Ex Parte Koons

Board of Patent Appeals and Interferences

Mar 28, 2006

10011818 (B.P.A.I. Mar. 28, 2006)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

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Ex parte RODNEY KOONS

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Appeal No. 2006-0987
Application 10/011,818

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ON BRIEF

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Before OWENS, GROSS and NAPPI, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 33-57, which are all of the pending claims.
THE INVENTION
The appellant claims a system for processing product orders and returns while
maintaining a real-time accounting of product location.

Appeal No. 2006-0987
Application 10/011,818

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Claim 33 is illustrative:
A system for processing product movement requests including orders
and returns while maintaining a real-time accounting of product locations, including:

a network;

a first communication link connecting a first location to the network;

a second communication link connecting a second location to the
network; and

an information manager coupled to the network including a database of
product information; wherein in response to a product order from the first location,
the information manager sends an order confirmation message over the network to the
first location, causes the second location to send an order acknowledgement
card and the ordered product to the first location, and updates the database to
indicate that the ordered product was received by the first location upon return receipt
of the order acknowledgement card, and wherein in response to a request to return
product from the first location, the information manager sends a return
confirmation message over the network to the first location, sends a return
acknowledgement card to the first location, and updates the database to indicate
that the returned product was received by the second location upon receipt of the return
acknowledgement card and receipt of the returned product at the second
location;

whereby the information manager maintains in the database a confirmed
last known location for each product in the system.

THE REFERENCES

Klein 2001/0037248 A1 Nov. 1, 2001
(U.S. patent application publication)
Hoffman et al. (Hoffman) 2002/0073170 A1 Jun. 13, 2002
(U.S. patent application publication) (filed Apr. 18, 2001)
THE REJECTION
Appeal No. 2006-0987
Application 10/011,818

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Claims 33-57 stand rejected under 35 U.S.C. § 103 as being unpatentable over Klein
in view of official notice supported by Hoffman.
OPINION
We reverse the aforementioned rejection. We need to address only the sole
independent claim, i.e., claim 33.
Klein discloses a method for registering and managing consumer product warranty
information and for facilitating the return of lost products to their owners (¶¶ 0010 and 0011).
A lost product or a product needing warranty service is brought to a courier service which
reads an RFID identification tag that is affixed to the product and tells the courier service
where to send the product
(¶¶ 0020 and 0021).
The portion of Hoffman relied upon by the examiner (answer, page 8) discloses that
companies such as United Parcel Service have large easel-type displays for entry of
signatures thereon and verification that products have been received (¶ 0004).
In response to the appellant’s argument that Klein does not disclose a product order
from a first location, an order confirmation message, or a request to return the product from
the first location (brief, pages 7-8), the examiner argues that ordering a product from a first
location, sending an order confirmation message, and requesting to return the product from
the first location can take place when a product is purchased from Best Buy (answer, pages
9-11). The examiner, however, does not support that argument with evidence. The
Appeal No. 2006-0987
Application 10/011,818

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examiner’s mere speculation as to the purchase and return process at Best Buy is not
sufficient for establishing a prima facie case of obviousness. See In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968); In re Sporck, 301 F.2d 686, 690, 133 USPQ 360, 364
(CCPA 1962).
We therefore conclude that the examiner has not carried the
burden of establishing a prima facie case of obviousness of the
appellant’s claimed invention.

DECISION
The rejection of claims 33-57 under 35 U.S.C. § 103 over Klein
in view of official notice supported by Hoffman is reversed.
REVERSED

Appeal No. 2006-0987
Application 10/011,818

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TERRY J. OWENS ) Administrative
Patent Judge )
)
)
)
ANITA PELLMAN GROSS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
) )
ROBERT E. NAPPI )
Administrative Patent Judge )

TJO/lg
Appeal No. 2006-0987
Application 10/011,818

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