Ex Parte Mallozzi et al

Patent Trial and Appeal Board

Apr 27, 2016

12869036 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/869,036 08/26/2010 Joseph D. Mallozzi
919 7590 04/29/2016
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-560 7089
EXAMINER
TIJNG, ALLEN J
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
04/29/2016 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):
iptl@pb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH D. MALLOZZI, MICHAEL J. RAMADEI,
MICHAEL W. WILSON, GARY J. STEW ARD, and COLIN GOODWIN
Appeal2013-009887 1
Application 12/869,0362
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, and 4--7. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed January 31,
2013) and the Examiner's Answer ("Ans.," mailed May 15, 2013) and Final
Office Action ("Final Act.," mailed October 2, 2012).
2 Appellants identify Pitney Bowes Inc. as the real party in interest (App.
Br. 3).
Appeal2013-009887
Application 12/869,036
CLAIMED INVENTION
Appellants' claimed invention "relates generally to systems, and more
particularly to methods and systems for rendering a shipping label including
an indicium that evidences fee payment associated with delivery of a mail
piece using a mailing machine and remote web server" (Spec. 1 ).
Independent claims 1 and 6, reproduced below with added bracketed
notations, are representative of the subject matter on appeal:
1. A method for generating and printing a carrier
shipping label for a mail piece using a mailing machine, the
mailing label including an indicium that evidences payment for
delivery of the mail piece, the method comprising:
[(a)] receiving by the mailing machine parameter
information for the mail piece,
[ (b)] obtaining by the mailing machine a fee required for
delivery of the mail piece to its intended destination;
[ ( c)] generating by a metering device in the mailing
machine indicium data, the indicium data including a serial
number of the metering device, a value of at least one register
maintained by the metering device, the fee for delivery of the
mail piece, a date, and a cryptographic digital signature
generated using the serial number of the metering device, the
value of at least one register maintained by the metering device,
the fee for delivery of the mail piece and the date;
[ ( d)] sending, via a network, the generated indicium data
from the mailing machine to a remote server operated by a
carrier;
[ ( e)] receiving by the mailing machine label image data
for the shipping label for the mail piece from the remote server,
the image data including an indicium that evidences payment of
fees for delivery of the mail piece that is based on the indicium
data sent to the remote server and information added by the
remote server that is required by the carrier;
[(t)] debiting a register maintained in the metering
device in the mailing machine for the fee required for delivery of
the mail piece to its intended destination; and
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[ (g)] printing, by a printing device associated with the
mailing machine, the shipping label, including the indicium,
based upon the label image data.
6. A method for a carrier server to render a shipping
label for a mail piece, the method comprising:
[(a)] receiving at a processing device of the carrier server
indicium data from a mailing machine remote from the carrier
server, the indicium data including a serial number of a metering
device included in the mailing machine, a value of at least one
register maintained by the metering device, a fee for delivery of
the mail piece, a date, and a cryptographic digital signature of the
indicium data;
[ (b)] generating by the processing device label data
representative of a shipping label, the shipping label including an
indicium based on the indicium data received from the mailing
machine and other information added by the carrier server that is
required by the carrier; and
[ ( c)] sending the label data from the carrier server to the
mailing machine for printing by a printer associated with the
mailing machine,
[ ( d)] wherein accounting for the indicium is not
performed at the carrier server.
REJECTION
Claims 1, 2, and 4--7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Weisberg (US 2001/0044783 Al, pub. Nov. 22, 2001) and
Gullo (US 2004/0186811 Al, pub. Sept. 23, 2004).
ANALYSIS
Independent claim 1 and dependent claims 2, 4, and 5
Appellants first argue that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 103(a) because neither Weisberg nor Gullo
discloses or suggests using a mailing machine to generate and print a carrier
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shipping label; Appellants note that both Weisberg and Gullo disclose the
use of a personal computer and a server, but Appellants assert that neither a
personal computer nor a server is a mailing machine, as called for in claim 1
(Br. 4--8). Appellants' argument is not persuasive.
During prosecution, the PTO gives claims their broadest reasonable
interpretation consistent with the specification. See In re Hyatt, 211 F .3d
1367, 1372 (Fed. Cir. 2000). There is a heavy presumption that claim terms
take on their "plain, ordinary, and accustomed meaning to one of ordinary
skill in the relevant art." Prima TekIL L.L.C. v. Polypap, S.A.R.L., 318 F.3d
1143, 1148 (Fed. Cir. 2003). And although a patent applicant may
overcome this presumption by acting as his or her own lexicographer so as
to assign a special definition to each claim term, any such a definition must
be "clearly [set] forth" and "explicit." Id.
Here, Appellants maintain that paragraph 12 of the Specification
attributes a special meaning to the term "mailing machine," i.e., that a
"mailing machine" is "a dedicated mailing machine that is utilized to process
outgoing mail pieces, and includes a transport that transports mail pieces in
seriatim fashion through the mailing machine and past a printer for printing
of an indicium" (Br. 5). However, we agree with the Examiner that
paragraph 12 merely describes an exemplary "mailing machine 20" (Ans. 4).
We find nothing in paragraph 12 that gives the term "mailing machine" a
special meaning different from the ordinary and customary meaning adopted
by the Examiner, i.e., a machine used in the processing of mail (see id. at 5).
