Ex Parte Siegel

Board of Patent Appeals and Interferences

Apr 28, 2011

09796337 (B.P.A.I. Apr. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILIP S. SIEGEL
___________

Appeal 2009-010955
Application 09/796,337
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Philip S. Siegel (Appellant) seeks our review under 35 U.S.C. § 134
(2010) of the final rejection of claims 1-15 and 23-30. We have jurisdiction
under 35 U.S.C. § 6(b) (2010).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
This invention is “a method and system for processing the local return
of remotely purchased products.” Specification 1:9-11.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for processing local return of products
purchased from one or more of a plurality of
remote retailers, the method comprising:
in response to a consumer's decision to
return a product and at a time after the initial
purchase of the product from one of a plurality of
remote retailers, gathering transaction information
regarding a remotely purchased product in a
transaction database, the transaction information
gathered from a consumer using an Internet web
site and a client system at a location remote from
any return center;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Dec. 1, 2008) and Reply Brief (“Reply Br.,” filed Apr. 29, 2009),
and the Examiner’s Answer (“Answer,” mailed Mar. 4, 2009).

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storing a set of predetermined product return
guidelines in a centralized return guideline
database, the set of predetermined product return
guidelines stored in the centralized return guideline
database prior to the receipt of the transaction
information gathered from the consumer and
comprising:
return information associated with the
remotely purchased product and an identified
remote retailer; and
product disposition rules identifying a
predetermined, retailer-selected method of disposal
for the remotely purchased product;
determining eligibility of the product for
return based on the set of predetermined product
return guidelines;
collecting the product, if eligible for return,
at a centralized location; and
disposing of the collected product based on
the set of predetermined product return guidelines.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Drattell

Roman
US 2001/0032141 A1

US 2002/0010634 A1

Oct. 18, 2001
(filed Dec. 21,
2000)
Jan. 24, 2002
(filed Dec. 8,
2000)

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The following rejections are before us for review:
1. Claims 1, 4-10, 12, 14, 15, 26, and 28-30 are rejected under 35
U.S.C. §103(a) as being unpatentable over Drattell.
2. Claims 2-3, 11, 13, 23-25, and 27 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Drattell and Roman.

ISSUE
The issue is whether the Examiner established a prima facie showing
of obviousness in rejecting claims 1, 4-10, 12, 14, 15, 26, and 28-30 under
35 U.S.C. §103(a) as being unpatentable over Drattell. Specifically, the
issue is whether Drattell teaches that “in response to a consumer's decision
to return a product and at a time after the initial purchase of the product from
one of a plurality of remote retailers, gathering transaction information
regarding a remotely purchased product in a transaction database, the
transaction information gathered from a consumer using an Internet web site
and a client system at a location remote from any return center.” The
rejection of claims 2-3, 11, 13, 23-25, and 27 under 35 U.S.C. §103(a) as
being unpatentable over Drattell and Roman also turn on this issue.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Drattell teaches that the return centers computer system 30 has a
user interface 35. Drattell [0020].
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2. Drattell’s paragraph [0016] describes that a user is informed that
merchandise can be returned to a return center.
3. Drattell’s paragraph [0022] states:
[0022] In a preferred embodiment of the invention,
a computer system (e.g., as shown in FIG. 3) is
provided to facilitate the return processes
performed by TRC. The computer system 30 may
be centrally located in the central TRC (if used),
distributed among the many TRC locations,
provided as stand-alone systems, or any
combination of these arrangements. In a preferred
embodiment, the computer system provides
tracking information (e.g., by retailer,
manufacturer, product-line, model, serial number,
customer, purchase transaction, etc.), preferably,
using tracking module 304 to maintain and provide
the information. The system provides TRC with a
high-level of intelligence to manage efficiently the
returns for each retailer thus allowing TRC to
ensure compliance with retailer's return policy,
prevent fraud, etc. Compliance module 306 is
preferably provided to maintain return policy,
fraud, and other information pertinent to the
retailers (or other business entities) utilizing TRC
for processing of returns. Compliance module 306
may be used to detect returns that fail to comply
with policies or are suspected of fraud and the like.
In a preferred embodiment, the computer system
may also control the credits/debits among the
customers, TRC franchisees, central TRC,
retailers, manufacturers, and fulfillment centers
accorded each based on individual return
transactions utilizing, for example, accounting
module 308.

