Ex Parte Siegel

Board of Patent Appeals and Interferences

Apr 27, 2012

10750935 (B.P.A.I. Apr. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PHILIP S. SIEGEL
____________________

Appeal 2010-001041
Application 10/750,935
Technology Center 3600
____________________

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

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001041
Application 10/750,935

2
STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2, 4-7, 9, 11-15, 17, and 19-27.
Claims 3, 8, 10, 16, and 18 are canceled.
We AFFIRM-IN-PART.

THE CLAIMED INVENTION
Appellant claims a method and system for performing returns of
remotely purchased items (Specification 1:10-13). Claims 1 and 22 are
illustrative of the claimed subject matter:
1. A method of using a computer system for on-line
processing of merchandise returns for a plurality of merchants,
comprising the steps of:
storing a set of return rules in a database for each of the
plurality of merchants;
receiving, via the Internet, a return request representing a
request by a customer to initiate a return of at least one item of
merchandise;
in response to receiving the return request from the
customer, gathering transaction history data associated with the
customer from a computerized database;
displaying the transaction history to the customer for
selection of a particular item of merchandise within a listing of
merchandise included in the transaction history;
receiving, from a customer, an electronic selection by a
click on the particular item of merchandise in the displayed
listing of merchandise, the electronic selection identifying the
particular item of merchandise for returns processing;
in response to receiving the click on the particular item of
merchandise in the listing of merchandise, using the set of
return rules associated with the identified merchant and the
transaction information to validate the return;
upon validating the return, electronically delivering data
about the customer to the merchant associated with the return;
Appeal 2010-001041
Application 10/750,935

3
processing the return in accordance with the set of return
rules associated with the merchant.

22. A method of using a computer system for on-line
processing of merchandise returns, comprising the steps of:
in a first transaction associated with an online purchase
of at least one item of merchandise, obtaining customer-specific
return information from a customer associated with the at least
one item of merchandise;
transmitting a client identifier to a client system
associated with the customer;
in a second transaction, receiving, via the Internet, a
return request representing a request by the customer to initiate
a return of at least one item of merchandise, the return request
comprising the client identifier that uniquely identifies the
client system from which the return request is received;
using the client identifier to identify the customer-
specific return information;
processing the return in accordance with one or more
return rules associated with the merchandise; and
electronically notifying a merchant of the return.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cybul US 6,246,997 Jun.12, 2001
Roman US 2002/0010634 A1 Jan. 24, 2002
Arganbright US 6,980,962 B1 Dec. 27, 2005

REJECTION
The following rejection is before us for review: the Examiner rejected
claims 1, 2, 4-7, 9, 11-15, 17, and 19-27 under 35 U.S.C. § 103(a) over
Arganbright, Roman, and Cybul.
Appeal 2010-001041
Application 10/750,935

4
ISSUES
The issue with respect to claims 1, 2, 4-7, 9, 11-15, 17, and 19-21
turns on whether the references disclose electronic selection by a click on a
particular item of merchandise displayed in a listing of products.
The issue with respect to claims 22-27 turns on whether Arganbright’s
use of cookies stored on a user’s computer meets the requirements of
transmitting a client identifier, receiving the client identifier in a second
transaction, and using the client identifier to identify customer-specific
return information.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. 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).
2. Cybul does not disclose the nature of the generated shopping list as to
whether it is a list of selectable links for a browser or merely text
information.
3. 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).
4. 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]).
Appeal 2010-001041
Application 10/750,935

5
5. Arganbright discloses transmitting a client identifier to a client system
associated with the customer through the use of cookies, sent to the
client system during a previous shopping session (col. 46 ll. 40-45).
6. Arganbright discloses checking the cookie to authenticate the user (col.
47 ll. 25-29).
7. The Specification describes that the “client identifier 222 is preferably
stored in a file as a ‘cookie.’” (Spec. 15:6-7).

