Re. Patent Application No. 2306540, CD 1334
This patent application concerned the tracking of required payments or refunds of value added taxes for mailpieces. The Final Action rejected the application for obviousness based upon prior art references. The PAB reviewed the obviousness rejection, and also assessed whether the claims were drawn to patentable subject matter.
The Board found that the claims were not obvious and that the claimed subject matter was patentable within the meaning of s. 2 of the Patent Act.
Obviousness
Claim 1 recites:
1. A value added mail monitoring system, said system comprises:
a plurality of mailer's digital units that stores unique information contained in a postal indicia affixed to a mail piece, the type of mailpiece and information that identifies the owner of the contents of the mail, wherein the unique information includes an amount of value added tax paid for each piece of mail and the type of each mail piece;
a plurality of postal units that reads and stores the unique information contained in the postal indicia;
and a data centre that contains databases for storing the amount of value added taxes for each type of mail piece and stores information received from value added postal databases and the unique information read by the postal units to determine if a proper amount of value added tax has been paid for servicing and handling of the mail by comparing the information stored in the mailer's units, postal databases and the unique information read by the postal units, wherein the data centre further includes: means for generating reports that indicate the mail pieces that have paid too much value added tax; the mail pieces that have paid insufficient value added tax; the mail pieces that have paid no value added tax and should have paid value added tax; and the mail pieces that have paid value added tax and should not have paid value added tax.
The Board applied the Sanofi obviousness analysis, and found that claim 1, and the remaining claims depending from it, were not obvious. [53]
The Board stated that “the mere fact that a combination of two prior disclosures includes all of the features of an inventive concept would not be…the proper basis for concluding that it is obvious.” [51]
The Board further found that while the two prior art references cited by the Examiner “provide everything of a technical nature needed to arrive at the solution in claim 1, the skilled person, without foreknowledge of the answer provided by the inventive concept, would have to pick and choose select features from the two disclosures, each of which relates to a different system…” [52]
Subject Matter
The Board undertook a purposive construction of the claims, and found they were drawn to patentable subject matter. [63]
According to the Board’s claim construction “the system itself…[was a] part of the inventive concept, as well as the system's associated functionality.” [60]
The Board then applied the guidance from FCA’s Amazon decision and found that “[t]he Applicant has leveraged…technological features and capabilities to provide an improvement upon the conventional postage meter system.” [61] Accordingly, the Board agreed with the Applicant that “the invention is actually a mail monitoring system, which is a new machine” [61], and that Claim 1 is therefore compliant under s. 2.