Ex Parte Wronski et al

Patent Trial and Appeal Board

Aug 10, 2018

12332101 (P.T.A.B. Aug. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/332, 101 12/10/2008 John S. Wronski JR.
919 7590 08/14/2018
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT.
37 EXECUTIVE DRIVE
MSC 01-152
DANBURY, CT 06810
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.
G-449 3863
EXAMINER
ERB,NATHAN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
08/14/2018 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):
iptl@pb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHNS. WRONSKI JR. and CATHERINE C. MORRISSEY
Appeal2017-001442
Application 12/332,101 1
Technology Center 3600
Before ERIC S. FRAHM, MATTHEW J. McNEILL, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-12, which constitute all claims pending in
the application. Claims 13-20 have been withdrawn. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Pitney Bowes Inc. as the real party in interest. App.
Br. 2.
Appeal2017-001442
Application 12/332,101
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to management of postal meter systems,
and specifically, a process for "securely transferring the personality [i.e.,
settings and status] of a postal meter at a non-secure location." Spec. ,r 1.
According to the Specification, the invention permits "securely repairing or
cloning" a defective postage meter system at a user location without the
need to transport the meter, and minimizes the need for users "to have to
reenter various information into replacement postage meter systems." Id. at
,r,r 9-10.
Claim 1, the sole independent claim, is illustrative of the invention
and the subject matter of the appeal, and reads as follows:
1. A method for securely transferring the personality of a
postage meter system to a replacement postage meter system at
a non-secure location comprising the steps of:
connecting a security tool to said postage meter system at
said non-secure location;
said security tool retrieving data from said postage meter
system and said tool signing said retrieved data;
connecting said security tool to a data center and
transmitting said signed data to said data center;
validating said signature and content of said retrieved data
at said data center;
said data center signing replacement adjusted data and
transmitting said signed replacement adjusted data from said data
center to said security tool at said non-secure location;
said security tool sending said signed replacement
adjusted data to said replacement postage meter system; and,
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Application 12/332,101
said replacement postage meter system validating and
installing said signed replacement adjusted data in said
replacement postage meter system at said non-secure location.
App. Br. 7 (Claims App'x) ( emphases added).
The Re} ections on Appeal
Claims 1-12 are rejected under 35 U.S.C. § 101 as directed to
ineligible subject matter. Final Act. 3--4.
Claim 1 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Heinrich (US 2008/0301387 Al,published Dec. 4, 2008),
Le Carpentier (US 4,752,950, issued Jun. 21, 1988), and Pagel et al. (US
2005/0256811 Al, published Nov. 17, 2005) ("Pagel"). Final Act. 5---6.
Claim 2 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Heinrich, Le Carpentier, Pagel, and Brookner et al. (US
7,120,610 Bl, issued Oct. 10, 2006) ("Brookner '610"). Final Act. 6.
Claims 3 and 11 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Heinrich, Le Carpentier, Pagel, Brookner '610, and
Harris et al. (US 2005/0137988 Al, published June 23, 2005) ("Harris").
Final Act. 6-7.
Claims 4, 5, 7 and 9 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over Heinrich, Le Carpentier, Pagel, Brookner '610,
Harris, and Ehresmann et al. (US 2008/0126670 Al, published May 29,
2008) ("Ehresmann"). Final Act. 7-9.
Claims 6 and 10 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Heinrich, Le Carpentier, Pagel, Brookner '610,
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Application 12/332,101
Harris, Ehresmann, and Brookner et al. (US 2003/0097337 Al, published
May 22, 2003) ("Brooker '337"). Final Act. 9.
Claim 8 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Heinrich, Le Carpentier, Pagel, Brookner '610, Harris,
Ehresmann, and Athens et al. (US 2005/0015344 Al, published Jan. 20,
2005) ("Athens"). Final Act. 9-10.
