Ex Parte Junger et al

Patent Trial and Appeal Board

Jul 29, 2016

11892415 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111892,415 08/22/2007
94551 7590 08/01/2016
Landmark Intellectual Property Law, PLLC
919 East Main Street
Suite 1000
Richmond, VA 23219
FIRST NAMED INVENTOR
Peter J. Junger
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
723-2222 9119
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3623
MAILDATE DELIVERY MODE
08/01/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER J. JUNGER and TERESA WONG
Appeal2014-005630 1
Application 11/892,4152
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-8, 10-17, and 19-22. We have jurisdiction under
35 U.S.C. §§ 134 and 6(b).
We AFFIRM-IN-PART.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
Sept. 24, 2013) and Reply Brief ("Reply Br.," filed Apr. 7, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed March 25, 2013) and
Answer ("Ans.," mailed Feb. 6, 2014).
2 According to Appellants, the real party in interest is Nintendo of America,
Inc. (Appeal Br. 3).
Appeal2014-005630
Application 11/892,415
Introduction
Appellants' disclosure relates to "electronic registration (ER) of
purchased products and, more particularly, to an improved electronic
registration system which enables online buyers and sellers [to determine,
for example, whether a product] has been purchased through authorized
channels .... " (Spec. i-f 2).
Claims 1, 10, 19, and 22 are the independent claims on appeal. Claim
1, reproduced below, is illustrative of the subject matter on appeal:
1. An electronic product registration system implemented
via a computer including a processor and a memory, the system
compnsmg:
an online auction house including a seller interface
configured to accept product information for at least one
product to be sold by at least one seller, and a buyer interface
configured to allow at least one buyer to search for and/ or
purchase a product for sale by a seller to be bought by a buyer;
an electronic registration database including an entry for
each of a plurality of products, the electronic registration
database being populated with product information for each
said product in the electronic registration database and being
populated by at least one of a retailer, a manufacturer, an
authorized party, and an auction house seller;
and an electronic registration clearinghouse configured to
issue a certificate to certify for each product entered into the
seller interface whether each said product should be offered for
sale to potential purchasers by the auction house as a verified,
legitimate product in dependence on a comparison between
information for the product perceived through the seller
interface and the product information stored in the electronic
registration database,
wherein the auction house lists for sale products having
certificates, and
wherein the electronic registration database includes at
least one flag associated with each entry, the flag indicating a
status of the product associated with the entry, the status being
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Application 11/892,415
selected from the group consisting of stolen good, gray-market
good, and B-good.
(Appeal Br., Claims App.)
Rejection on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejection:
Claims 1-8, 10-17, and 19-22 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Cohen (US 2003/0050891 Al,
pub. Mar. 13, 2003), Bezos (US 6,606,608 Bl, iss. Aug. 12, 2003), and
Official Notice.
ANALYSIS
Independent claim 1 and dependent claims 2, 3, and 6
First, we are unpersuaded by Appellants' argument that Cohen fails to
disclose a "clearinghouse," as recited in independent claim 1, i.e., "an
electronic registration clearinghouse configured to issue a certificate to
certify for each product entered into the seller interface whether each said
product should be offered for sale to potential purchasers" (Appeal Br. 13-
17). In particular, Appellants assert that the claimed clearinghouse "works
prior to a sale" to issue certificates, whereas, according to Appellants, Cohen
relates to transferring title after a sale (id. at 13-15). However, paragraph 50
of Cohen, relied on by the Examiner (Ans. 4 ), discloses that "buyers may
prefer to buy jerseys attached with tracking checks 136." As such, we agree
with the Examiner that it was understood that Cohen's tracking checks may
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Application 11/892,415
function in the same manner as the recited certificates, i.e., to state the chain
of title prior to a sale.
Second, we are unpersuaded by Appellants' argument that Cohen's
system cannot effectively verify items or guarantee their legitimacy because
of Cohen's disclosure (i-f 50) that criminals might fraudulently create
tracking checks, which would be a prosecutable offense (Appeal Br. 16-
19). In context, Cohen mentions the possibility of fraud in describing the
attractiveness of the disclosed system of tracking checks for the buyer of the
jersey. Further, Cohen (i-f 45) discloses that a party can check tracking
numbers 134 (corresponding to tracking check 136) against a database
"when an item is to be transferred," that tracking numbers 134 allow for
authentication of the item, and that two parties to a transaction may access
the database to authorize the transaction, or can use a third party to do so.
Therefore, Cohen's system is designed to prevent the sale of fraudulent
goods in the first instance.
