Ex Parte Stashluk et al

Patent Trial and Appeal Board

Oct 9, 2014

10775368 (P.T.A.B. Oct. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EDWARD J. STASHLUK JR., MICHAEL J. STEVENS,
JENNIFER A. MILCH, PHILLIP J. SIDARI, and TERRY COMBS
____________________

Appeal 2012-0031441
Application 10/775,3682
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–5, 7–22, 24–28, and 30–38. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
June 20, 2011) and Reply Brief (“Reply Br.,” filed November 10, 2011), and
the Examiner’s Answer (“Ans.,” mailed September 15, 2011).
2 The real party in interest, identified by Appellants, is Newgistics, Inc.
App. Br. 2.
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CLAIMED INVENTION
Appellants’ claimed invention “relates to merchandise return methods
and systems, and more particularly to a method of managing returns of
goods purchased from retailers and other merchants” (Spec. 1, ll. 8–11).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A computer-implemented method of providing
merchandise return labels for enabling a customer to ship a
package containing one or more items previously acquired from
a merchant during a unique transaction, comprising the steps of:
accessing item data representing at least one detail about
the item;
accessing transaction data representing at least one detail
including an identification of the transaction associated with the
item;
accessing customer data representing at least one detail
about a customer associated with the transaction including a
shipping origin;
accessing package data representing at least one detail
about the package in which the item is expected to be shipped;
using a computer operated by the merchant from whom
the item was acquired or a specialized returns center associated
with the merchant to process returns to correlate the item data,
transaction data, customer data, and package data, with a set of
stored business rules to determine coding to be printed on a
return shipping label; wherein the set of stored business rules
specify how packages are to be shipped from the customer to a
returns center and represent guidelines for determining choice
of carrier, shipping destination, shipping rate, and package
disposition for shipment from the customer to the returns
center;
in response to correlating the item data, transaction data,
customer data, and package data with the set of stored business
rules specifying how packages are to be shipped, using the
computer operated by the merchant from whom the item was
acquired or the specialized returns center associated with the
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merchant to generate a first machine readable code for the
return shipping label for shipment from the customer to the
returns center, wherein the data represented by the first machine
readable code comprises a plurality of data points, at least a first
of the plurality of data points included in the first machine
readable code representing at least the shipping origin of the
package and at least a second data point in the first machine
readable code representing the identification of the transaction;
in response to correlating the item data, transaction data,
customer data, and package data with the set of stored business
rules specifying how packages are to be shipped from the
customer to the returns center, using the computer operated by
the merchant from whom the item was acquired or the
specialized returns center associated with the merchant to
format the return shipping label, such that the return shipping
label contains the first machine readable code and complies
with shipping label specifications of the choice of carrier, the
first machine readable code not associated with the carrier and
in addition to a second carrier-specified machine readable code
also present on the shipping label; and
in response to receiving the package containing the item
for return, scanning the first machine readable code by the
merchant or by the specialized returns center to correlate the
first machine readable code with one or more business rules for
performing returns processing for the merchant associated with
the transaction.

