Ex Parte Blair

Board of Patent Appeals and Interferences

Mar 14, 2007

09789678 (B.P.A.I. Mar. 14, 2007)

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The opinion in support of the decision being entered today was not written 2
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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS AND
INTERFERENCES

Ex parte JEFFERY D. BLAIR 10
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Appeal No. 2007-0395
Application No. 09/789,6781
Technology Center 3600
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Decided: March 14, 2007
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Before HUBERT C. LORIN, STUART S. LEVY and ROBERT E. NAPPI,
Administrative Patent Judges. 19
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LORIN, Administrative Patent Judge. 21
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DECISION ON APPEAL 23
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1 Filed on 21 February 2001.

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STATEMENT OF THE CASE
This appeal is from a decision of the Examiner rejecting claims 1, 3,
6-10, 12-14, 16, and 18 over the prior art. 35 U.S.C. § 134 (2002). We have
jurisdiction under 35 U.S.C. § 6 (b) (2002).
We AFFIRM.
Appellant, in the Brief2, argue the claims as a group. Pursuant to the
rules, the Board selects representative claim 1 to decide the appeal. 37 CFR
§ 41.37(c)(1)(vii) (2005). Accordingly, all the claims stand or fall with
claim 1.
Claim 1 reads:
1. A method of purchasing and selling goods electronically over
a computer network interconnecting a facilitator (16), a supplier
(18), and a local retailer (20), said method comprising the steps
of:
registering goods to be sold from a supplier (18) with a
facilitator (16) over the computer network,
registering a local retailer (20) with the facilitator (16)
over the computer network,
linking the supplier (18) and the local retailer (20) over
the computer network based on a location of the local retailer
(20),
accessing an internet website by a consumer (14),
selecting goods by the consumer electronically from the
internet website to be purchased,

2 Our decision will make reference to appellant’s Appeal Brief (”Brief,” filed
23 November 2005) and the examiner’s Answer (”Answer,” mailed 8
February 2006).

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providing purchasing information over the computer
network including a location for the consumer (14) to the
facilitator (16),
determining the local retailer (20) having jurisdiction
over the purchase based upon the location of the customer (14),
initiating a transmission of a first set of funds by the
facilitator (16) from the customer (14) for payment of the
goods,
initiating a transmission of a portion of the first set of
funds as a second set of funds by the facilitator (16) to the
supplier (18) for the cost of the goods,
initiating a transmission of a portion of the first set of
funds as a third set of funds by the facilitator (16) to the local
retailer (20) to service the customer (14),
delivering the goods to the customer (14), and
servicing the customer (14) at the local retailer (20) on
behalf of the supplier (18) as a result of receiving the third set
of funds including accepting the return of the goods by the
customer (14) to the local retailer (20) in exchange for
arranging the reimbursement of the funds.

ISSUES
The issue on appeal is whether Appellant has established that the
Examiner erred in rejecting the claims as being unpatentable over the prior
art.

FINDINGS OF FACT
The following findings of fact (FF) are believed to be supported by at
least a preponderance of the evidence.
1. The claimed subject matter is directed to a method of purchasing and
selling goods to a customer (14) (see Fig. 4 of the specification which

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broadly illustrates the claimed invention) over a computer network involving
a facilitator (16), a supplier (18), and a local retailer (20). According to the
invention,
• the facilitator registers the goods to be purchased and the local
retailer,
• the local retailer and the supplier of the goods are linked based
on the location of the local retailer,
• the customer accesses an internet website and selects the goods
to be purchased from the internet website,
• the facilitator is provided with the purchasing information and
location of the customer,
• the local retailer having jurisdiction over the purchase based
upon the location of the customer is determined,
• the facilitator initiates a transmission of a first set of funds from
the customer for payment of the goods purchased,
• the facilitator initiates a transmission of a portion of the first set
of funds as a second set of funds to the local retailer to service
the customer,
• the goods are delivered to the customer, and
• the local retailer services the customer on behalf of the supplier
as a result of receiving a third set of funds and accepting the
return of the goods by the customer in exchange for arranging
the reimbursement of the funds.
2. The examiner finally rejected claims 1, 3, 6-10, 12-14, 16, and 18 of
the ‘678 application as being unpatentable under 35 U.S.C. § 103(a) over
Walker in view of Rogers (see Answer, pp. 3-4).
3. US Patent No. 6,249,772 B1 (“Walker”) was granted on 19 June 2001
based on an application filed on 9 July 1997 and qualifies as prior art as to
the claims of the ‘678 application by virtue of 35 U.S.C. § 102(e).

