Ex Parte Sansone

Board of Patent Appeals and Interferences

Oct 11, 2007

09818480 (B.P.A.I. Oct. 11, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte RONALD P. SANSONE
_____________

Appeal No. 2007-2250
Application No. 09/818,480
Technology Center 3600
______________

Decided: October 11, 2007
_______________

Before TERRY J. OWENS, ANITA PELLMAN GROSS, and
ROBERT E. NAPPI Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the final
rejection of claims 1 through 34. For the reasons stated infra, we will not
sustain the Examiner’s rejection of these claims.

Appeal 2007-2250
Application 09/818,480

INVENTION

The invention is directed to a method of notifying people that they
will receive letters or packages prior to physical delivery. See page 3 of
Appellant’s Specification. Claim 1 is representative of the invention and
reproduced below:
1. A method that enables a recipient to inform a carrier of the
manner in which the recipient wants some or all of their mail that is
placed in trays or tubs by the sender and is transported in trays or tubs
delivered, said method comprises the steps of:
scanning the name and physical address of the recipient and the
sender of the mail after the mail has been sealed;
capturing by the sender the name and physical address of the
recipient and the sender in the form of an image;
transmitting the image to a data center where the image is
processed by translating the image consisting of text and graphics to
selected alphanumerics;
translating the name and physical address of the recipient into
an e-mail address;
notifying the recipient of the expected delivery of the sealed
mail and indicating the selected alphanumerics of the translated
image;
depositing with the carrier the sealed mail containing the
recipient's name and physical address and the sender's name and
address;
notifying a data center by the recipient of the manner in which
the recipient wants some or all of their mail delivered;
notifying by the data center the carrier of the manner in which
the recipient wants the mail delivered; and
delivering by the carrier mail to the recipient in the manner
specified by the recipient to the carrier.

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Appeal 2007-2250
Application 09/818,480

REFERENCES

The references relied upon by the Examiner are:

Higgins US 5,754,671 May 19, 1998

Smith (Smith ‘808) US 2002/0042808 A1 Apr. 11, 2002
(effectively filed Sep. 29, 2000)

Smith (Smith ‘306) US 2002/0095306 A1 Jul. 18, 2002
(effectively filed Sep. 29, 2000)

REJECTION AT ISSUE
Claims 1 through 34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith (‘306 or ‘808) in view of Higgins. The Examiner’s
rejection is set forth on pages 4 through 7 of the Answer. Throughout the
opinion, we make reference to the Brief (filed January 30, 2006) and the
Answer (mailed September 1, 2006) for the respective details thereof.
ISSUES
Appellant contends that the Examiner’s rejection of independent claim
1 under 35 U.S.C. § 103(a) is in error. Appellant asserts that:

Neither Smith nor Higgins, taken separately or together,
discloses or anticipates the steps of claim 1, namely, capturing by the
sender the name and physical address of the recipient and the sender
in the form of an image; transmitting the image to a data center where
the image is processed by translating the image consisting of text and
graphics to selected alphanumerics; translating the name and physical
address of the recipient into an e-mail address; and notifying the
recipient of the expected delivery of the sealed mail and indicating the
selected alphanumerics of the translated image.

(Br. 15, 16.)
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Appeal 2007-2250
Application 09/818,480

The Examiner responds stating:

[T]he modified method of Smith et al. does include the essential
method steps of capturing', transmitting', translating; and notifying to
enable a recipient to inform a carrier of the manner in which the
recipient wants some or all of their mail. Furthermore, the appellant
never expressly claim a particular approach (e.g. using the user ID or
not requiring the ID) to capture the mail piece to patentably
distinguish from the prior ad. Accordingly, the difference between the
appellant's invention and Smith et al. would be obvious.

(Answer 8).

Thus, Appellant’s contentions present us with the issue of whether the
combination of Smith (‘306 or ‘808) and Higgins would have made obvious
a system in which the name and physical address of the recipient and the
sender are captured in the form of an image; then the image is processed by
translating the image consisting of text and graphics to selected
alphanumerics; and then a data center translates the name and physical
address of the recipient into an e-mail address.

