Ex Parte Ryan Jr.Download PDFBoard of Patent Appeals and InterferencesFeb 18, 200509633916 (B.P.A.I. Feb. 18, 2005) Copy Citation 1 The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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 FREDERICK W. RYAN, JR. __________ Appeal No. 2004-1808 Application No. 09/633,916 ___________ ON BRIEF ___________ Before OWENS, RUGGIERO and DIXON, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL This appeal is from the final rejection of claims 1-20, which are all of the claims in the application. Appeal No. 2004-1808 Application No. 09/633,916 2 THE INVENTION The appellant claims a system and method for enabling the use of digital postage. Claim 6, which claims the method, is illustrative: 6. A method for enabling the use of digital postage, comprising the steps of: a) receiving a request for a certain amount of digital postage; b) determining an initial pointer value; c) providing a random sequence of bits associated with the pointer value having a length corresponding to the amount of digital postage requested; and (d) providing as digital postage the random sequence of bits and the initial pointer value. THE REFERENCES Briscoe 6,341,273 Jan. 22, 2002 (§ 102(e) date Apr. 29, 1998) Leon 6,424,954 Jul. 23, 2002 (filed Feb. 16, 1999) THE REJECTION Claims 1-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Briscoe in view of Leon. Appeal No. 2004-1808 Application No. 09/633,916 1 The appellant states that “[t]he initial pointer value associated with a new bitstream, which is provided to the customer with the new bitstream, has a value corresponding to the combined length of all previous bitstreams (if any) purchased by the same customer” (specification, page 6, lines 6-8). 3 OPINION We reverse the aforementioned rejection. The appellant’s independent claims require providing as digital postage (claims 1 and 6) or digital coins (claims 11 and 16) a random sequence of bits and an initial pointer value.1 The examiner argues that Briscoe discloses at column 5, lines 40-48, providing as digital postage or digital coins a random sequence of bits and an initial pointer value (answer, pages 3-6). Briscoe discloses that “[t]he broker stores a pointer which records the position m in the hash chain of the value issued to the client 1" (col. 5, lines 34-36). The following portion of Briscoe relied upon by the examiner, however, does not disclose providing the pointer value as part of the digital postage or digital coins. The examiner does not rely upon Leon for any disclosure which remedies that deficiency in Briscoe, and the examiner does not explain how the applied prior art would have fairly suggested, to one of ordinary skill in the APPEAL NO. 2004-1808 APPLICATION NO. 09/633,916 4 art, providing as digital postage or digital coins a random sequence of bits and an initial pointer value. We therefore conclude that the examiner has not carried the burden of establishing a prima facie case of obviousness of the appellant’s claimed invention. DECISION The rejection of claims 1-20 under 35 U.S.C. § 103 over Briscoe in view of Leon is reversed. REVERSED TERRY J. OWENS ) Administrative Patent Judge ) ) ) ) )BOARD OF PATENT JOSEPH F. RUGGIERO ) APPEALS AND Administrative Patent Judge ) INTERFERENCES ) ) ) ) JOSEPH L. DIXON ) Administrative Patent Judge ) APPEAL NO. 2004-1808 APPLICATION NO. 09/633,916 5 TJO/dpv APPEAL NO. 2004-1808 APPLICATION NO. 09/633,916 6 Pitney Bowes, Inc. 35 Waterview Drive P.O. Box 3000 MSC 26-22 Shelton, CT 06484-8000 Copy with citationCopy as parenthetical citation