Ex Parte Giacalone et al

Patent Trial and Appeal Board

Mar 5, 2013

11875354 (P.T.A.B. Mar. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TOM GIACALONE, JOHN LONG, and TIM GUASTAFERRO
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Appeal 2011-006944
Application 11/875,354
Technology Center 3600
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Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006944
Application 11/875,354

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-22, and 24. We have jurisdiction under 35 U.S.C.
§ 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates generally to e-commerce and, more
particularly, relates to a system and method for making third party pickup
available to retail customers (Spec. 1, ll. 5-6).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A computer-readable storage media having
stored thereon computer-executable instructions
for making third party pickup available to a
customer having an identity, the instructions
performing steps comprising:
in response to a request received from the
customer to authorize a third party to pickup an
item ordered from a retailer: retrieving information
associated with the customer from a public record;
using the information associated with the
customer retrieved from the public record to form
a plurality of questions;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed November 8, 2010) and Reply Brief (“Reply Br.,” filed
February 11, 2011) and the Examiner’s Answer (“Ans.,” mailed
January 21, 2011).
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generating a score for responses received
from the customer to each of the formed plurality
of questions when posed to the customer; and
authorizing the third party to pickup the
ordered item in lieu of the customer at a pickup
point associated with the retailer only when the
generated score for responses received from the
customer to each of the formed plurality of
questions posed to the customer meets a defined
threshold.

THE REJECTIONS
The following rejections are before us for review:
Claims 1, 3-20, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Buettgenbach (US 2002/0032613 A1, pub. Mar. 14,
2002) in view of Honarvar (US 7,231,657 B2, iss. Jun. 12, 2007).
Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buettgenbach in view of Honarvar and further in view of
Official Notice.

ANALYSIS
Independent claims 1 and 24
Appellants argue claims 1 and 24 together (App. Br. 5-11). We select
claim 1 as representative. Claim 24 stands or falls with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
We are not persuaded by Appellants’ arguments that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a). Appellants argue at
length that neither Buettgenbach nor Honarvar discloses or suggests
authenticating a customer “in response to a request received from the
customer to authorize a third party to pickup an item ordered from a
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retailer,” as recited in claim 1 (App. Br. 7-11 and Reply Br. 2-4). Yet, as the
Examiner observes, “a request received from the customer to authorize a
third party to pickup an item ordered from a retailer” is not set forth as a
positive limitation in claim 1. Nor does claim 1 positively recite that a third
party picks up an item ordered from a retailer (Ans. 12-13). Instead, under
the broadest reasonable interpretation of claim 1, the phrase “in response to a
request received from the customer to authorize a third party to pickup an
item ordered from a retailer” amounts to nothing more than a statement of
intended use – it merely describes how, i.e., for what purpose, the
authentication method is intended to be used, and does not in any way affect
how the claimed method is performed. As such, Appellants’ arguments
directed to the lack of any teaching in the cited references of authenticating
an identity of a customer in response to a customer requesting authorization
for a third party to pick up an ordered item are not commensurate with the
scope of the claim.
The only positively recited limitations in claim 1 are the specific steps
that comprise the authentication method, i.e., “retrieving information
associated with the customer from a public record; using the information . . .
to form a plurality of questions; generating a score for responses received
from the customer to each of the formed plurality of questions . . .; and
authorizing [a particular action] when the generated score for responses
received from the customer to each of the formed plurality of questions
posed to the customer meets a defined threshold.” And it is undisputed that
each of those steps is disclosed by Honarvar.2

2 Honarvar discloses a fraud detection and identity verification system and
method that allows a vendor to create/configure a user authentication
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Appellants acknowledge that paragraphs [0101] and [0102] of
Buettgenbach disclose authenticating a customer in response to a [customer]
request [for a third party, i.e., the Will-Call Center] to prepare an item for
shipment, i.e., for returning items purchased in e-commerce to vendors”
(App. Br. 9), and that teaching, as the Examiner observes, in combination
with the authentication method of Honarvar fully satisfies the limitations of
claim 1 (Ans. 12-13).
Moreover, even if the phrase “in response to a request received from
the customer to authorize a third party to pickup an item ordered from a
retailer” were given full effect, we agree with the Examiner that it would
have been obvious to one of ordinary skill in the art, in order to provide
another level of fraud protection to the customer, to modify Buettgenbach to
provide authentication for additional processes, e.g., designating a pickup
party, wherein the authentication process includes using information
associated with a customer to form a plurality of questions, generating a
score for responses received from the customer to each of the plurality of
questions, and authorizing the pickup only when the generated score meets a
defined threshold, as taught by Honarvar (Ans. 5 6).

process for users desiring to access/receive services from the vendor (see,
e.g., Honarvar, col. 1, ll. 20-27). Honarvar describes that information
regarding the user is retrieved from publicly available data sources, e.g.,
credit history, governmental databases, and is used to generate
authentication questions which are posed to the user (see, e.g., Honarvar,
col. 7, ll. 4-13; col. 13, ll. 20-36; and col. 32, l. 13 – col. 33, l. 19). The
user’s responses to these questions are used to compute a confidence score,
which, in turn, is used to determine whether the business transaction should
be allowed to proceed, e.g., the business transaction is allowed if a selected
confidence score threshold is met (see, e.g., Honarvar, col. 33, ll. 30-35 and
col. 39, ll. 45-52).
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The Supreme Court has stated that in 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
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l Co. v. Teleflex Inc., 550 U. S. 398, 418 (2007). The Court also has
emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” and has affirmed that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 415-
416.
Modifying Buettgenbach, as proposed by the Examiner (Ans. 5), to
include an process for authenticating a user, as disclosed in Honarvar, in
response to a customer request to authorize a third party pickup is, in our
view, nothing more than a combination of prior art elements according to
their established functions, and yields a predictable result. Therefore, it
would have been obvious at the time of Appellants’ invention. See KSR, 550
U.S. at 416. The Examiner’s determination that one of ordinary skill in the
art would have modified Buettgenbach in this way, in light of Honarvar, in
order to provide additional fraud protection to the customer, also is
adequately supported by rational underpinning.
For the foregoing reasons, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claim 24, which stands or falls with claim 1.
Claims 3-22
Each of claims 3-22 ultimately depends from claim 1. Appellants did
not present any arguments in support of the separate patentability of
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claims 3-22. Therefore, we also will sustain the Examiner’s rejection of
these claims under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 1, 3-22, and 24 under 35 U.S.C.
§ 103(a) is affirmed.

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

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