Ex Parte Mitchell et al

Patent Trial and Appeal Board

Feb 26, 2016

11608739 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/608,739 12/08/2006 Joan L. Mitchell
48059 7590 03/01/2016
LAW OFFICE OF CHARLES W, PETERSON, JR - TGCH
Charles Peterson
12793 Thacker Hill Ct.
Suite 1B
Oak Hill, VA 20171
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.
G511460USAB 9879
EXAMINER
ROJAS, HAJIME S
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
03/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
BILL@CWPETERSON.COM
PTO@CWPeterson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOAN L. MITCHELL and SCOTT D. MASTIE
Appeal2013-005326
Application 11/608,739
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
BRADLEY B. BAY AT, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Joan L. Mitchell and Scott D. Mastie (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1, 3-7, 9-11, 13-17, and 19-
24, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed December 6, 2012) and Reply Brief ("Reply Br.," filed March 4,
2013), and the Examiner's Answer ("Ans.," mailed January 2, 2013), and
Final Action ("Final Act.," mailed July 26, 2012).
Appeal2013-005326
Application 11/608,739
The Appellants invented a way of "returning goods purchased as in-store
business transactions and through self service transactions at electronic Point
of Sale kiosks and the like." Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of conducting business transactions, said method
compnsmg:
[ 1] presenting an item for return at a point of sale (POS)
terminal;
[2] collecting identification data for said presented item, said
collecting identification data comprising collecting in said POS
terminal data identifying said presented item and biometric data
from a person presenting said item for return;
[3] retrieving from storage an electronic receipt for said
presented item;
[ 4] comparing collected identification data automatically
against retrieved electronic receipt data at said POS terminal;
and
[5] when compared data matches completing the return of said
presented item.
The Examiner relies upon the following prior art:
Becker us 5,983,238
Robinson US 7 ,082,415 B 1
2
Nov. 9, 1999
July 25, 2006
Appeal2013-005326
Application 11/608,739
Claims 1, 3, 5, 7, 9, 11, 13, 15, 16, and 19----23 stand rejected under 35
U.S.C. § 102(e) as anticipated by Robinson. 2
Claims 4, 6, 14, 17, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Robinson and Official Notice.
Claims 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Robinson and Becker.
ISSUES
The sole issue is whether the parent to the instant application ('824)
describes the instant claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellants 'Disclosure
01. The instant application was filed December 8, 2006 and is a
continuation in part of U.S. Pat. Appl. 10/430,824 ('824), filed
May 6, 2003.
2 This rejection as set forth in the Final Action does not include claim 16,
which depends from claim 15 and 11 (Final Act. 3), but the limitations added
in claim 16 are similar to those in claims 7, 9, 21, and 22. As the Final
Action cover sheet includes claim 16 among those rejected, the omission
from the list of claims enumerated under this particular rejection is taken to
be inadvertent and the analysis related to the similar claims is taken as being
applied to claim 16 as well. Claim 16 is not separately argued.
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Appeal2013-005326
Application 11/608,739
02. '824 does not describe a merchandise return per se. The sole
description of a merchandise refund or exchange in '824 is that of
characterizing one of the possible codes in an electronic receipt
payment type field. '824 para. 21. '824 has no description of
using this code in a transaction, or of performing such a
transaction.
03. '824 does not describe using or storing biometric data per se.
The sole description of biometric data in '824 is that of describing
how "merchants may want to collect the extensive expense
reporting data regarding a transaction for biometric evaluation, but
are unwilling to burden customers with all the requisite queries."
'824 para. 4. '824 does not describe or suggest using such
biometric data in the transactions '824 described.
04. '824 does not describe retrieving a receipt from a database per
se. '824 instead has five descriptions of a destination retriever
retrieving a location designation where a receipt is to be stored
after being generated.
Facts Related to the Prior Art
Robinson
05. Robinson is directed to conducting biometrically-initiated
refund transactions, and more particularly, allowing individuals to
store and retrieve transaction information by means of biometric
association. Robinson 1: 14--18.
06. Robinson was filed April 22, 2004.
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Appeal2013-005326
Application 11/608,739
07. Robinson describes customer biometric information is
associated with electronically captured transaction information
allowing customers and merchants to perform more secure,
convenient, and efficient refund transactions. Robinson 2: 1--4.
ANALYSIS
Appellants do not argue that Robinson fails to anticipate the claims.
Instead, Appellants argue that Robinson is not available as prior art because
the parent of the instant application ('824) antedates Robinson. The
