Ex Parte Sansone

Board of Patent Appeals and Interferences

Jun 14, 2002

08753236 (B.P.A.I. Jun. 14, 2002)

1 Application for patent filed November 22, 1996, entitled
"System For The Enhancement Of Information Based Indicia And
Postage Security Devices."
- 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and is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte RONALD P. SANSONE

Appeal No. 2000-0376
Application 08/753,2361

ON BRIEF

Before JERRY SMITH, BARRETT, and BARRY, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
final rejection of claims 1-7 and 9-39.
We affirm-in-part.
Appeal No. 2000-0376
Application 08/753,236
- 2 -
BACKGROUND
The disclosed invention is summarized in Appellant's brief
at pages 3-5. The United States Postal Service (USPS) has
published a proposed specification for an Information-Based
Indicia (IBI) postal security device (PSD). The IBI is a special
indicia containing information about the mail piece. The PSD is
a unique security device that provides cryptographic security and
performs the function of postage meter registers. The system
includes a PSD manufactured by a meter manufacturer, a personal
computer manufactured by a computer manufacturer, and a printer
manufactured by a printer manufacturer, The meter manufacturer
does not decide what printer and computer the user of the
metering system will use. A problem exists where indicia cannot
be read because of the printer. The disclosed invention records
information about the printing parameters in or near the indicia
which permits gathering information about printers, printer
settings, paper envelopes, inks, and toners that cannot be read
by IBI scanners and eventual elimination of printers and printing
parameters that cannot be reliably read.
Appellant discloses that printing parameters include the
manufacturer of the printer that printed the indicia, the printer
model, the print density, the print dither type, envelope size,
paper type, type of ink used to print the indicia, and toner type
(specification, pp. 5-6).
Appeal No. 2000-0376
Application 08/753,236
- 3 -
Claim 1 is reproduced below.
1. An improved metering system that affixes an indicia
to a mail piece, the improvement comprising: recording
information relative to printing parameters of a printer
that recorded the indicia on the mail piece, wherein the
recorded information is recorded in the indicia or in the
vicinity of the indicia to provide evidence of the printer
printing parameters used to record the indicia.
THE PRIOR ART
The Examiner relies on the following references:
Chapman, Jr. (Chapman) 4,106,060 August 8, 1978
Kipphan et al. (Kipphan) 4,955,290 September 11, 1990
Bruns et al. (Bruns) 5,005,995 April 9, 1991
Johnsen 5,151,684 September 29, 1992
Dietrich 5,186,498 February 16, 1993
Kim et al. (Kim) 5,480,239 January 2, 1996
Billington 5,489,767 February 6, 1996
Morrison et al. (Morrison) 5,543,177 August 6, 1996
Smaha et al. (Smaha) 5,557,742 September 17, 1996
Cordery et al. (Cordery) 5,655,023 August 5, 1997
(filed May 13, 1994)
Zabele 5,712,921 January 27, 1998
(filed November 17, 1995)
Mizutani 5,774,146 June 30, 1998
(filed August 30, 1996)
Schwartz et al. (Schwartz) 5,780,778 July 14, 1998
(filed June 7, 1995)
Information Based Indicia Program Postal Security Device
Specification, prepared for United States Postal Service
(USPS) Engineering Center (June 13, 1996) (hereinafter
Information Based Indicia Program or IBIP).
The main reference to Dietrich is summarized below.
Dietrich disclose a method of identifying a postage meter
and monetary value stamping machine, which uses microprocessor-
controlled printing methods, such as laser printing, dot matrix
Appeal No. 2000-0376
Application 08/753,236
- 4 -
printing, or thermal printing, that cannot be counterfeited
(col. 1, lines 33-42). In microprocessor-controlled printing
methods in postage meter and monetary value stamping machines,
the material to be printed by stamping is produced by
microprocessors, memories, and registers (col. 2, lines 21-24).
The printing pattern or image is generated immediately before
printing from stored data, such as printing block patterns and
current data, like the date and amount of the fee (col. 2,
lines 24-28). An identification characteristic identifying the
postage meter and monetary stamping machine is also printed. To
make the identification characteristic uncounterfeitable,
parameters of the particular machine are linked with elements of
the fee amount and date to be printed and encrypted (col. 2,
lines 30-33). As shown in figure 1, the machine parameters MP,
such as a serial number or factory number (col. 2, lines 36-37),
a number of imprints with a date DT, a value setting VS, and
optionally numbers of an advertising printing block (not shown)
are linked by means of a cryptographic algorithm CA (called KA in
the specification) to be incorporated into the printing pattern
through printer control PC (called DS in the specification)
(col. 2, lines 34-43). The encrypted number is said to be
imprinted in the "open" (col. 1, lines 53-54; col. 2, line 60),
which we interpret to mean part of the final assembled printing
pattern, but separate from the part of the printing pattern
Appeal No. 2000-0376
Application 08/753,236
- 5 -
indicating the usual postage meter information of date, amount of
the fee, block patterns, etc.
