Ex Parte Sagi et al

Board of Patent Appeals and Interferences

Feb 5, 2009

10280339 (B.P.A.I. Feb. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SURYA SAGI, WILLIAM G. HART, JR.,
and BRUCE J. BARROWS
____________

Appeal 2009-0009
Application 10/280,339
Technology Center 3600
____________

Decided:1 February 6, 2009
____________

Before HUBERT C. LORIN, DAVID B. WALKER, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Surya Sagi, et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claims 1-5, 7-15, and 17-26. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART. 2

THE INVENTION
The invention is a system for monitoring document production
equipment and tracking mail pieces through delivery, receipt and response.
(Specification 6:3-15.) The system includes a display showing blocks
representing sub-groups of documents on a grid. (Specification 7:9-12.)
The blocks are color coded to represent the status of the sub-group of
documents. (Specification 7:12-14.) By selecting a block, a user can see an
expanded view with representations of individual documents and their
status. (Specification 7:15-18.) In order to track the documents, each
document has a unique identifier. (Specification 13:13-15.)
Claims 1 and 21, reproduced below, are illustrative of the subject
matter on appeal.

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Nov. 5, 2007) and the Examiner’s Answer (“Answer,” mailed Jan. 25,
2008).
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1. A method for monitoring status of
documents created by a large scale document
production and management process, the
production and management process including a
plurality of stages including: utilizing a print
stream to generate the documents, printing
documents on a printer in accordance with the
print stream, and forming completed mail pieces
on an inserter from the printed documents in
accordance with mail piece creation data files; the
method comprising:
receiving information regarding status of
documents within the inserter stages;
displaying a graphical representation of a
group of documents within the inserter stage, the
graphical representation of the group of documents
including graphically distinct sub-groups, status of
the documents within the sub-groups being
graphically represented in the sub-group displays;
selecting a sub-group for closer inspection;
displaying the selected sub-group in an
expanded form including a graphical
representation of individual documents, the
graphical representations of individual documents
indicating the status of the individual documents;
wherein the steps of displaying graphical
representations of documents includes representing
sub-groups of documents and individual
documents in a grid pattern wherein consecutive
representations on the grid represent consecutive
sub-groups of documents and consecutive
individual documents.

21. A method for monitoring the status of
documents created by a large scale document
production and management process, the
production and management process including a
plurality of stages selected from the following
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group: utilizing a print stream to generate the
documents, printing documents on a printer in
accordance with the print stream, forming
completed mail pieces on an inserter from the
printed documents in accordance with mail piece
creation data files, sorting the completed mail
pieces on an outgoing sorter in accordance with
carrier service specifications, delivering the
completed mail pieces to a recipient by a carrier
service, delivering a response mail piece from the
recipient by the carrier service, and sorting the
response mail piece at an incoming sorter, each
document within the production and management
process having a unique identifier; the method
comprising:
specifying the unique identifier of a
particular document, the unique identifier
applicable to the particular document across all of
the plurality of stages; and
displaying the current stage and status of the
specified particular document, as identified by the
unique identifier.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Zetmeir US 4,752,675 Jun. 21, 1998
Moore US 5,917,925 Jun. 29, 1999
Altman US 2001/0036324 A1 Nov. 1, 2001
Gawler US 2002/0010687 A1 Jan. 24, 2002
Pigos Jr. et al. US 6,370,521 B1 Apr. 9, 2002
Schererz US 2002/0070149 A1 Jun. 13, 2002
Munetomo et al. US 6,661,530 B1 Dec. 9, 2003

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The following rejections are before us for review:
1. Claims 1-2, 4, 7-8, 11-12, 14, 17-18, 21, and 25 are rejected under 35
U.S.C. §102(e) as being anticipated by Pigos.
2. Claims 3, 5, 13, 15, and 26 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Pigos in view of Gawler.
3. Claims 9, 19, and 22 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Pigos in view of Munetomo.
4. Claims 10, 20, and 23 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Pigos in view of Altman.
5. Claim 24 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Pigos in view of Moore, Zetmeir and Schererz.

