Ex Parte Ryan et al

Patent Trial and Appeal Board

Apr 21, 2016

13180174 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/180,174 07 /11/2011 Frederick W. Ryan JR.
919 7590 04/25/2016
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.
F-730-Cl 1943
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
04/25/2016 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 FREDERICK W. RYAN, JR.,
BRADLEY R. HAMMELL,
and ANUJA S. KET AN
Appeal2013-007683
Application 13/180,174
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Frederick W. Ryan, Jr., Bradley R. Hammell, and Anuja S. Ketan
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims
1-13, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed November 26, 2012) and the Examiner's Answer ("Ans.," mailed
February 28, 2013), and Final Action ("Final Act.," mailed June 28, 2012).
Appeal2013-007683
Application 13/180,174
The Appellants invented a way of detecting fraud in a postage system.
Specification, para. 1 7.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer implemented method for controlling duplicate
printing by a user of a first shipping label having a shipment
tracking identifier, using a computer, comprising:
[1] receiving, by the computer,
a shipping label request from a client system;
[2] indicating a request
to print the shipping label using the computer;
[3] initiating a shipping label print task;
[ 4] receiving, by the computer, a print success indicator;
[5] if the print success indicator indicates that the print was
successful,
logging the shipment tracking identifier as a successful
print using the computer;
[5] if the print success indicator indicates that the print was not
successful,
offering a reprint option to the user;
and
[ 6] if the reprint option is not successful,
logging the shipment tracking identifier as an
unsuccessful print using the computer.
The Examiner relies upon the following prior art:
Slayden
Pierce
us 5,652,901
us 5,988,897
2
July 29, 1997
Nov. 23, 1999
Appeal2013-007683
Application 13/180,174
Kirk
Turbeville
Whitehouse
US 2003i0088518 Al
US 2003i0144871 Al
US 6,687,684 Bl
May 8, 2003
July 31, 2003
Feb.3,2004
Claims 1and5 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Whitehouse.
Claims 2--4 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Whitehouse and Pierce.
Claims 6-8 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Whitehouse, Pierce, and Kirk.
Claims 9-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Whitehouse, Pierce, Kirk, and Turbeville.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Whitehouse, Pierce, Kirk, and Slayden.
Claims 1 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Whitehouse and Turbeville.
ISSUES
The issues of anticipation and obviousness tum primarily on the breadth
of the term "shipment tracking identifier."
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Appeal2013-007683
Application 13/180,174
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Whitehouse
01. Whitehouse is directed to handling reprints of mail pieces required
by mail piece printing errors. Whitehouse 1: 6-9.
02. Whitehouse describes a postage printing system that enables users
to generate postage indicia and print mail pieces at client
computers. Upon user determination of a mail piece print failure,
a mail metering application on the client computer sends a reprint
request to an authorizing authority at a remote location. Upon
receiving a reprint authorization from the authorizing authority,
the client computer prints a replacement mail piece with the
postage indicia. The mail metering application prevents the user
from reprinting the mail piece when a reprint authorization is not
received from the authorizing authority. Whitehouse 2:15-25.
03. Whitehouse describes each entry of postage transaction log and
thus each postage indicia including destination address and ZIP
code and origination information. Whitehouse 4:9-24; Fig. 2.
These same fields are included in a reprint log for those postal
pieces reprinted. Whitehouse, Figs. 3 and 6.
04. Whitehouse describes logging each reprint that fails with a status
of denied. Whitehouse 4:65---67.
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Appeal2013-007683
Application 13/180,174
Pierce
01. Pierce is directed to printing a postage indicium. Pierce 1: 6-7.
02.Pierce describes displaying a bit map image of the printing label
with indicium. Pierce 3:5-25.
Kirk
03.Kirk is directed to securely printing postage indicia using a
personal computer and a web based browser. Kirk, para. 1.
04.Kirk describes using a web server and web browser relationship.
Kirk, Abstract.
Turbeville
05. Turbeville is directed to an administrator or group of
administrators to maintain and control shipping by its users.
Turbeville, para. 2.
06. Turbeville describes using a tracking number as a shipment
tracking identifier. Turbeville, para. 41.
Slayden
07. Slayden is directed to presenting a representation of a multi-
dimensional array of printed pages on a display device connected
to a computer. Slayden 1:10-14.
ANALYSIS
We adopt the Examiner's findings and analysis from Final Action 4--10
and Answer 4--7 and reach similar legal conclusions.
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Appeal2013-007683
Application 13/180,174
In particular, as to independent claims l and 6, we are not persuaded by
the Appellants' argument that Whitehouse fails to describe logging a
shipment tracking identifier. App. Br. 11. Neither claim recites the
contents, layout, or other implementation details of such a shipment tracking
identifier. Nothing in the claims requires the shipment tracking identifier to
be unique. The plain meaning of a shipment tracking identifier is something
that might be useful in tracking a shipment to identify the shipment. As the
Examiner found, Whitehouse logs both the origin and destination addresses
of a shipment. Final Act. 4. Such addresses are recognized means for
tracking and identifying shipments. The Examiner also rejects claim 1 as
obvious in view of Turbeville' s description of using a numeric tracking
identifier.
We are not persuaded by the Appellants' argument that "Whitehouse
'684 as cited does not teach or fairly suggest the presently claimed
arrangement, including the computer - client interaction steps claimed as its
mail metering application 332 generates and prints the postage indicia 316
while already residing in client memory 306." App. Br. 11. Neither
independent claim recites generating and printing postage indicia.
CONCLUSIONS OF LAW
The rejection of claims 1and5 under 35 U.S.C. § 102(e) as anticipated
by Whitehouse is proper.
The rejection of claims 2--4 under 35 U.S.C. § 103(a) as unpatentable
over Whitehouse and Pierce is proper.
The rejection of claims 6-8 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Whitehouse, Pierce, and Kirk is proper.
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Appeal2013-007683
Application 13/180,174
The rejection of claims 9-11 under 35 U.S.C. § 103(a) as unpatentable
over Whitehouse, Pierce, Kirk, and Turbeville is proper.
The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over
Whitehouse, Pierce, Kirk, and Slayden is proper.
The rejection of claims 1 and 5 under 35 U.S.C. § 103(a) as unpatentable
over Whitehouse and Turbeville is proper.
DECISION
The rejection of claims 1-13 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) (2011).
AFFIRMED
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