Ex Parte Stenz et al

Board of Patent Appeals and Interferences

Jun 13, 2012

10873000 (B.P.A.I. Jun. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/873,000 06/21/2004 Brian G. Stenz 2222.5210001 5260
26111 7590 06/13/2012
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
06/13/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte BRIAN G. STENZ and MARKUS LAMBETH 8
___________ 9
10
Appeal 2011-001072 11
Application 10/873,000 12
Technology Center 3600 13
___________ 14
15
16
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17
JOSEPH A. FISCHETTI, Administrative Patent Judges. 18
19
FETTING, Administrative Patent Judge. 20
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22
DECISION ON APPEAL23
Appeal 2011-001072
Application 10/873,000

2

STATEMENT OF THE CASE1 1
Brian G. Stenz and Markus Lambeth (Appellants) seek review under 2
35 U.S.C. § 134 (2002) of a final rejection of claims 1-42, the only claims 3
pending in the application on appeal. We have jurisdiction over the appeal 4
pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a way of product reclamation in the field of 6
disposition of products and goods using networks. (Spec. ¶ 0003). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A method for managing return-processing of a product of a 11
manufacturer, the method comprising: 12
[1] receiving 13
at a return-processing server, 14
via a network, 15
information from a database 16
regarding the manufacturer's return procedures for 17
a product; 18
[2] receiving 19
at the return-processing server, 20
via the network, 21
information from a client system 22
of a product to be submitted for return-processing; 23
[3] creating 24
at the return-processing server 25
an electronic debit invoice 26
in accordance with 27
the information regarding the manufacturer's 28
return procedures for the product 29
and 30

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed March 22, 2010) and Reply Brief (“Reply Br.,” filed August 17,
2010), and the Examiner’s Answer (“Ans.,” mailed June 23, 2010).
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Application 10/873,000

