Ex Parte Oswald

Patent Trial and Appeal Board

Feb 16, 2016

12383134 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/383, 134 0312012009 Jack Oswald
69849 7590 02/18/2016
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
379 Lytton Avenue
Palo Alto, CA 94301
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.
25TX-157676 8599
EXAMINER
CHAMPAGNE, LUNA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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):
svpatents@sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK OSWALD
Appeal2013-008048 1
Application 12/383, 1342
Technology Center 3600
Before HUBERT C. LORIN, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 21--44. We have jurisdiction under 3 5
U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
Jan. 16, 2013), the Examiner's Answer ("Ans.," mailed Apr. 12, 2013), the
Reply Brief ("Reply Br.," filed June 12, 2013), the Final Action ("Final
Act.," mailed Aug. 13, 2012), and the Specification ("Spec.," filed Mar. 20,
2009).
2 According to the Appellant, the real party in interest is the inventor, Jack
Oswald. Appeal Br. 2.
Appeal2013-008048
Application 12/383, 134
STATEMENT OF THE CASE
The Appellant's invention is directed to "[t]echniques for maintaining
and using recipient accounts." Spec. i-f 21
Independent claims 21 and 33 are the pending independent claims on
appeal. Claim 21, reproduced below (bracketing added for reference sake),
is illustrative of the subject matter on appeal:
21. A method comprising:
[ 1] accessing, using a recipient account management
engine, a recipient account to store a shipping address, an
account identifier, and a delivery choice in a record of a
recipient account datastore, the record being associated with a
recipient;
[2] receiving a plurality of delivery transactions without
personal information about the recipient from one or more
merchants, wherein each of the plurality of delivery
transactions is to deliver goods purchased from one of the
merchants to a recipient associated with the account identifier;
[3] updating the record of the recipient account datastore
in accordance with the plurality of delivery transactions;
[ 4] transmitting a payment confirmation to the one or
more merchants;
[5] submitting, using a processor of the recipient account
management engine, payment to the one or more merchants
after obtaining the goods;
[ 6] providing the shipping address to facilitate shipping
the goods to the shipping address after submitting the payment
to the one or more merchants;
[7] providing the delivery choice to facilitate shipping the
goods in accordance with the delivery choice;
[8] managing, based on management instructions from a
shipper, the recipient, or an independent party not including the
one or more merchants, the plurality of delivery transactions in
the recipient account datastore through the recipient account.
Appeal Br. 25, Claims App.
2
Appeal2013-008048
Application 12/383, 134
REJECTIONS
Claims 21-24, 30-36, and 42--44 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mitsuoka (US 7,356,481 B2, iss. Apr. 8,
2008), Junda (US 2003/0069857 Al, pub. Apr. 10. 2003), Ourega (US
8, 175,930 B2, iss. May 8, 2012), and Drudis (US 8,108,266 B2, iss. Jan. 31,
2012).
Claims 25, 27, 28, 37, 39, and 40 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mitsuoka, Junda, Ourega, Drudis, and
Shroff(US 2006/0195364 Al, pub. Aug. 31, 2006).
Claims 26, 29, 38, and 41 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mitsuoka, Junda, Ourega, Drudis, and Wildman
(US 2008/0040233 Al, pub. Feb. 14, 2008).
FINDINGS OF FACT
We determine that the findings of fact in the Analysis section below
are supported at least by a preponderance of the evidence. 3
ANALYSIS
The Examiner finds that Mitsuoka discloses receiving delivery
instructions, as partly recited in limitation [2], providing the delivery choice
to facilitate shipping, as recited in limitation [7], and managing, based on
instructions, the delivery instructions through the recipient account, as
recited in limitation [8]. See Final Act. 2-3. The Examiner finds Junda
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2013-008048
Application 12/383, 134
discloses accessing a recipient account, as recited in limitation [ 1], receiving
delivery instructions without personal information, as recited in limitation
[2], updating the record of the recipient account, as recited in limitation [3],
and transmitting a payment confirmation to the merchant, as recited in
limitation [ 4]. See Final Act. 3--4. The Examiner finds Ourega discloses
submitting payment to the merchant(s) after obtaining the goods, as recited
in limitation [5]. See Final Act. 4. The Examiner finds that although
Mitsuoka discloses providing a shipping address, Drudis discloses providing
the shipping address to facilitate shipping after submitting payment, as
recited in limitation [6]. See Final Act. 4--5.
We have reviewed the Examiner's rejection in light of the Appellant's
contentions in the Appeal and Reply Briefs that the Examiner has erred. We
disagree with the Appellant's contentions for the below reasons.
The Appellant argues that "Combining Junda and Ourega Would
