Ex Parte VAN GORP et al

Patent Trial and Appeal Board

Sep 16, 2016

12775731 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121775,731 05/07/2010
25297 7590 09/20/2016
Jenkins, Wilson, Taylor & Hunt, P,A,
3100 Tower Blvd.
Suite 1200, University Tower
Durham, NC 27707
FIRST NAMED INVENTOR
Mark VANGORP
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
1174/489/2 (0896) 1746
EXAMINER
CHEN, GEORGE YUNG CHIER
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/20/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptomail@jwth.com
mmcjunkin@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MARK VAN GORP,
WALTERS. CONARD,
RIMA FRANKLIN, and
MARK WOOLSTON
Appeal2014-000939
Application 12/775,731 1
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark Van Gorp, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-9, 11-25, and 31-34. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
1 The Appellants identify Bell and Howell, LLC as the real party in interest.
App. Br. 2.
Appeal2014-000939
Application 12/775,731
We AFFIRM.
SUMMARY OF DECISION
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A table top mail processing system for processing a plurality of
mail pieces in a mailing to qualify the mailing for a postage discount,
the system comprising:
a feeder and transport for individually feeding and transporting
each of the plurality of mail pieces;
an image capturing device positioned along the transport for
capturing an image of an address positioned on each of the plurality of
mail pieces;
an address quality processing device for reading the address
image of a respective one of the mailpieces and obtaining a postal
authority qualified delivery point code for the respective mail piece;
a system processor configured to:
receive the postal authority qualified delivery point code;
generate printer control data for printing discounted
postage meter indicia on the respective mail piece; and
create printer control data for printing a postal authority
approved delivery point barcode on the respective mail piece; and
at least one digital printer for printing the discounted postage
meter indicia and the authority approved delivery point barcode on the
respective mail piece,
wherein the mail processing system is a table top mailing
machine for processing the plurality of mail pieces in the mailing to
qualify the mailing for the postage discount.
2
Appeal2014-000939
Application 12/775,731
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Durst, Jr. [Durst]
Pigos, Jr. [Pigos]
Aldstadt
Snapp
Borja
Ehresmann
Paul
Runstrom
Orbke
Rathbun
us 5,239,168
US 6,370,521 Bl
US 2005/0149765 Al
US 2006/0215937 Al
UD 2007/0215705 Al
US 2007 /0282764 Al
US 2008/0091460 Al
US 2008/0162381 Al
US 2009/0057207 Al
US 2009/0157470 Al
Aug. 24, 1993
Apr. 9, 2002
Jul. 7, 2005
Sep.28,2006
Sep.20,2007
Dec. 6, 2007
Apr. 17, 2008
Jul. 3, 2008
Mar. 5, 2009
Jun. 18,2009
United States Postal Service, "Intelligent Mail® Barcode Technical
Resource Guide," Rev 3.5, Jan. 13, 2009. [USPS]
The following rejections are before us for review:
1. Claims 1-3, 7, 9, 11, 15, 22, and 24 are rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Durst, Aldstadt, and Ehresmann.