THE REJECTIONS
Claims 1, 7, 9, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dietrich and Bruns.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietrich, Bruns, and IBIP.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietrich, Bruns, and Cordery.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietrich, Bruns, Cordery, and either Johnsen or
Schwartz.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietrich, Bruns, Cordery, Kipphan, and either
Johnsen or Schwartz.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietrich, Bruns, and Official Notice that it
was known to use human readable codes.
Claims 10, 11, and 39 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dietrich, Bruns, Morrison,
and Mizutani.
Claims 12-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dietrich, Bruns, and Morrison.
Appeal No. 2000-0376
Application 08/753,236
- 6 -
Claims 17, 18, 25-28, and 30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dietrich, Bruns, and Kim.
Claims 19-21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dietrich, Bruns, Billington, and Chapman.
Claims 23, 24, 29, 32, and 33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dietrich, Bruns, Morrison,
and Kim.
Claims 22, 31, and 34 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dietrich, Bruns, Morrison,
Mizutani, and Kim.
Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dietrich, Bruns, Kim, and Smaha.
Claims 37 and 38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dietrich, Bruns, and Zabele.
We refer to the final rejection (Paper No. 5) (pages
referred to as "FR__") and the examiner's answer (Paper No. 12)
(pages referred to as "EA__") for a statement of the Examiner's
rejection, and to the appeal brief (Paper No. 11) (pages referred
to as "Br__") for a statement of Appellant's arguments
thereagainst.
Appeal No. 2000-0376
Application 08/753,236
- 7 -
OPINION
Grouping of claims
The claims within each ground of rejection are grouped to
stand or fall together (Br7). One exception is claim 28.
Although not really argued, it corresponds to a limitation in
claim 5, which rejection is reversed, and we exercise our
discretion to reverse the rejection of this claim separate from
the other claims.
Claims 1, 7, 9, and 16 ) Dietrich and Bruns
The Examiner finds that Dietrich does not mention "printing
parameters" (FR2). The Examiner finds that Bruns discloses a
system that records information relative to printing parameters
of a printer to identify a printer component (the print wheel)
(EA5). The Examiner concludes that it would have been obvious to
modify Dietrich to include Bruns printing parameters because this
would completely specify the machine and increase the number of
parameters that a counterfeiter would have to manipulate to
escape detection (EA5).
In the examiner's answer, the Examiner further finds (EA5)
that Dietrich does not explicitly describe that the recording is
"in the indicia or in the vicinity of the indicia." "Indicia"
refers to the usual postage, date, place, etc. placed on a mail
piece by a postage meter, and corresponds to the printing pattern
Appeal No. 2000-0376
Application 08/753,236
- 8 -
in Dietrich. Dietrich discloses that the machine parameters are
assembled into the final imprint or printing pattern, which can
be considered indicia, so the recorded information is in the
indicia or in the vicinity of the indicia. Dietrich also
discloses that the additional identification characteristics are
imprinted in the open, which suggests that they are printed in
the vicinity of, but separated from, the postal-related indicia.
Thus, the limitation of recording information "in the indicia or
in the vicinity of the indicia" is not a difference.
Bruns relates to a method of automatically identifying a
print wheel to permit automatic control of printing parameters.
Bruns discloses that printers may use a large number of print
wheels and the print wheels may be arranged within cartridges
which can interchangeably inserted into a printer. Bruns states
the problem as follows (col. 1, lines 39-48):
Although both the print wheels and their associated
cartridges have the same structure, printing conditions
differ depending on the type or consistency of a print
wheel, so that, when print wheels are to be exchanged,
operating conditions on the side of the printer itself must
be changed to correspond to the exchange of print wheels.
For example, the imprint strength, pitch, ribbon advance
and/or other parameters may need adjustment when changing
print wheels to obtain satisfactory printing.
