Ex Parte SiegelDownload PDFBoard of Patent Appeals and InterferencesApr 28, 201109796337 (B.P.A.I. Apr. 28, 2011) Copy Citation 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 Appeal 2009-010955 Application 09/796,337 2 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). Appeal 2009-010955 Application 09/796,337 3 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) Appeal 2009-010955 Application 09/796,337 4 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]. Appeal 2009-010955 Application 09/796,337 5 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. Appeal 2009-010955 Application 09/796,337 6 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. Appeal 2009-010955 Application 09/796,337 7 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 Appeal 2009-010955 Application 09/796,337 8 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). Appeal 2009-010955 Application 09/796,337 9 REVERSED erc Copy with citationCopy as parenthetical citation