Stamps.com Inc.

Patent Trials and Appeals Board

Mar 25, 2021

2020004681 (P.T.A.B. Mar. 25, 2021)

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.
13/924,337 06/21/2013 JP Leon STAP.P0034USC1/1000334231 6006
29053 7590 03/25/2021
NORTON ROSE FULBRIGHT US LLP
2200 ROSS AVENUE
SUITE 3600
DALLAS, TX 75201-7932
EXAMINER
HARRINGTON, MICHAEL P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
03/25/2021 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):
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JP LEON and JOHN R. CLEM

Appeal 2020-004681
Application 13/924,337
Technology Center 3600
____________

Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 63–89. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on March 11, 2021.
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Stamps.com.
Appeal Br. 2.
Appeal 2020-004681
Application 13/924,337
2
BACKGROUND
The Specification discloses that the present “application relates in
general to printers and in specific to printers for printing postage indicia.”
Spec. ¶ 2.
CLAIMS
Claims 63 and 72 are the independent claims on appeal and recite:
63. A postage printer comprising:
an integrated printer and scale connected locally to a
personal computer, wherein the integrated printer and scale
includes:
the scale configured to weigh items to be mailed;
a label print stock area configured to house one or
more rolls of label print stock;
a print head configured to print postage indicia
corresponding to the items to be mailed on label print
stock of a roll of the one or more rolls of label print stock;
a communication interface to locally
communicatively couple the postage printer to the
personal computer;
a plurality of input buttons configured to accept
input of preference information from a user, the preference
information comprising parameters associated with a
configuration of a postage indicium corresponding to a
mail item of the mail items to be mailed;
a processor configured to calculate a postage value
for the postage indicium based on weight information
associated with the mail item and the preference
information, wherein the weight information is received
from the scale and the preference information is indicated
via the inputs received via one or more of the plurality
input buttons;
a display configured to display information
regarding the postage indicium to the user, the information
Appeal 2020-004681
Application 13/924,337
3
regarding the postage indicium including at least the
postage value calculated based on the weight information
and the preference information,
wherein the plurality of input buttons also includes
a dedicated print button configured, in response to the user
engaging the print button, to:
accept the postage value of the postage
indicium displayed by the display;
initiate transmission of the accepted postage
value and the preference information to a web
server via the communication interface and the
personal computer; and
print, via the print head, the postage indicium
for the mail item based on information received
from the web server in response to the transmission
of the accepted postage value and the preference
information to the web server.
72. A postage printer comprising:
an integrated printer and scale connected locally to a
personal computer, wherein the integrated printer and scale
includes:
the scale configured to weigh items to be mailed;
a label print stock area configured to house one or
more rolls of label print stock;
a print head configured to print postage indicia
corresponding to the items to be mailed on label print
stock of a roll of the one or more rolls of label print stock;
a plurality of input buttons configured to accept
input of preference information from a user, the preference
information comprising parameters associated with a
configuration of a postage indicium corresponding to a
mail item of the mail items to be mailed, wherein the
preference information includes a parameter that indicates
mail class information for the mail item;
a processor configured to calculate a postage value
for the postage indicium based on at least weight
Appeal 2020-004681
Application 13/924,337
4
information associated with the mail item and the mail
class information;
a display configured to display information
regarding the postage indicium to the user, the information
regarding the postage indicium including at least the
postage value calculated based on the weight information
and the mail class information;
a communication interface to communicatively
couple the postage printer to the personal computer via a
communication link, wherein the plurality of input buttons
includes a button configured to initiate transmission of the
configuration of the postage indicium to a web server via
the communication link and the personal computer, the
configuration of the postage indicium comprising the
postage value calculated for the postage indicium and the
preference information, and
wherein the print head is configured to print the
postage indicium for the mail item based on information
received from the web server via the communication
interface and the personal computer in response to the
transmission of the configuration of the postage indicium
to the web server.
Appeal Br. 27–30.
REJECTIONS
1. The Examiner rejects claims 63–65, 67–69, 71–79, 81–83, 86, and 87
under 35 U.S.C. § 103 as unpatentable over Groff2 in view of Ogg,3
Gilham,4 and Dlugos.5

