Ex Parte Sipe et al

Board of Patent Appeals and Interferences

Mar 25, 2010

10290029 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte WAYNE SIPE, BEN F. BRUCE, SHAHROM KIANI, ALAN E. 8
O’MARTIN, GARY ALLEN, and JOHN J. MAMPE 9
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Appeal 2009-004265 12
Application 10/290,029 13
Technology Center 3600 14
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Decided: March 25, 2010 17
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Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R. 21
MOHANTY, Administrative Patent Judges. 22
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CRAWFORD, Administrative Patent Judge. 24
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DECISION ON APPEAL27
Appeal 2009-004265
Application 10/290,029

2
STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 14 to 33. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Appellants invented a method and system for address information 4
distribution (Spec.1). 5
Claim 14 under appeal reads as follows: 6
14. A method for providing postal patron 7
address change information to subscribers that 8
utilize mailing lists comprising names and 9
address[es] of such patrons, wherein a national 10
postal service maintains a master change of 11
address database that is updated on an intermittent 12
basis by the national postal service, comprising: 13
(a) receiving intermittent updates to the 14
master change of address database and 15
incorporating the updated change of address 16
information into a computer-searchable, enhanced 17
change of address database; 18
(b) receiving change of address data from 19
sources other than the national postal service and 20
other than from postal patrons who are submitting 21
address change information; 22
(c) incorporating more recent change of 23
address information received from such sources 24
into the enhanced change of address database; and 25
(d) distributing information from the 26
enhanced database to one or more of the 27
subscribers in a form in which the subscribers can 28
use addresses corrected by information from the 29
enhanced database to prepare a mailing, wherein 30
steps (b)-(d) are executed in an interim period 31
between receiving of updates in step (a), such that 32
the enhanced change of address database during 33
such interim period contains change of address 34
data more recent than corresponding entries in the 35
master change of address database. 36
Appeal 2009-004265
Application 10/290,029

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The prior art relied upon by the Examiner in rejecting the claims on 1
appeal is: 2
Snapp US 2003/0182018 A1 Sep. 25, 2003 3
AccuData America - More Than Lists. Solutions, 4
http://web.archive.org/web/20010926035158/http://accudata.com/ 5
(last visited Feb. 16, 2006) (hereinafter “AccuData”). 6
The Examiner rejected claims 14 to 33 under 35 U.S.C. § 103(a) as 7
being unpatentable over Snapp in view of AccuData. 8
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ISSUE 10
Did the Examiner err in concluding that it would have been obvious to 11
one of ordinary skill in the art at the time of the invention to include 12
receiving change of address data from sources other than the US Postal 13
Service as disclosed by AccuData in the system disclosed by Snapp? 14
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FINDINGS OF FACT 16
Snapp discloses a method for correcting a mailing address. The types 17
of changes addressed by Snapp are the type of changes occasioned by 18
changes other than the move of an individual addressee (para. [0009]). 19
Snapp discloses that a postal delivery address, even though established, may 20
have changes, for example to the street name, the secondary information like 21
apartment numbers, or even the zip code or the plus four add-on (para. 22
[0009]). The method obtains an 11 digit delivery bar code and validates the 23
address against a delivery point validation table (“DPF”). The DPF contains 24
all of the known US Postal Service delivery points (para. [0027]). 25
Contained within it are the parsed addresses (addresses broken down by 26
Appeal 2009-004265
Application 10/290,029

4
components), the five digit zip code, the four digit zip code add-on, the 1
delivery point code, and a Key ID code. Snapp discloses that the 2
combination of these elements allows for a specific identification code for 3
each physical address. Although the mailing representation of the physical 4
address may change i.e., the street name may change or the address may be 5
renumbered, the DPF constantly tracks the delivery point (para. [0028]). 6
The zip + four table compares a copy of the last week’s DPF file to a copy 7
of this week’s DPF file to identify changes to the record (para. [0029]). 8
AccuData discloses consumer lists that are compiled from a variety of 9
sources including telephone directories, public records, US Bureau of the 10
Censes data, US Postal Service information, surveys, birth records, door to 11
door canvassing, warranty cards, mortgage data, and more (p. 3). 12
13
PRINCIPLES OF LAW 14
The Supreme Court stated that when the claimed subject matter 15
involves “more than the simple substitution of one known element for 16
another or the mere application of a known technique to a piece of prior art 17
ready for the improvement,” then an apparent reason to combine the known 18
elements in the fashion claimed must be shown.” KSR Int’l Co. v. Teleflex 19
Inc., 550 U.S. 398, 401 (2007). The Court explained: 20
Often, it will be necessary for a court to look to 21
interrelated teachings of multiple patents; the 22
effects of demands known to the design 23
community or present in the marketplace; and the 24
background knowledge possessed by a person 25
having ordinary skill in the art, all in order to 26
determine whether there was an apparent reason to 27
combine the known elements in the fashion 28
claimed by the patent at issue. 29
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Application 10/290,029

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Id. at 418. The Court noted that “[t]o facilitate review, this analysis should 1
be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) 2
(“‘[R]ejections on obviousness grounds cannot be sustained by mere 3
conclusory statements; instead, there must be some articulated reasoning 4
with some rational underpinning to support the legal conclusion of 5
obviousness’”). 6
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ANALYSIS 8
We will not sustain the Examiner’s rejection because the Examiner 9
has not provided reasoning with a rational underpinning to support the 10
conclusion of obviousness. Snapp discloses a method of updating address 11
information about customers. The address change information that is the 12
subject of the Snapp method is information that is not related to the move of 13
an addressee but rather to changes in the address itself such as changes in 14
street names and zip codes. The Snapp method utilizes a DPF to track these 15
changes. AccuData discloses that mailing lists can be compiled from 16
numerous sources in addition to the US Postal Service. AccuData does not 17
disclose that these additional sources are concerned with or are capable of 18
tracking changes in the address itself which is the subject of the Snapp 19
method. In addition, as the Snapp method utilizes a DPF, it is not clear from 20
the Examiner’s rejection how the sources described in AccuData can be used 21
in the Snapp method. Further, we do not agree with the Examiner that the 22
use of the additional sources described in AccuData would increase 23
effectiveness and efficiency as AccuData does not disclose that these 24
additional sources described track changes in the address itself. 25
Appeal 2009-004265
Application 10/290,029

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In view of the foregoing, we will not sustain the Examiner’s rejection. 1
2
CONCLUSION OF LAW 3
On the record before us, Appellants have shown that the Examiner 4
erred in rejecting the claims under 35 U.S.C. § 103(a). 5
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DECISION 7
The decision of the Examiner is reversed. 8
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REVERSED 10
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SIEMENS CORPORATION 22
INTELLECTUAL PROPERTY DEPARTMENT 23
170 WOOD AVENUE SOUTH 24
ISELIN, NJ 08830 25