ISSUES
The first issue before us is whether the Appellants have shown that the
Examiner erred in rejecting claims 1-2, 4, 7-8, 11-12, 14 and 17-18 under 35
U.S.C. § 102(e) as anticipated by Pigos. The issue turns on whether Pigos
describes the steps of displaying graphical representations of sub-groups of
documents and displaying graphical representations of individual
documents. The rejections of claims 9, 10, 19 and 20 also turn on this issue.
The second issue before us is whether the Appellants have shown that
the Examiner erred in rejecting claims 21 and 25 under 35 U.S.C. § 102(e)
as anticipated by Pigos. The issue turns on whether Pigos describes
providing a unique identifier on each individual document. The rejections of
claims 22 and 23 also turn on this issue.
The third issue before us is whether the Appellants have shown that
the Examiner erred in rejecting claim 24 under 35 U.S.C § 103(a) as
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unpatentable over Pigos in view of Moore, Zetmeir and Schererz. The issue
turns on whether the combination of Pigos, Moore, Zetmeir and Schererz
would lead one of ordinary skill in the art to use a document identifier across
various stages of production as in claim 24.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. Claim 1 recites the step of “displaying a graphical representation of
a group of documents within the inserter stage, the graphical
representation of the group of documents including graphically
distinct sub-groups, status of the documents within the sub-groups
being graphically represented in the sub-group displays.”
2. Claim 1 also recites the step of “displaying the selected sub-group
in an expanded form including a graphical representation of
individual documents, the graphical representations of individual
documents indicated the status of the individual documents.”
3. Claim 11 recites “displaying a graphical representation of a group
of documents within the selected stage, the graphical
representation of the group of documents including graphically
distinct sub-groups, status of the documents within the sub-groups
being graphically represented in the sub-group displays.”
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4. Claim 11 also recites the step of “displaying the selected sub-group
in an expanded form including a graphical representation of
individual documents, the graphical representations of individual
documents indicated the status of the individual documents.”
5. The ordinary and customary meaning of “group” is “two or more
figures forming a complete unit in a composition.” (See Merriam-
Webster’s Collegiate Dictionary 514 (10th Ed. 1998,) (Entry for
“group”; n.).
6. The Specification does not provide an express definition of
“group.”
7. Claim 21 recites “each document within the production and
management process having a unique identifier.”
8. Claim 21 recites “specifying the unique identifier of a particular
document, the unique identifier applicable to the particular
document across all of the plurality of stages.”
9. Claim 25 recites “storing records relating to individual documents
processed by the document production and management process,
each record being identified by a non-recurring identifier.”
10. Claim 24 recites “associating a document identifier with each
document.”
11. Claim 24 recites “providing document printing status data and the
associated document identifiers to a lifecycle monitoring
computer.”
12. Claim 24 recites “the completed mail pieces and reply documents
including the document identifiers.”
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13. Claim 24 recites “providing mail piece formation status data and
the associated document identifiers from the inserter to the
lifecycle monitoring computer.”
14. Claim 24 recites “providing outgoing sorting data and the
associated document identifiers to the lifecycle monitoring
computer.”
15. Claim 24 recites “receiving returned documents at an incoming
sorter and scanning the returned reply documents for the document
identifiers.”
16. Claim 24 recites “providing the incoming sorter status data and the
scanned document identifiers to the lifecycle monitoring
computer.”
17. Claim 24 recites “reporting status of individual documents during
one or more of the preceding steps of this method, the status based
on information provided to the lifecycle monitoring computer and
the document identifiers that are consistent throughout the steps.”
Prior Art
Pigos
18. Pigos describes a document processing monitoring system and
method. (Col. 1, ll. 9-14.)
19. Pigos describes the document processing system including a
printer, an inserter and a response management function. (Col. 1,
ll. 36-60.)
20. Pigos states,
Using strategically placed barcodes, data or a job
(batch of material) is scanned as it enters and
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leaves the work area of a mail processing device
thereby provide an audit trail. Data consolidation,
another feature of the system, refers to collecting
data from multiple mail processing devices.
(Col. 2, l. 67 – col. 3, l. 5.)
21. Pigos describes using job barcodes on a header and end page of a
print job to track a job in the system. (Col. 8, ll. 66 – col. 9, ll. 1.)
22. Pigos states, “The job barcode will be read with a hand-held
scanner at the machine or manual inserter stations and the data will
