10703651 (B.P.A.I. Jan. 5, 2011)

Ex Parte Sansone et al

Board of Patent Appeals and InterferencesJan 5, 2011

10703651 (B.P.A.I. Jan. 5, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RONALD P. SANSONE, ROBERT A. CORDERY, DONALD G. MACKAY, JOHN W. SUSSMEIER, KEVIN W. BODIE, FREDERICK W. RYAN, JR., and DOUGLAS B. QUINE ____________ Appeal 2009-002738 Application 10/703,651 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH A. FISCHETTI, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-002738 Application 10/703,651 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1 to 31. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND Appellants’ invention is directed to a method of delivering mail by physical and/or electronic means. Claim 1 is illustrative: 1. A method that enables a sender to receive information regarding whether or not a particular recipient wants to receive some or all of their physical mail that is sent by the sender to the recipient by a carrier, said method comprises the steps of: depositing with the carrier mail; capturing by the carrier the name and physical address of a recipient from a code on the mail and a name and physical address of the sender from a code on the mail; translating by a data center the code of the recipient into an e-mail address; translating by a data center the code of the sender into an e-mail address; notifying by the data c enter to the recipient of the availability of the deposited mail; notifying by the data center to the carrier of the manner in which the recipient would like to receive mail; and delivering mail by the carrier to the recipient in the manner specified by the recipient to the carrier. Appeal 2009-002738 Application 10/703,651 3 The Examiner relies on the following prior art reference as evidence of unpatentability: McKeen US 4,037,856 Jul. 26, 1977 Register US 5,606,594 Feb. 25, 1997 Srinivasan US 6,072,862 Jun. 6, 2000 Pang US 6,167,434 Dec. 26, 2000 Uhl US 6,292,709 B1 Sep. 18, 2001 Kuebert US Pub. 2002/0165729 A1 Nov. 7, 2002 Sherwood US 6,542,584 B1 Apr. 1, 2003 Pickering US 6,557,755 B1 May 6, 2003 Couch US 7,130,803 B1 Oct. 31, 2006 Appellants appeal the following rejections: Claims 1-4, 11, 12, 14, 22, and 25 are rejected under 35 U.S.C. § 103(a) as unpatentable over Couch in view of Uhl. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable over Couch in view of Uhl and Pickering. Claims 7, 10, 13, and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Couch in view of Uhl and Kuebert. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Couch in view of Uhl, Kuebert, and Pang. Claims 16-18, 20, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Couch in view of Uhl and Srinivasan. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over Couch in view of Uhl, Srinivasan, and Register. Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Couch in view of Uhl and Sherwood. Appeal 2009-002738 Application 10/703,651 4 Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over Couch in view of Uhl and McKeen. Claims 27, 28, and 31 are rejected under 35 U.S.C. § 103(a) as unpatentable over Couch in view of Uhl and Kuebert. Claims 29 and 30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Couch in view of Uhl and Pang. 2 ISSUE Did the Examiner err in rejecting claim 1 because Couch does not disclose utilizing a UVDC address code that identifies a recipient’s physical address? Did the Examiner err in rejecting claim 1 because Couch does not disclose capturing the name and physical address of the recipient from a code on the mail? Did the Examiner err in rejecting claim 11 because neither Couch nor Uhl discloses capturing by the carrier the name and physical address of the sender from the sender’s code and translating by a data center the code of the recipient into an e-mail address? Did the Examiner err in rejecting claim 5 because Pickering does not identify the sender’s address? Did the Examiner err in rejecting the claims because Pang, Srinivasan Register, Sherwood and McKeen do not teach anything about physical mail? FACTUAL FINDINGS 2 Appellants have filed a terminal disclaimer on January 18, 2008 to obviated the provisional double patenting rejection of claim 11. Appeal 2009-002738 Application 10/703,651 5 We adopt the Examiner’s findings in the Answer. Additional findings of fact may appear in the Analysis that follows. ANALYSIS Obviousness rejection over Couch and Uhl We are not persuaded of error on the part of the Examiner by Appellants’ argument that Couch does not disclose utilizing a UVDC address code that identifies a recipient’s physical address. We agree with the Examiner that the UVDC model disclosed in Couch does associates a UVDC code with the ultimate destination of the package. Couch clearly discloses that a subscriber is given a unique UVDC address code upon registration. The subscriber then sets up a profile that includes the final delivery point designated by the subscriber. This final delivery point is a physical address (See col. 4, l. 65 to col. 5, l.7). This UVDC code is placed on the mail piece itself (Figure 2, S220). We are not persuaded of error on the part of the Examiner by Appellants’ argument that Couch does not disclose capturing the name and physical address of the recipient from a code on the mail. We agree with and adopt as our own the Examiner’s response to this argument on pages 27 to 28 of the Answer. We are not persuaded of error on the part of the Examiner by Appellants’ argument that neither Couch nor Uhl discloses capturing by the carrier the name and physical address of the sender from the sender’s code and translating by a data center the code of the recipient into an e-mail address. We agree with the Examiner that since Couch discloses that subscriber data including the email address is contained in the compilation Appeal 2009-002738 Application 10/703,651 6 database, the UVDC code can be translated to the subscriber’s or sender’s email address. In view of the foregoing, we will sustain the Examiner’s rejection of claim 1. We will also sustain this rejection as it is directed to claims 2 to 4, 11, 12, 14, 22 and 25 because the Appellants have not argued the separate patentability of these claims. Obviousness over Couch, Uhl and Pickering We are not persuaded of error on the part of the Examiner by Appellants’ argument that Pickering does not identify the sender’s address. The Examiner has relied on Couch for teaching a recipient code that identifies the physical address of the recipient and Uhl for disclosing a sender code that identifies the physical address of the sender. Pickering is only relied on for teaching a particular typs of code, i.e. POSTNET and PLANET codes. We note that an applicant cannot establish nonobviousness by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In view of the foregoing, we will sustain the Examiner’s rejection of claim 5. We will also sustain this rejection as it is directed to claim 6 because the Appellants have not argued the separate patentability of these claims. Obviousness based on Couch, Uhl and Kuebert We are not persuaded of error on the part of the Examiner by Appellants’ argument that neither Couch nor Kuebert taken separately or Appeal 2009-002738 Application 10/703,651 7 together discloses the invention claimed by the Appellants in claim 1 and 11, because this rejection is over the teachings of Couch, Kueber and Uhl and thus the argument is not directed to the rejection made. Therefore, we will sustain this rejection. Remaining Obviousness rejections We are not persuaded of error on the part of the Examiner by Appellants’ arguments that Pang, Srinivasan, Register, Sherwood and McKeen do not teach anything about physical mail. We find that the Examiner has adequately responded to Appellants’ arguments and accordingly we adopt the Examiner’s analysis found at pages 32 to 39. We additionally note that the Examiner does not rely on Pang, Srinivasan, Register, Sherwood or McKeen for teaching the use of physical mail. The Examiner relies on Couch for this teaching. DECISION We affirm the decision of the Examiner. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1) (2009). ORDER AFFIRMED Appeal 2009-002738 Application 10/703,651 8 mls PITNEY BOWES INC. INTELLECTUAL PROPERTY & TECH. LAW DEPT. 35 WATERVIEW DRIVE MSC 26-22 SHELTON, CT 06484