Require a Seller to Know a Buyer's Personal Information, in Accordance
with Ourega," because "a method combining [the references] would not
permit excluding a buyer's personal information in accordance with Junda."
Appeal Br. 7, 11 (emphasis omitted). Similarly, the Appellant argues that
combining Ourega with Junda would render Junda inoperative for its
intended purpose (id. at 13-17; see also Reply Br. 6-7), and would change
the principle operation of Junda (Appeal Br. 17-21; see also Reply Br. 8-9).
These arguments that Ourega teaches away from Junda are unpersuasive.
We disagree that combining Ourega with Junda would result in a
method that "would not permit excluding a buyer's personal information in
accordance with Junda." See Appeal Br. 7-11; see also Reply Br. 4--5. The
Appellant's argument that Ourega "explicitly discloses providing a merchant
4
Appeal2013-008048
Application 12/383, 134
with a customer's delivery details during its payment process" (Appeal Br.
9), is unpersuasive because it is not factually supported by the reference.
See DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364
(Fed. Cir. 2006) ("We will not read into a reference a teaching away from a
process when no such language exists."). The Appellant's citations from
Ourega (see Appeal Br. 9-11) do not explicitly disclose that the buyer
information must be revealed to the seller. We agree with the Examiner's
finding that Ourega discloses using a mediator through which information
and payment are exchanged between a buyer and seller. See Ans. 24; see
also Ourega, Fig. 1, and col. 9, 11. 17-27. The shipping service information
collector of Ourega cited by the Appellant (Appeal Br. 9-10) is disclosed to
be at the mediator web site and not at the seller. Ourega, Fig. 1 "M07''.
Ourega does not explicitly state that the sellers' provided shipping forms
(see Appeal Br. 9-10, 16) contain buyer information. Ourega further does
not explicitly state that the seller sends emails directly to the buyer, or that
the seller has the buyer's information (see Appeal Br. 11 ), but rather that, if
the seller does not use the mediator as a clearinghouse, the buyer and seller
will have to communicate through the mediator web site. Ourega, col. 22, 11.
57---61. This alternative solution/embodiment where the buyer and seller can
exchange information (Ans. 11, citing Ourega, col. 28, 11. 59---61 ), does not
criticize, discredit or otherwise discourage the anonymity of Junda, and thus
does not constitute any teaching away. See In re Fulton, 391 F.3d. 1195,
1201 (Fed. Cir. 2004). Thus, we find Ourega does not require a seller to
4 The Examiner's Answer lists all pages as "Page 1." We refer to the pages
in the order they appear.
5
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Application 12/383, 134
know a buyers' information and a method combining Ourega and Junda
would permit excluding a buyer's information from the seller.
Similarly, we find that combining Ourega with Junda does not render
Junda "unfit for its intended purpose of protecting customer confidentiality
in a delivery process" (Appeal Br. 13; see also id. at 14--17), nor would the
combination change the principle operation of Junda of security and
confidentiality (Appeal Br. 17-21 ). As discussed above, Ourega does not
exclude or even dissuade from protecting customer information from
merchants. Thus, Ourega does not render Junda unfit for its intended
purpose, nor does it change the principle operation of Junda.
The Appellant's argument that "The Examiner Has not Shown that
Junda in View of Ortega Teaches Each and Every Limitation of the Claims"
(Appeal Br. 12, emphasis omitted), is unpersuasive because it is an argument
against the prior art individually when the Examiner relies on the
combination of references to disclose the claim. The test for obviousness is
not what any one reference would have suggested, but rather what the
combined teachings of the references would have suggested to those of
ordinary skill in the art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981).
"[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of the references."
Id. (citation omitted). Further, we note that the Examiner relies on Drudis
for limitation [ 6] of providing the shipping address after submitting
payment. See Final Act. 4--5. Moreover, the Appellant does not provide any
evidence or technical reasoning why Junda does not teach limitation [2] of
"receiving a plurality of delivery transactions without personal information
from one or more merchants" or why Drudis does not disclose limitation [ 6]
6
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Application 12/383, 134
of providing the shipping address after submitting payment.
For the foregoing reasons, we sustain the Examiner's rejection of
claim 21. The Appellant provides no separate arguments for claims 22--44
(see Ans. 12), and thus we also sustain the Examiner's rejections of claims
22--44.
DECISION
The Examiner's decision rejecting claims 21--44 as unpatentable
under 35 U.S.C. § 103(a) is AFFIRMED.
No time period of 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).
AFFIRMED
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