Ex Parte Sesek et al

Board of Patent Appeals and Interferences

Aug 25, 2010

10280574 (B.P.A.I. Aug. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P Alexandria, 0 Box 1450 Virginia 22313- 1450
www uspto gov
22879 7590 08/27/20 10
HEWLETT-PACKARD COMPANY
APPLICATION NO.
EXAMINER
Intellectual Property Administration WINTER, JOHN M
101280,574 1012412002 Robert Sesek 10012601-1 2916
FILING DATE
3404 E. armo on^ Road
Mail Stop 35
FORT COLLINS, CO 80528
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
ATTORNEY DOCKET NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
CONFIRMATION NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
08/27/2010 ELECTRONIC
JERRY .SHORMA @ HP.COM
ipa.mail@hp.com
laura.m.clark@ hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte ROBERT SESEK,
SUSAN M.F. DAVIS, and
STEVE 0. RASMUSSEN
Appeal 2009-008487
Application 101280,574
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL'
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 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 2009-008487
Application 101280,574
STATEMENT OF THE CASE
Robert Sesek, et al. (Appellants) seek our review under 35
U.S.C. 5 134 (2002) of the final rejection of claims 43-50 and 63-70. We
have jurisdiction under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.^
THE INVENTION
The invention is a method of allowing a vendor to convey to a
customer access to the postage value in a vendor's account via the internet.
Specification 10: 1-4.
The pertinent part of claim 43, reproduced below, is illustrative of the
subject matter on appeal.
43. A method of returning merchandise purchased by a customer
from a vendor, the method comprising:
. . . after the providing, the vendor creating an executable computer
file comprising an expiration date and an amount of postage for the return of
the item of merchandise from the customer to the vendor, wherein the
executable computer file expires after the expiration date; . . .
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed Jun. 30, 2008) and Reply Brief ("Reply Br.," filed Nov. 19,
2008), and the Examiner's Answer ("Answer," mailed Sep. 19, 2008).
Appeal 2009-008487
Application 101280,574
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability :
Hauser US 6,536,659 B l Mar. 25, 2003
Sansone US 6,547,136 B 1 Apr. 15,2003
The following rejections are before us for review:
1. Claims 63-70 are rejected under 35 U.S.C. $1 12, first paragraph, as
failing to comply with the written description requirement.
2. Claims 43-50 and 63-70 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Sansone and Hauser.
ISSUES
The first issue is whether claims 63-70 fail to comply with the written
description requirement under 35 U.S.C. $1 12, first paragraph. Specifically,
whether the Examiner has established that the claimed limitations related to
the expiration date of the file are supported by the Specification.
The second issue is whether claims 43-50 and 63-70 are unpatentable
under 35 U.S.C. §103(a) over Sansone and Hauser. Specifically, the issue is
whether the combination of Sansone and Hauser teach a computer file
expiring after the expiration date.
FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Znc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Appeal 2009-008487
Application 101280,574
1. The Specification states " . . . a one-time executable file, that includes
the function of printing postage, is created by computer system 3 . . . ' 9
Specification 1 1 :23-24.
2. The Specification states: "The personal computer 22 runs the single
use, time-stamped executable file." Specification 12:4-5.
3. The Specification states: "Note that the time-stamped executable file
expires at a time certain. This limits the window of time during which
a customer can make the desired return. The file is a one-time use file
so that multiple printed copies cannot be created." Specification
12:13-15.
ANALYSIS
The rejection of claims 63- 70 under 35 U.S. C. $1 12, first paragraph, as
failing to comply with the written description requirement.
Dependent claims 63-67 recite similar limitations which require the
executable computer file to be non-operational or not executable to cause the
printing of the shipping label after the expiration date. The Examiner asserts
that "the Specification does not tie the expiration date to printing but merely
discloses an executable file expiring which limits the time period for
returning a product by a customer (Specification, page 12, lines 10- 15)."
Answer 3. See also Answer 12- 13.
The Appellants argue that the claimed limitation, need not be literally
described and relies upon the Specification descriptions, on pages 11 and 12,