For similar reasons, we are unpersuaded by Appellants' argument that
Cohen fails to disclose a system "to certify for each product entered into the
seller interface whether each said product should be offered for sale to
potential purchasers by the auction house as a verified, legitimate product,"
as further recited by independent claim 1. As for the recited "auction
house," the Examiner relies on Cohen in combination with Bezos, which
discloses an electronic auction house for online sales (see Final Act. 3). See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot
show non-obviousness by attacking references individually when the
rejection is based on a combination of references). We agree with the
Examiner that Bezos (col. 1, 11. 60-65 & Figs. 1-2) discloses an auction.
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Third, we are unpersuaded by Appellants' argument that Cohen
discloses that a good may be fraudulent or stolen but does not disclose that
goods may be gray-market goods or B-goods (Appeal Br. 19-23). (The
Specification, at paragraph 55, uses the term "B-good" to refer to goods
which have been returned and subsequently resold). Instead, the Examiner
relies on Official Notice that designations of gray-market goods and B-
goods were well-known (Final Act. 4). Nor have Appellants traversed the
Examiner's taking of Official Notice. The Examiner points to documentary
evidence in support of the Official Notice, i.e., McAuliffe (US
2003/0154127, pub. Aug. 14, 2003). Further, Appellants have not
specifically pointed out the supposed errors in the Examiner's action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art. 37 C.F.R. § 1.104(d)(2); Manual of
Patent Examining Procedure (MPEP) § 707.07(a) (9th Ed., Mar. 2014); In re
Boon, 439 F.2d 724, 728 (CCPA 1971) (an adequate traverse must contain
adequate information or argument to create on its face a reasonable doubt
regarding the circumstances justifying Examiner's notice of what is well
known to one of ordinary skill in the art).
For similar reasons, we are unpersuaded by Appellants' argument that
Cohen discloses a system to ascertain whether a good has "clear title" but
does not disclose that a good has "legitimacy," which would indicate a
certification that a good is not a gray-market good or a B-good (see Appeal
Br. 21-23; Ans. 5).
We are unpersuaded by Appellants' argument that the "[r]ationale for
[c]ombining Cohen and Bezos [i]s [l]argely [u]nexplained" (Appeal Br. 23)
(emphasis omitted) or lacks sufficient evidence (id. at 23-37). The
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Application 11/892,415
Examiner determines the combination of the online auction, as taught by
Bezos, with the database of item tracking numbers, as taught by Cohen,
would have been obvious as the combining of prior art elements according
to known methods, where each performs the same function as it did
separately, where the combination yields predictable results, and in order to
prevent loss of revenue to a seller because of secondary markets (Final Act.
4--5). We are unpersuaded by Appellants' argument that further factual
findings regarding predictability are necessary, including the predictability
of gray-market goods (Appeal Br. 25-26). In this connection, the Examiner
finds that the components function the same in combination as separately.
Further, the Examiner's rationale, of preventing loss of revenues to sellers
(because of the existence of secondary markets), applies equally to gray-
market and B-goods as to stolen goods.
As such, we agree with the Examiner that it would have been obvious
to a person of ordinary skill in the art to use the teaching of authenticating
goods prior to sale, as taught by Cohen, with the online sales system, as
taught by Bezos, in order to verify the chain of title to exclude goods not
intended for sale, including stolen goods, gray-market goods, and B-goods,
for the reasons stated by the Examiner. We, therefore, sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of independent claim 1.
Appellants do not argue the patentability of dependent claims 2, 3,
and 6 separately from that of independent claim 1, from which they each
depend. We, therefore, sustain the Examiner's rejection under 35
U.S.C. § 103(a) of claims 2, 3, and 6, for similar reasons as for independent
claim 1.
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Dependent claims 4 and 1 3
Appellants argue claims 4 and 13 together. We select claim 4 as
representative such that claim 13 stands or falls together with claim 4. See
37 C.F.R. § 41.37(c)(l)(iv).
We are unpersuaded by Appellants' argument that Cohen fails to
disclose a "certificate" as recited by dependent claim 4, i.e., "the buyer
interface is configured to communicate to a buyer whether a product to be
bought has a certificate associated therewith." Rather, paragraph 45 of
Cohen, discussed above with respect to independent claim 1, discloses that
two parties to a transaction may use the database (see Final Act. 5). As
such, Cohen applies with equal force to use of the database by a seller and
by a buyer. We, therefore, sustain the Examiner's rejection under 35
U.S.C. § 103(a) of dependent claims 4 and 13.
