10100157 (B.P.A.I. Sep. 22, 2010)

Ex Parte Pederson et al

Board of Patent Appeals and InterferencesSep 22, 2010

10100157 (B.P.A.I. Sep. 22, 2010)

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. 10/100,157 03/19/2002 Jon Pederson 723-1266 4102 27562 7590 09/22/2010 NIXON & VANDERHYE, P.C. 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER LIU, I JUNG ART UNIT PAPER NUMBER 3694 MAIL DATE DELIVERY MODE 09/22/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JON PEDERSON and PETER J. JUNGER ____________ Appeal 2009-013152 Application 10/100,157 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. FETTING, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013152 Application 10/100,157 STATEMENT OF THE CASE2 Jon Pederson, et al. (Appellants) filed a Request for Rehearing of the Decision affirming, as new grounds of rejection, the rejection of claims 1-20 under 35 U.S.C. §103(a) as being unpatentable over Rogers alone. In accordance with 37 C.F.R. § 41.52(a)(1), the Request includes certain points, in particular, that the Appellants believe the Board misapprehended or overlooked in reaching its Decision to enter a new ground of rejection under 35 U.S.C. § 103(a). The Appellants challenge the Board’s basis for entering the §103(a); that is, the Appellants find that “[t]he art relied on in the new ground of rejection [i.e., Rogers] does not teach or suggest the initial check for “a predefined original return policy or any other predefined policy” [claims 1 and 9] and, consequently, does not take the necessary follow-up actions called for in the independent claims.” Request 2. We have reviewed the Request in its entirety but do not find that the Appellants have shown the Board to be in error in deciding to enter a new ground of rejection under 35 U.S.C. § 103(a). Our reasons are enumerated in the DISCUSSION section below. DISCUSSION In the Decision, the Board found that “Rogers discloses situations where returns are accepted even though the return is not in proper compliance with a return policy.” Decision 5 (Finding of Fact 8., citing to 2 Our decision will make reference to the Appellants’ Request for Rehearing (filed May 10, 2010, “Request”) and the BPAI Decision (mailed Mar. 10, 2010, “Decision). Appeal 2009-013152 Application 10/100,157 3 Rogers, col. 1, ll. 29-65). The Appellants do not dispute the Board’s characterization of what Rogers discloses. Rather, the Appellants dispute the logic the Board used in finding, based on this disclosure, that Rogers discloses the claim step of checking for “a predefined original return policy or any other predefined policy” (claims 1 and 9). Request 2. The Board had explained that Rogers’ disclosure of situations where returns are accepted even though the return is not in proper compliance with a return policy ... [means that] in Rogers [ ] returns may be accepted even though a product may not comply with an initial return policy (“original return policy”) [and this] necessarily implies that a policy different from the initial return policy has been applied to allow the return to be accepted. [citing FF 9.] The disclosure in Rogers that returns may be accepted even though a product may not comply with an initial return policy further implies the application of return policies adapted to the circumstances of the return. Decision 9-10. The Appellants argue that the Board’s logic is “dubious” (Request 2) because it suggests a solution to what Rogers deems to be a problem; that is, the problem of monitoring product returns to ensure proper compliance with a return policy. We disagree. The Board is simply saying that there is an overriding policy in effect when products are returned though they do not comply with an initial return policy. We think that is logical. The Board is not suggesting a solution but giving Rogers a plain reading and using common logic. The Appellants argue that Rogers does not provide for a “”brand new” customized return policy.” Request 3. This is not a persuasive argument. Taking claim 1 as representative, we see nothing there about a “brand new” customized return policy. We disagree that giving the claim the broadest Appeal 2009-013152 Application 10/100,157 4 reasonable construction in light of the Specification as it would be interpreted by one of ordinary skill in the art limits it to a method involving “brand new” customized return policies. The claimed method calls for defining a “customized return policy” but it broadly covers defining any type of customized return policy, e.g., one that is tailored to each customer depending on a customer’s needs. The Appellants argue that the “fact that returns may be accepted even though a product does not necessarily comply with an initial return policy (interpreted as an original return policy) does not necessarily imply that a new customized return policy has been defined.” Request 3 (emphasis original). The Appellant explains that Rogers implies two possible situations: (1) an initial/original return policy and a single predefined policy to “accept anyway”” (Request 3); and, (2) the “returns are treated on an ad hoc basis” (Request 4, emphasis added). We agree that these are two possible situations that Rogers could cover. But we do not see that the claimed process excludes even these situations. In the first situation, the Appellants argue that a single predefined policy to “accept anyway” cannot be a “defining a customized return policy ... different from the original return policy” (claim 1). Request 4. But we do not understand why not. Nothing in the claim or in the Specification limits the “defining a customized return policy ... different from the original return policy” such that the customized return policy cannot be a single predefined policy to “accept anyway”. In the second situation, the Appellants argue that “an ad hoc or undefined course of action by the Board’s own definition cannot be a policy.” Request 4. But we do not understand why not. Nothing in the claim or in the Specification limits the “defining a customized return Appeal 2009-013152 Application 10/100,157 5 policy ... different from the original return policy” to a customized return policy that defines only a predetermined or planned course of action. This comports with the definition the Board applied. See FF 3, Decision 4. A “policy” means a “course of action” (see FF 3, Decision 4). But it does not further mean “a predetermined or planned course of action” (Request 4). An ad hoc course of action can be a policy. Lastly, the Appellants argue that the Board has used impermissible hindsight to reach the conclusion that it would have been obvious to store the customized return policies as claimed. Request 4-5. We are not persuaded by the argument. In the first situation above, for example, the Appellants appear to agree that, in view of Rogers, it would have been obvious to one of ordinary skill in the art to store a single predefined policy to “accept anyway.” See Request 4: “Rogers pertains only predefined policies that may very well be stored in a database.” In the second situation above, for another example, the Appellants argue that there would be no reason to store ad hoc decisions. We disagree. The ad hoc decisions are simply information and the very purpose of a database (cf. Rogers, Fig. 1, and Specification 10; see FF 10 and 11, Decision 5) is to store information. One of ordinary skill in the art would see nothing unpredictable about using a database to store information whose content represents ad hoc decisions. The Appellants argue that “the whole problem that the instant application addresses is what to do when faced with an otherwise ad hoc decision initially and then again “later down the road.” Request 4-5. But the argument is not commensurate in scope with what is claimed. The claimed method is not limited by including a step of employing a stored customized return policy when faced with an otherwise ad hoc Appeal 2009-013152 Application 10/100,157 6 decision initially and then again later down the road. Rather the claimed process merely requires storing the customized return policy. CONCLUSION We have carefully considered the arguments that the Appellant has set forth in the Request but, for the foregoing reasons, we do not find them persuasive as to error in the decision to enter a new ground of rejection of claim 1-20 under 35 U.S.C. § 103(a) over Rogers. DENIED mev NIXON & VANDERHYE, P.C. 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON VA 22203