Ex Parte Takahashi

Patent Trial and Appeal Board

Aug 19, 2013

11938372 (P.T.A.B. Aug. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NAOYUKI TAKAHASHI
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Appeal 2011-008969
Application 11/938,372
Technology Center 3600
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Before MICHAEL L. HOELTER, LYNNE H. BROWNE and
CARL M. DeFRANCO, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE

Naoyuki Takahashi (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-7. Claims 8-10 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Independent claim 1 is reproduced below:
1. A mail sorting system comprising a primary
sorting post office for performing primary sorting
of mails as arrived mail processing and a
secondary sorting post office for performing a
secondary sorting of the primary sorted mails,
wherein:
the primary sorting post office comprises at
least ID printing means for printing an ID on each
arrived mail, address recognition means for
sequentially recognizing address information
necessary for primary sorting and secondary
sorting from an address image of each mail and for
saving the address information in association with
the IDs in a database, sorting control means for
sorting the mails in sorting boxes corresponding to
the secondary sorting post office based on the
address information necessary for primary sorting
recognized by the address recognition means and
for transferring mails in any of the sorting boxes
into a transportation/storage medium at the time of
filling the sorting box, and information writing
means for acquiring from the database the address
information necessary for secondary sorting of the
mails that are transferred into the
transportation/storage medium and for writing the
address information in association with the IDs in
a recording mechanism provided with the
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transportation/storage medium in such manner to
record and read information; and
the secondary sorting post office comprises
at least information read-out means for reading out
the address information for each ID recorded in the
recording mechanism on the transportation/storage
medium from the primary sorting post office, and
delivery sorting control means for reading out the
ID printed on each mail contained in the
transportation/storage medium, acquiring the
address information for the mail by the address
information for each ID that is read out by the
information read-out means, and sorting the mails
in sorting boxes for delivering the mails based on
the acquired address information.

PRIOR ART
Shiratsuchi US 6,421,451 B2 Jul.16, 2002
Tamamoto US 6,437,272 B2 Aug, 20, 2002
Gortz DE 102004035365 Feb. 16, 2006

GROUNDS OF REJECTION

1. Claims 1, 2, 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gortz.
2. Claims 3 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Gortz and Shiratsuchi.
3. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Gortz and Tamamoto.
OPINION
The Examiner finds that Gortz discloses each and every limitation of
independent claim 1. See Ans. 3-7. In particular, the Examiner finds that
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Gortz discloses sorting control means for transferring mail in each of the
sorting boxes into a transportation/storage medium. See Ans. 6.
Appellant states that “Gortz discloses containers that the Examiner
has corresponded to the transportation/storage medium of claim 1.” App.
Br. 5. Appellant argues that
The containers are indeed provided with
identification codes (p. 18, 11. 14-17). However,
these identification codes do not correspond to the
recording mechanism of claim 1. First, the
identification codes are not written with
information necessary for the secondary sorting of
mails that have been transferred to the
transportation/storage medium. Rather, the
identification codes simply allow unambiguous
identification of the containers (id.). Second, the
identification codes cannot be written with such
information. This is because the identification
codes are “permanently associated” with the
containers (id.). That is, they are not written with
the information necessary for the secondary sorting
of mails that have been transferred to the
containers, but rather permanently identify the
containers.

App. Br. 5.
In response to this argument, the Examiner finds that “[t]he computer
database storage qualifies as the transportation/storage medium as it records
the I[D] information about the mail[ ]pieces loaded into the sorting boxes.”
Ans. 9-10. The Examiner further finds that
any ID information about the mail[ ]pieces loaded
into the sorting boxes, qualifies as associated ID
information with the sorting box and meets the
limitation and meets the information ID
requirement of: ‘the address information
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necessary for secondary sorting of the mails that
are transferred into the transportation/storage
medium and for writing the address information in
association with the IDs in a recording mechanism
provided with the transportation/storage medium
in such manner to record and read information.’
Gortz teaches writing ID information to labels
which are placed on mail[ ]pieces before they are
loaded into the sorting boxes (P 16 L 1-14). The
labels are a paper medium and the placing of the
mail[ ]pieces with the labels inside the sorting box
qualifies as associated with the sorting box.
Ans. 10.
Appellant argues that the computer database storage is not a
transportation/storage medium because it “cannot actually contain mail.”1
Reply Br. 1. Appellant further argues “[t]he computer database storage is
not a transportation/storage medium like a cart. While one can foreseeably
transport a computer database storage, the storage itself cannot be used to
transfer the mail, because it is not something into which mail, like letters and
packages, can be placed.” Reply Br. 2. We agree.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Specification
describes the transportation/storage medium “as trays, mail sacks or the

1 Consistent with Appellant's contentions (infra), we understand Appellant's
usage of the term ‘mail’ to be with respect to an original tangible item that is
physically handled, processed and transported as described in the
Specification in contrast to an electronic or a more non-tangible form of mail
whose original form is not so physically handled, processed and transported.
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like for transporting or storing mails.” Spec., p. 18, ll. 24-25. Trays and
mail sacks are mediums for transporting and storing the actual singular,
physical pieces of mail, whereas a computer database storage can only store
information about, or an image of, a piece of mail. Thus, the Examiner’s
construction of transportation/storage medium to encompass a computer
database storage is not reasonable because it is not consistent with the
Specification.
For these reasons, we do not sustain the Examiner’s rejection of claim
1 and claims 2, 4 and 5 which depend therefrom. Shiratsuchi does not cure
the deficiencies Gortz discussed supra. Accordingly, we do not sustain the
Examiner’s rejection of claims 3 and 7. Tamamoto does not cure the
deficiencies in Gortz discussed supra. Accordingly, we do not sustain the
Examiner’s rejection of claim 6.
DECISION

The Examiner’s rejection of claims 1-7 are REVERSED.

REVERSED

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