2 Groff et al., US 2003/0217018 A1, pub. Nov. 20, 2003.
3 Ogg et al., US 2005/0278266 A1, pub. Dec. 15, 2005.
4 Gilham, US 2003/0167241 A1, pub. Sept. 4, 2003.
5 Dlugos, 6,098,057, iss. Aug. 1, 2000.
Appeal 2020-004681
Application 13/924,337
5
2. The Examiner rejects claim 66 under 35 U.S.C. § 103 as unpatentable
over Groff in view of Ogg, Gilham, Dlugos, and Schilling.6
3. The Examiner rejects claims 70 and 80 under 35 U.S.C. § 103 as
unpatentable over Groff in view of Ogg, Gilham, Dlugos, and
Youngblood.7
4. The Examiner rejects claims 84, 85, 88, and 89 under 35 U.S.C. § 103 as
unpatentable over Groff in view of Ogg, Gilham, Dlugos, and
Beckstrom.8
DISCUSSION
Rejection over Groff, Ogg, Gilham, and Dlugos
Claims 63–65, 67–69, 71, 82, and 83
We are persuaded of error in the rejection of claim 63 because the
Examiner has note established that the art of record teaches a dedicated print
button as claimed and the Examiner has not provided articulated reasoning
explaining why the use of a dedicated print button as claimed would have
been obvious.
As quoted above, claim 63 recites a “dedicated print button” to initiate
functionality for accepting postage values, initiating transmission of
accepted postage values and preference information to a web server, and
printing postage indicium. With respect to this functionality, the Examiner
relies on Groff alone, finding:
Wherein the plurality of input buttons also includes a dedicated
print button configured, in response to the user engaging the print
button, to: accept the value of the postage indicium displayed by