One piece of identifying information (e.g., data identifying the
particular print wheel) is recorded on the print wheel by the
angle
between a slot 17 indicating a zero position of the print
wheel 1 and a stopping element (e.g., detent recess 32)
Appeal No. 2000-0376
Application 08/753,236
- 9 -
(figure 1). Two pieces of identifying information are recorded
on the print wheel by using two stopping elements, such a recess
37 having side edges 38 and 39 disposed at angles
1 and
2 with
respect to the slot 17 (figure 3). In the case of figure 3, the
print wheel is rotated to the left and right to determine the
identity codes
1 and
2 (figure 5), where the degrees are
measured by counting clock pulses provided by scanning markings
on a clocking disk on the printer wheel. With the aid of the two
recorded identity codes
1 and
2, the control device
(microprocessor) 35 in figure 4 obtains identification data from
the memory 36 required to control print intensity, ribbon
advancing step width, and other parameters of the printing device
for the newly inserted print wheel (col. 8, lines 1-6). Thus,
the operator need not perform any additional settings when a
print wheel is exchanged for a new print wheel since the printer
functions are automatically adapted to the set of type faces
carried by the newly inserted print wheel (col. 6, lines 28-33).
The printing parameters in Bruns are stored in the
microprocessor memory and are never printed out. The identity
codes
1 and
2 are "recorded" on the printer wheel as angles
between a slot 17 and stopping elements, but are never "recorded"
in the sense of being printed out and are never part of anything
which might be considered indicia. The identity codes
1 and
2
are used only to retrieve the printing parameters from memory for
Appeal No. 2000-0376
Application 08/753,236
- 10 -
automatically controlling the printer functions to adjust to the
new print wheel. Because Bruns never prints out the identity
codes or the printing parameters, we do not find any motivation
for modifying Dietrich. The Examiner does not explain how this
hardware coded information suggests modifying Dietrich.
Nevertheless, we find that claim 1 is anticipated by
Dietrich. Anticipation is the epitome of obviousness. Dietrich
affixes the usual postage information (indicia) to a mail piece.
Dietrich records additional identification characteristics
information regarding machine parameters, such as a serial number
or factory number, which is either in the indicia (if indicia
includes all information in the final printing pattern) or in the
vicinity of the indicia (if indicia is only the postage
information). The machines are postage meter and monetary value
stamping machines using microprocessor-controlled printers
(col. 1, lines 37-39) and, so, are broadly printers. Thus, the
machine parameters are broadly printer parameters. The only
question is whether the information regarding machine (printer)
parameters in Dietrich constitutes "information relative to
printing parameters of a printer" (emphasis added). Appellant
discloses that the printing parameters include the manufacturer
of the printer that printed the indicia and the printer model, in
addition to information about the actual printing process, such
as the print density, the print dither type, envelope size, paper
Appeal No. 2000-0376
Application 08/753,236
- 11 -
type, type of ink used to print the indicia, and toner type
(specification, pp. 5-6). Thus, "printing parameters" must be
interpreted, consistent with the disclosure, broadly enough to
include machine hardware identification parameters as taught by
Dietrich and is not limited to printing process parameters.
Furthermore, it can be appreciated that the machine to which the
machine parameter (e.g., serial number) is known to correspond
broadly indicates printing parameters, such as whether the
machine uses laser printing, dot matrix printing, or thermal
printing (col. 1, lines 38-39). Appellant seems to admit that
Dietrich is printing parameters of the entire machine (Br9).
Appellant's arguments do not demonstrate error. The
description about how the disclosed invention works (Br9-10) is
not persuasive because we do not find those limitations in the
claimed invention. In particular, the limitation of "printing
parameters" is broad enough to read on disclosed hardware
parameters such as the manufacturer of the printer that printed
the indicia and the printer model, which have nothing to do with
the actual printing process. Appellant has not shown that the
claimed "printing parameters" does not read on the serial number
or factory number disclosed in Dietrich. Where later claims
recite limitations having to do with the actual printing process,
such as the printer settings (claim 5) and the type of toner
(claim 14), we conclude that the Examiner has failed to establish
Appeal No. 2000-0376
Application 08/753,236
- 12 -
obviousness. The argument that Appellant's invention is not
concerned with security (Br10) is not persuasive because the
prior art need not suggest solving the same problem set forth by
Appellant. See In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897,
1901 (Fed. Cir. 1990) (in banc) (overruling in part In re Wright,
848 F.2d 1216, 6 USPQ2d 1959 (Fed. Cir. 1988)). However, we are
not persuaded by the Examiner's reasoning that every modification
in the dependent claims would have been suggested for reasons of
improved security to prevent counterfeiting.
For the reasons stated above, we sustain the rejection of
claims 1, 7, 9, and 16.
Claim 2 ) Dietrich, Bruns, and IBIP
Claim 2 recites that the indicia is Information-Based
Indicia. The Examiner finds that the IBIP proposes the use of
Information-Based Indicia (IBI) (EA7). The Examiner concludes
that it would have been obvious to implement the indicia in
Dietrich as IBI in view of IBIP. The Examiner also concludes
that it would have been obvious to modify Dietrich to use IBI
because it aids in preventing and detecting counterfeiting and it
increases the number of parameters that a counterfeiter would
have to manipulate to escape detection (EA8).