be transferred to the server for tracking purposes.” (Col. 9, ll. 2-4.)
23. Pigos describes a job tracking system including a graphical user
interface or job viewer which allows an operator to run queries on
a database. (Col. 1, ll. 41-47.)
24. Pigos describes queries can be based on time, batch, operator,
machine or stage. (Col. 11, l. 65 – col. 12, l. 1.)
25. Pigos’ Figures 8-11 depict tab panels of the job viewer which
contain options used to build a query. (Col. 11, l. 65 – col. 12, l.
4.)
26. Pigos’ Figure 11 depicts a stage tab panel including the option of
inserting.
27. Pigos’ Figure 12 is reproduced below:
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Figure 12 depicts the batches panel of the job viewer with query
results and lists statement IDs.
28. Pigos describes the results being sorted by Group of the Batch ID.
(Col. 12, ll. 5-8.)
29. Pigos describes that transactions of a batch can be viewed by
clicking on a row to highlight it and then clicking on the show
transactions button. (Col. 12, ll. 18-20.)
30. Pigos’ Figure 13 is reproduced below.
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Figure 13 depicts a screen showing transactions for a batch, including
“startinsert” and “finishinsert” times. (Col. 12, ll. 44-46.)
Gawler
31. Gawler describes a mail preparation system for dispensing postage.
(Gawler [0003].)
32. Gawler describes the system sending messages to a postal
authority regarding a batch of mail. (Gawler [0071]-[0073].)
33. Gawler describes a message status screen used to track message to
and from the postal authority. (Gawler [0076].)
34. Gawler describes the message status screen showing a table, where
each row relates to a batch of mail. (Gawler [0076].)
35. Gawler describes changing the background color of the table cells
to indicate the status of messages. (Gawler [0076].)
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36. Gawler states, “As such, it is desirable to be able easily to
determine the stage reached by any batch of mail and to check that
there has not been a failure in the communication of any of the
messages.” (Gawler [0075].)
Munetomo
37. Munetomo describes a print processing apparatus with a print
setting screen. (Col. 3, ll. 4-11.)
38. Munetomo describes a print setting screen, which displays a print
preview image, which indicates tone mode, type of printing paper
and staple position. (Col. 3, ll. 12-53.)
Altman
39. Altman describes a system for storage and retrieval of
documentary information, including electronic documents.
(Altman [0003].)
40. Altman describes using a scanner or camera to create an electronic
document. (Altman [0064].)
Moore
41. Moore describes a system for marking postage on mail pieces to
prevent counterfeiting postage markings. (Col. 1, ll. 15-20.)
42. Moore describes marking mail pieces with a code which can be
transmitted to and decoded by postal inspectors to make sure that
the marking is authentic and postage has been paid. (Col. 24, l. 55
– col. 26, l. 67)
Zetmeir
43. Zetmeir discloses a method of recording individual responses
received from a direct mail advertising program. (Col. 1, ll. 5-8.)
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44. Zetmeir describes providing an individual, unique bar code on the
response portion of each mailed advertisement. (Col. 3, ll. 15-20.)
Scherez
45. Scherez describes a mail sorting machine used to automate the
manual task of sorting mail. (Scherez [0006].)
46. Scherez describes sorting outgoing and incoming mail. (Scherez
[0006].)
Any differences between the claimed subject matter and the prior art
47. Pigos does not describe tracking individual documents.
48. Pigos does not describe displaying a graphical representation of
individual documents and their status.
49. Pigos does not describe providing a unique identifier on each
individual document.
The level of skill in the art
50. Neither the Examiner nor the Appellants have addressed the level
of ordinary skill in the pertinent art of document production and
tracking. We will therefore consider the cited prior art as
representative of the level of ordinary skill in the art. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
absence of specific findings on the level of skill in the art does not
give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown’”) (“[T]he
absence of specific findings on the level of skill in the art does not
give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown’”).
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(Quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
F.2d 158, 163 (Fed. Cir. 1985)).
Secondary considerations
51. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.
52. The Examiner states that the motivation to combine Pigos and
Moore is to trace the tracked item anywhere along the distribution
chain where that item has been read. (Answer 18.)
53. The Examiner states that the motivation to combine Zetmeir with
Pigos and Moore is that providing document identifier and
providing the incoming data to the lifecycle monitoring computer
allows for mail responses to be matched to addresses, providing
valuable demographic information. (Answer 19.)
54. The Examiner states that the motivation to combine Schererz with
Pigos, Moore and Zetmeir is to provide an efficient way to direct
incoming mail to a building, mailstop, department, or office.
(Answer 20.)

