Ex Parte Ross

Board of Patent Appeals and Interferences

Jul 13, 2009

09865470 (B.P.A.I. Jul. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FREDERICK L. ROSS
____________

Appeal 2009-000417
Application 09/865,470
Technology Center 3600
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Decided:1 July 13, 2009
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-39 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellant’s claimed invention is directed to managing the return
of items purchased by a consumer from a remote merchandiser. The
consumer takes the item to a local returns center who communicates the
request to a returns manager. The returns manager provides a return
validation code to the local returns site which is matched with a code
provided by the consumer. (Specification 4:1-5 and 4:17-23). Claim 1,
reproduced below, is representative of the subject matter of appeal.

1. A method of using a public communications network to manage
the return of an item purchased by a consumer from a remote direct
merchandiser, comprising the steps of:
receiving a first communication at a returns manager system, the
first communication comprising return request data from a local
returns site;
providing a second communication from the returns manager
system to the local returns site, the second communication comprising
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return validation data having at least a return validation code;
validating the return by matching the return validation code with
a pre-authorization code provided by the consumer to the local returns
site, the pre-authorization code obtained by the consumer and
indicating prior approval of the return by a remote direct merchandiser
from whom the item was purchased; and
crediting an account of the consumer for a return value of the
returned item after validating the return;
wherein the first and second communications are communicated
using a public communications network.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Junger US 6,085,172 Jul. 4, 2000
Hauser et al US 6,536,659 B1 Mar. 25, 2003

The following rejections are before us for review:
1. Claims 1-39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Junger in view of Hauser.

THE ISSUES
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
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With regards to claims 1-28 this issue turns on whether Junger and
Hauser disclose “validating the return by matching the return validation code
with a pre-authorization code provided by the consumer to the local returns
site”.
With regards to claims 29-39 this issue turns on whether Junger and
Hauser disclose the limitation to “send a second communication to the
retailer identifying the item of merchandise to be returned by the consumer
to provide the retailer with advance notification of the return.”

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence2:
FF1. Junger discloses a method for handling product return transactions
(Title).
FF2. Junger discloses that a product return center location obtains
identifying information for a product to be returned. A return approval
computer system receives this information and determines whether the
returned product satisfies applicable return criteria. The return approval
location may provide a list of approved and unapproved returns along with a
return authorization number for a batch of approved items (Col. 2:41-56).

2 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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FF3. Junger in Fig. 4H does not show the Batch # and RA number to be
matching.
FF4. Junger does not disclose “validating the return by matching the return
validation code with a pre-authorization code provided by the consumer to
the local returns site.”
FF5. Hauser discloses a method of facilitating returns of merchandise
purchased from other sources (Title).
FF6. Hauser discloses that when a customer makes a purchase
authorization for a return there is automatically provided a prepaid shipping
label with a return authorization bar code which may be used to ship it to a
National Return Center (Col. 7:66-Col. 8:10).
FF7. Hauser does not disclose any matching of the return authorization bar
code provided by the consumer with a return validation code.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
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the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) In KSR, the Supreme Court emphasized “the need
for caution in granting a patent based on the combination of elements found
in the prior art,” id. at 415-16.

ANALYSIS
Claims 1-28
The Appellant argues the rejection of claim 1 is improper because the
references fail to disclose or suggest “validating the return by matching the
return validation code with a pre-authorization code provided by the
consumer to the local returns site” (Br. 21, Reply Br. 2).
The Examiner has determined that the Junger and Hauser combination
does disclose “validating the return by matching the return validation code
with a pre-authorization code.” The Examiner has found that Junger
discloses a matching of an RA number and a return authorization number in
Col. 2, lines 41-56. The Examiner has also found that Hauser discloses a
pre-authorization obtained by the consumer prior to the approval of the
return (Ans. 16).
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We agree with the Appellant. Junger discloses that a product return
center location obtains identifying information for a product to be returned
(FF2). The return approval location may provide a list of approved and
unapproved returns along with a return authorization number for a batch or
approved items (FF2). Junger in Fig. 4H does not show the Batch # and RA
number to be matching (FF3). Junger simply does not disclose “validating
the return by matching the return validation code with a pre-authorization
code provided by the consumer to the local returns site” (FF4) since no such
matching is disclosed. Hauser does disclose the use of a conventional
prepaid shipping label with a return authorization bar code which may be
used for returns (FF6). However Hauser does not disclose any matching of
the return authorization bar code provided by the consumer with a return
validation code (FF7) as required in claim 1. For these reasons, the
rejection of claim 1 and dependent claims 2-10 is not sustained. Claim 11
contains limitations similar to claim 1 and the rejection of this claim as well
as dependent claims 12-20 is not sustained for these same reasons.
The Appellant has presented essentially the same arguments for claim
21 as for claim 1. Junger discloses that the return approval computer system
determines whether the returned product satisfies applicable return criteria
(FF2) and this serves as “return guideline” as required in claim 21.
Regardless, Claim 21 does not include a limitation requiring “validating the
return by matching the return validation code with a pre-authorization code
provided by the consumer to the local returns site” which is the sole
argument presented by the Appellant. For these reasons the rejection of
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claim 21 is sustained. The Appellant has not argued for claims 22-28
separately and the rejection of these claims is accordingly sustained as well.

Claims 29-39
The Appellant argues the rejection of claim 29 is improper because
the references fail to disclose or suggest “send[ing] a second communication
to the retailer identifying the item of merchandise to be returned by the
consumer to provide the retailer with advance notification of the return” (Br.
27-28, Reply Br. 5-6).
The Examiner has determined that Hauser discloses the above
referenced limitation in teaching that a merchant can pre-authorize
customers to return merchandise with which they are dissatisfied without the
need to obtain further authorization (Ans. 18-19).
We agree with the Appellant. The cited claim limitation requires
sending a second communication to the retailer to provide the retailer with
advance notification of the return. The cited passage in Hauser cited by the
Examiner (Col. 7:67-Col. 8:5) only discloses that the retailer automatically
provides a customer with a prepaid shipping label with a return authorization
bar code for return of the item (FF6). There is no disclosure in Hauser of a
second notification to the retailer to provide them advance notification of the
return as the claim requires. For these reasons, the rejection of claim 29 is
not sustained. The rejection of dependent claims 30-39 is not sustained for
these same reasons.

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CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-20 and 29-39 under 35 U.S.C. § 103(a) as unpatentable
over Junger in view of Hauser.
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 21-28 under 35 U.S.C. § 103(a) as unpatentable
over Junger in view of Hauser.

DECISON
The Examiner’s rejection of claims 1-20 and 29-39 is reversed. The
Examiner’s rejection of claims 21-28 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

MP

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