Appellant argues that IBIP does not mention or anticipate
that the IBI would not be able to be read due to the use of
Appeal No. 2000-0376
Application 08/753,236
- 13 -
incorrect printers, defective printers, or improper envelopes,
and that this problem may be greatly reduced by the recording of
printing parameters of a printer that recorded an IBI (Br12). It
is argued that the claimed invention will save the consumer and
the USPS money by informing them of the manner that the postal
indicia was produced and this will reduce the number of
unreadable indicia that are produced (Br13-14).
IBIP teaches recording indicia information as IBI. One of
ordinary skill in the art would have been motivated to record the
postal indicia of Dietrich as IBI if that was a recognized
standard for indicia. Claim 2 requires no more than this. The
additional identification characteristic in Dietrich could still
be printed as an open imprint as part of the final printing
pattern. Claim 2 does not recite any specific parameters
relating to the process of printing the indicia and, so,
Appellant's arguments about the disclosed invention are not
commensurate in scope with the claim language. Accordingly,
Appellant has failed to show error in the rejection. The
rejection of claim 2 is sustained.
Claim 3 ) Dietrich, Bruns, and Cordery
Claim 3 recites that the recorded information about the
printer is the manufacturer of the machine used to print the
indicia. The Examiner finds that this limitation is not taught
Appeal No. 2000-0376
Application 08/753,236
- 14 -
by Dietrich, but finds that Cordery discloses a method for
marking mail with indicia identifying a manufacturer of the
indicia stamping system, which is suggestive of identifying the
machine manufacturer, and serves the same purpose of tracking the
source of the indicia printing (EA8). The Examiner concludes
that it would have been obvious to modify Dietrich to include the
machine manufacturer because it aids in preventing and detecting
counterfeiting and it increases the number of parameters that a
counterfeiter would have to manipulate to escape detection (EA9).
Appellant argues that USPS regulations require that the
manufacturer of a postal metering system identify the serial
number of the meter that produced the indicia to reduce the
possibility of fraud, but USPS regulations do not mention or
anticipate that the manufacturer of the printer be included in
the postal indicia (Br14). It is argued that Appellant is not
concerned with the increase in security (Br14).
It seems that Appellant is trying to make a distinction
between the manufacturer of the postal metering system and the
manufacturer of the printer. The postal metering system of
Dietrich includes a printer (col. 1, lines 38-39) and, thus, the
manufacturer of the system is also "the manufacturer of the
machine used to print the indicia," as claimed. Claim 3 does not
require a printer separate from rest of the system as disclosed.
Appeal No. 2000-0376
Application 08/753,236
- 15 -
Cordery discloses recording indicia graphics indicating the
manufacturer, such as the eagle design in figure 2 (col. 6,
lines 9-11). Cordery also discloses recording a Vendor
Identification Code 208 (manufacturer) and a Secure Portable
Storage Device (SPSD) Identification (serial number) in a
vicinity of the postal indicia (figure 2; col. 6, lines 35-40).
While the manufacturer and serial number in Cordery are of the
SPSD, not the printer, Cordery does teach recording the
manufacturer. Dietrich teaches recording the serial number or
factory number information about the postal metering system,
which includes a printer (col. 1, lines 38-39). In our opinion,
the serial number or factory number in Dietrich must inherently
identify the manufacturer because the USPS needs to be able to
trace a machine back to a particular manufacturer, so claim 3
would have been obvious over Dietrich alone. However, we agree
with the Examiner that it would have been obvious to record the
postal metering system machine manufacturer in view of Cordery.
The rejection of claim 3 is sustained.
Claim 4 ) Dietrich, Bruns, Cordery, and either Johnsen or
Schwartz
Claim 4 recites that the recorded information about the
printer is the manufacturer and model number. The Examiner finds
that these limitations are not taught by Dietrich. The Examiner
concludes that it would have been obvious to record the
Appeal No. 2000-0376
Application 08/753,236
- 16 -
manufacturer in Dietrich in view of Cordery for the reasons
stated with respect to claim 3 (EA9). The Examiner finds that
Johnson teaches a tag device for attachment to an item of
inventory that includes the model number of the item (EA9). The
Examiner further finds that Schwartz discloses a postage system
that detects unauthorized copying of software by checking the
model number of the system during subsequent uses (EA10). The
Examiner concludes that it would have been obvious to modify
Dietrich in view of Johnsen or Schwartz to include the printer
model number and machine manufacturer because it aids in
preventing and detecting counterfeiting and it increases the
number of parameters that a counterfeiter would have to
manipulate to escape detection (EA9-10).
