Ex Parte Siegel

Board of Patent Appeals and Interferences

May 15, 2012

10751216 (B.P.A.I. May. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PHILIP S. SIEGEL
____________________

Appeal 2010-002655
Application 10/751,216
Technology Center 3600
____________________

Before: HUBERT C. LORIN, JOSEPH A. FISCHETTI and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002655
Application 10/751,216

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-5, 7-8, 10-16 and 29-32. Claims 17-28 are
withdrawn from consideration. Claims 6 and 9 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims methods for performing returns of remotely
purchased items. (Specification 1:12-13).

Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method of using the Internet to provide return
labels to customers for facilitating returns of merchandise,
comprising the steps of:
receiving, from a customer, an electronic request via a web
access tool associated with the customer, the electronic
request requesting to initiate return processing of
merchandise having been purchased by the customer in a
prior purchase transaction;
in response to receiving the electronic request to initiate
return processing from the customer, accessing a database to
obtain transaction information associated with the customer,
the transaction information identifying at least one item of
merchandise having been purchased by the customer in a
prior purchase transaction;
displaying, to the customer via the web access tool, the
transaction information comprising a list of the at least one
item of merchandise having been purchased by the customer
in the prior purchase transaction;
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receiving an electronic selection, from the customer, via the
web access tool, the electronic selection identifying a
particular item of merchandise included in the list of at least
one item of merchandise having been purchased by the
customer in the prior purchase transaction, the electronic
selection comprising a click on the particular item of
merchandise
in the list displayed to the customer and identifying the
particular item of merchandise for returns processing;
in response to receiving the electronic selection comprising
the click on the particular item of merchandise in the list of
merchandise, initiating a returns process for the particular
item of merchandise selected by the consumer from the list
of merchandise purchased by the consumer in a prior
purchase transaction, the returns process initiated by a
returns server; and
in response to receiving the electronic selection from the
customer of the particular item of merchandise having been
purchased by the customer in the prior purchase transaction,
generating data for printing a return label for the particular
item of merchandise selected by the customer.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Cybul US 6,246,997 B1 Jun. 12, 2001
Roman US 2002/0010634 A1 Jan. 24, 2002
Arganbright US 6,980,962 B1 Dec. 27, 2005

The following rejections are before us for review.
The Examiner rejected claims 1-5, 7-8, 10-16 and 29-32 as
provisionally rejected on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claims 1-9 and 35-46 of
copending Application No. 09/817,353.
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The Examiner rejected claims 1-2, 7-8, 13, 15 and 30-32 under 35
U.S.C. 103 (a) as being unpatentable over Arganbright in view of Cybul.
The Examiner rejected claims 3-4 and 10-12, 14, 16 and 29 under 35
U.S.C. 103(a) as being unpatentable over Arganbright in view of Cybul,
Roman and official notice.

ISSUE

The issue of obviousness turns on whether Cybul, Arganbright or
Arganbright either, individually or in combination with each other, discloses
the claimed feature of : receiving an electronic selection, from the customer,
via the web access tool, the electronic selection identifying a particular item
of merchandise included in the list of at least one item of merchandise
having been purchased by the customer in the prior purchase transaction,
the electronic selection comprising a click on the particular item of
merchandise in the list displayed to the customer and identifying the
particular item of merchandise for returns processing;
in response to receiving the electronic selection comprising the click on the
particular item of merchandise in the list of merchandise, initiating a returns
process for the particular item of merchandise selected by the consumer
from the list of merchandise purchased by the consumer in a prior purchase
transaction, the returns process initiated by a returns server.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
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1. This appeal relates to Appeal 2010-001041 (Ser. No.
10/750,935) decided May 1, 2012, and Appeal 2010-003503
(Ser. no. 09/817,353) which is presently before this Board.
2. Cybul discloses a list builder tool that makes available to
shoppers information on past on-line purchases as well as
purchases by the customer at a retail establishment (col. 4 ll.
25-35).
3. Cybul does not disclose whether its list has selectable links
which are clickable for selection or merely text information.
4. Arganbright discloses a product is selected for return when “a
user fills in a quantity 92 on product list 90. Upon selecting the
quantities for purchase for a plurality of products, the user can
then initiate the Add to Basket link 94, by double clicking a
mouse ...” (col. 48 ll. 33-38).
5. Roman discloses selecting a product for return by the consumer
answering a series of questions about the product to be
returned, such as receipt number, consumer’s name, and
description of the product to be returned (para. [0015]).
6. The Examiner found that:
…Cybul teaches accessing or gathering previous
shopping history or transaction history data
associated with a consumer from a computerized
database (see at least Abstract, and col. 4 lines 40-
50); displaying the previous transaction or
shopping history via a web browser interface
where the previous shopping history is associated
with the consumer (see at least col.3 line 65-col. 4
lines 15); in response to displaying the transaction
history associated with the consumer, receiving an
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electronic selection of a particular of at least an
item by the consumer using the browser interface,
the electronic selection comprising a click on the
particular item of merchandise and identifying the
particular item of merchandise (see at least col. 4
lines 25-35, consumer selecting previous shopping
history). It would have been obvious to one of
ordinary skill in the art at the time the invention
was made to incorporate the teachings of Cybul
into the disclosure of Arganbright in order to
provide the consumer with the option to return
items via internet or online.
(Answer 6).

