Ex Parte Sansone

Board of Patent Appeals and Interferences

Mar 3, 2010

10323346 (B.P.A.I. Mar. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte RONALD P. SANSONE 8
___________ 9
10
Appeal 2009-003964 11
Application 10/323,346 12
Technology Center 3600 13
___________ 14
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Decided: March 3, 2010 16
___________ 17
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Before HUBERT C. LORIN, ANTON W. FETTING, and 19
JOSEPH A. FISCHETTI, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
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STATEMENT OF THE CASE 1
Ronald P. Sansone (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-30, the only claims pending in the 3
application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We REVERSE. 8
THE INVENTION 9
The Appellant invented a mail security system (Specification 1:¶ 001). 10
An understanding of the invention can be derived from a reading of 11
exemplary claims 18 and 1, which are reproduced below [bracketed matter 12
and some paragraphing added]. 13
18. A method for tagging a mailpiece, said method comprises 14
the steps of: 15
[A] providing an electronic device having a memory storing 16
identification data, 17
wherein said device is affixed to a mail piece; 18
[B] processing the identification data recorded in said memory 19
to generate further data; [sic ,] that is different from the 20
stored identification data, [sic ;] 21

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed January 4, 2008) and the Examiner’s Answer (“Ans.,” mailed
March 24, 2008).
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[C] storing the further data in said memory; and 1
[D] affixing the electronic device to a mail piece. 2
1. A method for creating a dual postal indicia, said method 3
comprises the steps of: 4
A. recording a number in a memory of an electronic device 5
that is linked to a dual meter user 6
before the electronic device is delivered to the user 7
of the dual meter; 8
B. processing by the dual meter 9
the number recorded in the electronic device memory 10
to produce a processed number 11
that is different from the number recorded in the 12
electronic device memory 13
when the dual postal indicia is being 14
composed; 15
C. storing the processed number in the electronic device 16
memory; 17
D. affixing 18
a postal indicia portion 19
of a dual postal indicia and 20
a [sic, an] electronic device portion 21
of a dual postal indicia 22
to a mail piece; and 23
E. uploading the processed number stored in the electronic 24
device memory to a data center. 25
THE REJECTION 26
The Examiner relies upon the following prior art: 27
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Rudolph US 2002/0005774 A1 Jan. 17, 2002
Leon US 2003/0028497 A1 Feb. 6, 2003
Claims 1-3, 6, 10, 16-22, and 25-30 stand rejected under 35 U.S.C. § 1
103(a) as unpatentable over Rudolph and Leon.2 2
Claims 4, 5, 7-9, 11-15, 23, and 24 stand rejected under 35 U.S.C. § 3
103(a) as unpatentable over Rudolph and Leon and admitted prior art. 4
ISSUES 5
The issue of whether the Appellant has sustained its burden of showing 6
that the Examiner erred in rejecting claims 1-30 under 35 U.S.C. § 103(a) as 7
unpatentable over Rudolph and Leon turns on whether it was predictable to 8
combine the descriptions in the two references to yield the various claims 9
argued by the Appellant. 10
FACTS PERTINENT TO THE ISSUES 11
The following enumerated Findings of Fact (FF) are believed to be 12
supported by a preponderance of the evidence. 13
Facts Related to the Prior Art 14
Rudolph 15