Appellants next argue that Gullo does not disclose or suggest that "the
personal computer [which the Examiner compares to the claimed mailing
machine] generat[ es] the indicum data and then send[ s] the indicium data to
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a remote server operated by the carrier where label image data is generated
and returned to the personal computer," i.e., limitations ( c ), ( d), and ( e ), as
recited in claim 1 (Br. 7). Instead, according to Appellants, in Gullo, "the
entire process either occurs in the personal computer, or at the server that
operates the website" (id.).
That argument similarly fails at least because claim 1 is rejected as
unpatentable over the combination of Weisberg and Gullo, and not over
either one of them alone. The argument that a single reference alone does
not disclose all the recited claim limitations is not persuasive because
"[ n ]on-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). As the Examiner explains, "it is [the] Weisberg reference
that teaches the details of user generating the initial indicium data, and [the]
Gullo reference here that teaches the sending and label receiving aspects"
(Ans. 8).
In view of the foregoing, we sustain the Examiner's rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the Examiner's rejection
of dependent claims 2, 4, and 5, which are not argued separately except
based on their dependence from claim 1 (Br. 8).
Independent claim 6 and dependent claim 7
Appellants first argue that neither Weisberg nor Gullo discloses or
suggests "receiving at a processing device of the carrier server indicium data
from a mailing machine," as recited in claim 6, because a personal computer
is not a mailing device (Br. 9). That argument is not persuasive for the same
reasons set forth above with respect to claim 1.
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Appellants next argue that the Examiner erred in rejecting claim 6
under 35 U.S.C. § 103(a) because Weisberg does not disclose that all of the
indicium data received by the server are sent from the personal computer,
i.e., "receiving at ... the carrier server indicium data from a mailing
machine ... the indicium data including a serial number of a metering
device included in the mailing machine, a value of at least one register
maintained by the metering device, a fee for delivery of the mail piece, a
date, and a cryptographic digital signature of the indicium data," as recited
in claim 6 (Br. 9-10). Appellants acknowledge that information received
from the personal computer may include "the postage amount, the date, the
originating address and the mail class" (id. at 9), i.e., that the server receives
indicium data from the personal computer, i.e., the claimed mailing machine.
But Appellants argue that there is no metering device coupled to the
personal computer in Weisberg and that the information received from the
personal computer, therefore, cannot include a serial number of a metering
device included in the mailing machine or a value of at least one register
maintained by the metering device; Appellants also argue that the Weisberg
personal computer does not generate a cryptographic digital signature of the
indicium data (id.). Instead, according to Appellants, "[t]his information is
provided when the server itself generates the indicium" (id.).
Appellants' argument is not persuasive at least because the feature
that Appellants maintain is not disclosed in Weisberg, i.e., the specific
content of the indicium data, is non-functional descriptive material that may
not be relied on for patentability.
The Federal Circuit has long held that where a limitation claims
printed matter that is not functionally or structurally related to its physical
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substrate, the printed matter may not be relied on to distinguish over the
prior art for purposes ofpatentability. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability). The Federal Circuit also has applied the
rationale underlying the "printed matter" cases to method claims. King
Pharmaceuticals Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278-79 (Fed. Cir.
2010) (applying the "printed matter" reasoning to method claims containing
an "informing" step that could be either printed or verbal instructions).
In applying the printed matter doctrine, the first step is to determine
whether the limitation is, in fact, directed to printed matter, i.e., whether the
limitation claims the content of information. See In re Distefano, 808 F.3d
845, 848 (Fed. Cir. 2015). If so, "one must then determine whether the
printed matter is functionally or structurally related to the associated
substrate, and only if the answer is 'no' is the printed matter owed no
patentable weight." Id. at 851.
Here, claim 6 claims the informational content of the "indicium data,"
and, as such, is directed to printed matter. The relevant inquiry then is
whether the recitation that the indicium data include "a serial number of a
metering device included in the mailing machine, a value of at least one
register maintained by the metering device, a fee for delivery of the mail
piece, a date, and a cryptographic digital signature of the indicium data," i.e.,
the claimed informational content, functionally affects how the claimed
method is performed.
There is no objective evidence of record here that the content of the
indicium data alters or otherwise affects how the method is performed. The
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method steps of claim 6 are performed in the same way regardless of the
content of the indicium data. As such, it constitutes non-functional
descriptive material that may not be relied on for patentability. See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
In view of the foregoing, we sustain the Examiner's rejection of
claim 6 under 35 U.S.C. § 103(a). We also sustain the Examiner's rejection
of dependent claim 7, which is not argued separately except based on its
dependence from independent claim 6 (Br. 11 ).
DECISION
The Examiner's rejection of claims 1, 2, and 4--7 under 35 U.S.C.
§ 103(a) 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)(l )(iv).
AFFIRMED
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