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the Specification and
should be read in light of the Specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004).
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[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
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U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”) The Court in Graham
further noted that evidence of secondary considerations “might be utilized to
give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1-2, 4, 7-8, 11-12, 14 and 17-18 under §102(e) as
being anticipated by Pigos.
The Appellants argue that Pigos fails to describe the steps of
displaying a graphical representation of a group of documents and
displaying a selected sub-group in an expanded form including a graphical
representation of individual documents, the graphical representations of
individual documents indicating the status of the individual document.
(Br. 9-10.)
The Examiner contends that Pigos anticipates claim 1 under 35 U.S.C.
102(e) (Answer 4) and relies upon column 10, lines 49-55 of Pigos for this
limitation (Answer 22). Column 10, lines 49-55 states,
The job viewer module provides the user with a
visual front end to the database. The job viewer
allows the user to display a snapshot, including
status, of the job selected. The user will be able to
drill down to details about that job via the naming
convention established in the configuration module
to view smaller segments or batches contained
within that particular job.

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The Examiner states, “Since a batch or job segment could be as small as a
single document (Pigos, Jr. et al. does not exclude this possibility), Pigos, Jr.
et al. encompasses the possibility that a user could “drill down” to the
individual document level.” (Answer 22.)
It is well settled that in order for the examiner to establish a prima
facie case of anticipation, each and every element of the claimed invention,
arranged as required by the claim, must be found in a single prior art
reference, either expressly or under the principles of inherency. See
generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997);
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78 (Fed. Cir.
1988); Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick,
730 F.2d 1452, 1458 (Fed. Cir. 1984).
Claim 1 recites the step of “displaying a graphical representation of a
group of documents within the inserter stage, the graphical representation of
the group of documents including graphically distinct sub-groups” and the
step of “displaying the selected sub-group in an expanded form including a
graphical representation of individual documents, the graphical
representations of individual documents indicating the status of the
individual document.” (FF 1-2.) Claim 11 includes similar limitations. (FF
3-4.) We construe the claim to require multiple documents in a sub-group.
The ordinary and customary meaning of “group” is two or more. (FF 5-6.)
Further, the claim recites the plural “documents.” The claimed sub-group
must contain more than one document.
Therefore, if the batch in Pigos contained one document as argued by
the Examiner, Pigos does not anticipate the claims. A batch with one
document would not meet the recited sub-group limitation. Figure 12 of
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Pigos shows a batches panel which could be considered to be displaying
sub-groups of documents (i.e. a batch) in a table. (FF 27.) Each batch is
listed in a row of the table. (FF 27.) To gain further information about the
transactions related to a specific batch in Pigos, the row related to a selected
batch can be highlighted and the “show transactions” button pushed.
(FF 29.) A transactions panel as seen in Figure 13 is then displayed.
(FF 30.) The transactions panel includes the status of the batch, for example
when the batch started insert processing or finished insert processing.
(FF 30.) This expanded form does not include a representation of
individual documents. Pigos does not describe tracking individual
documents but batches of documents.
We find that while Pigos describes displaying a selected sub-group in
an expanded form, the expanded form does not include a representation of
individual documents and their status. Therefore, we hold that the Examiner
erred in rejecting claims 1 and 11 under 35 U.S.C. 102(e) since Pigos does
not anticipate claims 1 and 11.
Claims 2, 4, 7-8, 10-12, 14, and 17-18 are dependent on claim 1 or 11.
For the same reasons, we will not sustain the rejection of claims 2, 4, 7-8,
10-12, 14, and 17-18 over the cited prior art. Thus, the rejection of these
claims is also reversed.

The rejection of claims 21 and 25 under §102(e) as being anticipated by
Pigos.
The Appellants argue that Pigos does not describe using a unique
identifier or a non-recurring identifier as recited by claims 21 and 25.
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(Br. 10.) The Examiner contends that the statement ID in Pigos is a unique
identifier that is used at each stage of document processing. (Answer 6.)
Again, the Examiner seems to argue that a batch could be one document.
(Answer 6.)
Claim 21 states, “each document within the production and
management process having a unique identifier” and “specifying the unique
identifier of a particular document, the unique identifier applicable to the
particular document across all of the plurality of stages.” (FF 7-8.) Claim
25 states, “storing records relating to individual documents processed by the
document production and management process, each record being identified
by a non-recurring identifier.” (FF 9.)
We find that the statement ID in Pigos does not meet the unique
identifier or non-recurring identifier limitations of claims 21 and 25. The
statement ID number is not unique to each batch, nor is it non-recurring. As
seen in Figure 12, the statement ID number 102AFLA is used for five
batches. (FF 27.)
Therefore, we find that the Examiner erred in rejecting claims 21 and
25 under 35 U.S.C. 102(e) since Pigos does not anticipate claims 21 and 25.

The rejection of claims 3, 5, 13 and 15 under §103(a) as being unpatentable
over Pigos in view of Gawler.
Claims 3, 5, 13, and 15 are dependent on claim 1 or 11 whose
rejection we have reversed above. The Examiner has not provided any
additional reasons why Pigos and Gawler would lead one of ordinary skill in
the art to the limitations of claims 1 and 11 discussed above besides
contending that Pigos describes these limitations. For the same reasons, we
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will not sustain the rejection of claims 3, 5, 13, and 15 over the cited prior
art.

