Stamps.com Inc.Download PDFPatent Trials and Appeals BoardMar 25, 20212020004681 (P.T.A.B. Mar. 25, 2021) Copy Citation 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 Copy with citationCopy as parenthetical citation