6 Schilling US 2003/0035138 A1, pub. Feb. 20, 2003.
7 Youngblood et al., US 2004/0015453 A1, pub. Jan. 22, 2004.
8 Beckstrom et al., US 2007/0005518 A1, pub. Jan. 4, 2007.
Appeal 2020-004681
Application 13/924,337
6
the display; initiate transmission of the accepted postage value
and the preference information to a web server via the
communication interface and the personal computer; and print,
via the print head, the postage indicium based on information
received from the web server in response to the transmission of
the accepted postage value and the preference information to the
web server (See at least 25, 30, 32, 36, 39-47, 60, and 64-74
which describe a printer receiving shipping information from a
computer, including weight, class, and postage; and wherein the
printer prints shipping labels upon command. Additionally, see
at least paragraphs 17, 18, 26, 36, 40, and 43 which describe
providing an Internet network connection that allows postage
data to and from a remote server).
Final Act. 9.
Although the Examiner may have identified how Groff teaches the
functionality of the claimed print button, the Examiner has not shown
adequately that Groff includes a dedicated button configured to perform
these functions, as required by the claim. The Examiner also has not
explained that the use of a dedicated button for these functions would have
been obvious. Based on the foregoing, we do not sustain the rejection of
claim 63. For the same reasons, we do not sustain the rejection of claims 64,
65, 67–69, 71, 82, and 83, which depend from claim 63.
Claim 72, 75–79, 86, and 87
With respect to claim 72, the Examiner finds that Groff teaches a
device as claimed except that Groff does not teach a “label print stock area,”
a processor configured as claimed, or an integrated printer and scale. Final
Act. 15–20. With respect to these deficiencies, the Examiner respectively
relies on Ogg; the combined teaching of Groff, Ogg, and Gilham; and
Dlugos. Id.
We agree with and adopt the Examiner findings and conclusions with
respect to the rejection of claim 72. See Final Act. 15–20; see also, Ans. 3–
Appeal 2020-004681
Application 13/924,337
7
5, 16–24. As discussed below, we are not persuaded of error by Appellant’s
arguments.
Appellant first argues that the art of record does not teach or suggest
the use of an integrated printer and scale as claimed. Appeal Br. 6–10, 17.
Appellant asserts that the Examiner has relied on an unreasonably broad
interpretation of the term integrated by relying on Dlugos’s printer and scale
combination, which Appellant asserts only requires that the printer and scale
are “collocated” and not integrated. Id. at 6. According to Appellant, the
Specification makes clear that the integrated printer and scale is referred to
as having a “printer portion” in order “to distinguish the printer portion . . .
from the scale portion and from other portions of the device that are
integrated into the printer/scale unit.” Id. at 7. Appellant asserts that the
present application’s figures show “a discrete printer with its own scale.” Id.
(citing Fig. 1).
We disagree that the Examiner has relied on an unreasonably broad
interpretation of the term “integrated” in finding that Dlugos teaches an
integrated printer and scale. We agree with the Examiner that the
Specification fails to limit the term integrated to any specific combination of
printer and scale. See Ans. 5. The Specification merely discloses that the
thermal printer and scale are integrated and that it has a printer portion. See
Spec. ¶ 18. We see no limiting definition of the term “integrated” that
would preclude the Examiner from relying on the combination of printer and
scale disclosed in Dlugos.
Notably, Dlugos discloses an apparatus including “an integral
weighing and printing apparatus” that includes a scale and “a printing
instrumentality” or “printing means” i.e., a printer portion. Dlugos col. 8, ll.
22–25, ll. 58–60, l. 66. Dlugos identifies the printer and scale collectively as
Appeal 2020-004681
Application 13/924,337
8
a single unit, 32, and describes the printing instrumentality as being
“operatively connected to the scale 34 so that it can input certain data
pertinent to the cost of the mail piece.” Id. at col. 8, ll. 63–65. Although the
printer and scale are described by Dlugos as being “collocated,” one of
ordinary skill in the art would understand that they are integrated under the
broadest reasonable interpretation of the claims, because they are described
together as “an integral weighing and printing apparatus” that are
operatively connected to each other.
Next, Appellant argues that “[t]he cited references do not disclose or
suggest a processor configured to calculate a postage value and initiation of
transmission of a configuration of a postage indicium via a personal
computer.” Appeal Br. 17 (emphasis omitted). Here, Appellant appears to
argue only that the art relied upon individually does not teach a processor
configured as claimed. See id. at 18–21. However, the Examiner makes
clear that the processor configured as claimed would have been obvious over
a combination of the art of record, and the Examiner does not rely on any
individual reference to teach the processor. See Final Act. 19–20; see also
Ans. 17–23. Specifically, in the rejection the Examiner relies on the
teachings of Groff, Ogg, Gilham, and Dlugos to determine:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to combine the system and method
using a printer and a scale, attached to a computer that cooperates
with a server, to calculate the cost of shipping an item, wherein
the computer directs the printer to print shipping labels of Groff,
with the system and method of printing shipping labels on roll
stock of Ogg, with the system and method of a printer that uses
weight and inputted information in order to generate postal
indicia, wherein the printer calculates the postage based on the
weight and inputs, and wherein the indicia is sent from the printer
to a computer and then to a server of Gilham, with the system
Appeal 2020-004681
Application 13/924,337
9
and method of an integrated printer and scale apparatus, which
comprises a processor and a communication pathway, wherein
the printer and scale apparatus weighs items being shipped and
prints postage for the items of Dlugos. By using an integrated
printer and scale apparatus, as a substitute for the station of
Groff, one would reasonably predict that the functions to be the
same, as the parts are integrated into one body instead of placed
together in one station.
Final Act. 19–20. We note that Appellant asserts that “Appellant is not
arguing the references separately.” Reply Br. 8. Regardless, Appellant has
not adequately explained how the combination proposed by the Examiner is
deficient and would not result in a processor as claimed.
Finally, Appellant argues that Groff teaches away from the
combination with Gilham “because the combination duplicates processing
functionality, thereby obviating a teaching of Groff, which is to conserve