The rejection of claim 26 under §103(a) as being unpatentable over Pigos in
view of Gawler.
Claim 26 are dependent on claim 25 whose rejection we have reversed
above. The Examiner has not provided any additional reasons why Pigos
and Gawler would lead one of ordinary skill in the art to the limitations of
claim 25 discussed above besides contending that Pigos describes these
limitations. For the same reasons, we will not sustain the rejection of claims
26 over the cited prior art.

The rejection of claims 9, 19 and 22 under §103(a) as being unpatentable
over Pigos in view of Munetomo.
Claims 9, 19, and 22 are dependent on claim 1, 11, or 21, whose
rejection we have reversed above. The Examiner has not provided any
additional reasons why Pigos and Munetomo would lead one of ordinary
skill in the art to the limitations of claims 1, 11, and 21 discussed above
besides contending that Pigos describes these limitations. For the same
reasons, we will not sustain the rejection of claims 9, 19, and 22 over the
cited prior art.

The rejection of claim 10, 20 and 23 under §103(a) as being unpatentable
over Pigos in view of Altman.
Claims 10, 20, and 23 are dependent on claim 1, 11, or 21 whose
rejection we have reversed above. The Examiner has not provided any
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additional reasons why Pigos and Altman would lead one of ordinary skill in
the art to the limitations of claims 1, 11, and 21 discussed above besides
contending that Pigos describes these limitations. For the same reasons, we
will not sustain the rejection of claims 10, 20, and 23 over the cited prior art.

The rejection of claim 24 under §103(a) as being unpatentable over Pigos in
view of Moore, Zetmeir and Schererz.
The Appellants argue 1) that the Examiner has not shown adequate
motivation to combine the inventions and 2) that none of the references
describe the use of consistent document identifiers across various stages.
(Br. 12.)
First, Appellants argue that the Examiner has not shown adequate
motivation to combine the inventions. (Br. 12.) However, the Appellants
have not provided any reasons or evidence as to why the Examiner’s stated
reasoning (FF 52-54) is inadequate. “Cordis offers only a perfunctory
argument that it would have been obvious at the time of Voda’s invention to
… Cordis makes no argument and cites no evidence to support this
conclusion. … . See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d
1312, 1320-21 (Fed. Cir. 2006) (treating insufficiently developed arguments
as waived).” Voda v. Cordis Corp., 536 F.3d 1311, 1324 (Fed. Cir. 2008).
Second, Appellants argue that none of the references describe the use
of a document identifier across the various stages as recited in claim 24.
(Br. 12.) Claim 24 recites completed mail pieces and reply documents
including a document identifier. (FF 12.) The document identifier is
provided to a life cycle monitoring computer multiple times including when
scanned off of a returned reply document. (FF 10-17.)
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However, we find that the combination of Pigos, Moore, Zetmeir and
Scherez would lead one of ordinary skill in the art to use document
identifiers across the claimed stages. Pigos teaches tracking batches of
documents using barcodes (FF 21-22) across multiple processing machines
(FF 20). Zetmeir teaches printing a unique barcode on the response portion
of an individually mailed advertisement and then using the barcode to track
incoming responses. (FF 43-44.) We find that one of ordinary skill in the
art would be led by Pigos and Zetmeir to use one barcode to track a
document from printing to receiving a response in order to provide valuable
information (FF 53.)
Therefore, we hold that the Appellants have not shown that the
Examiner erred in rejecting claim 24.

CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting:
claims 1-2, 4, 7-8, 11-12, 14, 17-18, 21, and 25 as anticipated under 35
U.S.C. §102(e) by Pigos;
claims 3, 5, 13, 15, and 26 are rejected under 35 U.S.C. §103(a) as
unpatentable over Pigos in view of Gawler;
claims 9, 19, and 22 are rejected under 35 U.S.C. §103(a) as unpatentable
over Pigos in view of Munetomo; and
claims 10, 20, and 23 are rejected under 35 U.S.C. §103(a) as
unpatentable over Pigos in view of Altman.
Appeal 2009-0009
Application 10/280,339

23
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claim 24 under 35 U.S.C. § 103(a) as unpatentable over
Pigos, Moore, Zetmeir and Schererz.

DECISION
The decision of the Examiner to reject claims 1-5, 7-15, 17-23, and
25-26 is reversed. The decision of the Examiner to reject claim 24 is
sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007).

Appeal 2009-0009
Application 10/280,339

24
AFFIRMED-IN-PART

LV:

PITNEY BOWES INC.
35 WATERVIEW DRIVE
P.O. BOX 3000
MSC 26-22
SHELTON, CT 06484-8000