Appellant argues that claim 4 is not directed to a system
that enhances security. It is described that some postal
metering systems employ a Postal Security Device manufactured by
a meter manufacturer, a personal computer manufactured by a
computer manufacturer, and a printer manufactured by a printer
manufacturer and that the meter manufacturer does not decide what
printer and computer the user of the metering system will use
(Br16). Appellant argues that he has discovered that the ability
of the postal scanner to read postal indicia is dependent upon
the printer because different model printers have different
characteristics (Br16).
Appeal No. 2000-0376
Application 08/753,236
- 17 -
Appellant's arguments are not commensurate in scope with
claim 4. Claim 4 requires only hardware information, not
information relating to the actual printing process. Claim 4
does not require a separate Postal Security Device, computer, and
printer. Nor does claim 4 recite any purpose or intended use for
the recorded information.
Johnsen discloses a tag device attached to merchandise for
the purpose of security, surveillance, pricing, tracking,
accounting, and inventory control (abstract). The tag device 10
has a display panel 14 for displaying human readable text, such
as the price and description, and a machine readable bar code
(col. 4, lines 22-44). Each tag device can be provided with
information such as a product model number, manufacturer vendor
number, serial number, and purchase order number (col. 8,
lines 28-31).
Schwartz discloses a postage scale system in which the user
needs to enter a valid authorization number to enable the new
application software (abstract; col. 10, lines 18-22). The
authorization number includes an electronic signature, which is
generated using the serial number, model number, and other
parameters (col. 10, lines 22-34).
While both Johnsen and Schwartz disclose model numbers,
neither suggests recording the model number of the printer as
part of the information. It is not clear to us why one of
Appeal No. 2000-0376
Application 08/753,236
- 18 -
ordinary skill in the art would have looked to Johnsen for
solutions to postage systems or how Johnsen suggests modifying
Dietrich to arrive at the claimed invention. Nevertheless, one
of ordinary skill in the art would have recognized that the
serial number or factory number in Dietrich must identify
everything needed by the USPS to be able to trace a machine back
to a particular manufacturer, including manufacturer, model
number, etc. Therefore, we conclude that it would have been
obvious to provide information about the manufacturer and model
number of the postal metering system in Dietrich, which includes
a printer (col. 1, lines 38-39). The rejection of claim 4 is
sustained.
Claim 5 ) Dietrich, Bruns, Cordery, Kipphan, and either Johnsen
or Schwartz
Claim 5 recites that the recorded information about the
printer is the manufacturer, the model number, and the printer
settings used to print the indicia. The Examiner concludes that
it would have been obvious to record the manufacturer and model
number in Dietrich in view of Cordery and either Johnsen or
Schwartz for the reasons stated with respect to claim 4 (EA11).
The Examiner finds that Kipphan discloses a method of assigning
particular printer settings with the corresponding printer
(EA11). The Examiner concludes that it would have been obvious
to modify Dietrich in view of Kipphan to include printer settings
Appeal No. 2000-0376
Application 08/753,236
- 19 -
because it aids in preventing and detecting counterfeiting and it
increases the number of parameters that a counterfeiter would
have to manipulate to escape detection (EA11-12).
Appellant makes generally the same arguments as with respect
to claim 4, except that printer settings is mentioned (Br17).
Kipphan discloses a system for associating a single ink
density measuring device with a group of printing machines that
are typically of different construction or models (col. 5,
lines 3-6) and for remotely controlling printing machines with a
common ink measuring device (col. 2, lines 64-67). Kipphan
discloses that mechanical machine characteristics include various
parameters and settings (col. 2, lines 24-31).
However, Kipphan does not suggest recording information
about the printer settings used to print the indicia. It is not
clear to us why one of ordinary skill in the art would have
looked to Kipphan for solutions to postage systems or how Kipphan
suggests modifying Dietrich to arrive at the claimed invention.
We disagree with the Examiner's reasoning that it would have been
obvious to record any kind of information for reasons of security
and to prevent counterfeiting. The only motivation we find for
recording information about the printer settings used for
printing the indicia is found in Appellant's disclosure. We
conclude that the Examiner has failed to establish a prima facie
case of obviousness as to the limitation of recording information
Appeal No. 2000-0376
Application 08/753,236
- 20 -
about the printer settings used to print the indicia. The
rejection of claim 5 is reversed.
Claim 6 ) Dietrich, Bruns, and Official Notice
Claim 6 recites that the recorded information about the
printer is recorded in human readable code. The Examiner takes
Official Notice that it was known to use human readable codes
(FR8; EA12). The Examiner concludes that it would have been
obvious to modify Dietrich to record machine parameters in human
readable code to allow trusted personnel to recognize the
recorded information (EA12).
