Ex Parte Thiel

Board of Patent Appeals and Interferences

Apr 28, 2006

09527138 (B.P.A.I. Apr. 28, 2006)

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is not binding precedent of the Board.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 WOLFGANG THIEL
_____________

Appeal No. 2006-0086
Application No. 09/527,138
______________

HEARD April 4, 2006
_______________

Before FRANKFORT, LEVY and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the final rejection of
claims 1 through 7 and 9, all of the claims remaining in the application. For the
reasons stated infra we will not sustain the examiner’s rejection of claims 1
through 7 and 9.

Appeal No. 2006-0086
Application No. 09/527,138

THE INVENTION

The invention relates to a postage meter machine which has postage
stamp data and franking image data for several countries and carriers
permanently programmed into the memory of the machine. A selection device is
then used to configure the machine by selecting the appropriate franking imprint
configuration for the particular country where the machine is used. See pages 4
through 6 of appellant’s specification.
Claim 1 is representative of the invention and is reproduced below:

1. A method for entering contents of a franking imprint into a postage
meter machine, said postage meter machine having an electronic, digitally
operating printer and said contents being employed for printing said
franking imprint with said printer, said method comprising the steps of:
storing a set of data in a non-volatile, non-removable memory of
said postage meter machine by permanently programming said set of data
at a manufacturing location, said data being selected from the group
consisting of different country-specific data and different carrier-specific
data;
installing a data communication interface in said postage meter
machine; and
configuring said franking imprint of said postage meter machine
prior to use at a use location remote from said manufacturing location for
at least one of a selected carrier and a selected country, by
communicating with said postage meter machine via said interface, to
select at least one of said permanently programmed carrier-specific data
and country- specific [data] from said non-removable memory data.

THE REFERENCE

The reference relied upon by the examiner is:

Vanpoucke 5,262,939 November 16, 1993
2

Appeal No. 2006-0086
Application No. 09/527,138

THE REJECTIONS AT ISSUE
Claims 1 through 7 and 9 stand rejected under 35 U.S.C. § 102 as being
anticipated by Vanpoucke.1 Throughout the opinion we make reference to the
briefs and the answer for the respective details thereof.
OPINION
We have carefully considered the subject matter on appeal, the rejection
advanced by the examiner and the evidence of anticipation relied upon by the
examiner as support for the rejection. We have, likewise, reviewed and taken
into consideration, in reaching our decision, appellant’s arguments set forth in the
briefs along with the examiner’s rationale in support of the rejection and
arguments in rebuttal set forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejection and the arguments of appellant and the examiner, for the
reasons stated infra we will not sustain the examiner’s rejection of claims 1
through 7 and 9 under 35 U.S.C. § 102.

1 We note that the Final Office action also rejected claims 1 through 7 and 9
under 35 U.S.C. § 102 as being anticipated by Freytag and by Märkl et al.
Appellant presented arguments directed to these rejections in the brief, however
the examiner did not repeat the rejections in the Answer. Accordingly we
consider the appeal of these rejections to be dismissed. Nonetheless, we have
reviewed appellant’s arguments and the art. Had the examiner maintained the
appeal of these rejections we would reverse the rejections for the reasons
asserted by the appellant in the brief.
3

Appeal No. 2006-0086
Application No. 09/527,138

Appellant states, on page 12 of the brief, that claims 1 and 9 recite a
selection from among different sets of previously stored data used to configure
the franking imprint. Appellant argues, on pages 12 and 13 of the brief, that
though Vanpoucke has file memories, item 2, which contain characteristics
specific to different countries, there is no teaching in Vanpoucke of when and
how the data is entered into the memory. Appellant acknowledges, on page 3 of
the reply brief, that the memory 2 of Vanpoucke must include data which set or
define the format of the franking imprint of whatever country the postage meter
will be used in. However, appellant argues there is no selection of the different
carrier specific or country specific data. In response, on page 4 of the answer,
the examiner states:
In response to Appellant’s argument (in Brief’s page 13, lines 1-2)
that there is no disclosure in Vanpoucke as to when and how data are
entered into the file memory 2, such data entry must take place at the
location of the manufacturer because the user of the system does not
enter those data into the memory either (the manufacturer must enter the
data into the memory to enable the user to operate the system).