REJECTIONS
Claims 1–5, 7–22, 24–28, and 30–35 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tsunenari (US 2002/0013744 A1,
pub. Jan. 31, 2002), Savino (US 6,015,167, iss. Jan. 18, 2000), and Official
Notice.
Claims 36–38 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Tsunenari, Savino, Official Notice, and Williams
(US 2002/0032612 A1, pub. Mar. 14, 2002).
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ANALYSIS
Independent claim 1 and dependent claims 2–5, 8–11, and 33–35
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because the Examiner’s proposed combination of
Tsunenari, Savino, and Official Notice does not disclose or suggest a return
shipping label that “complies with shipping label specifications of the choice
of carrier” and contains both a “first machine readable code not associated
with the carrier” and “a second carrier-specified machine readable code also
present on the shipping label,” as recited in claim 1 (App. Br. 21–24;
see also Reply Br. 2–6).
The Examiner cites Tsunenari as disclosing a shipping label that
complies with the label specifications of the carrier and includes a machine
readable code, i.e., the claimed “second readable code” (Ans. 7 and 16,
citing Tsunenari ¶¶ 61–63 and 81–82 and Figs. 10I and 10J). However, the
Examiner acknowledges that Tsunenari does not explicitly disclose that the
shipping label includes another machine readable code, i.e., the claimed first
machine readable code, and cites Savino to cure the deficiency of Tsunenari
(id. at 8 and 17–18).
Savino discloses a system and method for using a barcode for
coordinating shipping and receiving information between a customer and
supplier, and describes that the barcode is provided on a shipping label and
linked with purchase and shipping information associated with a purchase
order (see Savino, col. 2, ll. 7–19). By scanning the barcode, the supplier (or
customer) may retrieve (from a database) relevant purchase and shipping
information associated with the customer’s purchase order, e.g., the
customer name and address, packing slip number, purchase order number,
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box quantity number, part quantity number, customer part number,
manufacturer part numbers, shipping date, etc. (see Savino, col. 3, ll. 34–54,
col. 4, ll. 24–35, and Figs. 4 and 5).
Appellants acknowledge that Tsunenari discloses a typical carrier
shipping label (App. Br. 21; see also Reply Br. 2). But Appellants argue
that although the Savino label “is termed a ‘shipping label’ it is not a carrier
label and has none of the usual features of a shipping label” (id. at 22).
Appellants maintain that “Savino does not at all relate to a shipping label
that is included on the outside of a package” and that although “Savino uses
the term ‘shipping label,’ the background portion of Savino makes clear that
the ‘shipping label’ is merely a ‘packing slip’ or something similar to a
packing slip” (id. at 21).
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 1 under § 103(a). Instead, we agree with, and adopt
the Examiner’s response to Appellants’ argument as set forth at pages 16–20
of the Answer.
Appellants assert that because the Savino “shipping label” is a
“packing slip” rather than a carrier label, the proposed combination of
Tsunenari and Savino merely results in “a package having a first shipping
label with a carrier-specific bar code (such as that disclosed in Tsunenari)
and a second packing slip type label with an additional machine readable
code (such as that disclosed in Savino).” (App. Br. 22). However, the
Supreme Court has made clear that when considering obviousness “the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
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and creative steps that a person of ordinary skill in the art would employ.”
See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
We agree with the Examiner that modifying the shipping label of
Tsunenari to include a machine-readable code linked to shipping and
purchase transaction information, as disclosed in Savino, is merely a
combination of known elements according to their established functions, and
yields a predictable result. Therefore, it would have been obvious at the
time of Appellants’ invention to a person of ordinary skill in the art.
See KSR, 550 U.S. at 416 (“The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results”).
We also are not persuaded of error on the part of the Examiner by
Appellants’ argument that Savino teaches away from a shipping label that
includes more than one barcode (App. Br. 23–24; see also Reply Br. 6–8).
Savino discloses a system of “employing a single bar code shipping
label for coordinating shipping and receiving information between [a]
customer and supplier” (see, e.g., Savino, col. 2, ll. 7–10, emphasis added).
Savino describes the drawbacks associated with including several barcodes
on a single packing slip, with each barcode associated with aspects of the
purchase order, i.e., the same type of information (see, e.g., Savino, col. 1,
ll. 34–50). But we find nothing in Savino, nor do Appellants point to
anything in Savino, that criticizes, discredits, or otherwise discourages
providing a second barcode on the shipping label that includes different
information, e.g., information used by a carrier for delivery. See In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (A teaching away occurs when a
reference discourages one skilled in the art from following the claimed path,
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or when the reference would lead one skilled in the art in a direction
divergent from the path that was taken by the applicant); see also In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (The prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of the alternatives when the disclosure does not criticize, discredit,
or otherwise discourage the solution claimed).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C § 103(a). We also sustain the rejection of dependent
claims 2–5, 8–11, and 33–35, which were not argued separately.
Independent claims 14 and 28 and dependent claims 15, 16, 19–22, 25–27,
and 29–32
Appellants assert that the rejection of independent claims 14 and 28,
and claims 15, 16, 19–22, 25–27, and 29–32, which depend therefrom,
should be withdrawn for reasons analogous to those set forth with respect to
claim 1 (App. Br. 24). We are not persuaded for the reasons set forth above
that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
Therefore, we sustain the Examiner’s rejection of claims 14–16, 19–22, and
27–32 for the same reasons.
Dependent claims 7 and 24
Claim 7 depends from claim 1, and recites that “the customer data
represents customer preferences, at least one customer preference
comprising a customer-selected choice of carrier,” and that the method
further comprises “using the computer operated by the merchant from whom
the item was acquired or the specialized returns center associated with the
merchant to format the return shipping label as required by the customer-
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selected choice of carrier.” Claim 24 depends from claim 14, and includes
substantially similar language.
The Examiner cites Figures 10I, 10J, and 11B and paragraphs 62, 63,
81, 82, and 92 of Tsunenari as disclosing the recited claim elements (Ans. 10
and 22–24). However, we agree with Appellants that there is nothing in the
cited portions of Tsunenari that discloses or suggests “using the
computer . . . to format the return shipping label as required by the customer-
selected choice of carrier,” as recited in claim 7, and similarly recited in
clam 24 (App. Br. 24–25 and Reply Br. 8–9). Instead Tsunenari merely
describes selecting the most economical carrier given the nature of the
product being returned and the pick-up and delivery points (see Tsunenari,
¶ 61).
Therefore, we do not sustain the Examiner’s rejection of claims 7 and
24 under 35 U.S.C. § 103(a).
Dependent claims 12, 13, 17, and 18
Claim 12 depends from claim 1, and recites that the method further
comprises:
accessing carrier center location data; and
using the computer associated with the merchant or the
specialized return center to format the return shipping label to
include a carrier center location closest to the merchant or the
specialized returns center as the shipping destination such that
the package is delivered to carrier center location and picked up
by the merchant or the specialized returns center.