ANALYSIS
We affirm the provisional rejection of the claims made under
nonstatutory obviousness-type double patenting, and reverse the rejections
made under 35 U.S.C. § 103(a).
The Nonstatutory Obviousness-type Double Patenting Rejection.
Because Appellants do not respond to the rejection of claims 1-5, 7-8,
10-16 and 29-32 provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-9
and 35-46 of copending Application No. 09/817,353 (Answer 4), we
summarily affirm the Examiner’s rejection of these claims.
Rejection of independent claims 1 and 32 under 35 U.S.C. § 103(a).
Each of independent claims 1 and 32 require:

receiving an electronic selection, from the
customer, via the web access tool, the electronic
selection identifying a particular item of
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merchandise included in the list of at least one
item of merchandise having been purchased by the
customer in the prior purchase transaction, the
electronic selection comprising a click on the
particular item of merchandise in the list displayed
to the customer and identifying the particular item
of merchandise for returns processing;
and
in response to receiving the electronic selection
comprising the click on the particular item of
merchandise in the list of merchandise, initiating a
returns process for the particular item of
merchandise selected by the consumer from the list
of merchandise purchased by the consumer in a
prior purchase transaction, the returns process
initiated by a returns server.

The Examiner found that Cybul discloses the click on return feature at
least col. 4 lines 25-35. (FF 6).
However, we find that while Cybul discloses a “list builder tool”
(FF 2), it merely collects past shopping history for a consumer and “imports
that data to the list builder’s on-line historical purchase list database” (FF 3).
Cybul is silent as to receiving an electronic selection as a click such that:
receiving an electronic selection, from the customer, via the web access tool,
the electronic selection identifying a particular item of merchandise
included in the list of at least one item of merchandise having been
purchased by the customer in the prior purchase transaction, the electronic
selection comprising a click on the particular item of merchandise in the list
displayed to the customer and identifying the particular item of merchandise
for returns processing;
in response to receiving the electronic selection comprising the click on the
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particular item of merchandise in the list of merchandise, initiating a returns
process for the particular item of merchandise selected by the consumer
from the list of merchandise purchased by the consumer in a prior purchase
transaction, the returns process initiated by a returns server.
This is a core issue and the Examiner must point to some concrete
evidence in the record in support of his conclusions. In re Zurko, 258 F.3d
1379, 1385 (Fed. Cir. 2001).
We find that Arganbright offers no relief for the deficiency in Cybul
because in Arganbright, product identification is done by the user “entering
a plurality of information on the return form”, filling in a quantity number
next to an item, and then subsequently selecting an “Add to Basket” link (FF
4), thus requiring plural input steps for the selection, but not by initiating a
return process by the server using a click on the selected item.
We further find Roman discloses selecting a product, also not by
selecting it from a list, but instead by answering a series of questions about
information such as “receipt number, consumer’s name, phone number” and
so on (FF 5).
We thus find that none of the references relied on by the Examiner
discloses either separately or in combination the involved limitation, and
therefore reverse the rejection of independent claims 1 and 32 under 35
U.S.C. § 103(a). Since claims 2-5, 7, 8, 10-16, 29-31 depend from claim 1,
and since we cannot sustain the rejection of claim 1, the rejection of these
dependent claims likewise cannot be sustained under 35 U.S.C. § 103(a) .

Appeal 2010-002655
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CONCLUSIONS OF LAW
We conclude the Examiner did not err in provisionally rejecting
claims 1-5, 7-8, 10-16 and 29-32 under a nonstatutory obviousness-type
double patenting rejection.
We conclude the Examiner erred in rejecting claims 1-5, 7-8, 10-16
and 29-32 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1-5, 7-8, 10-16 and 29-
32 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)(1)(iv) (2007).
AFFIRMED.

MP