Ex parte Sarada

Board of Patent Appeals and Interferences

Aug 9, 1999

08263368 (B.P.A.I. Aug. 9, 1999)

Application for patent filed June 20, 1994.1
Two amendments after the final rejection were filed,2
papers no. 6 and 12 on February 13, 1995 and September 18,
1995 respectively, and were entered in the record.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte THYAGARAJ SARADA
________________
Appeal No. 96-1903
Application 08/263,3681
________________
ON BRIEF
________________
Before KRASS, BARRETT and LALL, Administrative Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134
from the Examiner's final rejection of Claims 1, 5 to 7, 9 to2
Appeal No. 96-1903
Application 08/263,368
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11, and 14 to 20. Claims 2, 3, 4, 8, 12 and 13 have been
canceled.
The disclosed invention pertains to printing of
information on a mail piece. In conventional systems, the
printing of a postage indicia and the printing of an address
and other information on a mail piece are performed by
different printing mechanisms. The invention provides for a
postage meter that has a single printer that is capable of
printing both the postage indicia and the other information
within the postal logo area. The invention is further
illustrated by the claims below.
Representative claims 1 and 9 are reproduced as follows:
1. A postage meter having a housing, a keypad supported
by the housing, a microprocessor 16 supported within the
housing and in connection with a keypad, a matrix character
generator, in communication with the microprocessor, a meter
memory unit in communication with a microprocessor and a
printer supported by said housing and in connection with said
matrix character generator for printing a postage indicia,
said printer comprising:
a) a housing, first and second printheads of an ink jet
printer spaced from one another and supported by said housing,
each of said printheads having a plurality of elements located
within the area defined by a postage indicia; wherein said
microprocessor includes means for controlling said first
printhead for printing a postage indicia logo and said second
printhead to print optical character recognition readable
information both within the indicia area;
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Application 08/263,368
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b) a red fluorescent ink in confluence with said first
printhead;
c) a black ink in communication with said second
printhead, and means causing said first and second printheads
to applying therein respective inks directly to a mail piece
to form a mail indicia, that contains fixed and variable
information.
9. A postage meter printer for printing a postage
indicia, comprising:
a) means for printing a postage logo with a fluorescent
ink directly within the area defined by the postage indicia;
and
b) means for printing a line of optical character
recognition readable information with high contrast ink
directly within the area defined by the postage indicia, that
contains fixed and variable information.
The Examiner relies on the following reference:
Hubbard 3,869,976 Mar. 11,
1975
Calvi 4,580,144 Apr. 1,
1986
Pastor 5,073,935 Dec. 17,
1991
Auslander et al. 5,114,478 May 19,
1992
(Auslander)
Admitted Prior Art (APA): Appellant’s Disclosure
Claims 1, 5 to 7, 9 to 11, and 14 to 20 stand
rejected under 35 U.S.C. § 103 as being obvious over various
combinations of Hubbard, Calvi, Pastor, Auslander and APA.
Appeal No. 96-1903
Application 08/263,368
Two reply briefs, papers no. 11 and 19, were filed on3
July 17, 1995 and December 17, 1998 respectively.
An Examiner’s answer, [paper no. 10], was filed with a4
new ground of rejection which replaced the final rejection. A
supplemental answer, [paper no. 13] was filed with yet another
new ground of rejection which in turn replaced the new ground
of rejection in the Examiner’s answer.
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Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the briefs and the answers for3 4
the respective details thereof.
OPINION
We have considered the rejections advanced by the
Examiner and the supporting arguments. We have, likewise,
reviewed the Appellant’s arguments set forth in the brief.
It is our view that claims 9, 10, 11, 14, 15 and 18
are obvious over various combinations of Hubbard, APA,
