Ex Parte Ryan

Board of Patent Appeals and Interferences

Aug 25, 2010

11003141 (B.P.A.I. Aug. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FREDERICK W. RYAN, JR.
____________

Appeal 2010-001164
Application 11/003,141
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-001164
Application 11/003,141

STATEMENT OF THE CASE
The Appellant’s seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-2, 7, 9-11, 15-16, 19, 21-23, and 26 which are all
the claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a method for
facilitating the delivery of a mailpiece in a mail distribution system (Spec.
[0007]). Claim 1, reproduced below with some numbering in brackets, is
representative of the subject matter of appeal.
1. A method for delivering a mailpiece, comprising the
steps of:
reading a mailpiece identifier disposed in combination with the
mailpiece during mailpiece processing,
developing tracking information corresponding to various
mailpiece processing activities in the mail distribution system,
[1] producing a delivery report based upon the tracking
information, the delivery report indicative of a historical log of the
previous and present locations and times of arrival with respect
thereto,
[2] obtaining contact information from the mailpiece with
respect to a desired electronic communication address of an intended
recipient of the mailpiece;
[3] sending the delivery report to the electronic communication
address of the mailpiece recipient when the mailpiece has arrived at
one of the locations during delivery and when the mailpiece has
arrived at the final delivery address of the mailpiece recipient.

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Appeal 2010-001164
Application 11/003,141

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Gehman US 3,750,167 Jul. 31, 1973
Morimoto US 2002/0120475 A1 Aug. 29, 2002

The following rejections are before us for review:
1. Claims 1-2, 7, 9-11, 15-16, 19, 21, and 26 are rejected under
35 U.S.C. § 102 (e) as unpatentable over Morimoto.
2. Claims 10-11 and 22-23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Morimoto and Gehman.
3. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Morimoto and Gehman.

THE ISSUES
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
This issue turns on whether Morimoto discloses the claim limitations
which have been argued by the Appellant.

FINDINGS OF FACT
We adopt the Examiner’s findings of fact found with respect to
claims 1 and 19 found at page 4 of the Answer.
We also find that Murimoto discloses that the memory device 50A
may use flash memory [0038]. Memory device 50A is seen in Murimoto in
Fig. 9 associated with a package.
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Appeal 2010-001164
Application 11/003,141

ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
Morimoto fails to disclose claim limitations [1], [2], and [3] as listed in the
claim above.
In contrast the Examiner has determined that Morimoto discloses the
cited claim limitations and provides specific citations for each limitation
within the cited reference (Ans. 4, 12-15).
We agree with the Examiner. Claim 1 includes limitations requiring:

[1] producing a delivery report based upon the tracking information,
the delivery report indicative of a historical log of the previous
and present locations and times of arrival with respect thereto,
[2] obtaining contact information from the mailpiece with respect to a
desired electronic communication address of an intended recipient of
the mailpiece;
[3] sending the delivery report to the electronic communication
address of the mailpiece recipient when the mailpiece has arrived at
one of the locations during delivery and when the mailpiece has
arrived at the final delivery address of the mailpiece recipient (claim
1).

With regards to claim limitation [1], Murimoto discloses a delivery
report in Fig. 4 with specific citations to the arrival dates (75, 76, 77).
Murimoto also discloses that this data file is updated and may be sent to
parties associated with the shipment [0075].
With regards to claim limitation [2], Murimoto discloses that the
memory device 50A may use flash memory [0038] and is seen in Fig. 9
associated with a package. In Murimoto the memory device 50A contains
senders and recipients e-mail addresses [0060] and this data may be copied
and sent in an e-mail to parties associated with the transaction [0061].
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Appeal 2010-001164
Application 11/003,141

Lastly, with regards to claim limitation [3], Murimoto discloses that
this data from the memory device may be sent to the recipient [0061].
Murimoto has also disclosed that information regarding arrivals may be sent
to any parties associated with the shipment [0075, 0081]. Thus, Murimoto
has disclosed the argued claim limitations for claims 1 and 19 and the
rejection of these claims, and their dependent claims which have not been
argued separately, is sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-2, 7, 9-11, 15-16, 19, 21, and 26 under 35 U.S.C. § 102
(e) as unpatentable over Morimoto.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 10-11 and 22-23 under 35 U.S.C. § 103(a) as unpatentable
over Morimoto and Gehman.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claim 16 under 35 U.S.C. § 103(a) as unpatentable over Morimoto
and Gehman.
DECISION
The Examiner’s rejection of claims 1-2, 7, 9-11, 15-16, 19, 21-23, and
26 is sustained.
AFFIRMED

JRG

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Appeal 2010-001164
Application 11/003,141

PITNEY BOWES INC.
INTELLECTUAL PROPERTY & TECH. LAW DEPT.
35 WATERVIEW DRIVE
MSC 26-22
SHELTON, CT 06484

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