Examiner finds that '824 does not adequately describe support for the instant
claims. Final Act. 2. The Examiner has not shown how Robinson's parent
describes the instant claims. The sole issue then is whether '824 describes
the instant claims. We find that it does not.
Priority under 35 U.S.C. § 120 requires written description support
sufficient to satisfy 35 U.S.C. § 112, first paragraph, and this requirement
does not allow supplementation by obviousness.
[W]hile the description requirement does not demand any
particular form of disclosure, or that the specification recite the
claimed invention in haec verba, a description that merely
renders the invention obvious does not satisfy the requirement.
Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed.
Cir. 2010) (en bane) (citation omitted) (citing Lockwood v. Am. Airlines,
107 F.3d 1565, 1571-72 (Fed. Cir. 1997)). The supporting description must
show possession of the claimed invention within the four comers of the
disclosure. Id. at 1351.
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Appeal2013-005326
Application 11/608,739
All three independent claims recite retrieving a receipt from storage,
collecting biometric data as part of a return transaction, and completing
return of an item. Thus, to perfect a claim to priority, '824 must describe a
transaction incorporating these steps to show possession of such a
transaction. '824 does not describe any of these limitations. Appellants do
not show otherwise. Instead, Appellants point to various portions of '824
that refer to a receipt field having a code for an exchange, to a generic desire
by some merchants for biometric data, and to storage where receipts are
stored. FF 02---04.
Appellants also offer an affidavit by Jeffrey Smith filed August 2, 2011
("Affidavit") as evidence that '824 supports the claims. We find this
affidavit unpersuasive.
The Board has broad discretion as to the weight to give to
declarations offered in the course of prosecution. See Velander
v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)
("[A]ccord[ing] little weight to broad conclusory statements [in
expert testimony before the Board] that it determined were
unsupported by corroborating references [was] within the
discretion of the trier of fact to give each item of evidence such
weight as it feels appropriate."); cf. Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)
("Opinion testimony rendered by experts must be given
consideration, and while not controlling, generally is entitled to
some weight. Lack of factual support for expert opinion going
to factual determinations, however, may render the testimony of
little probative value in a validity determination." (citations
omitted)). Although there is "no reason why opinion evidence
relating to a fact issue should not be considered by an
examiner," In re Alton, 76 F.3d 1168, 1175 n.10 (Fed. Cir.
1996), the Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants
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Application 11/608,739
discounting the opm10ns expressed m the declarations, see
Velander, 348 F.3d at 1371; Ashland Oil, 776 F.2d at 294.
In re American Academy of Science Tech Center, 367 F.3d 1359, 1368 (Fed.
Cir. 2004). Mr. Smith opined that "the Parent supports including biometric
data in the described electronic receipts" because "very few things would
more uniquely identify a transaction than purchaser biometric data collected
by the merchant at the time of the transaction." App. Br. 12; Affidavit 3. At
best this supports a finding of obviousness. But as the sole reason for so
concluding is the purported strength of biometric data to uniquely identify a
transaction, the opinion is untrustworthy because anyone whoever returned
an item knows that a transaction identifier is often the only unique identifier
of a transaction. Biometric data at best uniquely identifies a purchaser, who
may have made plural purchases. This therefore calls into question the
credibility of the affiant as an expert.
Mr. Smith also opined that
Mitchell indicates that payment for a purchase may be in the
form of a refund/ exchange (col. 4, line 44 and claim 1, lines 16-
17 and 25) which is a return that normally requires a receipt
and, in my opinion for any purchase made with the Mitchell
system, such a receipt would be an electronic receipt.
Affidavit 3. Again, at best this shows obviousness. Mr. Smith's statements
do not show that any portion of '824 describes such an actual transaction, or
retrieving an electronic receipt in such a transaction.
Accordingly, we find the affidavit does not alter our finding of lack of
sufficient support for a claim to priority with the '824 application.
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Application 11/608,739
CONCLUSIONS OF LAW
The rejection of claims 1, 3, 5, 7, 9, 11, 13, 15, 16, and 19-23 under 35
U.S.C. § 102(e) as anticipated by Robinson is proper.
The rejection of claims 4, 6, 14, 17, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Robinson and Official Notice is proper.
The rejection of claims 10 under 35 U.S.C. § 103(a) as unpatentable over
Robinson and Becker is proper.
DECISION
The rejection of claims 1, 3-7, 9-11, 13-17, and 19-24 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 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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