Ex Parte RothmanDownload PDFPatent Trial and Appeal BoardMay 24, 201611963470 (P.T.A.B. May. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111963,470 12/21/2007 20350 7590 05/26/2016 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 Simon Rothman 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. 91430-733984(000500US) 1048 EXAMINER HARRINGTON, MICHAEL P ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 05/26/2016 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): ipefiling@kilpatricktownsend.com j lhice@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SIMON ROTHMAN Appeal2014-004113 Application 11/963,470 1 Technology Center 3600 Before, JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and BRADLEY B. BAY AT, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's Final rejection of claims 1-20 and 22. We have jurisdiction under 35 U.S.C. § 6(b ). SUMMARY OF DECISION We REVERSE. 1 Appellant identify Glyde Corp. as the real party in interest. App. Br. 3. Appeal 2014-004113 Application 11/963,470 Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A computerized method for distributing a product using a server computer comprising a memory and a processor, the method comprising: storing seller information for a plurality of sellers in a database, the seller information including a seller address and product information associated with a product to be sold over the internet, wherein the product information includes product size and product weight; storing buyer address information; receiving a product information request from a buyer, the product information request including information identifying at least one product the buyer wishes to purchase; determining by the processor of the server computer, a preferred seller from the plurality of sellers based on the product information request, the buyer address and the address of each of the plurality of sellers; determining, by the processor of the server computer, an inner mailer based upon one or more of the product size and the product weight of the at least one product; determining, automatically by the processor of the server computer, an optimum inner mailer mail class from a plurality of mail classes and an optimum inner mailer mail class postage to use for sending the inner mailer from the preferred seller to the buyer based upon the buyer address, the preferred seller address, and one or more of the product size and the product weight of the at least one product to be purchased, wherein the optimum inner mailer mail class is determined to be the least expensive service or the fastest service of the plurality of mail classes; and determining, automatically by the processor of the server computer, an optimum outer mailer mail class from a 2 Appeal 2014-004113 Application 11/963,470 plurality of mail classes and an optimum outer mailer mail class postage to use for sending an outer mailer containing the inner mailer to the preferred seller, wherein the optimum outer mailer mail class is determined to be the least expensive service or the fastest service of the plurality of mail classes. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Barns-Slavin us 5,117,364 May 26, 1992 Kohler US 2002/0032668 Al Mar. 14,2002 Fluhr US 2003/0061147 Al Mar. 27, 2003 Rotman US 2003/0182222 Al Sept. 25, 2003 Karbowski US 6,772,130 Bl Aug.3,2004 Sembower US 2008/0114807 Al May 15, 2008 Broussard US 7,580,863 Bl Aug.25,2009 The following rejections are before us for review. 1. Claims 1, 5, 6, 11, 13-16 and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kohler, Brossard, Rotman and further in view of Barns-Slavin. Final Act. 3. 2. Claims 2--4 and 12-14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kohler, Broussard, Rotman, Bams- Slavin and further in view of Sembower. Final Act. 11. 3. Claims 7-9, and 17-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kohler, Broussard, Rotman, Bams- Slavin and further in view of Karbowski. Final Act. 13. 3 Appeal 2014-004113 Application 11/963,470 4. Claims 10 and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kohler, Broussard, Rotman, Bams- Slavin, and further in view of Fluhr. Final Act. 20. ANALYSIS 35 U.S.C. § 103 REJECTION Each of independent claims 1 and 11, recites in one form or another: a) determining by the processor of the server computer, a preferred seller from the plurality of sellers based on the product information request, the buyer address and the address of each of the plurality of sellers; b) determining, automatically by the processor of the server computer, an optimum inner mailer mail class from a plurality of mail classes and an optimum inner mailer mail class postage to use for sending the inner mailer from the preferred seller to the buyer based upon the buyer address, the preferred seller address, and one or more of the product size and the product weight of the at least one product to be purchased, wherein the optimum inner mailer mail class is determined to be the least expensive service or the fastest service of the plurality of mail classes; and c) determining, automatically by the processor of the server computer, an optimum outer mailer mail class from a plurality of mail classes and an optimum outer mailer mail class postage to use for sending an outer mailer containing the inner mailer to the preferred seller, wherein the optimum outer mailer mail class is determined to be the least expensive service or the fastest service of the plurality of mail classes. App. Br. 27, Claims App'x (labels added for ease of reference). The Examiner found that limitation a) above is disclosed by Broussard at column 13 lines 17-37. (Final Act. 5). The Examiner found that Kohler and Barns-Slavin together disclose limitations b) and c) above. (Final Act. 4, 5, 7). 4 Appeal 2014-004113 Application 11/963,470 Appellant argues that the Examiner opines that it would have been obvious to combine the teachings of Barns-Slavin with those of Kohler to teach the claim limitation "wherein the optimum inner mailer mail class is determined to be the least expensive service or the fastest service of the plurality of mail classes.["] (Final Office Action, pages 7-8, para 14). However, Appellant finds it difficult if not impossible to identify how Kohler could be so modified. That is, even if the carrier management system (Fig. 1) of Barns-Slavin was added to the server system 110 of Kohler, the carrier management system would still only determine the least expensive carrier for shipping a product from the server system 110 to the seller. It would not determine, nor be capable of determining, the least expensive carrier for shipping a product from the seller to a buyer. Appeal Br. 14--15. We agree with the Appellant. From limitation a) above, it is apparent that the claims require that the preferred seller is selected from the plurality of sellers based on the product information request, the buyer address, and the address of each of the plurality of sellers. Thus; selection of the preferred seller, and its address, is decided by the system, and not by the users. The Examiner found that Barns-Slavin discloses determining the optimum mailer mail class finding: "(See at least column 1 lines 46-65, column 5 line 60 through column 6 line 15 and column 6 lines 30-51 which describe automatically selecting the cheapest mail class, from a plurality of mail classes, for a delivery of a package)." Final Act. 7. However, our review of Barns-Slavin at the sections cited by the Examiner reveals that although the disclosed AUTO-RATE SHOPPING feature does result in the automatic selection of the least expensive carrier, Barns-Slavin is silent as to how this is accomplished. Thus, the claimed 5 Appeal 2014-004113 Application 11/963,470 factors on which optimization is based, namely, the buyer address, the preferred seller address, and one or more of the product size and the product weight of the at least one product to be purchased, are not explicitly disclosed by Barns-Slavin. Second, we agree with the Appellant that one having ordinary skill in the art would not know to combine Barns-Slavin with Kolher' s shipping pricing system for both inner and outer mailings, particularly at the stage where the least expensive carrier for shipping a product from the seller to a buyer is determined. This is because Barns-Slavin requires the parcel containing the sold item to be physically placed on the weighing platform 13 to determine mailing or shipping charges for a parcel. Barns-Slavin, col. 3, 11. 15-17, 25-27. Instead, the claim requires that postage for shipping a product from the seller to a buyer is predicted, 2 and not caused to be physically weighed because the issuer of the postage is not the seller who possesses the item to be shipped, but rather the server which only selects the seller and does not have the item which is to be shipped. Accordingly, we will not sustain the rejection of independent claims 1 and 11. Claims 2-10, 12-20, and 22 depend from either one of claims 1 and 11; because we cannot sustain the rejection of claims 1 and 11, the rejection of the dependent claims likewise cannot be sustained. 2 The Examiner relies on Broussard to predict the inner mailer postage. Final Act. 5. 6 Appeal 2014-004113 Application 11/963,470 DECISION We conclude the Examiner did err in rejecting claims 1-20 and 22 under 35 U.S.C. § 103. REVERSED 7 Copy with citationCopy as parenthetical citation