Appeal No. 2002-2322
Application 09/094,314
into the claim. In summary, the examiner does not find any of
appellants’ arguments to be persuasive of error in the rejection
[answer, pages 6-9].
Appellants respond that they did not fail to challenge
the examiner’s taking of Official Notice that it was known to
incorporate address data into the digital proof of postage in a
closed system metering device. Appellants argue that they have
consistently asserted that inclusion of the recipient’s address
in closed systems has not been possible in the prior art [reply
brief, pages 1-3]. Appellants also argue that the scanning in
claim 1 is clearly being performed by the scanner that is coupled
to the closed system postage meter, and the determining step is
clearly related to the scanning step and the scanned information
and cannot be satisfied by a manual indication. Thus, appellants
argue that the claimed indicium must include at least some part
of the recipient’s address [id., pages 3-5].
A decision on the patentability of claim 1 cannot be made
until the scope of claim 1 is determined. Appellants and the
examiner disagree on what is required by claim 1. In our view,
the key steps of claim 1 are the “combining” step and the “using”
step. The combining step recites “combining the recipient
address with other information relating to the postage payment
7
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