2 The Examiner Answer at 11 indicates that all claims 1-30 are rejected
under these references, however, a separate rejection of claims 4, 5, 7, 11-
15, 23, and 24 is entered at Ans. 18, and none of these latter claims are
included in the analysis of the first rejection. Also, although claims 8 and 9
are included in the first rejection, they both depend from claim 7 which is in
the second rejection. Thus, the inclusion of claims 8 and 9 in the first
rejection is taken to be a clerical error as the intent is clear.
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01. Rudolph is directed to authentication and identification with an 1
identification tag, such as a radio frequency identification (RFID) 2
tag that holds authentication and/or identification data. Rudolph ¶ 3
0002. 4
02. Rudolph’s authentication system uses an identification tag 5
having an encrypted authentication code, a product having a 6
corresponding encrypted code, and an interrogator located remote 7
to the identification tag. The identification tag, in response to 8
interrogation, communicates the encrypted authentication code to 9
authenticate an authorized user of a product. Rudolph ¶ 0007. 10
03. On installation of Rudolph’s digital product, an encrypted code 11
is compared to a database, which is accessed by the installation 12
program to compare the encrypted authorization code against 13
database records. The database records may contain various pieces 14
of information, such as user names, identification numbers, and 15
licensed user counts. Optionally, the licensed user count is 16
accessed and, if greater than zero, the installation is authenticated. 17
Access to the digital product is then enabled. The licensed user 18
count then may be decremented, encrypted and updated in the 19
RFID tag. Rudolph ¶ 0023. 20
04. Rudolph describes using the RFID tag to track shipments by 21
having its data transmitted to a remote computer system. Rudolph 22
¶ 0044. 23
24
25
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Leon 1
05. Leon is directed to authenticating postage labels in postage 2
metering systems. Leon ¶ 0016. 3
06. Leon describes including an RFID tag with a postage label for 4
tracking a posted package. Leon ¶ 0080. 5
PRINCIPLES OF LAW 6
Obviousness 7
A claimed invention is unpatentable if the differences between it and 8
the prior art are “such that the subject matter as a whole would have been 9
obvious at the time the invention was made to a person having ordinary skill 10
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 11
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 12
In Graham, the Court held that that the obviousness analysis is 13
bottomed on several basic factual inquiries: “[(1)] the scope and content of 14
the prior art are to be determined; [(2)] differences between the prior art and 15
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 16
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 17
U.S. at 406. “The combination of familiar elements according to known 18
methods is likely to be obvious when it does no more than yield predictable 19
results.” KSR, 550 U.S. at 416. 20
ANALYSIS 21
The Examiner found that Rudolph described processing a user count in 22
an RFID chip, thus generating further data. Ans. 11. We agree. FF 03. The 23
Examiner found that Rudolph uploaded its RFID data to a remote computer 24
to track shipments. Ans. 12. We agree. FF 04. The Examiner also found 25
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that Leon described using an RFID tag with a paper postage indicia and this 1
would require the recited dual meter. Ans. 4. We agree with this as well. 2
FF 06. 3
The Appellant argued that the Examiner has not shown how Leon and 4
Rudolph would have been combined to achieve the processes of claims 18 5
and 1 (Appeal Br. 18), both of which require the updating to occur in the 6
recited device prior to or concurrent with affixing the postage indicia. Here 7
we must agree with the Appellant. 8
The Examiner stated only that 9
[i]t would have been obvious to one of ordinary skill in the art 10
at the time of applicant's invention to use the RFID tag 11
authentication method disclosed in Rudolph et al. in the context 12
of a dual meter postage label authentication method including 13
the additional step of affixing a postal indicia portion of a dual 14
postal indicia and a electronic device portion of a dual postal 15
indicia to a mail piece as taught in Leon because RFID 16
technology is suited well for authentication and verification 17
purposes particularly when dealing with postal label 18
authentication 19
Ans. 4. It is difficult to quarrel with the use of RFID chips “for 20
authentication and verification purposes particularly when dealing with 21
postal label authentication” but this begs the question of why one would 22
have updated a user count prior to affixing postage indicia to a parcel. The 23
Examiner has provided no articulated reasoning for doing so. 24
Rudolph updates its user count when installing or deinstalling a digital 25
product. This makes sense because Rudolph posits a fixed limit on the 26
number of licensed users and therefore must track the number of actual users 27
to assure the limit is not exceeded. Rudolph does this at the time someone 28
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becomes a user, viz. at installation. We find no analogous limit on the 1
number of users in postal indicia. Although there may very well be some 2
amount of funds available for use in a postal meter, this is not fixed as with 3
Rudolph’s user count, but rather changes dynamically as funds are 4
replenished. In any event, the Examiner made no findings as to including a 5
postal funds analog into Leon’s RFID chip. 6
CONCLUSIONS OF LAW 7
The Examiner erred in rejecting claims 1-3, 6, 10, 16-22, and 25-30 8
under 35 U.S.C. § 103(a) as unpatentable over Rudolph and Leon. 9
The Examiner erred in rejecting claims 4, 5, 7-9, 11-15, 23, and 24 under 10
35 U.S.C. § 103(a) as unpatentable over Rudolph and Leon and admitted 11
prior art. 12
DECISION 13
To summarize, our decision is as follows. 14
• The rejection of claims 1-3, 6, 10, 16-22, and 25-30 under 35 U.S.C. 15
§ 103(a) as unpatentable over Rudolph and Leon is not sustained. 16
• The rejection of claims 4, 5, 7-9, 11-15, 23, and 24 under 35 U.S.C. 17
§ 103(a) as unpatentable over Rudolph and Leon and admitted prior 18
art is not sustained. 19
20
REVERSED 21
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24
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