Pitney Bowes denied printing patent

Is printing information on a mail piece a patentable invention? Or is it an unpatentable abstract concept?

The Patent Trial and Appeal Board has just issued a decision on a United States patent application in Ex Parte Chrosny et al No 2011-003609 (PTAB Jan 21, 2013). Pitney Bowes is the owner of United States patent application 10/996,275. The application was filed back in November 2004. It involved a system and method for automatically selecting advertising slogans to be printed on a mail piece.

Claim 1 for example read as follows:

1. A method of printing an ad slogan on a mail piece, comprising:

establishing one or more date ranges and one or more pre-selected ad slogans, each of said one or more date ranges having one of said one or more pre-selected ad slogans corresponding thereto;

determining a current date, said current date being a date on which an ad slogan is to be printed on said mail piece;

determining whether said current date falls within a particular one of said one or more date ranges; and

if said current date falls within a particular one of said one or more date ranges, printing on said mail piece the one of said one or more pre-selected ad slogans that corresponds to said particular one of said one or more date ranges.

The issue before the Board was whether affixing an advertisement to a mail piece is insignificant post solution activity.

The Examiner considered this a close case as merely printing something in general is insignificant post solution activity. Ignoring the printing aspect leaves you with only an abstract idea which is not patentable.

Pitney Bowes argued that these claims are directed to more than an abstract idea. These claims automatically select an advertisement and then actually print that advertisement on a mail piece.

The Board agreed with Pitney Bowes that the whole invention is automatically putting the appropriate advertisement on an actual mail piece. In this context, the Board found this to be more than an abstract concept and hence patentable subject matter.

And then promptly rejected all claims as obvious and lacking novelty.

Photo courtesy of author 'smil under Creative Commons licence.