Ex Parte Seidman

Board of Patent Appeals and Interferences

Jan 31, 2007

09861153 (B.P.A.I. Jan. 31, 2007)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BENJAMIN SEIDMAN
__________

Appeal No. 2006-3062
Application No. 09/861,153
___________

ON BRIEF
___________

Before THOMAS, HAIRSTON, and HOMERE, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 through 38.
The disclosed invention relates to a method and system for formatting
international shipping addresses.
Claim 1 is illustrative of the claimed invention, and it reads as follows:
1. A method for formatting international shipping addresses, the
method comprising:

receiving a parsed address from a user system;

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retrieving a corresponding address format by looking up a portion of
said parsed address in an index table, the corresponding address format defining
required placement of address elements within a shipping address; and

generating a formatted shipping address by converting said parsed address
into said corresponding address format.

The references relied on by the Examiner as evidence of unpatentability are:
Ramanathan US 2002/0083371 A1 June 27, 2002
(filed Dec. 27, 2000)
Ulvr US 6,415,983 July 9, 2002
(filed Feb. 26, 1999)
Yu US 2002/0153409 A1 Oct. 24, 2002
(filed Feb. 16, 2001)
Harman US 6,658,430 Dec. 2, 2003
(filed Dec. 23, 1999)
Address Control & ZipData-US, Hallogram Publishing,
http://hallogram.com/addresscomponents/, 2000, pages 1-3.

Claims 1, 2, 9 through 13, 20 through 25, 28, 29 and 36 through 38 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Yu in view of
Harman.
Claims 4 through 8, 15 through 19 and 31 through 35 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Yu in view of Harman and the
Hallogram publication.

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Claims 3, 14 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yu in view of Harman and Ulvr.
Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yu in view of Ramanathan.
Reference is made to the brief and the answer for the respective positions of
the Appellant and the Examiner.
OPINION
We have carefully considered the entire record before us, and we will sustain
the obviousness rejections of claims 1 through 38.
Appellant contends inter alia “Yu does not teach or suggest ‘retrieving a
corresponding address format by looking up a portion of said parsed address in an
index table’” (Br. 9). Appellant contends (Br. 6-9) that the teachings of Yu are
limited to address validation.
We disagree with all of Appellant’s arguments. Yu describes an
international address validation system and method that also checks the format of
the address based on the country (paragraphs 0011 through 0013, 0173, claim 9).
Yu receives a parsed address from a user system (paragraphs 0063, 0117 through

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0122, 0136 through 0141). The parsed address is compared with a stored address
in a storage/index table to retrieve a corresponding address format for the
international shipping address (paragraphs 0059, 0062, 0063). As stated in
paragraph 0063, the user-entered address information is “broken up into individual
address fields” (i.e., parsed) and is provided as the address fields input 323 to
system 310 where the parsed address is compared to the required address
information 321 for the country (Figure 3). Any errors in the address are indicated
in the outputs from the system 310. A similar explanation of the parsing and
comparing operations in the Yu system can be found in paragraphs 0119, 0138 and
0140. The parsing operation per se is described in paragraphs 0117 through 0122
and 0136 through 0141 of Yu. The storage/index tables of address information are
described in detail in paragraphs 0115, 0119 and 0189 through 0192 of Yu. After
the parsing, comparing and error correcting operations, Yu generates a properly
formatted shipping address (Abstract; paragraph 0011).
In sustaining a multiple reference rejection under 35 U.S.C. § 103(a), the
Board may rely on one reference alone without designating it as a new ground of
rejection. In re Bush, 296 F. 491, 496, 131 USPQ 263, 266-67 (CCPA 1961); In re

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Boyer, 363 F.2d 455, 458, n. 2, 150 USPQ 441, 444, n. 2 (CCPA 1966). In
summary, the obviousness rejection of claim 1 is sustained because all of the
limitations of claim 1 read directly on the teachings of Yu. The teachings of
Harman are merely cumulative to the teachings of Yu. The obviousness rejection
of claims 2, 9 through 13, 20 through 25, 28, 29 and 36 through 38 is likewise
sustained because Appellant has not presented any patentability arguments for
these claims apart from the arguments presented for claim 1.
The obviousness rejections of claims 3 through 8, 14 through 19, 26, 27 and
30 through 35 are sustained because Appellant has not presented any patentability
arguments for these claims.
Turning lastly to the obviousness rejection of claims 26 and 27, the
Examiner contends that Yu describes all of the system structure except for a web
server, an applications server and a firewall (Answer 18-19). The Appellant
contends that it would not have been obvious to one of ordinary skill in the art to
combine the teachings of Yu with the web server, applications server and firewall
teachings of Ramanathan because “Ramanathan is not applicable to the same field
of endeavor as the claimed invention, namely, international shipping addresses
formatting software executing on a host system” (Br. 11). We agree with the
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Appellant that Ramanathan is not concerned with international shipping addresses.
On the other hand, we agree with the Examiner that the teachings in Ramanathan
are applicable to a web site as in Yu (paragraphs 0046 and 0047) and a web site
system designer seeking the security protection of a firewall (paragraph 0003), and
a faster processing speed provided by the three different servers (i.e., web server,
applications server and a database server) in an E-business environment (Figures 4
and 5; paragraphs 0043 through 0048). The problems of web security and the use
of E-system servers in Ramanathan are the same problems confronted and solved
by the disclosed and claimed invention. A reference is still analogous prior art if it
is reasonably pertinent to the particular problem with which the inventor is
involved. In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006),
citing In re Oetiker, 977 F.2d 1443, 1447, 24 USPQ2d 1443, 1445-6 (Fed. Cir.
1992). Thus, the obviousness rejection of claims 26 and 27 is sustained because
the skilled artisan would have looked to the teachings of Ramanathan to solve the
same problems in the international shipping addresses teachings of Yu.

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DECISION
The decision of the Examiner rejecting claims 1 through 38 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136 (a) (1) (iv).
AFFIRMED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEAN R. HOMERE )
Administrative Patent Judge )

KWH/kis
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