that the executable file is configured to cause the customer's printer to print
the label, the file is time-stamped, and after the expiration date (e.g., time
Appeal 2009-008487
Application 101280,574
stamp), the executable file expires at a certain time to support this claimed
subject matter. App. Br. 16-20 and Reply Br. 18-24.
"What is claimed by the patent application must be the same as what
is disclosed in the specification; otherwise the patent should not issue."
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722,736
(2002). All that is necessary to satisfy the description requirement is to
show that one is "in possession" of the invention. The decision in Lockwood
v. Am. Airlines, Znc., 107 F.3d 1565 (Fed. Cir. 1997) accurately states the
test. "One shows that one is "in possession" of the invention by describing
the invention, with all its claimed limitations, not that which makes it
obvious. Id. ("[Tlhe applicant must also convey to those skilled in the art
that, as of the filing date sought, he or she was in possession of the
invention. The invention is, for purposes of the 'written description'
inquiry, whatever is now claimed.") (emphasis in original). One does that by
such descriptive means as words, structures, figures, diagrams, formulas,
etc., that fully set forth the claimed invention. Although the exact terms
need not be used in haec verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038 .
. . (Fed.Cir.1995) ("[Tlhe prior application need not describe the claimed
subject matter in exactly the same terms as used in the claims . . . . "), the
specification must contain an equivalent description of the claimed subject
matter." Lockwood v. Am. Airlines, Znc., 107 F.3d at 1572. Compliance with
the written description requirement is a question of fact. Ralston Purina Co.
v. Far-Mar Co, Znc., 772 F.2d 1570, 1575 (Fed. Cir. 1985).
We agree with the Appellants. While the Specification does not use
the exact words, the Specification does describe that the executable file
includes the function of printing postage (FF 1, see also FF 2), that the
Appeal 2009-008487
Application 101280,574
executable file is time-stamped (FF 2), and that the executable file expires
(FF 2). The Examiner has not established that, given the above descriptions,
the Specification fails to support the limitations recited in claims 63-67.
As to claims 68-70, these claims do not recite any limitations
pertaining to an expiration date addressed in the Examiner's rejection.
Therefore, we find that the Examiner has not established that claims 68-70
fail to comply with the written description requirement of 35 U.S.C. 5 112,
first paragraph.
Accordingly, we find that the Appellants have overcome the rejection
of claims 63-70 under 35 under 35 U.S.C. 5 1 12, first paragraph, as failing to
comply with the written description requirement
The rejection of claims 43-50 and 63-70 under 35 U.S.C. §103(a) as being
unpatentable over Sansone and Hauser.
The Appellants argue that neither Sansone nor Hauser teaches the
recited step of "the vendor creating an executable computer file comprising
an expiration date . . . wherein the executable computer file expires after the
expiration date" as recited in independent claim 43. App. Br. 6-9 and Reply
Br. 4-5. The Examiner responds that the requirement, that the executable
computer file comprises an expiration date is non-functional descriptive
material and, therefore, not entitled to patentable weight. Answer 8-9. See
also Answer 5. However, the Examiner does not address the limitation that
requires the executable computer file to expire after the expiration date.
This limitation is not non-functional descriptive material. We note that the
Examiner admits that Sansone does not teach an expiration date (Answer 5).
The Examiner does not argue that either Sansone or Hauser teaches an
Appeal 2009-008487
Application 101280,574
executable computer file that expires after the expiration date or provides
any other explanation of how this limitation is taught. See Answer 5-6, 8-9.
Therefore, we find that the Examiner failed to establish a prima face
showing of obviousness in rejecting claim 43. Accordingly, we find that the
Appellants have overcome the rejection of claim 43, and claims 44-50 and
63-70, dependent thereon, under 35 U.S.C. 5 103(a) as being unpatentable
over Sansone and Hauser.
DECISION
The decision of the Examiner to reject claims 43-50 and 63-70 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
REVERSED
mev
HEWLETT-PACKARD COMPANY
Intellectual Property Administration
3404 E. Harmony Road
Mail Stop 35
FORT COLLINS CO 80528