FINDINGS OF FACT
Smith (‘306) teaches a mail tracing and tracking system. See abstract.
A user of the system accesses a web page and is able to see mail or packages
that are to be delivered to the user. The user can also obtain information
about the mail or packages. See figure 3 and paragraph 0010. The system
allows a user to see an image of the mail; the image may be created by
scanning the mail by the Post Office. See figure 6 and paragraph 0038.
Smith (‘306) teaches that the additional information displayed to the user is
supplied directly from the sender through machine readable code, pre-coded
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Appeal 2007-2250
Application 09/818,480

delivery labels, or electronic mailings. See paragraph 0040. The system
makes use of a database which links user physical address, e-mail, and user
ID. See paragraph 0049. The user ID is used by the system to identify the
user and to provide access to the system. See paragraph 0054. Smith (‘306)
incorporates by reference the disclosure of Smith (‘808). See paragraph
0020.
Smith (‘808) discloses that the tracking system can be used to perform
selected actions with the mail such as change delivery method or location.
See paragraph 0015. Further, Smith (‘808) teaches that the system can use
identifiers other than physical address of the user to determine the identity of
the individual to whom the letter or package is destined. Smith (‘808)
discusses addressing physical letters using an identifier such as an e-mail
address; this address can then be correlated with the individual’s current
physical address. See paragraph 0025. Further, Smith (‘808) teaches that
the identifiers can be machine read from the letter, and the current physical
address is then printed on the letter for physical delivery. See paragraphs
0026 and 0027. We find no discussion in Smith (‘808) of scanning in a
physical address and translating it to an e-mail address.
Higgins teaches a system for recognition of an address on a letter
which has been hand written in cursive. See abstract. We find no discussion
in Higgins of scanning a physical address and translating it to an e-mail
address.

PRINCIPLES OF LAW
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Appeal 2007-2250
Application 09/818,480

Office personnel must rely on Appellant’s disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980, 34 USPQ2d 1321, 1330 (Fed.
Cir. 1995). “[I]nterpreting what is meant by a word in a claim ‘is not to be
confused with adding an extraneous limitation appearing in the specification,
which is improper.’” (emphasis original) In re Cruciferous Sprout
Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202, 1205 (Fed. Cir. 2002)
(citing Intervet America Inc v. Kee-Vet Laboratories Inc., 887 F.2d 1050,
1053, 12 USPQ2d 1474, 1476 (Fed. Cir. 1989).
ANALYSIS
Independent claim 1 recites “capturing … the name and physical
address of the recipient and the sender in the form of an image … the image
is processed by translating the image consisting of text and graphics to
selected alphanumerics … translating the name and physical address of the
recipient into an e-mail address.” Thus, we find the scope of claim 1
includes that an image of the letter which contains a physical address is
captured, and the physical address is translated into an e-mail address.
As discussed supra, we do not find that either of the Smith references
teaches translating a physical address to an e-mail address, nor do we find
that Higgins teaches this step.1
CONCLUSION
We consider the Examiner’s rejection under 35 U.S.C. § 103(a) to be
in error as we do not find that the combination of the references applied by

1 We note that Kuebert, US 2002/0165729 A1 (of record) does appear to
teach this limitation, see paragraphs 22, 27, 36.
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Appeal 2007-2250
Application 09/818,480

the Examiner teaches all of the limitations of independent claim 1.
Accordingly, we will not sustain the Examiner’s rejection of independent
claim 1 or dependent claims 2 through 34 under 35 U.S.C. § 103(a). It is
recommended that the Examiner reconsider whether the claims are
anticipated or obvious over Kuebert.

ORDER

For the forgoing reasons, we will not sustain the Examiner’s
rejections of claims 1 through 34 under 35 U.S.C. § 103. The decision of the
Examiner is reversed.

REVERSED
ce

PITNEY BOWES INC.
35 WATERVIEW DRIVE
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