Ex Parte Ryan Jr.

Board of Patent Appeals and Interferences

Feb 18, 2005

09633916 (B.P.A.I. Feb. 18, 2005)

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not written for publication and is not binding precedent of the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