processing functionality by locating the processing functionality either in the
kiosk or in a central processing facility, but certainly not to duplicate
processing functionality as in a purposed combination of Groff and Gilham.”
Appeal Br. 21.
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 53 (Fed.
Cir. 1994). “The fact that the motivating benefit comes at the expense of
another benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir.
2000).
Appeal 2020-004681
Application 13/924,337
10
Here, Appellant has not cited any portion of Groff that persuades us
that one of ordinary skill in the art would be discouraged from making the
combination proposed by the Examiner. Groff discloses a shipping system
that includes processing capabilities at a central processing facility that
“significantly reduces the processing capability required at the customer
service sites.” Groff ¶ 43. Groff does not discourage, disparage, or
denigrate the use of processing power at multiple locations and one of
ordinary skill in the art would merely recognize this as preference disclosed
by Groff that provides the benefit disclosed, i.e., it does not rise to the level
of teaching away.
Based on the foregoing, we are not persuaded of reversible error in the
rejection of claim 72. Accordingly, we sustain the rejection of claim 72.
We also sustain the rejection of claims 75–79, 86, and 87, which depend
from claim 72 and were not separately argued by Appellant.
Claims 73 and 74
Claim 73 depends from claim 72 and further requires “a dedicated
print button” that is “configured to initiate transmission of the configuration
of the postage indicium to the web server.” Appeal Br. 30. As with the
similar requirement of claim 63, the Examiner has failed to identify any
dedicated button with the functionality required by the claims. See Final
Act. 20, 25. Accordingly, for the reasons set forth above, we also do not
sustain the rejection of claims 73, and we do not sustain the rejection of
claim 74, which depends from claim 73.
Claim 78
Claim 78 depends from claim 72 and further requires that the
apparatus includes “a credit card reader configured to facilitate payment for
the postage indicium.” Appeal Br. 30. The Examiner finds that Groff
Appeal 2020-004681
Application 13/924,337
11
teaches the use of a credit card reader. Final Act. 22. The Examiner further
explains that “the kiosk/ordering station of Groff has been disclosed as
including a credit card reader which accepts credit card payments for the
ordered postage labels.” Ans. 30. The Examiner continues that “[t]he
Appellant has not disclosed a particular manner in which this credit card
reader is installed in the postage printer system of claims 63 or 72, and
instead merely claimed that the postage printer further comprises the credit
card reader.” Id. We agree with the Examiner to the extent that Groff
discloses a postage printer kiosk with a credit card reader and that claim 78
does not specify how the credit card reader is combined with the printer
apparatus. We are not persuaded of error by Appellant’s argument that the
art of record fails to “explain how a person of ordinary skill in the art would
modify the integrated printer and scale of claims 63 and 72 to include a
credit card reader.” Appeal Br. 24. This is not persuasive at least because
claim 78 does not require that the credit card reader is part of the integrated
printer and scale and only requires that it is part of the overall postage
printer, which the Examiner has identified as the kiosk of Groff.
Based on the foregoing, we sustain the rejection of claim 78. We also
sustain the rejection of claim 79, which depends from claim 78 and for
which Appellant does not provide separate arguments.
Claim 81
Claim 81 depends from claim 72 and further requires “wherein the
communication link comprises a wireless communication link between the
postage printer and the personal computer.” Appeal Br. 31. The Examiner
indicates that Groff teaches a communication link so configured. Final Act.
23 (citing Groff ¶¶ 62–64). In the Answer, the Examiner further explains
that “Groff has explicitly disclosed the communication networks that are
Appeal 2020-004681
Application 13/924,337
12
used to transmit communications between ordering stations, a central
computer, and shippers’ systems, as being wired or wireless networks.”
Ans. 31. However, the Examiner fails to explain how this teaches a wireless
communication link between a postage printer and a personal computer, as
required by the claim, and the Examiner does not otherwise explain why the
use of such a wireless communication link would have been obvious. Thus,
we are persuaded of error in the rejection of claim 81 by Appellant’s
arguments. See Appeal Br. 23–24. Accordingly, we do not sustain the
rejection of claim 81.
Rejection over Groff, Ogg, Gilham, Dlugos, and Shilling
Claim 66 depends from independent claim 63 and, in rejecting claim
66, the Examiner does not provide further evidence or analysis that would
cure the deficiency in the rejection of claim 63, as discussed above.
Accordingly, for the reasons discussed, we also do not sustain the rejection
of claim 66.
Rejection over Groff, Ogg, Gilham, Dlugos, and Youngblood
Claim 70 depends from independent claim 63 and, in rejecting claim
70, the Examiner does not provide further evidence or analysis that would
cure the deficiency in the rejection of claim 63, as discussed above.
Accordingly, for the reasons discussed, we also do not sustain the rejection
of claim 70.
Claim 80 depends from claim 72 and Appellant does not provide
separate arguments with respect to the rejection of claim 80. Accordingly,
for the reasons discussed above with respect to claim 72, we sustain the
rejection of claim 80.
Appeal 2020-004681
Application 13/924,337
13
Rejection over Groff, Ogg, Gilham, Dlugos, and Beckstrom
Claims 84 and 85 depend from independent claim 63 and, in rejecting
claims 84 and 85, the Examiner does not provide further evidence or
analysis that would cure the deficiency in the rejection of claim 63, as
discussed above. Accordingly, for the reasons discussed, we also do not
sustain the rejection of claim 84 and 85.
Claims 88 and 89 depend from claim 72 and Appellant does not
provide separate arguments with respect to the rejection of claims 88 and 89.
Accordingly, for the reasons discussed above with respect to claim 72, we
sustain the rejection of claims 88 and 89.

CONCLUSION
We AFFIRM the rejections of claims 72, 75–80, and 86–89. We
REVERSE the rejections of claims 63–71, 73, 74, and 81–85.

Appeal 2020-004681
Application 13/924,337
14
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
63–65,
67–69,
71–79,
81–83, 86,
87
103 Groff Ogg,
Gilham, Dlugos
72, 75–79,
86, 87
63–65, 67–
69, 71, 73,
74, 81–83
66 103 Groff Ogg,
Gilham, Dlugos,
Schilling
66
70, 80 103 Groff Ogg,
Gilham, Dlugos,
Youngblood
80 70
84, 85, 88,
89
103 Groff Ogg,
Gilham, Dlugos,
Beckstrom
88, 89 84, 85
Overall
Outcome
72, 75–80,
86–89
63–71, 73,
74, 81–85

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 IN PART