Ex Parte Lundquist

Patent Trial and Appeal Board

Jul 30, 2014

11989449 (P.T.A.B. Jul. 30, 2014)

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.
11/989,449 01/25/2008 Steve Lundquist LUNQ05149PTUS 5667
64458 7590 07/31/2014
Hemingway & Hansen, LLP
1700 Pacific Avenue
Suite 4800
Dallas, TX 75201
EXAMINER
OYEBISI, OJO O
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
07/31/2014 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
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte STEVE LUNDQUIST
___________

Appeal 2012-0074141
Application 11/989,4492
Technology Center 3600
___________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
KEVIN W. CHERRY, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE3
Steve Lundquist (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 1–55, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Appellant’s claimed invention relates to a method for securely
inspecting merchandise purchased online prior to the transfer of funds to the
seller and completion of the online purchase (Spec. 4, ll. 7–9).

1 The record includes a transcript of the Oral Hearing held July 22, 2014.
2 Appellant reports that the real party in interest is the named inventor, Steve
Lundquist (App. Br. 2).
3 Our decision references the Appellant’s Appeal Brief (“App. Br.,” filed
November 7, 2011) and Reply Brief (“Reply Br.,” filed April 2, 2012), and
the Examiner’s Answer (“Ans.,” mailed January 30, 2012).
Appeal 2012-007414
Application 11/989,449