Appellant makes a shorter version of the arguments made with
respect to claim 4, except that human readable code is mentioned
(Br18).
Appellant does not point out error in the Examiner's
position that recording information in human readable code would
have been obvious. Dietrich itself indicates that the encrypted
number is imprinted in the open, which suggests that the number
is printed in human readable form, probably something like the
row of numbers 206, 208, 210, 214, 216, and 217 in figure 2 of
Cordery. Perhaps the reason Appellant does not argue error in
the Examiner's position is that printing machine information in
human readable code was well known. In any case, Appellant has
failed to show error. The rejection of claim 6 is sustained.
Appeal No. 2000-0376
Application 08/753,236
- 21 -
Appeal No. 2000-0376
Application 08/753,236
- 22 -
Claims 10, 11, and 39 ) Dietrich, Bruns, Morrisen, and Mizutani
Claim 10 recites that the recorded information indicates the
type of paper on which the indicia was printed. Claim 39 recites
that the printing parameters include information about the
supplies that the printer used to record the indicia. The
Examiner finds that Morrison discloses marking paper using
special inks and Mizutani discloses a sensor that discriminates
between different types of paper (EA13). The Examiner concludes
that it would have been obvious to modify Dietrich and Bruns to
use the Morrisen inks for added security (EA13) and that it would
have been obvious to incorporate a Mizutani sensor in the
combination to detect the type of paper and convey the result in
the indicia (EA13). The Examiner concludes that it would have
been obvious to modify Dietrich in view of Morrison and Mizutani
to indicate the type of paper on which the indicia is printed
because it aids in preventing and detecting counterfeiting and it
increases the number of parameters that a counterfeiter would
have to manipulate to escape detection (EA14).
Appellant argues that the claims are not directed to
providing added security, but record information about the type
of paper to determine print quality (Br19). It is argued that
the print quality may be improved if one knows the printing
parameters and the type of paper used to record the indicia
(Br19).
Appeal No. 2000-0376
Application 08/753,236
- 23 -
Morrison discloses marking materials containing
retroreflective fillers. Copies or marks using such material can
be readily identified, which can permit subsequent identification
of the source of the image (the type of machine, the facility
where the copy was made, or the specific machine unit) (col. 43,
lines 15-25, referred to by the Examiner). Different materials
allow distinguishing between different kinds of marks (col. 43,
lines 36-42, referred to by the Examiner). Other uses of the
reflective material are described at column 2, lines 32-65.
Mizutani discloses discriminating a kind of paper by
performing one or more operations (col. 3, lines 52-63, referred
to by the Examiner). The sensed type of paper permits selection
of the appropriate color conversion table (abstract).
Neither Morrison nor Mizutani suggests recording information
about the type of ink or the type of paper in the indicia; the
only teaching for these limitations is in Appellant's disclosure.
We disagree with the Examiner's reasoning that it would have been
obvious to record any kind of information for reasons of security
and to prevent counterfeiting. Accordingly, the Examiner has
failed to establish a prima facie case of obviousness. The
rejection of claims 10, 11, and 39 is reversed.
Appeal No. 2000-0376
Application 08/753,236
- 24 -
Claims 12-15 ) Dietrich, Bruns, and Morrison
Claim 12 recites that the recorded information indicates the
type of ink that was used to print the indicia. The Examiner
relies on the same reasoning as for claim 10 (EA14). For the
reasons discussed in connection with claim 10, we reverse the
rejection of claims 12-15.
Claims 17, 18, 25-28, and 30 ) Dietrich, Bruns, and Kim
Claims 17 and 18
Claim 17 recites that the reading machine is a scanner.
The Examiner finds that Kim discloses a scanner used to
determine the validity of an indicium on a mail piece (FR10;
EA15). The Examiner concludes that it would have been obvious to
use a scanner as the reading means for reading the recorded
information in Dietrich because using a scanner allows one to
determine the validity of the recorded information and
because it aids in preventing and detecting counterfeiting and it
increases the number of parameters that a counterfeiter would
have to manipulate to escape detection (EA15).
Appellant argues the disclosed invention rather than the
invention broadly claimed in claim 17 (Br21-22).
The indicia and the additional identification
characteristics in Dietrich have to be read somehow and Kim
teaches that it was well known to use a scanner to read the
Appeal No. 2000-0376
Application 08/753,236
- 25 -
printed information on a mail piece. We conclude it would have
been obvious to read the indicia and additional identification
characteristics in Dietrich using a scanner as taught by Kim to
automate the reading process. The Examiner's reasons about
counterfeiting seem inapplicable to the use of a scanner.