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4. US Patent No. 5,978,774 (“Rogers”) was granted on November 2,
1999 and qualifies as prior art as to the claims of the ‘678 application by
virtue of 35 U.S.C. § 102(b).
5. The Examiner finds that Walker discloses a method of purchasing and
selling goods over a computer network (col. 8, lines 11-12) involving a
facilitator (“central controller,” see element 110 in Fig. 1) , a supplier and a
local retailer (col. 11, line 66 – col. 12, line 2). (Answer, p. 4).
6. The Examiner finds that Walker discloses the step of “the facilitator
registers the goods to be purchased and the local retailer” at col. 15, lines 17-
27. (Answer, p. 4).
7. The Examiner finds that Walker discloses the step of “the local
retailer and the supplier of the goods are linked based on the location
of the local retailer” at col. 11, line 66 – col. 12, line 2. (Answer, p.
4).
8. The Examiner finds that Walker discloses the step of “the
customer accesses an internet website and selects the goods to be
purchased from the internet website” at col. 8, lines 11-15. (Answer,
pp. 4-5).
9. The Examiner finds that Walker discloses the step of “the
facilitator is provided with the purchasing information and location of
the customer” at col. 9, lines 57-65. (Answer, p. 5).
10. The Examiner finds that Walker discloses the step of “the local
retailer having jurisdiction over the purchase based upon the location

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of the customer is determined” at col. 9, line 67 – col. 10, line 2.
(Answer, p. 5).
11. The Examiner finds that Walker discloses the step of “the
facilitator initiates a transmission of a first set of funds from the
customer for payment of the goods purchased” at Fig 8b. reference no.
S8-13. (Answer, p. 5).
12. The Examiner finds that Walker discloses the step of “the
facilitator initiates a transmission of a portion of the first set of funds
as a second set of funds to the local retailer to service the customer” at
col. 25, lines 8-21). (Answer, p. 5).
13. The Examiner finds that Walker discloses the step of “the goods
are delivered to the customer” at col. 7, lines 8-10. (Answer, p. 5).
14. The Examiner finds that Walker (col. 24, lines 54-55a)
discloses picking up the purchased goods from the local retailer but
does not disclose the step of:
• the local retailer services the customer on behalf of the supplier
as a result of receiving a third set of funds and accepting the
return of the goods by the customer in exchange for arranging
the reimbursement of the funds. (Answer, p. 5).

15. The Examiner finds that Rogers discloses the returning of the
purchased goods at col. 3, lines 1-12 and in the Abstract. (Answer, p. 5).
16. The Examiner finds “[i]t would have been obvious to one of ordinary
skill in the art at the time [ ] the invention was made to modify the method of

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Walker [ ] to include the return, as taught by Rogers, in order to provide
customer satisfaction (Rogers, lines 16-17).” (Answer, p. 6).
17. Appellant contends that the examiner has not established a prima facie
case of obviousness over the prior art because (a) the prior art fails to teach
or suggest every limitation of the claims and (b) Walker teaches away from
the claimed invention and thus one of ordinary skill could arrive at the
claimed invention from the prior art only by using impermissible hindsight.
(Brief, pp. 9-16).
18. Appellant also contends that there is a lack of motivation/suggestion
to combine Walker and Rogers and arrive at the claimed invention because
Walker and Rogers are concerned with solving different problems as well as
problems different than those addressed by the subject invention. Brief, pp.
9-11. According to appellant, Walker “addresses the problem of
manufacturers and retailers competing for the same customers and the
manufacturers not being able to sell their products at discounted prices
without alienating the retailers” (Brief, p. 10) and Rogers “addresses the
problem of fraud perpetrated on the retailers by unscrupulous customers.”
(Brief, p. 10).

PRINCIPLES OF LAW

1. A prima facie case of obviousness is established by presenting
evidence that would have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed invention. See In
re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In
re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).