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the information received from the client 1
system regarding the product to be 2
submitted for return-processing; 3
and 4
[4] storing the electronic debit invoice 5
in a debit invoice database 6
accessible to the manufacturer 7
for processing return credit. 8
The Examiner relies upon the following prior art: 9
Schwab US 2002/0019777 A1 Feb. 14, 2002
Claims 1-42 stand rejected under the judicially created doctrine of 10
non-obvious double patenting as claiming substantially the same subject 11
matter as another U.S. Patent. 12
Claims 1-4, 9-17, 22-30, and 35-42 stand rejected under 35 U.S.C. § 13
102(e) as anticipated by Schwab. 14
Claims 5-8, 18-21, and 31-34 stand rejected under 35 U.S.C. § 103(a) 15
as unpatentable over Schwab and Official Notice. 16
ISSUES 17
The issue of non-obvious type double patenting turns primarily on 18
whether the Examiner provided any supporting evidence and analysis to 19
present a prima facie case. The issues of anticipation and obviousness turn 20
primarily on whether the claims are sufficiently broad to encompass the 21
return procedures set forth in Schwab. 22
FACTS PERTINENT TO THE ISSUES 23
The following enumerated Findings of Fact (FF) are believed to be 24
supported by a preponderance of the evidence. 25
26
27
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Facts Related to Claim Construction 1
01. A debit invoice is a document showing the reason and the 2
authorization for creating a debit. Spec. ¶ 0030. 3
Facts Related to the Prior Art - Schwab 4
02. Schwab is directed to returning merchandise to a remote seller 5
through a local third party. Schwab ¶ 0002. 6
03. Schwab answers an increasing need to efficiently and effectively 7
handle returns of goods that consumers wish to return. Schwab ¶ 8
0004. 9
04. Schwab allows customers of e-commerce and catalog merchants 10
to return purchased items to a third party that has a network of 11
convenient physical locations without the necessity to package the 12
items for shipment or to arrange said shipment and, furthermore, 13
to immediately receive credit against their original financial 14
instrument, or, alternately, arrange immediate shipment of an 15
exchange product. Schwab ¶ 0005. 16
05. Schwab establishes a third party local return site for merchandise 17
purchased through the internet for the seller or its third party 18
authorized agent to inspect and authorize the return and credit to 19
the buyer for the return at the time of the return at the third party's 20
location. Schwab ¶ 0006. 21
06. The third party at the remote location deals directly with the buyer 22
while it establishes authenticity of a returned goods order against a 23
database of executed transactions maintained by the merchant, as 24
well as guidelines established by the merchant of its return 25
policies and a description of the item being returned and physical 26
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conditions and other parameters that establish the conditions for 1
an acceptable return. Once authentication is established, the third 2
party issues a credit to the buyer. The third party then takes 3
possession or title to the returned goods and returns them to the 4
merchant. Schwab ¶ 0009. 5
07. Authentication is completed by a physical instrument 6
(ReturnCERT), that the customer must present along with the 7
returned item. This instrument is provided by the merchant, and 8
establishes authenticity of the original purchase. Once presented, 9
the third party establishes an electronic link to the merchant's 10
domain so that the third party has means to read, interpret, and 11
convert this instrument to electronic media that can then be 12
electronically transmitted to the merchant. The merchant, upon 13
receipt of this transmission from the third party agent, can 14
establish authenticity of the return instrument and cross-reference 15
that instrument to a purchase history maintained by the merchant. 16
Once established, this authenticates that the person returning the 17
goods has an instrument in their possession that traces back to a 18
purchase from the merchant. Schwab ¶ 0011. 19
08. The third party reviews parameters defined by the merchant that 20
establishes the conditions for an acceptable return. This can 21
include physical descriptions of the goods, quantity counts, 22
packaging, general return policies, re-stocking fees, date of 23
original purchase, warranties, acceptable physical condition, 24
return window (dates), and any other data that enables the third 25
party to act for the merchant in establishing whether or not the 26
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merchandise to be returned meets the conditions established for 1
the return and may be accepted as a return. The parameterization 2
process is accomplished by the third party reviewing material 3
supplied by the merchant seller electronically via the electronic 4
link established in the authentication stage. Schwab ¶ 0012. 5
09. The third party enters the results of the parameterization process, 6
such as condition of the returned goods, quantity, packaging, and 7
transmits this data to the merchant. Schwab ¶ 0013. 8
10. The merchant issues electronic authorization to the third party to 9
accept the returned goods and issue credit to the customer. 10
Schwab ¶ 0014. 11
11. The third party physically takes possession of the returned goods 12
and issues credit to the customer. Schwab ¶ 0015. 13
ANALYSIS 14
Claims 1-42 rejected under the judicially created doctrine of non-obvious 15
double patenting as claiming substantially the same subject matter as 16
another U.S. Patent. 17
We are persuaded by the Appellants’ argument that the Examiner 18
failed to present a prima facie case by showing how the claims of the instant 19
application are obvious variants of the claims in Stenz (US 6,754,637 B1, 20
iss. Jun. 22, 2004). The Examiner made this conclusion with no analysis or 21
evidence of obviousness in support. 22
Claims 1-4, 9-17, 22-30, and 35-42 rejected under 35 U.S.C. § 102(e) as 23
anticipated by Schwab. 24
Claims 5-8, 18-21, and 31-34 rejected under 35 U.S.C. § 103(a) as 25
unpatentable over Schwab and Official Notice. 26
Appeal 2011-001072
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We are presented with a method of processing a purchase return. 1
Claim 1 fundamentally recites the same 4 steps that have been relied on for 2
time immemorial in processing returns, and if the references to a return-3
processing server were replaced by a receiving and returns department at a 4
conventional catalog operation, would read on the admitted prior art. After 5
all, such a department would have [1] copies of the relevant policies and 6
procedures, [2] receive a request for return, [3] create both the return 7
authorization and debit memo, and [4] store copies of the documents for 8
audit purposes. The novelty purports to be in automating the operation by 9
way of such a server. 10
Initially, we find that the Examiner presented a prima facie case as to 11
anticipation and responded persuasively to Appellants’ arguments. We 12
adopt the Examiner’s findings and analysis from Answer pages 4-12 as to 13
these rejections and reach similar legal conclusions. The issues remaining 14
thus reduce to those presented in the Reply Brief. 15
We are not persuaded by the Appellants’ argument that Schwab fails 16
to describe creating at the return-processing server an electronic debit 17
invoice and storing the electronic debit invoice in a debit invoice database. 18
Reply Br. 2-4. Appellants define a debit invoice as a document showing the 19
reason and the authorization for creating a debit. FF 01. The issue is 20
therefore whether Schwab describes creating a document that in any manner 21
shows the reason and authorization for creating the debit at a return 22
processing server and storing that document in a database that is in any 23
manner accessible to the manufacturer. 24
As Schwab processes returns, whether such a document is created and 25
stored is not at issue. Standard return techniques dictate such documents and 26
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standard accounting techniques dictate such storage. The issue is again 1
where creation occurs and accessibility of the stored document. The claims 2
do not recite where the return processing server is located, only that 3
wherever it is located, that is where the document meeting the definition of 4
an electronic debit invoice is created, and information regarding procedures 5
and return transactions are received. The claims do not preclude creating 6
similar documents or receiving similar information elsewhere as well. 7
Schwab describes providing a database over a web connection, 8
implying a server that serves up the data to the browser clients. Schwab’s 9
database is located at the seller, who may also be the manufacturer, and is 10
accessible by a third part intermediary for returns. This database contains 11
information regarding return procedures (limitation [1] and the returns 12
(limitation [2]). FF 08. As the information is present, it must have been 13
received. As the information is on a server, it must have been received over 14
a network. The third party transmits return information to the seller, who 15
issues the credit. FF 10. The debit is created simultaneously by virtue of 16
standard double entry bookkeeping. This transaction necessarily shows the 17
reason and authorization for audit purposes. As this is done with the 18
database containing the return information, creation of at least one copy of 19
such a document evidencing this transaction necessarily occurs at that same 20
server. As the transaction is stored by the seller/manufacturer, it is 21
accessible by the manufacturer. 22
CONCLUSIONS OF LAW 23
The rejection of claims 1-42 under the judicially created doctrine of 24
non-obvious double patenting as claiming substantially the same subject 25
matter as another U.S. Patent is improper. 26
Appeal 2011-001072
Application 10/873,000

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The rejection of claims 1-4, 9-17, 22-30, and 35-42 under 35 U.S.C. § 1
102(e) as anticipated by Schwab is proper. 2
The rejection of claims 5-8, 18-21, and 31-34 under 35 U.S.C. § 3
103(a) as unpatentable over Schwab and Official Notice is proper. 4
DECISION 5
The rejection of claims 1-42 is affirmed. 6
No time period for taking any subsequent action in connection with 7
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 8
§ 1.136(a)(1)(iv) (2011). 9
10
AFFIRMED 11
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hh 16