ANALYSIS
Claims 1, 2, 4-7, 9, 11-15, 17, and 19-21
Each of independent claims 1, 15, 17, and 19-21 require: an electronic
selection by a click on the particular item of merchandise in the displayed
listing of merchandise on the list, the electronic selection identifying the
particular item of merchandise for returns processing; in response to
receiving the click on the particular item of merchandise in the listing of
merchandise, using the set of return rules associated with the identified
merchant and the transaction information to validate the return.
We find that while Cybul discloses a “list builder tool” that collects
past shopping history for a consumer and “imports that data to the list
builder’s on-line historical purchase list database” (FF 1), Cybul is silent on
a click on the particular item of merchandise in the displayed listing of
merchandise on the list are selectable, the electronic selection identifying the
particular item of merchandise for returns processing; in response to
receiving the click on the particular item of merchandise in the listing of
merchandise, using the set of return rules associated with the identified
merchant and the transaction information to validate the return. Therefore,
Appeal 2010-001041
Application 10/750,935

6
we find that Cybul does not explicitly disclose or make obvious the
requirement to select an item from a list, only that a list of an unknown
arrangement is created.
We similarly find that in Arganbright, product identification is done
by filling in a quantity number next to an item, and then subsequently
selecting an “Add to Basket” link (FF 3), thus requiring two steps for the
selection. 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 4).
We thus find that the references of record do not disclose the involved
limitation, and therefore reverse the rejection of independent claims 1, 15,
17, and 19-21 under 35 U.S.C. § 103(a). Since claims 2- 9, 11-14 depend
from claim 1, and since we cannot sustain the rejection of claim 1, the
rejection of these dependent claims likewise cannot be sustained.

Claims 22-27
Independent claims 22, 24, and 26 cover essentially identical subject
matter, with the primary differences being claim 22 is directed to a method,
claim 24 is directed to a system, and claim 26 is directed to software on a
medium.
Appellant argues Arganbright does not disclose the limitation
transmitting a client identifier to a client system associated with the
customer, because Arganbright discloses a login process that refers to a
customer, not a customer system (Appeal Br. 23).
We are not persuaded by Appellants' argument, because we find
Arganbright discloses the use of cookies (FF 5) which stores on a user’s
Appeal 2010-001041
Application 10/750,935

7
system information transmitted from the merchant’s server, thus meeting the
claim requirement of a a client identifier. This is consistent with the method
described by the Specification, using cookies (FF 7).
Appellant next argues Arganbright does not disclose the limitation as
to receiving a return request comprising the client identifier that uniquely
identifies the client system, because Arganbright uses a login process that
identifies the customer, not the customer’s system (Appeal Br. 24).
We are not persuaded by Appellants' argument, because Arganbright
discloses the use of cookie that must be sent to the merchant’s server to
authenticate the user (FF 6), thus meeting the claim requirement.
Appellant argues Arganbright does not disclose using the client
identifier to identify the customer-specific return information, because
Arganbright discloses customer identification through a login process, not a
client identifier associated with a client system (Appeal Br. 25-26).
We are not persuaded by Appellants' argument, because Arganbright
discloses the use of cookie that must be sent to the merchant’s server to
authenticate the user (FF 5, 7), thus meeting the claim requirement.
Appellant finally argues the combination of Arganbright, Roman, and
Cybul is improper because “the Examiner has not shown ‘something in the
prior art as a whole to suggest the desirability’ of combining Arganbright,
Roman, and Cybul, but rather seems to rely on a conjectured assertion that
‘the references can be combined’ without regard to the ‘desirability of the
combination.” (Appeal Br. 35-36).
To the extent Appellants seek an explicit suggestion or motivation in
the reference itself, this is no longer the law in view of the Supreme Court’s
recent holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Appeal 2010-001041
Application 10/750,935

8
Moreover, we are not persuaded by Appellants' argument, because we
find the Examiner set forth articulated reasoning that one of ordinary skill
would be motivated to combine Roman with Arganbright “in order to
prevent the invalid return of merchandise” (Ans. 4), and would be motivated
to combine Cybul with Arganbright/Roman “in order to provide the
consumer with the option to return items via internet or online.” (Ans. 5).
We therefore find no error on the part of the Examiner as to the rationale for
the combination. The Federal Circuit has stated that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR at 418.
We therefore affirm the rejection of independent claims 22, 24, and
26, and their dependent claims 23, 25, and 27 which were not separately
argued.

CONCLUSIONS OF LAW
The Examiner erred err in rejecting claims 1, 2, 4-7, 9, 11-15, 17, and
19-21 under 35 U.S.C. § 103(a).
The Examiner did not err in rejecting claims 22-27 under 35 U.S.C.
§ 103(a).

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2, 4-7, 9,
11-15, 17, and 19-21 is REVERSED and the Examiner’s rejection of claims
22-27 is AFFIRMED.
Appeal 2010-001041
Application 10/750,935

9

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).

AFFIRMED-IN-PART

MP