Claim 12 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Heinrich, Le Carpentier, Pagel, Brookner '610, Harris,
Athens, and Gargiulo et al. (US 5,638,442, issued June 10, 1997)
("Gargiulo"). Final Act. 10.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Brief are deemed to be waived. See
37 C.F.R. § 4I.37(c)(l)(iv). On the record before us, we are not persuaded
the Examiner erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner's
Answer, and provide the following discussion for highlighting and emphasis.
Re} ection Under 3 5 U.S. C. § 101
Appellants argue the Examiner erred in rejecting the claims as
directed to ineligible subject matter, namely, the abstract idea of securely
transferring data from one postage meter to another. Non-Final Act. 3; App.
App. Br. 3. Appellants contend the claims are not directed to a commercial
activity or "[f]undamental economic practice," as the Examiner finds, but
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Application 12/332,101
rather are directed to "technology for performing a specific technological
function." App. Br. 3. For the following reasons, Appellants' arguments do
not persuade us of error.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Court
has set forth a two-part inquiry to determine whether this exception applies.
First, we must "determine whether the claims at issue are directed to one of
those patent-ineligible concepts." Alice, 134 S. Ct. at 2355 (citation
omitted). Second, if the claims are directed to one of those patent-ineligible
concepts, we consider "the elements of each claim both individually and 'as
an ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. at 79, 78 (2012)). Put differently, we must search the claims
for an "inventive concept," that is, "an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 71-73).
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Application 12/332,101
Regarding step one of the Alice analysis, as the Examiner observes,
the method recited in claim 1 consists of various steps of "securely"
transferring data between a postage meter system and a "replacement"
postage meter system. Ans. 2-3. Such data manipulation encompasses an
abstract idea. See, e.g., Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing
it, and displaying certain results of the collection and analysis" are "a
familiar class of claims 'directed to' a patent-ineligible concept"); see also
In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016).
Appellants' argument to the contrary is sparse and unpersuasive.
Appellants assert that the Examiner must consider what is "recited" in the
claims rather than more generally what the claims are directed toward, that
"on its face" the invention is not abstract, that "it is unreasonable and unfair"
to characterize the invention as reciting an economic activity. App. Br. 3.
The Examiner's findings and conclusion did address the subject matter
recited in the claims, and are consistent with prior cases finding ineligible
subject matter. See supra.
In the reply, Appellants argue the Federal Circuit's holding in Enfzsh
supports patent-eligibility of Appellants' claims. Reply Br. 2 ( citing Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). The claims in
Enfish, however, were directed to a "specific improvement to the way
computers operate," i.e., an improved database configuration that permitted
faster searching for data. Enfzsh, 822 F.3d at 1330-33, 1336. Appellants do
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Application 12/332,101
not describe an advance in hardware or software that, for example, causes a
computer to operate faster or more efficiently. Accordingly, we are not
persuaded the Examiner erred in step one of the Alice analysis, and we
proceed to step two.
In the second step of our analysis under Alice,
we must examine the elements of the claim to determine whether
it contains an "inventive concept" sufficient to "transform" the
claimed abstract idea into a patent-eligible application. A claim
that recites an abstract idea must include "additional features" to
ensure "that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."
Alice Corp., 134 S. Ct. at 2357 (internal citations omitted). Appellants
present no separate argument as to step two, and identify no "additional
features" in the claims. App. Br. 3; Reply Br. 2-3. The "security tool"
recited in the claims consists of "a display 62, a keyboard 64, a memory 66,
a program memory 68 with application program and a cryptocard 70." Spec.
,r 24. Appellants do not attempt to explain how any of these elements are
anything other than generic computing elements, which "do not alone
transform an otherwise abstract idea into patent-eligible subject matter."
FairWarning, 839 F.3d at 1096 (Fed. Cir. 2016) (citing DDR Holdings,
LLC, v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)); Ans. 3.
Accordingly, Appellants do not persuade us the Examiner erred in the
second step of the Alice analysis.
For the foregoing reasons, we sustain the rejection of claims 1-12 as
directed to ineligible subject matter.
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Rejections Under 35 U.S.C. § 103
Appellants argue the Examiner erred in finding the prior art teaches or
suggests a "security tool" brought to a "non-secure location" for transferring
data between postage meters, as recited in claim 1. App. Br. 3--4.