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2. “The prima facie case is a procedural tool of patent examination,
allocating the burdens of going forward as between examiner and applicant.
In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3 (Fed. Cir.
1990). The term “ prima facie case” refers only to the initial examination
step. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA
1976). As discussed in In re Piasecki, the examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability. If that burden is met, the burden of coming forward
with evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).

3. Claims are given the broadest reasonable construction consistent with
the specification. In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir.
1997).

4. “What the prior art teaches, whether it teaches away from the claimed
invention, and whether it motivates a combination of teachings from
different references are questions of fact.” In re Fulton, 391 F.3d 1195,
1199-1200, 73 USPQ2d 1141, 1144 (Fed. Cir. 2004).

ANALYSIS
The central theme to Appellant’s contentions challenging examiner’s
establishment of a prima facie case of obviousness over the prior art is that
the instant invention accomplishes a different objective than the one Walker

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accomplishes. Appellant indicates that according to the instantly claimed
method a local retailer agrees to service a customer on behalf of a supplier in
exchange for receiving a portion of the customer’s payment for the goods.
Walker, on the other hand, according to Appellant, describes a method
whereby a manufacturer makes a retailer whole for goods sold to a customer
at a lower manufacturer set price. However, the question before us is
whether it would have been obvious to one of ordinary skill in the art to
arrive at the claimed method given the prior art method, notwithstanding the
difference in objectives between the two. In that regard the Examiner has
made a limitation-by-limitation analysis showing where in the prior art each
claimed step is disclosed. (Answer, pp. 4-5). Accordingly, we find that the
Examiner has presented a prima facie case of obviousness of the claimed
subject matter over the prior art disclosure.
We turn now to Appellant’s specific contentions.

Limitations in the Claims 16
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Appellant contends that the examiner has not established a prima facie
case of obviousness over the prior art because the prior art fails to teach or
suggest limitations of the claims. FF 17.
Appellant argues that “[t]he subject invention links the supplier 18
and the local retailer 20 and determines which local retailer 20 has
jurisdiction in order to placate customer 14 that support and service will be
available if the need arises, even though the order is placed on-line” (Brief,
p. 13). Appellant also argues that “the subject invention links suppler [sic,
supplier] and the local retailer 20 based upon the location of the local retailer

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20 such that determining the retailer is not based upon carrying the product,
but is based upon the retailer servicing a given area for the supplier, if and
when service is required” (Brief, p. 14).
These arguments are not commensurate in scope with what is claimed.
Their acceptance requires us to read into the claims a step of determining the
local retailer on customer support and service and/or on a supplier’s retailer
service area. However, given their broadest reasonable interpretation, the
claims on appeal require no more than the local retailer being determined
based upon customer location. In re Self, 671 F.2d 1344, 1348, 213 USPQ
1, 5 (CCPA 1982) (“Many of appellant’s arguments fail from the outset
because, … they are not based on limitations appearing in the claims … .”).
As the Examiner correctly indicates, Walker discloses a system by which a
customer may specify, online, “a geographic location” (col. 9, lines 64-65),
thus producing a list of candidate retailers. A person of ordinary skill
practicing the Walker method would be led to select a retailer by geographic
location, which would include, as common sense dictates, selecting a retailer
in the geographic location corresponding to the customer’s location.
As regards the step of linking the local retailer and supplier, Walker
describes such link at, for example, col. 17, lines 13-28.
Appellant also argues that Walker fails to disclose transmitting funds
to the local retailer to service the customer and servicing the customer at the
local retailer on behalf of the supplier as a result of receiving the funds.
(Brief, p. 14).
Walker discloses, as Appellant concedes (Brief, p. 15), a
compensation scheme by which a manufacturer pays a local retailer

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the difference between selling a good at an in-store price and selling
the same good to a customer at a lower on-line price. But Walker
goes further.
… [S]ince the retailers will subsequently be reimbursed
or otherwise made whole under contract with the manufacturer,
they are motivated to provide quality sales and service support 6
to the customer. 7
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Col. 12, lines 7-10 (emphasis added). The primary function of the
retailer’s receipt of funds, under the Walker reimbursing scheme, is to
cover its losses from selling goods at a lower on-line price. But, as
the passage above indicates, it also functions to provide quality
customer service. One of ordinary skill in the art practicing the
Walker method would expect funds to be transmitted from
manufacturer (i.e., the supplier) to local retailer and the local retailer
to provide quality customer service as a result.

