Chargerback, Inc.

Patent Trials and Appeals Board

Sep 29, 2020

2020002952 (P.T.A.B. Sep. 29, 2020)

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.
15/181,187 06/13/2016 Brian Colodny 2501-P003X1 9858
68803 7590 09/29/2020
TI Law Group, PC
1055 E Brokaw Road
Suite 30-355
San Jose, CA 95131-2116
EXAMINER
BARNES JR, CARL E
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
09/29/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
TILGDocket@yahoo.com
aspence@tipatents.com
dthomas@tipatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL McLAUGHLIN and BRIAN COLODNY

Appeal 2020-002952
Application 15/181,187
Technology Center 2100
____________

Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1 and 2. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Chargerback, Inc. Appeal Br. 1.
Appeal 2020-002952
Application 15/181,187

2
ILLUSTRATIVE CLAIM
1. A computer-implemented method for reporting lost
items, comprising:
receiving, via one or more computing devices, a user
selection of a lost item reporting link presented on a webpage,
the webpage with the lost item reporting link being presented
on a display associated with another computing device and
being associated with an entity;
initiating, via the one or more computing devices,
presentment on the display, in response to the user selection of
the lost item reporting link, a graphical user interface to solicit
lost item recovery information;
determining whether a transaction identifier is received at
the one or more computing devices;
receiving, via the one or more computing devices, the
lost item recovery information via the graphical user interface,
the lost item recovery information concerning a lost item and
including at least (i) a designation of the entity, (ii) description
of lost item, (iii) customer contact information, and (iv)
shipping information for the lost item if it is determined that the
transaction identifier is not received; or
receiving, via the one or more computing devices, the
lost item recovery information via the graphical user interface,
the lost item recovery information concerning a lost item and
including at least (i) a designation of the entity, and (ii)
description of lost item if it is determined that the transaction
identifier is received;
preparing a lost and found report based on the lost item
recovery information;
initiating electronic transmission of the lost and found
report to the entity based on contact information for the entity;
and
initiating electronic transmission of a notification
concerning the lost item to the customer based on the customer
contact information.
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Application 15/181,187

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Frankel et al.
(“Frankel” herein)
US 6,449,611 B1 Sept. 10, 2002
Anglum US 2003/0065595 A1 Apr. 3, 2003
Takahashi et al.
(“Takahashi” herein)
US 2004/0002998 A1 Jan. 1, 2004

REJECTION
Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Takahashi, Frankel, and Anglum.
RELATED CASES
At the time the Appeal Brief was filed in the present case, Notices of
Appeal had been filed in at least the related U.S. Applications 13/224,244
(Appeal 2020-000386), 13/224,247 (Appeal 2019-000468), and 13/631,456
(Appeal 2019-002313). The Appellant fails to cite any of these related
Appeals, as required by 37 C.F.R. § 41.37(c)(1)(ii). See Appeal Br. 1.
We remind the Appellant and counsel to review prior and pending
proceedings before the Board, as well as any other qualifying matters, so as
to ensure that all related cases are identified. Representations to the Office
are subject to requirements of, e.g., 37 C.F.R. §§ 1.56, 11.18, and 11.303.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
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Application 15/181,187

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ANALYSIS
The Appellant argues that claim 1 stands rejected in error, because the
cited prior art does not teach or suggest the recited “initiating electronic
transmission of the lost and found report to the entity based on contact
information for the entity.” Appeal Br. 9–10.
Evaluating the Appellant’s position turns on the construction of the
recited “entity” and, in particular, any distinction between the “entity” and
the recited “customer.” In this regard, claim 1 recites “transmission of the
lost and found report” to each of the “entity” and the “customer”:
initiating electronic transmission of the lost and found
report to the entity based on contact information for the entity;
and
initiating electronic transmission of a notification
concerning the lost item to the customer based on the customer
contact information.
(Emphasis added). These limitations, at least, indicate that the “entity” and
the “customer” are not identical, because such a construction would appear
to render one of the above limitations superfluous. We interpret claim
language “with an eye toward giving effect to all terms in the claim.” Bicon,
Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). Claim
interpretations wherein “physical structures and characteristics specifically
described in a claim are merely superfluous would render the scope of the
patent ambiguous, leaving examiners and the public to guess about which
claim language the drafter deems necessary to [the] claimed invention and
which language is merely superfluous, nonlimiting elaboration.” Id.
The Specification reinforces the understanding of distinctions between
the claimed “entity” and the claimed “customer.” The Specification uses the
term “customer” to refer to a system user that has lost an item, which might
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Application 15/181,187

5
later be found. Spec. ¶ 3 (“[W]hen on vacation, a user may forget an item(s)
in a hotel room. In another example, a customer may forget an item in a
rental car, sporting event, or any other establishment or event.”) In contrast,
the Specification uses the term “entity” to refer to an establishment having
one or more physical locations, where lost items could be located. Id. ¶¶ 5
(“The centralized lost and found system will allow users to recover their lost
items in a cost effective and efficient manner from at least one establishment
or location of the large entity.”), 24 (“The large entities 110a, 110b may be,
for example, a large hotel chain having a plurality of physical hotels.”),
Fig. 1.
In both the Final Office Action (pages 5, 9) and the Answer (page 20)
the Examiner maintains that paragraphs 61 and 63 of Takahashi teach the
limitation at issue. Takahashi discloses that “the found-item information
management server 100 determines whether the found-item information and
the lost-item information match each other or not, and then sends a decision
to the terminal 203.” Takahashi ¶ 61. See also id. ¶ 63 (“If the found-item
information registered by the finder and the lost-item information registered
by the owner are compared and determined as matching each other . . ., then
a matching notification is sent from the found-item information management
server 100 to the terminal 203.”)
The cited portions of Takahashi refer to a transmission to
“terminal 203,” which is “in an owner’s home 23” (Takahashi ¶ 57). The
Appellant argues that none of the “owner,” the “owner’s home,” and the
“terminal 203” of Takahashi would properly correspond to the claimed
“entity.” Appeal Br. 9–10.
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Application 15/181,187

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We agree with the Appellant. Takahashi discloses: “The owner who
has lost an item” may perform “actions on the terminal 203,” in order to
initiate the process of reporting a lost item. Takahashi ¶ 57. Thus,
Takahashi’s “terminal 203” (in the “owner’s home 23”) might correspond to
the “customer” of claim 1. Indeed, the Examiner maps claim 1’s “customer”
to Takahashi, in precisely this manner. Final 9 (citing Takahashi ¶¶ 63,
141). Yet, if so mapped, Takahashi’s “terminal 203” (in the “owner’s
home 23”) would not also correspond to the claimed “entity.”
This analysis applies equally to independent claim 2, which includes a
substantially similar limitation. See Appeal Br. 14–16.
Therefore, we do not sustain the rejection of independent claims 1
and 2 under 35 U.S.C. § 103(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2 103(a) Takahashi,
Frankel, Anglum
1, 2

REVERSED