Dependent claims 5 and 14
Appellants argue claims 5 and 14 together. We select claim 5 as
representative such that claim 14 stands or falls together with claim 5. See
37 C.F.R. § 41.37(c)(l)(iv).
We are unpersuaded by Appellants' argument that Bezos (Fig. 2) does
not provide a source for the data as recited by dependent claim 5, i.e., "the
buyer interface is configured to display product information from the
electronic registration database corresponding to the product to be bought."
As with independent claim 1, the Examiner relies on the combination of
tracking numbers of Cohen with the online sales of Bezos (see Final Act. 5).
Accordingly we sustain the Examiner's rejection under 35 U.S.C. § 103(a)
of dependent claims 5 and 14, for similar reasons as for independent claim 1.
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Dependent claims 7 and 16
We are persuaded by Appellants' argument that Cohen fails to
disclose a notification when a certificate is absent, as recited by dependent
claim 7, i.e., "the electronic registration clearinghouse is configured to notify
one or more authorized parties if a product for sale by a seller does not have
a certificate associated therewith." The Examiner relies on paragraphs 72-
7 4 of Cohen (Final Act. 6). This portion of Cohen discloses that the
database will provide information about an item even if the title registration
has not been updated, where the information provided relates to prior
registered actions, and will send a confirmation email when an update to the
registration has been made. However, we agree with Appellants that this
portion of Cohen does not disclose a notification in the absence of a
registration. Therefore, we do not sustain the Examiner's rejection under 35
U.S.C. § 103(a) of dependent claim 7.
Dependent claim 16 contains similar language and requirements as
claim 7. We do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of claim 16, for similar reasons as for claim 7.
Dependent claims 8 and 17
We are persuaded by Appellants' argument that Cohen fails to
disclose entry of a serial number or a determination as to whether it is within
an acceptable range of values, as recited by dependent claim 8, i.e., "the
electronic registration clearinghouse is configured to issue a certificate for a
product for sale when the product information entered into the seller
interface is within a predetermined range of acceptable values." The
Examiner relies on paragraphs 119 and 120 of Cohen (Ans. 6). Paragraphs
118 and 119 (relating to Fig. 9) disclose that tracking checks are fabricated
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for the registered title owner, with PTI'-J information issued to a customer and
data entered by the bank. Paragraphs 120 and 121 (relating to Figure 10)
disclose that a seller and buyer may notify the bank of a transaction by
entering identification PIN codes and sale information such that the buyer
becomes the new registered owner. However, the portion of Cohen relied on
by the Examiner does not disclose "a predetermined range of accepted
values," as recited by dependent claim 8. We, therefore, do not sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of dependent claim 8.
Dependent claim 1 7 contains similar language and requirements as
claim 8. We do not sustain the Examiner's rejection under 35 U.S.C.
§ 10 3 (a) of claim 1 7, for similar reasons as for claim 8.
Dependent claim 21
We are unpersuaded by Appellants' argument that Cohen fails to
disclose a "a remanufactured good" as recited by dependent claim 21, i.e.,
"the checking indicates that the product for sale is a B-good, and further
indicates that the product for sale is a remanufactured good." However, the
Examiner has taken Official Notice that the category of refurbished goods
was well-known, as supported by paragraph 2 ofMcAuliffe (Final Act. 6).
Paragraph 2 of McAuliffe discloses markets for goods, including "new, old,
or refurbished goods." We conclude that a "refurbished" good is within the
broadest reasonable interpretation of "a remanufactured good." As for "B-
goods," the Examiner has taken Official Notice, also relying on McAuliffe,
discussed above with respect to independent claim 1. For similar reasons as
set forth above with respect to independent claim 1, Appellants have not
traversed the Examiner's taking of Official Notice. We, therefore, sustain
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the Examiner's rejection under 35 U.S.C. § 103(a) of dependent claim 21,
for similar reasons as for independent claim 1.
Independent claims 10, 19, and 22 and dependent claims 11, 12, 15, and 20
Appellants do not argue the patentability of independent claims 10,
19, and 22 separate I y from that of independent claim 1. We, therefore,
sustain the Examiner's rejection under 35 U.S.C. § 103(a) of independent
claims 10, 19, and 22, for similar reasons as for independent claim 1.
Appellants do not argue the patentability of dependent claims 11, 12,
15, and 20 separately from that of independent claims 10 and 19, from which
they depend. We, therefore, sustain the Examiner's rejection under 35
U.S.C. § 103(a) of claims 11, 12, 15, and 20, for similar reasons as for
independent claims 10 and 19.
DECISION
The Examiner's decision to reject claims 1---6, 10-15, and 19-22
under 35 U.S.C. § 103(a) is affirmed.
The Examiner's decision to reject claims 7, 8, 16, and 17 under 35
U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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