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Claim 1, which is reproduced below (bracketed matter added), is
representative of the subject matter on appeal.
1. A method for securely purchasing merchandise on a
remote computer purchasing system, comprising the steps of:
[(a)] routing a payment for an item purchased on a
website to a payment and inspection service;
[(b)] receiving the purchased item at an inspection
location after an item has been purchased using the remote
computer purchasing system;
[(c)] verifying funds availability then providing the
purchased item to the buyer for inspection at the payment and
inspection service inspection location for a specified inspection
time period;
[(d)] monitoring the buyer during inspection of the item
using a camera surveillance system mounted in an alcove
consisting of multiple cameras providing for overlapping view
coverage of an inspection counter used for the inspection;
[(e)] storing the video from the multiple cameras in a
memory storage on a computer system accessible by the service
and the seller; and
[(f)] allowing the buyer to accept the purchased item
wherein the payment funds are transferred to the seller, or
allowing the buyer to reject the purchased time wherein the
payment funds are transferred back to the buyer.
(App. Br. 18, Claims App’x).
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Rejection
Claims 1–55 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dutta (US 2002/0073049 A1, pub. June 13, 2002) and
Battistini (US 6,087,927, iss. July 11, 2000).
SUMMARY OF DECISION
We AFFIRM.
ANALYSIS
Appellant argues claims 1–55 as a group (App. Br. 6). We select
claim 1 as the representative claim, and the remaining claims stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellant argues that the Examiner erred in finding the claims
obvious because (1) neither Dutta nor Battistini, either alone or in
combination, discloses claim limitations (c), (d), and (e) of claim 1 (App.
Br. 7–13; Reply Br. 2–5); (2) it would not have been obvious to alter the
references in the way suggested by the Examiner (id. at 13–15); (3) the
combination is the product of hindsight (id. at 15); and (4) the references
teach away from the claimed invention (id.). In contrast, the Examiner
stands by the rejection (Ans. 10–12). We consider each of these arguments
below.
First, we are not persuaded that the Examiner erred in finding that the
combination of Dutta and Battistini discloses claim limitations (c), (d), and
(e) of claim 1 (see Ans. 5–6, 10–12). Appellant raises several arguments
against these findings. For the reasons below, we agree with the Examiner
that the combination of Dutta and Battistini discloses the disputed claim
limitations of claim 1.
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Appellant argues that neither Dutta nor Battistini, alone or in
combination, discloses the “buyer” doing the inspection at the inspection
location, as recited in claim limitations (c) and (d) of claim 1 (App. Br. 7–
13). As an initial matter, we find that the broadest reasonable interpretation
“buyer,” in claim limitations (c) and (d), is not just limited to the person who
purchased the item, but also includes the agents of that person. Indeed, the
Specification contemplates that the inspection can also include examination
by “an expert to verify authenticity of the purchased item” (See Spec. 14, ll.
1–2). Moreover, there is nothing in the claim language that precludes this
broad, but reasonable, interpretation. We agree with the Examiner and find
that Dutta discloses, in the Abstract (and in Figs. 2a and 2b), providing the
item to the inspection service at an inspection location (the point of the
shipment) where the inspection service also performs an inspection on
behalf of the buyer. These elements remain separate and distinct. Thus, we
are not persuaded that the Examiner improperly merged elements or erred in
finding that the inspection performed by the buyer at the inspection location
as recited in the claim limitation (c) and (d) can include an inspection
performed on behalf of the buyer by the third-party inspection service at the
point of shipment, as disclosed in Dutta.
Appellant further argues that neither Dutta nor Battistini, either alone
or in combination, shows the inspection by the buyer at the inspection
location being monitored as recited in claim limitation (d) of claim 1 (App.
Br. 7–10, 12–13; Reply Br. 2–5). The Examiner relies on the combination
of Dutta and Battistini to disclose a monitored inspection of the buyer at the
inspection location (Ans. 10–14). We are not persuaded that the Examiner
erred in finding that the combination of Dutta and Battistini discloses a
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monitored inspection of the buyer. Appellant’s arguments rely on attacking
the references individually, not on the combination. In re Keller, 642 F.2d
413, 426 (CCPA 1981) (“one cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references”). As discussed above, Dutta discloses an
inspection by the buyer at the inspection location as recited in claim 1. Also,
Battistini discloses a monitoring system that can monitor employees and
customers for security purposes (Battistini, col. 9, ll. 60–67). Thus, we are
not persuaded that the Examiner erred in finding that the combination of
Dutta and Battistini discloses a monitored inspection of the buyer (or agents
of the buyer) at the inspection location as recited in claim limitation (d) of
claim 1.
Appellant further argues that the combination of Battistini fails to
disclose claim element (e) as recited in claim 1. We do not agree. As
discussed above, Dutta discloses the inspection of the goods by the buyer at
the inspection location and Battistini discloses a system for monitoring.
Battistini further discloses that the video from the monitoring can be stored
on a central computer (Battistini, col. 7, ll. 1–10). The Examiner found that
because the camera is connected to a central computer, this claim limitation
would have been obvious (Ans. 10–11). Appellant does not dispute this
finding. Accordingly, we find that the Appellant has not shown that the
Examiner erred in finding that claim limitation (e) of claim 1 is disclosed by
the combination of Dutta and Battistini.
Accordingly, Appellant has not shown that the Examiner erred in
finding that the combination of Dutta and Battistini discloses claims
limitations (c), (d), and (e) of claim 1.
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Second, we are also not persuaded by Appellant’s arguments that the
invention would not have been obvious because the cited references would
have to be altered significantly before the claimed invention could be
practiced and such modifications would alter the “very substance of the
methods taught therein” (App. Br. 14). Specifically, Appellant argues that
the Examiner merges the buyer and the inspection service and that this is
inappropriate because it would read out significant limitations from the
claims (id.). Appellant contends that “[t]he whole reason for operating
under Dutta would be lost with the Examiner’s modification, and the
benefits of the claimed invention would be lost in such a merged
interpretation” (id. at 15). These arguments fail for several reasons.
Initially, as we explained above, the claims are broad enough to encompass
the third-party inspection service performing the inspection on behalf of the
buyer. Thus, the Examiner has not read anything out of the claims.
In addition, we do not see how monitoring the inspection service
would result in the loss of “[t]he whole reason for operating under Dutta,” as
Appellant claims. Rather, we agree with the Examiner that monitoring
would, if anything, enhance Dutta because it would further reduce the
opportunities for fraudulent conduct, such as, theft by the employees of the
inspection service. Indeed, Dutta’s benefit of having a third party perform
the inspection before shipping and without requiring any travel by the parties
would be retained. In addition, the modification also would allow the parties
to confirm the performance of the third-party inspection service.
We also disagree with Appellant that the Examiner’s interpretation of
the claims, where the inspection service can perform the inspection on
behalf of the buyer, would result in the loss of the alleged benefits of the
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claimed invention. Instead, we agree with the Examiner’s finding that the
Dutta discloses that the inspection service still must ensure that the goods
are satisfactory and that this arrangement would also still serve to reduce
fraud by both the buyer and the seller (Dutta, Abstract), as discussed in
Appellant’s Specification. Thus, we are not persuaded that the Examiner
erred.
Third, Appellant argues that the combination of Dutta and Battistini is
the result of improper hindsight (App. Br. 15). In contrast, the Examiner
found that the combination of Dutta and Battistini would have been obvious
in order to eliminate all potential types of fraudulent behavior (Ans. 6) and
because the claimed invention is an obvious, predictable variation of the
prior art (id. at 14). We note that Dutta describes one of the objectives of its
method is to reduce fraudulent behavior (Dutta, Abstract), and that Battistini
discloses the use of its system for security purposes (Battistini, col. 9, ll. 60–
67). We find this provides a rational underpinning for the Examiner’s
articulated reasoning that a person of ordinary skill would be motivated to
improve the method of Dutta to include the monitoring system of Battistini
to help reduce fraudulent behavior. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”). As such, we disagree with Appellant that the Examiner’s
rejection is based on hindsight reasoning found only in Appellant’s
application.
Finally, Appellant argues that Dutta “teaches away” from the claimed
invention by allowing the inspector of the buyer to freely access the shipped
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item after delivery but before accepting it (App. Br. 15). However, teaching
away requires discouragement, and Dutta does not discourage a person of
ordinary skill from monitoring the inspection service during the inspection.
See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[a] reference may be
said to teach away when a person of ordinary skill, upon [examining] the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant”). Appellant has pointed to nothing in Dutta that
would discourage a person of ordinary skill from using monitoring during
the inspection. Thus, Appellant has not shown that Dutta teaches away from
the claimed invention.
Accordingly, we sustain the rejection of claims 1–55.
DECISION
The rejection of claims 1–55 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).
AFFIRMED

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