Auslander, Calvi and Pastor, while claims 1, 5 to 7, 16, 17,
19 and 20 are not obvious over the suggested various
combinations of Hubbard, APA, Auslander, Calvi and Pastor.
Accordingly, we affirm in part.
In our analysis, we are guided by the general
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proposition that in an appeal involving a rejection under
35 U.S.C. § 103, an examiner is under a burden to make out a
prima facie case of obviousness. If that burden is met, the
burden of going forward then shifts to the applicant to
overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as
a whole and the relative persuasiveness of the arguments. See
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992); In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685,
686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Rejection of Claims 1, 9, 10, 14 to 16,18 and 19 under 35
U.S.C. § 103
These claims are rejected as being obvious over
Hubbard in view of APA, Auslander and Calvi. We first
consider claim 9 which is the broadest claim. We have
reviewed the Examiner’s final position on the rejection of
these claims [supplemental answer, pages 2 to 5] and
Appellant’s argument [second reply brief, pages 2 to 3]. We
agree with the Examiner that Hubbard shows means for printing
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a postage logo, 28 and 30 and roller 102, and means to print a
line of variable information, ink jet printing element 40.
APA discloses the use of fluorescent ink for postage indicia
and the other ink for printing other data to be machine
readable, [disclosure, page 1, lines 25 to 27]. Furthermore,
Auslander teaches that, in postage, the use of fluorescent
inks is common. We also take note that Calvi, like Hubbard,
discloses the use of a microprocessor to generate the variable
postage information. Therefore, it would have been obvious,
to one of ordinary skill in the art at the time of the
invention, to use, in Hubbard, the fluorescent ink to print
the postage logo and the machine readable ink to print the
date and postage information in view of the above teachings of
APA and Auslander. We, therefore, sustain the Examiner’s
rejection of claim 9 over Hubbard, APA, Auslander and Calvi.
Since Appellant has not argued separately claims 10, 14, 15
and 18 which depend from this claim, their obviousness
rejection over Hubbard, APA, Auslander and Calvi is also
sustained.
Next, we consider the independent claim 1. After our
review of the Examiner’s rejection of claim 1, [supplemental
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answer, pages 2 to 5], and Appellant’s argument [second reply
brief, pages 2 to 3], we are in agreement with the Appellant
that Hubbard’s two printing means 28, 30 and 102, and 40 can
not be obviously combined with APA’s two print heads ink jet
printer as asserted with the Examiner. The Examiner contends
that “The mere substitution of one known type of printhead for
an equivalent another by those having ordinary skill in the
art in order to achieve the same printing function would have
involved no apparent unobviousness.” [Supplemental answer,
page 3]. We disagree. The printing mechanisms 28, 30 and
102, of Hubbard is of different type than an ink jet printer
and works on a different principal. To replace it and the
other printer 40 in Hubbard with a single printer with two
printheads would not have been obvious without using
Appellant's disclosure as a blue print. That is
impermissible. Neither Calvi nor Auslander cures this
deficiency. Thus, the obviousness rejection of claim 1 over
Hubbard, APA, Auslander and Calvi is not sustainable. Since
the dependent claims 16 and 19 each contain at least the
limitation of the parent claim 1, the obviousness rejection of
claims 16 and 19 is also not sustainable.
Appeal No. 96-1903
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Rejection of claims 5 and 20 under 35 U.S.C. § 103
Claim 5 is rejected as being obvious over Hubbard in view
of APA, Auslander, Calvi and Pastor. Claim 5 depends on claim
1 and contains at least the limitations of claim 1. Pastor
does not cure the deficiencies of the combination of Hubbard
in view of APA, Auslander, Calvi that was used to reject claim
1. Therefore, the obviousness rejection of claim 5 over
Hubbard in view of APA, Auslander, Calvi and Pastor is not
sustainable.
Claim 20 is rejected as being obvious over Hubbard in