Teachings Away 18
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Appellant contends that the examiner has not established a prima facie
case of obviousness over the prior art because the prior art teaches away
from the claimed invention. FF 17.
Appellant argues that Walker teaches away from the claimed
invention because the “subject invention attempts to separate out the pricing,
distribution, and sale of the goods from the servicing of the customer.”
(Brief, p. 12). However, Appellant’s argument is not commensurate in
scope with what is claimed because there is nothing in the claims about

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separating pricing, distribution, and sale of the goods from the servicing of
the customer.
Appellant also argues that Walker teaches away from the claimed
invention because the “subject invention, as claimed, delivers the products to
the customers and initiates the transmission of funds to the retailer at the
time of the sale.” (Brief, p. 12). However, the steps of delivering goods and
initiating transmission of funds to the retailer set forth in the claims have no
time requirement. They do not say that the transmission of funds must take
place at the time of sale and therefore leaves open the possibility that the
retailer receives funds after the goods are delivered.
Appellant also argues that Walker teaches away from the claimed
invention because the “subject invention determines jurisdiction [of the local
retailer] based upon those that are linked [to the supplier] in combination
with the location of the customer.” (Brief. p. 12). Appellant’s argument is
not commensurate in scope with that which is claimed because the wording
of the claims is such that determination of the local retailer having
jurisdiction over the purchase is based on a customer’s location alone. While
the claims call for a link between local retailer and supplier based on the
local retailer’s location (which Walker discloses, see col. 17, lines 13-28),
the step of determining jurisdiction over the purchase on the goods does not
depend on this link. A local retailer may be linked to a supplier based on its
location and yet not have jurisdiction over the purchase.
Finally, Appellant argues that “[u]nlike Walker et al., in the subject
invention the funds are not compensation for selling the product at the lower
price, instead the funds are in exchange for the retailer agreeing to service

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the customer if and when such service becomes necessary.” (Brief, p. 12).
Claim 1 calls for transmitting funds “to the local retailer (20) to service the
customer (14)” and “servicing the customer (14) at the local retailer (20) on
behalf of the supplier (18) as a result of receiving” the funds. The method
claimed does not preclude the local retailer from servicing the customer even
though no funds have been or will be received. The funds cause service to
be provided but service is not dependent on the funds.

Motivation 9
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Appellant also contends that there is a lack of motivation/suggestion
to combine Walker and Rogers and arrive at the claimed invention. FF 18.
Appellant argues that Walker and Rogers are concerned with solving
different problems as well as problems different than those addressed by the
subject invention. According to appellant, Walker involves the problem of
manufacturers and retailers competing for the same customers as well as the
problem of manufacturers not being able to sell their products at discounted
prices without alienating the retailers in contrast to Rogers which addresses
the problem of fraud perpetrated on the retailers by unscrupulous customers.
Rogers was not applied for a feature connected to the problem it was
trying to solve. The Examiner applied Rogers for the purpose of showing
that the return of purchased goods to the retailer is known in the art. (See
Answer, p. 5). One of ordinary skill in the art would foresee returning of
purchased goods to the retailer among the services a retailer would provide
under the Walker reimbursement method. Rogers provides more substantial

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evidence that such a service is one a local retailer would normally provide a
customer.
With respect to differences between the problems the prior art
methods and the claimed method are solving, they would have been
pertinent had the claim been drafted to reflect those differences. Here the
claimed method encompasses the method described in the prior art.
Appellant has not persuasively shown which feature of the claims, as they
are broadly worded, Walker does not describe.

CONCLUSION OF LAW
On the record before us, Appellants have failed to show that the
Examiner erred in rejecting the claims over the prior art. The Examiner’s
evidence and rationale is sufficient to make out a prima facie case of claims
1, 3, 6-10, 12-14, 16, and 18 under 35 U.S.C. § 103(a) over Walker and
Rogers.
Appellant has not sustained his burden of overcoming the prima facie
case made out by the Examiner.

DECISION
Examiner’s rejection of claims 1, 3, 6-10, 12-14, 16, and 18 is
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). See 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED 25

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