Nevertheless, the combination of Dietrich and Kim provides
sufficient evidence to establish a prima facie case of
obviousness. The rejection of claims 17 and 18 is sustained.
Claims 25-28 and 30
Independent claim 25 recites recording information relative
to characteristics of the printer that recorded the indicia and
reading the recorded information to determine whether or not the
recorded information indicates that a printer recognized by the
Postal Service recorded the indicia.
The Examiner finds that Kim discloses a scanner used to
determine the validity of an indicium on a mail piece (EA16).
The Examiner concludes that it would have been obvious to
implement the indicia reading of Dietrich with the system of Kim
to indicate whether or not a printer recognized by the USPS
printed the indicia (EA17). The Examiner concludes that it would
have been obvious to modify Dietrich and Bruns in view of Kim
because it aids in preventing and detecting counterfeiting and it
Appeal No. 2000-0376
Application 08/753,236
- 26 -
increases the number of parameters that a counterfeiter would
have to manipulate to escape detection (EA17).
Appellant argues that he is not detecting a machine approved
by the Postal Service in order to allow the Postal Service to
make use of the resulting security system, but so that printers
that have not been approved will not be used (Br22). It is
argued that Appellant's invention is concerned with the print
quality of the printer that printed the indicia (Br22).
Kim discloses generating graphic indicia image information
from a composite of types of information (figure 3) and printing
the image using a computer driven printer having either a
customized printer driver or a custom printer to modify the dot
size, or the column or row spacing of the dots for the purpose of
preventing counterfeiting. Kim discloses that the indicia is
scanned at a postal facility to detect whether or not the indicia
is valid (figure 4).
Step a) is taught by Dietrich because, as discussed in
connection with the rejection of claim 1, the "information
relative to characteristics of the printer that recorded the
indicia" is broad enough to read on the machine parameters
recorded in Dietrich because the postage meter and monetary value
stamping machines in Dietrich include a printer and
"characteristics of the printer" is disclosed as including
hardware characteristics such as the manufacturer and model
Appeal No. 2000-0376
Application 08/753,236
- 27 -
number, which are analogous to the serial number and factory
number in Dietrich. Kim teaches determining whether the indicia
is valid, although this teaching is implicit in the purpose of
the invention of Dietrich . Among other things, determining
whether the indicia is valid suggests determining whether or not
the postage meter system (which includes a printer) is recognized
by the Postal Service. Thus, we conclude that step b) would have
been obvious over Kim. Claim 25 does not require a printer
separate from a computer and PSD. Claim 25 does not recite that
the purpose of determining whether a printer is recognized is
concerned with print quality, as argued, or is intended to
prevent non-approved printers from being used, as argued. Thus,
Appellant's arguments are not persuasive. The rejection of
claims 25-27 and 30 is sustained.
Although Appellant merely mentions the limitations of
claim 28, which is not considered an argument as to error in the
Examiner's rejection as required by 37 CFR § 1.192(c)(8)(iv),
since claim 28 recites the same limitation found in claim 5, we
exercise our discretion and reverse the rejection of claim 28 for
the reasons stated in the analysis of claim 5.
Claims 19-21 ) Dietrich, Bruns, Billington, and Chapman
Claim 19 recites first means for reading the recorded
information about the machine that recorded the indicia, second
Appeal No. 2000-0376
Application 08/753,236
- 28 -
means for reading the indicia if the first means are unable to
read the indicia, and means for determining whether or not the
indicia was damaged.
The Examiner finds that Chapman discloses (at col. 4,
lines 66-68) a mailing system having a scanner which rereads a
portion of the document if there is an error in the first
attempted reading (EA18). The Examiner finds that Billington
discloses an indicia system that includes an error detection code
as a means for determining whether or not the indicium was
damaged (EA18). The Examiner concludes that it would have been
obvious to use the system in Chapman to prevent unnecessary
interruptions and to use the system in Billington to determine
whether indicia has been damaged (EA18). The Examiner concludes
that it would have been obvious to modify Dietrich and Bruns in
view of Chapman and Billington because it aids in preventing and
detecting counterfeiting and it increases the number of
parameters that a counterfeiter would have to manipulate to
escape detection (EA18-19).
Appellant argues that he records and reads information about
the printing parameters to determine print quality (Br23).
Claim 19 does not recite the purpose of determining print
quality, but merely requires structure for reading and detecting
damaged indicia. Appellant does not point out the error in the
Examiner's proposed modification of Dietrich. We do not agree
Appeal No. 2000-0376
Application 08/753,236
- 29 -
with the Examiner's reasoning about preventing counterfeiting,
but the Examiner has provided other reasons for the modification,
which have not been shown to be in error. Accordingly, the
rejection of claim 19 is sustained.