Claim 13 depends from claim 12 and recites that “the carrier center location
closest to the merchant or the specialized returns center is a bulk mail
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center.” Claims 17 and 18 depend from claim 14, and include language
substantially similar to the language of claims 12 and 13, respectively.
The Examiner maintains that the recited features of claims 12 and 13
are disclosed by Tsunenari, citing Figures 10I, 10J, 12, 14, and 15, and
paragraphs 60–63, 75, 93, and 121 of the reference (Ans. 11 and 26–27).
We have carefully reviewed the cited portions of Tsunenari, on which the
Examiner relies, and we agree with Appellants that there is nothing there
that discloses or suggests “format[ting] the return shipping label to include a
carrier center location closest to the merchant or the specialized returns
center as the shipping destination such that the package is delivered to
carrier center location and picked up by the merchant or the specialized
returns center,” as recited in claim 12, and similarly recited in claim 17
(App. Br. 25–26 and Reply Br. 9–10). We also find nothing in the cited
portions of Tsunenari that discloses or suggests that “the carrier center
location closest to the merchant or the specialized returns center is a bulk
mail center,” as called for in claims 13 and 18. Tsunenari describes that the
product return destination is determined based on the nature of the product,
and further refined “in accordance with the location of the consumer”
(Tsunenari ¶ 60).
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 12, 13, 17, and 18 under 35 U.S.C. § 103(a).
Dependent claims 36–38
Appellants do not present any arguments for the separate patentability
of claims 36–38, which depend from claims 1, 14, and 28, respectively.
Therefore, we summarily sustain the Examiner’s rejection of these claims
under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejections of claims 1–5, 8–11, 14–16, 19–22, 25–28,
and 30–38 under 35 U.S.C. § 103(a) are affirmed.
The Examiner’s rejection of claims 7, 12, 13, 17, 18, and 24 under
35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED-IN-PART

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