Foth the postie gets it right

Ex Parte Foth et al, No. 2010-008318 (BPAI Feb 9, 2012) involved a way of applying mailer applied restriction regarding changing of delivery parameters for a mail piece. Pitney Bowes Inc. brought US Patent Application 11/321,175 before the Board of Patent Appeals and Interferences because the Examiner had rejected claims 1-9 and 12 as directed to non-statutory subject matter and had raised obviousness objections to other claims.

Claim 1 read as follows:

1. A method of changing delivery parameters of a mail piece, the method comprising:
receiving the mail piece from a mailer;

receiving from the mailer an electronic file relating to electronic delivery change instructions from an intended recipient of the mail piece;

applying a marking on the mail piece associated with an address of the intended recipient;

mailing the mail piece;

sending the intended recipient information regarding the mailed mail piece;

receiving from the intended recipient an electronic delivery change instruction to change at least one of the delivery parameters of the mail piece after the mail piece has been mailed;

comparing the electronic delivery change instruction with the electronic file to determine prohibited delivery change instructions; and

limiting the intended recipient from changing the at least one of the delivery parameters where the electronic delivery change instruction comprises a prohibited delivery change instruction.

Transformation

Does a method that places indicia on a mail piece and mails that piece transform that piece?

The Appellants argued that applying a marking on a mail piece transforms that piece.

The Examiner had argued that the underlying mail piece is unchanged, therefore there is no transformation.

The Board agreed with the Appellants, discarding the Examiner's rejection as irrelevant. The combination of the mail piece and the marking forms an article that differs from what began. The distinction is fundamental rather than ornamental, as it is needed to complete the mail piece.

Further steps

The Board reversed the Examiner's findings regarding claims 1-9 and 12. These claims were held to be directed to statutory subject matter. The Board then promptly affirmed the Examiner's rejection of all but claims 10 and 11 as being obvious over prior art.

Photo courtesy of author jmv under Creative Commons licence.