view of APA, Auslander, Calvi and “applicant’s another [sic]
admission” [supplemental answer, page 7]. Claim 20 depends on
claim 1 and contains at least the limitations of claim 1. The
“applicant’s another [sic] admission”, which refers to another
page of the specification, namely: page 1, lines 12 to 21,
does not cure the deficiencies noted in the suggested
combination of Hubbard in view of APA, Auslander and Calvi in
regard to claim 1. Therefore, the obviousness rejection of
claim 20 over Hubbard in view of APA, Auslander, Calvi and
“applicant’s another [sic] admission” is not sustained.
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Rejection of Claims 6 and 17 under 35 U.S.C. § 103
Claims 6 and 17 are rejected as being obvious over
Hubbard in view of APA and Calvi. We take the independent
claim 6 as an example. After considering the Examiner’s
position [supplemental answer, pages 5 and 6] and Appellant’s
argument [second reply brief, page 4], we are of the view that
the Examiner’s suggested combination of Hubbard, APA and Calvi
does not meet the limitations of claim 6, for example,
limitations: “a first ink ... indicia” (item b); “a first ...”
(item c); and “second ... ” (item d). As we discussed Hubbard
before in regard to claim 1, Hubbard does not have the
structure of the two printing mechanisms of a nature from
which the claimed structure can be realized without the
impermissible use of the blue print of the claimed invention.
Therefore, the obviousness rejection of claim 6 over Hubbard,
APA and Calvi is not sustainable. Since claim 17 depends on
claim 6 and thereby contains at least the same limitations as
discussed above, the obviousness rejection of claim 17 over
Hubbard, APA and Calvi is also not sustainable.
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Rejection of Claim 7 under 35 U.S.C. § 103
Claim 7 is rejected as being unpatentable over Hubbard in
view of APA, Calvi and Auslander. We have considered the
Examiner’s position [supplemental answer, pages 6 to 7] and
Appellant’s argument [second reply brief, page 5]. Since
claim 7 depends on claim 6 and contains at least the
limitations discussed above in regard to claim 6. Auslander
does not the cure the deficiencies noted in the combination of
Hubbard, APA and Calvi to reject claim 6. Therefore, the
obviousness rejection of claim 7 over Hubbard in view of APA,
Calvi and Auslander is not sustained.
Rejection of Claim 11 under 35 U.S.C. § 103
Claim 11 is rejected as being unpatentable over Hubbard,
APA, Auslander, Calvi and Pastor. We have sustained above the
obviousness rejection of claim 9 over Hubbard, APA, Auslander
and Calvi. Claim 11 depends on claim 9 and contains the
additional limitation: “including means for ... encrypted
number ... indicia.” (Lines 1 to 3). We have considered the
Appeal No. 96-1903
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Examiner’s position [supplemental answer, page 7] and
Appellant’s argument [second reply brief, pages 5 to 6]. We
agree with the Examiner’s reasoning that if one were desirous
of securing a communication, one would have looked to the art
on methods to secure communication. One such art reference
would have been the Pastor patent. Pastor discloses the use
of encrypted numbers for alphanumeric characters, see
Abstract. We, therefore, sustain the obviousness rejection of
claim 11 over Hubbard, APA, Auslander, Calvi and Pastor.

In summary, we have affirmed under 35 U.S.C. § 103 the
obviousness rejection of claims 9, 10, 14, 15 and 18 over
Hubbard, APA, Auslander and Calvi and claim 11 over Hubbard,
APA, Auslander, Calvi and Pastor. However, we have reversed
under 35 U.S.C. § 103 the obviousness rejection of claims 1,
16 and 19 over Hubbard, APA, Auslander and Calvi; claim 5 over
Hubbard, APA, Auslander, Calvi and Pastor; claims 6 and 17
over Hubbard, APA and Calvi; claim 7 over Hubbard, APA, Calvi
and Auslander; and claim 20 over Hubbard, APA, Auslander,
Calvi and “applicant's another [sic] admission”.
Appeal No. 96-1903
Application 08/263,368
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In conclusion, the decision of the Examiner rejecting
Claims 1, 5 to 7, 9 to 11, and 14 to 20 under 35 U.S.C. § 103
is affirmed in part.
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
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 96-1903
Application 08/263,368
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