Further, on page 3 of the answer, the examiner identifies Vanpoucke’s card, item
20, as meeting the claimed interface (chip card) and cites column 3 lines 2
through 5 and 65 through 68 of Vanpoucke as describing the claimed selecting of
data from memory to configure the franking imprint.
We are not persuaded by the examiner’s rationale. Claim 1 includes the
limitations of “storing a set of data in a non-volatile, non-removable memory of
4

Appeal No. 2006-0086
Application No. 09/527,138

said postage meter machine by permanently programming said set of data at a
manufacturing location, said data being selected from the group consisting of
different country-specific data and different carrier-specific data,” providing a data
communication interface and “communicating with said postage meter machine
via said interface, to select at least one of said permanently programmed carrier-
specific data and country- specific from said non-removable memory data.”
Thus, claim 1 requires the memory to contain different country specific data or
carrier specific data and that a selection of the data is performed to arrive at an
appropriately configured franking image configuration. Claim 1 also recites that
the data is stored in the memory at a manufacturing location. Claim 9 contains
limitations which recite a permanently installed non-volatile memory containing
different carrier-specific data and different country specific data a microprocessor
connected to a chip card reader wherein the microprocessor receives data from a
chip card to select at least one of the carrier specific data and country specific
data and loads the data into a franking imprint memory.
While we agree with the examiner that Vanpoucke does not teach that the
user enters the data, Vanpoucke is silent as to who enters the data into the
memory. However, we do not find that Vanpoucke’s silence on this issue
teaches, or inherently requires, the data to be entered at a manufacturing
location. As appellant argues, on page 2 of the reply brief, there are other
scenarios, which could explain how data is entered into the memory. Inherency

5

Appeal No. 2006-0086
Application No. 09/527,138

is not established by possibilities or probabilities. The examiner is required to
show that the feature asserted to be inherent must exist. For this reason alone
we will not sustain the examiner’s rejection of claim 1 and claims 2 through 7, the
claims dependent therefrom.
Additionally, we disagree with the examiner’s assertion that Vanpoucke
teaches selecting the data from memory to configure the franking imprint. It is
not clear from Vanpoucke whether the memory contains different country specific
data and different carrier specific data as asserted by the examiner. Further,
even if it were assumed that memory 2 of Vanpoucke did contain the data, we do
not find that card 20 selects from the data. Vanpoucke teaches that the card
includes programs identifying tariff schedules and documents to be printed. The
card also includes encryption tables used in conjunction with update disks. See
column 4, lines 25 through 47. We do not consider the “documents to be printed”
to be the franking imprint.2 Further, even if the documents to be printed includes
the franking imprint, Vanpoucke does not teach that memory 2 includes the
document data which is then selected by the card 20, rather card 20 contains the
document data. Thus, we do not find that
Vanpoucke teaches selecting the country specific or carrier specific data stored
in the memory as claimed in independent claims 1 and 9. Accordingly, we will

2 Vanpoucke identifies that there are numerous printers for printing specific
documents and separately identifies the postage meter for franking. See column
3, lines 45 through 53. These documents are also described as other than
payment stickers. See column 1, lines 50 through 51, and column 2 lines 50
through 53.
6

Appeal No. 2006-0086
Application No. 09/527,138

not sustain the examiner’s rejection of claims 1 through 7 and 9.
In summary we will not sustain the examiner’s rejection of claims 1
through 7 and 9 under 35 U.S.C. § 102. The decision of the examiner is
reversed.

REVERSED

CHARLES E. FRANKFORT
Administrative Patent Judge )
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

REN/vsh
7

Appeal No. 2006-0086
Application No. 09/527,138

HILL & SIMPSON
A PROFESSIONAL CORPORATION
85TH FLOOR, SEARS TOWER
CHICAGO, IL 60606

8