Appellants further argue that Heinrich teaches away from LeCarpentier, and
therefore that one of ordinary skill in the art would not have combined the
references. App. Br. 4. We, however, are not persuaded of error.
We begin by construing "security tool," which Appellants contend is
absent from the prior art references. We give terms in a patent application
"their broadest reasonable interpretation consistent with the specification."
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). As
discussed above, Appellants' Specification indicates that "security tool"
means a display, keyboard, memory, program memory with application
program and cryptocard, which provides "bidirectional" secure
communications. Spec. ,r 24. The "security tool" may, for example, be a
laptop. Id. Claim 1 further defines a security tool as something connected
to a postage meter system at a non-secure location, which sends replacement
adjusted data to the "replacement postage meter system." App. Br. 7. In
other words, the security tool is an intermediary between a postage meter
system and its replacement postage meter system.
As the Examiner finds, Heinrich and Le Carpentier teach such an
intermediary. Heinrich teaches retrieving data from a postage meter system,
sending it to a data center, and the data center sending the data to a non-
secure location for installation in a replacement postage meter system. Final
Act. 5; Heinrich ,r,r 2, 11, 32-34. Le Carpentier, in tum, teaches using an
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intermediary device at a non-secure location, between a data center and a
replacement postage meter system. Le Carpentier Abstract, Fig. 1; col. 1,
54--59, col. 2, 11. 25-60, col. 6, 11. 1-9; Final Act. 5 ( citations omitted). The
combination of Heinrich and Le Carpentier teaches a "security tool" as
claimed, because the combination teaches an intermediary. Appellants argue
Heinrich teaches data "should be backed up to a remote data center," which
is not a security tool. App. Br. 4. Appellants' argument, however, is not
persuasive because the Examiner relies on the combined teachings of
Heinrich and Le Carpentier, not Heinrich ( or Le Carpentier) alone. In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). ("Non-
obviousness cannot be established by attacking references individuaHy
where the rejection is based upon the teachings of a combination of
references.").
Similarly, we discern no error in the Examiner's rationale for
combining the references. As the Examiner finds, Le Carpentier and
Heinrich both address the problem of communicating data to new or
replacement franking machines. Ans. 14--15. Both the intermediary device
(security tool) of Le Carpentier and the remote server of Heinrich are
elements known to one of ordinary skill in the art. The Examiner finds one
of ordinary skill would recognize the advantage of modifying Heinrich by
adding Le Carpentier' s security tool as an intermediary. Id. Appellants do
not identify any error in this finding, nor do Appellants point to any
evidence of record that the resulting arrangement would be "uniquely
challenging or difficult for one of ordinary skill in the art" or "represented an
unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price,
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Application 12/332,101
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex,
Inc., 550 U.S. 398, 418-19 (2007)). The Examiner's findings are reasonable
because the skilled artisan would "be able to fit the teachings of multiple
patents together like pieces of a puzzle" since the skilled artisan is "a person
of ordinary creativity, not an automaton." KSR, 550 U.S. at 420-21. We are
persuaded the claimed subject matter exemplifies the principle, "[t ]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." KSR, 550 U.S.
at 416.
Further, Appellants point to no evidence in the record that any
reference teaches away from the Examiner's combination. Heinrich's
teaching of a remote server does not preclude, prevent, or discourage the use
of an intermediary device, such as a security tool, at the non-secure location
of the replacement postage meter. In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994) (reference teaches away from combination "when a person of ordinary
skill, upon reading the reference ... would be discouraged from following
the path set out in the reference").
Accordingly, we sustain the Examiner's obviousness rejection of
claim 1. Appellants argue the Examiner erred in rejecting dependent claims
2-12 because the additional references cited in those rejections fail "to
correct the deficiencies" regarding claim 1. App. Br. 4--6. This argument is
not persuasive because we find no error regarding claim 1. We, therefore,
sustain the Examiner's obviousness rejections of claims 2-12.
DECISION
We affirm the Examiner's decision rejecting claims 1-12.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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