Ex Parte Kraft

Patent Trial and Appeal Board

Nov 5, 2012

09999630 (P.T.A.B. Nov. 5, 2012)

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.
09/999,630 10/24/2001 Clifford H. Kraft 6846
7590 11/05/2012
Clifford Kraft
320 Robin Hills Dr.
Naperville, IL 60540
EXAMINER
ABRISHAMKAR, KAVEH
ART UNIT PAPER NUMBER
2494
MAIL DATE DELIVERY MODE
11/05/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CLIFFORD H. KRAFT
____________

Appeal 2011-010820
Application 09/999,630
Technology Center 2400
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM and
GREGORY J. GONSALVES, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010820
Application 09/999,630

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STATEMENT OF THE CASE
Appellant is appealing claims 37-40. Appeal Brief 2. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
We affirm.

Introduction
The invention is directed to a “way of determining who sent a
particular letter or parcel.” Appeal Brief 2.

Illustrative Claim
Claim 37.
A method of identifying a sender of an envelope by a postal service
after the envelope has entered or passed through said postal service
comprising:

performing a positive biometric identification of said sender at a
time when said envelope is presented to said postal service, said
positive biometric identification resulting in biometric identification
data;

transforming said biometric identification data to affixable
physical form adapted to be non-removably affixed upon said
envelope;

permanently affixing said biometric data in said affixable
physical form to said envelope after said envelope is out of control of
said sender, and wherein said envelope cannot return to control of said
sender.

Appeal 2011-010820
Application 09/999,630

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Rejections on Appeal
Claims 37-40 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Answer 3-4. (In the body of the rejection,
claims 1-10 are addressed however; this is merely a typographical error
because claims 1-10 have been canceled by Appellants).
Claim 37 stands rejected under 35 U.S.C. § 102(b) as being
anticipated Hansmire (U.S. Patent Number 6,030,655; issued February 29,
2000). Answer 4-5.
Claims 38-39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hansmire and Yap (U.S. Patent Number 6,108,636; issued
August 22, 2000). Answer 5-7.
Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hansmire, Davis (U.S. Patent Application Publication
Number 2002/0147588 A1; published October 10, 2002) and Bancroft (U.S.
Patent Number 6,312,911 B1; issued November 6, 2001). Answer 7-8.

Issue on Appeal
Does Hansmire state or teach that a biometic data in a physical form
must be placed on an envelope after the envelope cannot be returned to the
sender according to Appellant’s claim 37?

ANALYSIS
35 U.S.C. §101 rejection
The Examiner finds that Appellant’s method steps are not tied to a
particular machine and do not perform a transformation. Answer 3-
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Application 09/999,630

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4. Appellant contends “that permanently affixing the affixable physical
form containing biometric data to the envelope sufficiently transforms the
physical state of the envelope from a form from which the sender cannot be
identified to a form from which the sender can be identified.” Appeal Brief
10. We find Appellant’s arguments to be persuasive.
In determining whether a claim as a whole is directed to an abstract
idea, the Court has drawn a key distinction between (1) claims that seek to
wholly pre-empt the use of a fundamental principle, and (2) claims that are
merely limited to foreclosing others from using a particular application of
that fundamental principle. See In re Bilski, 545 F.3d 943, 957 (Fed. Cir.
2008) (en banc), cert. granted, 77 U.S.L.W. 3442, 3653, 3656 (U.S. June 1,
2009) (No. 08-964).
Based on U.S. Supreme Court precedents, Bilski restated the U.S.
Supreme Court's “definitive test to determine whether a process claim is
tailored narrowly enough to encompass only a particular application of a
fundamental principle rather than to pre-empt the principle itself.” Bilski,
545 F.3d at 954. This restatement, embodied as the “machine-or-
transformation test,” requires that a claimed process either (1) be tied to a
particular machine or apparatus, or (2) transform a particular article into a
different state or thing. Id. This test ensures that the claimed process does
not pre-empt uses of the principle that do not use the specified machine or
apparatus. The test further precludes a claimed process from pre-empting
“the use of the principle to transform any other article, to transform the same
article but in a manner not covered by the claim, or to do anything other than
transform the specified article.” Id.

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Appellant’s claims transform the physical state of the envelope or
article by affixing the biometric data to the envelope thus meeting one of the
prongs of the “machine-or-transformation test” set forth in Bilski. See
Id. Therefore we do not sustain the Examiner’s non-statutory rejection of
claims 37-40.

35 U.S.C. § 102 rejection
Appellant argues that Hansmire “does not teach permanently affixing
[biometric identification data] to an envelope after it is out of the control of
the sender and cannot return to his control.” Appeal Brief 11. However, the
Examiner finds that Hansmire discloses that a biometric can be used for
positive identification for a letter or package, handled and delivered by
known mail carriers, employing an inkless fingerprint. Answer 9 (citations
omitted). And correctly reasons that benefits stemming from attaching
biometric identification would not be possible if the biometric identifier was
attached to the package before the sender surrendered control of the
package. Answer 9-10.
The Examiner also finds that Hansmire discloses wherein control of
the biometric identified article, in this instance an airline ticket, is clearly not
returned to the sender because the boarding agent can confiscate the
ticket. Id. at 10 (citations omitted). The Examiner further finds wherein
Hansmire discloses that the airline’s method of confiscating a passenger’s
ticket can be employed and applied to U.S. Postal documents. Id. Therefore
we agree with the Examiner that Hansmire “teaches affixing a biometric to
an envelope after the envelope is out of control of said sender and wherein
the envelope cannot return to control of said sender.” Id.
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Further, claim 37 recites, “transforming said biometric identification
data to affixable physical form adapted to be non-removably affixed upon
said envelope” and such recitation does not necessarily convey to one of
ordinary skill in the art the scope of the claim because it appears to suggests
or make optional the steps without requiring the steps to be performed. See
M.P.E.P. §2106 (II)(C).
For the reasons stated above, we sustain the Examiner’s rejection of
claim 37.

35 U.S.C. § 103 rejections
Claims 38-39
Appellant argues that Hansmire does not state or teach that the inkless
fingerprint label has to be affixed to the article after the article cannot return
to the sender. Appeal Brief 11. Appellant further argues that Hansmire does
not rule out the situation wherein the label is placed on the article by the
sender before it is placed in a mailbox. Appeal Brief 11-12. Appellant
concludes that Yap does not address Hansmine’s deficiency. Id. at
12. Hansmine does not have to rule out the situation raised by Appellant,
Hansmine only have to disclose wherein the label is affixed to the article
after the sender relinquishes the article and therefore we do not find
Appellant’s arguments pertaining to Hansmire’s deficiency to be persuasive
for the reasons set forth above because we do not find Hansmire to be
deficient. We sustain the Examiner’s rejection of claims 38 and 39.

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Claim 40
Appellant contends that:
Hansmire fails to teach the limitation of the base claim:
“permanently affixing said biometric data in said affixable
physical form to said envelop after said envelope is out of
control of said sender, and wherein said envelope cannot
return to control of said sender.” Neither Davis nor
Bancroft provides this limitation (the examiner has not
presented any argument that they do). Hence, it is
impossible for the examiner to make out a prima facie case
of obviousness with the combination of these three
references.

Appeal Brief 13.
We do not find Appellant’s contentions to be persuasive because we
did not find Hansmire to be deficient for the reasons set forth
above. Therefore we sustain the Examiner’s rejection of claim 40.

DECISION
The 35 U.S.C. §101 rejection of claims 37-40 is reversed.
The anticipation and obviousness rejections of claims 37-40 are
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)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED

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