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ANALYSIS
The rejection of claims 1, 4-10, 12, 14, 15, 26, and 28-30 under 35 U.S.C.
§103(a) as being unpatentable over Drattell
Independent claim 1 recites:
in response to a consumer's decision to return a
product and at a time after the initial purchase of
the product from one of a plurality of remote
retailers, gathering transaction information
regarding a remotely purchased product in a
transaction database, the transaction information
gathered from a consumer using an Internet web
site and a client system at a location remote from
any return center.

The Appellant and the Examiner dispute whether paragraphs [0016]
(see FF 2) and [0022] (see FF 3) of Drattell, cited by the Examiner, teaches
this limitation. See Answer 7, App. Br. 23-25, and Reply Br. 2-3. In the
rejection the Examiner states: “Para 0022, Drattell discloses where the
computer system provides customer and purchase transaction information to
the return centers – such information could only be originally derived from a
customer entering information through a web-site/client system to complete
the initial transaction.” Answer 4. See also Answer 7.
However, we find that the Examiner’s statement mischaracterizes
Drattell. Nowhere does Drattell teach that the computer system shown in
Figure 3, which is located at a return center, receives or gathers any
information that was entered by a customer in the initial transaction. Drattell
is silent as to how the provided tracking information described in paragraph
[0022] is obtained by the computer system. See FF 3.
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In as much as the Examiner may be asserting that Drattell inherently
teaches that the information in Drattell is derived from a customer entering
information through a web-site/client system to complete the initial
transaction, the Examiner has not established that this is necessarily present
in Drattell. “To establish inherency, the extrinsic evidence must make clear
that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill. Inherency, however, may not be established by probabilities
or possibilities.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(citations omitted) (internal quotation marks omitted). We disagree with the
Examiner’s assertion that this information could only come from the
customer at the initial transaction. For example, we note that Drattell
teaches that the return centers computer system 30 has a user interface 35
(FF 1), which could be used by an employee of the return center to enter the
information when the return in made. We find that the Examiner has not
established that the Drattell expressly or inherently teaches the limitation at
issue.
Further, we note that the Examiner provides no other explanation or
reasoning to find that the limitation at issue would have been obvious to one
of ordinary skill in the art. Therefore, we find that the Examiner has failed to
establish a prima facie showing of obviousness and we will not sustain the
rejection of claim 1 under 35 U.S.C. §103(a) as being unpatentable over
Drattell.
Independent claims 9 and 15 recite a method that requires a step
similar to the step at issue above. Independent claim 26 recites an apparatus
that has a server that is operable to perform the step similar to the step at
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issue above. The Examiner relied upon the same rationale to reject claims 9,
15, and 26 as use to reject claim 1. See Answer 3. For the same reasons as
above, we shall not sustain the rejections of claims 9, 15, and 26.
Accordingly, we find that the rejection of claims 1, 9, 15, and 26 and
claims, 4-8, 10, 12, 14, and 28-30, dependent thereon, under 35 U.S.C.
§103(a) as being unpatentable over Drattell is overcome.

The rejection of claims 2-3, 11, 13, 23-25, and 27 under 35 U.S.C. §103(a)
as being unpatentable over Drattell and Roman
These rejections are directed to claims dependent on claims 1, 9, 15
and 26, whose rejection we have reversed above. For the same reasons, we
will not sustain the rejections of claims 2-3, 11, 13, 23-25, and 27 over the
cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious."). We note that the Examiner did rely upon
Roman to cure the deficiency of Drattell discussed above. See Answer 5-6.
Accordingly, we find that the rejection of claims 2-3, 11, 13, 23-25, and 27
under 35 U.S.C. §103(a) as being unpatentable over Drattell and Roman is
overcome.

DECISION
The decision of the Examiner to reject claims 1-15 and 23-30 is
reversed.
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) (2010).
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REVERSED
erc