2. Claims 4 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Borja.
3. Claims 5, 13, 17, 21, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Durst, Aldstadt, Ehresmann, and Orbke.
4. Claims 6 and 14 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Rathbun.
5. Claims 16 and 25 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Runstrom.
6. Claim 18 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Durst, Aldstadt, Ehresmann, and Snapp.
3
Appeal2014-000939
Application 12/775,731
7. Claim 19 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Durst, Aldstadt, Ehresmann, and USPS.
8. Claim 20 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Durst, Aldstadt, Ehresmann, and Paul.
9. Claims 31-34 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Pigos.
ISSUES
Did the Examiner err in rejecting claims 1-3, 7, 9, 11, 15, 22, and 24
under 35 U.S.C. §103(a) as being unpatentable over Durst, Aldstadt, and
Ehresmann; claims 4 and 12 under 35 U.S.C. §103(a) as being unpatentable
over Durst, Aldstadt, Ehresmann, and Borja; claims 5, 13, 17, 21, and 23
under 35 U.S.C. §103(a) as being unpatentable over Durst, Aldstadt,
Ehresmann, and Orbke; claims 6 and 14 under 35 U.S.C. §103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Rathbun; claims 16 and
25 under 35 U.S.C. § 103(a) as being unpatentable over Durst, Aldstadt,
Ehresmann, and Runstrom; claim 18 under 35 U.S.C. §103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Snapp; claim 19 under
35 U.S.C. § 103(a) as being unpatentable over Durst, Aldstadt, Ehresmann,
and USPS; claim 20 under 35 U.S.C. § 103(a) as being unpatentable over
Durst, Aldstadt, Ehresmann, and Paul; and, claims 31-34 under 35 U.S.C.
§ 103 (a) as being unpatentable over Durst, Aldstadt, Ehresmann, and Pigos?
4
Appeal2014-000939
Application 12/775,731
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1-3, 7, 9, 11, 15, 22, and 24 under 35 U.S.C. §103(a)
as being unpatentable over Durst, Aldstadt, and Ehresmann.
We have reviewed the Appellants' arguments challenging the
rejection of independent claims 1 and 11 but do not find them persuasive as
to its error.
The Appellants have not argued that Durst, Aldstadt, and Ehresmann
fail to disclose a claim element. Accordingly, the Examiner's
characterization of the scope and content of the prior art or of the differences
between what the prior art discloses and the subject matter claimed do not
appear to be in dispute. Nor has any question been raised about the level of
skill of one of ordinary skill in the relevant art or whether the Examiner
presented an apparent reasoning with logical underpinning for combining the
cited references to reach the claimed combination. In view of these facts, we
find that a prima facie case of obviousness has been established.
The Appellants argue instead that hindsight reconstruction was used
to establish obviousness. "Obviousness can not be established by hindsight
combination to produce the claimed invention," In re Dance, 160 F.3d 1339,
1343 (Fed. Cir. 1998). See also KSR Int'! Co. v. Teleflex Inc., 127 S. Ct.
1727, 1742 (2007) ("A factfinder should be aware, of course, of the
distortion caused by hindsight bias and must be cautious of arguments reliant
5
Appeal2014-000939
Application 12/775,731
upon ex post reasoning.") The Appellants do not make a persuasive
argument as to error in the rejection.
The Appellants point out that "Durst's postage meter is a stand alone
postage metering device that is not combined with any other mailing
machine" and then argue "that it is not apparent how or why Durst's stand
alone postage meter could be modified with the conventional sorting system
of Aldstadt." App. Br. 9. According to the Appellants "Durst does not teach
or suggest implementing its stand along postage device into a conventional
sorting system ... [and] Aldstadt fails to disclose or suggest implanting its
feeding, image reading and image processing features of a high speed
sorting system into a stand alone postage meter device." App. Br. 9-10.
Similarly, the Appellants point out that Ehremann discloses a
"franking machine (a type of postal fee billing system) [that] stamps mail
passing through it and computes the total charges." App. Br. 11. According
to the Appellants, "it is not clear what additional functions of Ehresmann are
necessary or obvious to include in Durst's machine. There is not apparent
reasoning for one of ordinary skill in the art when viewing Durst's machine
to have turned to Ehresmann for additional functionality." App. Br. 12.
We agree that there are "distinct differences" (App. Br. 10) between
the Durst, Aldstadt, and Ehresmann machines. But all three references are
directed to processing mail items and are thus within the field of the
inventors' endeavor. See In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).
Moreover, the existence of "distinct differences" between the
machines disclosed is not dispositive of nonobviousness. "The obviousness
analysis cannot be confined by a formalistic conception of the words
6
Appeal2014-000939
Application 12/775,731
teaching, suggestion, and motivation, or by overemphasis on the importance
of published articles and the explicit content of issued patents." KSR at
1741. The question is whether "'the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter
pertains.'" KSR at 1734 (citing § 103). Here, the facts are not in dispute. It
is not disputed for example that the cited references variously disclose all the
claim elements. In that case, there is a "need for caution in granting a patent
based on the combination of elements found in the prior art" (KSR at 1739).
