Jackson, Corey

Patent Trials and Appeals Board

Jan 16, 2020

12144262 - (D) (P.T.A.B. Jan. 16, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/144,262 06/23/2008 Corey Jackson IPP200899399/289152 1177
143177 7590 01/16/2020
Shook, Hardy & Bacon L.L.P.
(United Parcel Service, Inc.)
2555 Grand Blvd.
Kansas City, MO 64108-2613
EXAMINER
HUANG, JAY
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
01/16/2020 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
docketing.shb@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COREY JACKSON
Appeal 2019-001243
Application 12/144,262
Technology Center 3600

Before JEREMY J. CURCURI, JAMES B. ARPIN, and
ADAM J. PYONIN, Administrative Patent Judges.

PYONIN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1, 4–7, 9, 10, 12, 15, and 18, all of the
pending claims. Non-Final Act. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party-in-interest as United
Parcel Service of America, Inc. Appeal Br. 3.
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Application 12/144,262

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STATEMENT OF THE CASE
Introduction
The Application is directed to “shipping an item using an [electronic]
envelope . . . . by which the carrier may update the information on the
envelope throughout the shipping process.” Spec. ¶ 1. Claims 1, 4–7, 9, 10,
12, 15, and 18 are pending. Appeal Br. 3. Claim 1, the sole independent
claim, is reproduced below for reference (emphases added):
1. A method for shipping an electronic envelope comprising:
receiving, via a carrier computer, a unique identifier of an
electronic envelope for shipping an item, wherein (a) the
electronic envelope comprises a communications chip and a
flexible electronic display and (b) the unique identifier is
received from a sender of the electronic envelope;
receiving, via the carrier computer, shipping information
from the sender of the electronic envelope, wherein the shipping
information is to be associated with the unique identifier of the
electronic envelope;
storing, via the carrier computer, carrier location data for
one or more carrier locations, wherein the one or more carrier
locations comprises a first carrier location;
storing, via the carrier computer, the shipping information
in association with the unique identifier;
transmitting at least a portion of the shipping information
comprising first shipping information and second shipping
information from the carrier computer to the communications
chip on the electronic envelope such that the first shipping
information and the second shipping information is stored in a
non-transitory memory on the electronic envelope;
causing display, via the flexible electronic display of the
electronic envelope, of the first shipping information stored on
the electronic envelope;
electronically determining, via the electronic envelope, a
current location of the electronic envelope as it is being
transported through the carrier’s transportation and logistics
network;
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electronically determining, via the electronic envelope,
whether the current location of the electronic envelope is one of
the one or more carrier locations; and
after determining that the current location is the first
carrier location of the one or more carrier locations in the carrier's
transportation and logistics network:
automatically retrieving, via the electronic envelope, the
second shipping information of the at least a portion of the
shipping information stored in the non-transitory memory on the
electronic envelope, wherein the second shipping information is
selected from the at least a portion of the shipping information
stored on the electronic envelope based at least in part on a
portion of the carrier location data and comprises instructions for
handling the electronic envelope at the first carrier location; and
causing display, via the flexible electronic display of the
electronic envelope, of the second shipping information retrieved
from the non-transitory memory.
The Examiner’s Rejection
Claims 1, 4–7, 9, 10, 12, 15, and 18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combined teachings of Burman (US
2005/0234785 A1; Oct. 20, 2005), Affolter (US 2008/0012721 A1; Jan. 17,
2008), and Olsen (US 2005/0252596 A1; Nov. 17, 2005). Non-Final Act. 5.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments. Arguments Appellant could have made, but chose not to make,
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). Appellant
does not separately argue the claims. See Appeal Br. 9, 10. We select claim
1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
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Application 12/144,262

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We disagree with Appellant that the Examiner erred and adopt as our
own the findings and reasons set forth by the Examiner. We add the
following primarily for emphasis.
Appellant contends the applied references do not render obvious
independent claim 1’s recitation that “the electronic envelope operates
entirely independently of any external display updating hardware.” Appeal
Br. 6. Appellant contends, “[i]n contrast, any teaching or suggestion for
updating data displayed on an electronic envelope provided by the cited
references requires some external updating mechanism that is physically
separate from the electronic envelope.” Appeal Br. 6–7.
We find Appellant’s arguments unpersuasive, as the contentions are
not commensurate with the scope of the claim or otherwise show error in the
Examiner’s rejection.
Regarding claim scope, Appellant has not identified specific
limitations that require “shipping information is simultaneously
transmitted”2 and “the electronic envelope itself can determine” (Appeal Br.
6), or limitations requiring “self-perform[ing] label update . . .
independently” and “self-determining a current location” (Appeal Br. 9).
Rather, the claim recites that a portion of information is transmitted to the
electronic envelope, a location is determined via the electronic envelope, and
information is retrieved via the electronic envelope. The claim, consistent
with the Specification, requires the electronic envelope perform steps in
combination with a carrier computer (i.e., a separate electronic device), and

2 We note claim 5 depends from claim 1, and further recites the shipping
information is transmitted “to said communications chip on said
electronic envelope in periodic intervals.” Appeal Br. 13 (Claims App.).
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Application 12/144,262

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does not preclude further use of another computer at a sorting station. See,
e.g., Spec. ¶¶ 11, 46, 49–52, 56, Fig. 1.
Regarding the Examiner’s rejection, we are not persuaded the above-
described limitations are distinguishable over the combined teachings of the
applied references. See Non-Final Act. 8, 9. Appellant contends Burman
“utilizes an external display updating device” (Appeal Br. 8); but these
contentions appear to disregard3 the Examiner’s reliance on Burman’s
teaching of an “alternative configuration” of a shipping label that “includes a
processor, and processor-readable memory coupled to the updateable visual
display . . . [and] a wireless chipset or radio.” Burman ¶ 76; Non-Final
Act. 6. Burman further teaches the processor is used “to provide additional
information on the updateable display.” Burman ¶ 78; Non-Final Act. 6.
Thus, we agree with the Examiner that Burman teaches processing and
displaying “via the electronic envelope,” as recited in claim 1. See Ans. 3.
Similarly, we are not persuaded the Examiner errs in finding one of
ordinary skill would have had reason to combine the teachings of the applied
references to achieve the claimed method. Ans. 4. Burman teaches the
updateable display “allows instructive information to be visually displayed
in a human-readable form to facilitate proper routing and/or handling of the
package.” Burman ¶ 79; Non-Final Act. 5, 6. As further cited by the
Examiner, Affolter teaches a flexible electronic display, and Olsen teaches
transmitting a sort plan (comprising first and second shipping information)
to an electronic shipping tag. Non-Final Act. 8; Affolter ¶ 7; Olsen ¶¶ 45,
54. We agree with the Examiner that one of ordinary skill would have had

3 We note the argument does not provide any citations or quotes from
Burman in support of these contentions. See Appeal Br. 8.
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reason to modify Burman’s teachings with these teachings of Affolter and
Olsen to “ensure[] that an operator at the intermediate hub is able to
accurately route the package based on displayed information, thus improving
the overall efficiency of the invention.” Non-Final Act. 9; Olsen ¶¶ 2, 45;
Burman ¶ 79. Appellant has not shown such modification to 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,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Accordingly, we are not persuaded the Examiner’s obviousness
rejection is in error.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/ Basis  Affirmed Reversed
1, 4–7, 9,
10, 12, 15,
18
103(a) Burman, Affolter
Olsen 
1, 4–7, 9,
10, 12, 15,
18

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED