieh does not 5
compute costs based on the destination; that Pusic fails to describe a selectable 6
delivery option; that Hsieh teaches away from claim 77 because it is limited to 7
computations using two variables and there would be no reasonable expectation of 8
success in achieving the limitations of claim 77 for similar reasons; and there is no 9
suggestion to combine Hsieh and Pusic. The Appellant concluded that the 10
combination of Hsieh and Pusic do not allow for different delivery options or are 11
limited to delivery options whose pricing is independent of destination. We made 12
findings as to each of these contentions. The Appellant does not dispute this. 13
Thus, the Appellant did not disagree that Pusic disclosed printing a receipt per 14
se. The Examiner had made such a finding (Answer 4). We were not placed in a 15
position to consider the teachings of Hsieh or Pusic regarding printing of a receipt 16
per se with respect to claim 77, only the contents of what was printed. The 17
Examiner’s finding that a receipt was printed was uncontested. 18
Argument (2) the Board failed to find the level of skill in the art at the time of the 19
invention 20
The Appellant contends that the Office’s guidelines require a finding of the 21
level of ordinary skill (Request 3). Again, the Appellant is making a contention 22
not made in the briefs, and has not argued that he did so, so we were not placed in 23
a position to consider this argument. 24
Appeal 2007-3141
Application 10/696,894

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The Appellant admits, however, that we did make such findings in FF 10 1
(Request 3:Bottom ¶, second line). Further, the absence of specific findings on the 2
level of skill in the art does not give rise to reversible error where the prior art itself 3
reflects an appropriate level and a need for testimony is not shown. See Okajima v. 4
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 5
Argument (3) the Board misconstrued the calculation of cost in FF 02 of the 6
Decision 7
The Appellant contends that our construction of the limitation that a cost for 8
mailing a parcel or envelope to a destination is a function of a weight and a 9
selected delivery option is improper (Request 4). The Appellant contends that the 10
Specification supports a construction in which cost is also a function of destination. 11
(Request 4). 12
We begin by pointing out that the Examiner did not make a construction as to 13
this limitation, and therefore, ours was the first construction placed in the record. 14
In our decision, we found that the plain reading of the limitation meant that the 15
function was one of the two variables weight and delivery option (Decision 5: FF 16
02). We find that the Appellant has not shown how this construction affects our 17
Decision to affirm the Examiner, because the Appellant has not shown a nexus 18
between this construction and an argument in favor of patentability. We also find 19
that the Appellant has not demonstrated that such a construction does no more than 20
reflect breadth of the claim as drafted. The Appellant has pointed to no 21
lexicographic definition of the claimed function, nor how having the function be 22
independent of destination would be incompatible with the invention. 23
Appeal 2007-3141
Application 10/696,894

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For the above reasons we are not convinced of misapprehension of the issues 1
leading to reversible error in our decision. Accordingly, the Appellant’s request 2
for rehearing is denied, 3
DECISION 4
To summarize, our decision is as follows: 5
• We have considered the REQUEST FOR REHEARING 6
• We DENY the request that we reverse the Examiner as to claims 7
• The rejection of claims 77 and 80 under 35 U.S.C. § 103(a) as unpatentable 8
over Hsieh and Pusic remains affirmed. 9
• The rejection of claim 79 under 35 U.S.C. § 103(a) as unpatentable over 10
Hsieh, Pusic, and Tateno remains affirmed. 11
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REHEARING DENIED 14
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jlb 17
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Patent Administrator 19
Katten Muchin Rosenman LLP 20
1025 Thomas Jefferson Street, NW 21
East Lobby: Suite 700 22
Washington, DC 20007-5201 23
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