For over a half century, the Court has held that a "patent for a
combination which only unites old elements with no change in their
respective functions ... obviously withdraws what is already known
into the field of its monopoly and diminishes the resources available
to skillful men." Great Atlantic & Pacific Tea Co. v. Supermarket
Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162
(1950). This is a principal reason for declining to allow patents for
what is obvious. The combination of familiar elements according to
known methods is likely to be obvious when it does no more than
yield predictable results."
KSR at 1739.
We do not find that the Appellants have made the case that the
claimed subject matter is more than a combination of familiar elements each
performing its known function as evidenced by the prior art disclosures.
"[W]hen a patent "simply arranges old elements with each performing the
same function it had been known to perform" [(Sakraida v. Ag Pro, Inc., 425
U.S. 273, 282 (1976))] and yields no more than one would expect from such
an arrangement, the combination is obvious." KSR at 1740.
7
Appeal2014-000939
Application 12/775,731
In that regard, the Appellants have not come forward with sufficient
argument and/ or evidence in support of finding that the combination yields a
result one of ordinary skill in the art would not have expected. No
secondary factors to support nonobviousness have been shown.
For the foregoing reasons, we are unpersuaded as to error in the
rejection of independent claims 1 and 11.
The rejection of claims 2, 3, 7, 9, 15, 22, and 24 is not separately
argued. Accordingly, the rejection of these claims is sustained for the same
reasons.
The rejection of claims 4 and 12 under 35 U.S.C. §103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Borja.
The rejection of claims 5, 13, 17, 21, and 23 under 35 U.S.C. §103(a) as
being unpatentable over Durst, Aldstadt, Ehresmann, and Orbke.
The rejection of claims 6 and 14 under 35 U.S.C. §103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Rathbun.
The rejection of claims 16 and 25 under 35 U.S.C. §103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Runstrom.
The rejection of claim 18 under 35 U.S. C. §103 (a) as being unpatentable
over Durst, Aldstadt, Ehresmann, and Snapp.
The rejection of claim 19 under 35 U.S. C. §103 (a) as being unpatentable
over Durst, Aldstadt, Ehresmann, and USPS.
The rejection of claim 20 under 35 U.S. C. §103 (a) as being unpatentable
over Durst, Aldstadt, Ehresmann, and Paul.
The rejection of claims 31-34 under 35 U.S.C. §103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Pigos.
8
Appeal2014-000939
Application 12/775,731
The Appellants make the same argument against each of these
rejections; that is, given that claims 1 and 11 are patentable, so are the
claims dependent therefrom. See App. Br. 16-21. The argument is
unpersuasive for the reasons stated herein. Accordingly, these rejections are
sustained.
CONCLUSIONS
The rejection of claims 1-3, 7, 9, 11, 15, 22, and 24 under 35 U.S.C.
§ 103 (a) as being unpatentable over Durst, Aldstadt, and Ehresmann is
affirmed.
The rejection of claims 4 and 12 under 35 U.S.C. §103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Borja is affirmed.
The rejection of claims 5, 13, 17, 21, and 23 under 35 U.S.C. § 103(a)
as being unpatentable over Durst, Aldstadt, Ehresmann, and Orbke is
affirmed.
The rejection of claims 6 and 14 under 35 U.S.C. §103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Rathbun is affirmed.
The rejection of claims 16 and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Runstrom is affirmed.
The rejection of claim 18 under 35 U.S.C. § 103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Snapp is affirmed.
9
Appeal2014-000939
Application 12/775,731
The rejection of claim 19 under 35 U.S.C. § 103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and USPS is affirmed.
The rejection of claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Paul is affirmed.
The rejection of claims 31-34 under 35 U.S.C. § 103(a) as being
unpatentable over Durst, Aldstadt, Ehresmann, and Pigos is affirmed.
DECISION
The decision of the Examiner to reject claims 1-9, 11-25, and 31-34
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
10