Appellant notes the limitations of claims 20 and 21, but
does not state what the error is in the Examiner's rejection as
required by 37 CFR § 1.192(c)(8)(iv). Accordingly, the rejection
of claims 20 and 21 is sustained.
Claims 23, 24, 29, 32, and 33 ) Dietrich, Bruns, Morrison,
and Kim
Since claims 23 and 24 depend on claims 13 and 15,
respectively, and the rejection of these claims has been
reversed, the rejection of claims 23 and 24 is reversed.
Claim 29 recites the material used to record the indicia,
claim 32 recites printing information about the ink, and claim 33
recites printing information about the toner. The Examiner
relies on the reasoning used in the rejection of claims 12, 14,
27, and 30 (EA20).
Because the references do not disclose or suggest recording
information regarding the type of ink, toner, or material used to
record the indicia, as discussed in the rejection of
claims 12-15, the rejection of claims 29, 32, and 33 is reversed.
Appeal No. 2000-0376
Application 08/753,236
- 30 -
Claims 22, 31, and 34 ) Dietrich, Bruns, Morrison, Mizutani,
and Kim
Claim 31 recites printing information about the paper. The
Examiner relies on the reasoning used in the rejection of
claims 10 and 17 (EA20). Because the references do not disclose
or suggest recording information about the material used to
record the indicia, as discussed in the rejection of claim 10,
the rejection of claim 31 is reversed.
Since claims 22 and 34 depend on claims 10 and 33,
respectively, and the rejections of these claims have been
reversed, the rejection of claims 22 and 34 is reversed.
Claims 35 and 36 ) Dietrich, Bruns, Kim, and Smaha
Claim 35 recites copying the recorded information for future
reference.
The Examiner finds that Smaha discloses a system for
detecting misuse of a data processing that creates an output
report about the detected misuse, referring to column 3, lines
19-21 and 40-43 (EA21). The Examiner concludes that it would
have been obvious to modify Dietrich in view of Bruns, Kim, and
Smaha because it aids in preventing and detecting counterfeiting
and it increases the number of parameters that a counterfeiter
would have to manipulate to escape detection, and allows the USPS
to make use of the resulting security system (EA21).
Appeal No. 2000-0376
Application 08/753,236
- 31 -
Appellant argues that the recorded information is relative
to the characteristics of the printer that printed the indicia
(Br25).
We do not find where Smaha suggests copying the recorded
information as claimed. That it was known, in general, to copy
and generate a report is not sufficient to meet the limitations
of claim 35. The Examiner's general reasoning about preventing
counterfeiting as a motivation is not persuasive. We conclude
that the Examiner has failed to establish a prima facie case of
obviousness. The rejection of claims 35 and 36 is reversed.
Claims 37 and 38 ) Dietrich, Bruns, and Zabele
Claim 37 recites that the printer records the status of the
printing parameters just prior to printing.
The Examiner finds that Zabele discloses a printer recording
the status of the printing parameters (EA22). The Examiner
concludes that it would have been obvious to modify Dietrich to
record resolution relative to the resolution used, whereby the
printer records the status of the resolution used to record the
indicia just prior to printing (EA23). The Examiner concludes
that it would have been obvious to modify Dietrich in view of
Bruns and Zabele because it aids in preventing and detecting
counterfeiting and it increases the number of parameters that a
Appeal No. 2000-0376
Application 08/753,236
- 32 -
counterfeiter would have to manipulate to escape detection and
affords print quality control (EA23).
Zabele discloses a system and method for controlling print
quality. An electronic test image of the printed image is
acquired by an image acquisition unit and compared to a prototype
image of the desired printed image and an alarm is generated if
the printing on the test image and the printing on the prototype
image do not satisfy a predetermined condition (col. 1, line 58
to col. 2, line 3). We fail to see how the portions of Zabele
pointed out by the Examiner can be considered the "status of the
printing parameters" in any sense. The Examiner's reasoning
regarding counterfeiting is again not persuasive. Accordingly,
the Examiner has failed to establish a prima facie case of
obviousness. The rejection of claims 37 and 38 is reversed.
Appeal No. 2000-0376
Application 08/753,236
- 33 -
CONCLUSION
The rejections of claims 1-4, 6, 7, 9, 16-21, 25-27, and 30
are sustained.
The rejections of claims 5, 10-15, 22-24, 28, 29, and 31-39
are reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2000-0376
Application 08/753,236
- 34 -
Ronald Reichman
PITNEY BOWES INC.
Intellectual Property and Law Department
35 Waterview Drive, P.O. BOX 3000
SHELTON CT 06484